`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`BLACKBERRY CORP.,
`Petitioner,
`
`v.
`
`CYPRESS SEMICONDUCTOR CORP.,
`Patent Owner.
`
`__________________
`
`
`DECLARATION OF ANDREW WOLFE PH.D.
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 6,249,825
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
` 
`
`
`
` 
`
`BLACKBERRY Ex. 1012, page 1
`
`

`

` 
`
`TABLE OF CONTENTS
`
`
`I. 
`INTRODUCTION ........................................................................................... 1 
`QUALIFICATIONS ........................................................................................ 1 
`II. 
`III.  MATERIALS CONSIDERED AND PREPARED ......................................... 7 
`IV.  SUMMARY OF OPINIONS ........................................................................... 8 
`V. 
`LEGAL PRINCIPLES USED IN ANALYSIS ............................................. 10 
`A. 
`Patent Claims in General ..................................................................... 11 
`B. 
`Prior Art ............................................................................................... 12 
`C. 
`Unpatentability – Anticipation ............................................................ 12 
`D.  Unpatentability -- Obviousness ........................................................... 14 
`VI.  BACKGROUND OF THE PATENT AND RELEVANT
`TECHNOLOGY ............................................................................................ 16 
`VII.  THE ’825 PATENT ....................................................................................... 19 
`VIII.  CLAIM CONSTRUCTION .......................................................................... 26 
`IX.  OVERVIEW OF THE PRIOR ART ............................................................. 28 
`A. 
`Patent Owner’s Admitted Prior Art (“APA”) ..................................... 28 
`B. 
`U.S. Patent No. 6,073,193 to Yap (“Yap”) ......................................... 33 
`C. 
`U.S. Patent No. 5,628,028 to Michelson (“Michelson”) ..................... 38 
`D. 
`PCCextend 100 User’s Manual (“PCCextend”) ................................. 40 
`E. 
`U.S. Patent No. 5,862,393 to Davis (“Davis”) .................................... 42 
`X.  UNPATENTABILITY ANALYSIS ............................................................. 48 
`A. 
`The Claims of the ’825 Patent ............................................................. 48 
`B. 
`Claim 11 of the ’825 Patent Is Anticipated Under 35 U.S.C. §
`102(b) by the USB Specification V1.0. .............................................. 51 
`Claims 1, 5, 7, 10, 11, and 15-17 are unpatentable under 35
`U.S.C. § 103(a) as being obvious over APA in view of Yap ............ 65 
`
`C. 
`
`ii 
`
`BLACKBERRY Ex. 1012, page 2
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`

`

` 
`
`D. 
`
`Claims 2, 3, 12, and 13 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over APA in view of Yap and
`Michelson ............................................................................................ 82 
`Claims 1-3, 10, 11-13, and 17 are unpatentable under 35
`U.S.C. § 103(a) as being obvious over Michelson in view of
`PCCextend and Davis .......................................................................... 87 
`Claims 5, 7, 15, and 16 are unpatentable under 35 U.S.C. §
`103(a) as being obvious over Michelson in view of
`PCCextend, Davis, and the APA .......................................................101 
`Claims 18–20 are unpatentable under 35 U.S.C. § 102(e) as
`being anticipated by Yap ...................................................................108 
`Claims 18 and 20 are unpatentable under 35 U.S.C. § 102(e)
`as being anticipated by Davis ............................................................112 
`Claim 19 is unpatentable under 35 U.S.C. § 103(a)as being
`obvious over Davis in view of APA .................................................116 
`XI.  CONCLUDING STATEMENTS ................................................................117 
`
`G. 
`
`E. 
`
`F. 
`
`H. 
`
`I. 
`
`iii 
`
`BLACKBERRY Ex. 1012, page 3
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`

`

` 
`
`I, Andrew Wolfe, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`2.
`
`I am currently a consultant at Wolfe Consulting.
`
`I have been retained in this matter to provide various opinions
`
`regarding U.S. Patent No. 6,249,825 (the “’825 patent”). I am being
`
`compensated for my work in this matter at my ordinary hourly consulting rate.
`
`My compensation in no way depends upon the outcome of this proceeding.
`
`3.
`
`I have been advised that Cypress Semiconductor Corp. owns the
`
`’825 Patent. I have no financial interest in the ’825 patent.
`
`II. QUALIFICATIONS
`
`4.
`
`I have more than 30 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator, and
`
`as an executive in the electronics industry.
`
`5.
`
`In 1985, I earned a B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from The Johns Hopkins University. In 1987, I received an
`
`M.S. degree in Electrical and Computer Engineering from Carnegie Mellon
`
`University. In 1992, I received a Ph.D. in Computer Engineering from Carnegie
`
`Mellon University. My doctoral dissertation proposed a new approach for the
`
`architecture of a computer processor.
`
`1 
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`BLACKBERRY Ex. 1012, page 4
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`
`6.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a
`
`senior design engineer for Touch Technology, Inc. During the course of my
`
`design projects with Touch technology, I designed I/O cards for PC-compatible
`
`computer systems, including the IBM PC-AT, to interface with interactive
`
`touch-based computer terminals that I designed for use in public information
`
`systems. I continued designing and developing related technology as a
`
`consultant to the Carroll Touch division of AMP, Inc., where in 1986 I designed
`
`one of the first custom touchscreen integrated circuits.
`
`7.
`
`From 1986 through 1987, I designed and built a high-performance
`
`computer system as a student at Carnegie Mellon University. From 1986
`
`through early 1988, I also developed the curriculum, and supervised the teaching
`
`laboratory, for processor design courses.
`
`8.
`
`In the latter part of 1989, I worked as a senior design engineer for
`
`ESL-TRW Advanced Technology Division. While at ESL-TRW, I designed and
`
`built a bus interface and memory controller for a workstation-based computer
`
`system, and also worked on the design of a multiprocessor system.
`
`9.
`
`At the end of 1989, I (along with some partners) reacquired the
`
`rights to the technology I had developed at Touch Technology and at AMP, and
`
`founded The Graphics Technology Company. Over the next seven years, as an
`
`2 
`
`BLACKBERRY Ex. 1012, page 5
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`

`

` 
`
`officer and a consultant for The Graphics Technology Company, I managed the
`
`company's engineering development activities and personally developed dozens
`
`of touchscreen sensors, controllers, and interactive touch-based computer
`
`systems.
`
`10.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technical advisory
`
`boards for two processor design companies: BOPS, Inc., where I chaired the
`
`board, and Siroyan Ltd., where I served in a similar role for three networking
`
`chip companies—Intellon, Inc., Comsilica, Inc, and Entridia, Inc.—and one 3D
`
`game accelerator company, Ageia, Inc.
`
`11.
`
`I have also served as a technology advisor to Motorola and to
`
`several venture capital funds in the U.S. and Europe. Currently, I am a director
`
`of Turtle Beach Corporation, providing guidance in its development of premium
`
`audio peripheral devices for a variety of commercial electronic products.
`
`12. From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I
`
`taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems and
`
`related topics. I was also a principal investigator for DOD research in video
`
`3 
`
`BLACKBERRY Ex. 1012, page 6
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`

` 
`
`technology and a principal investigator for the New Jersey Center for
`
`Multimedia Research. From 1999 through 2002, I taught the Computer
`
`Architecture course to both undergraduate and graduate students at Stanford
`
`University multiple times as a Consulting Professor. At Princeton, I received
`
`several teaching awards, both from students and from the School of
`
`Engineering. I have also taught advanced microprocessor architecture to
`
`industry professionals in IEEE and ACM sponsored seminars. I am currently a
`
`lecturer at Santa Clara University teaching graduate courses on Computer
`
`Organization and Architecture and undergraduate courses on electronics and
`
`embedded computing.
`
`13. From 1997 through 2002, I held a variety of executive positions at a
`
`publicly-held fabless semiconductor company originally called S3, Inc. and later
`
`called Sonicblue Inc. For example, I held the positions of Chief Technology
`
`Officer, Vice President of Systems Integration Products, Senior Vice President
`
`of Business Development, and Director of Technology. At the time I joined S3,
`
`the company supplied graphics accelerators for more than 50% of the PCs sold
`
`in the United States.
`
`14. Beginning in 1998, I began to work closely with S3’s largest
`
`customer, Diamond Multimedia, to explore possible opportunities for a merger.
`
`My investigation included evaluating the technology, market, and business
`
`4 
`
`BLACKBERRY Ex. 1012, page 7
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` 
`
`model related to the “Diamond Rio PMP300,” the first commercially viable
`
`flash-memory MP3 player. In 1999, I led the merger negotiations between the
`
`two companies, managed significant parts of company integration, and, after the
`
`merger was complete, worked on new product development. Soon after the
`
`merger with Diamond, we introduced the “Diamond Rio PMP500,” a portable
`
`music player that included Universal Serial Bus (“USB”) capability and also the
`
`ability to play downloaded files purchased from the Audible.com website. We
`
`also developed relationships with MP3 music vendors, including eMusic and
`
`MP3.com.
`
`15. While at Diamond, we also developed the Rio 600 and 800 MP3
`
`players, which included support for digital rights management (“DRM”)
`
`protected music using protocols from Microsoft. During the development of the
`
`PMP500 and the Rio 600, we also developed a music delivery platform and
`
`webstore backend service for selling DRM-protected music. In 1999, this
`
`business segment was spun out as a separate company called RioPort.com. I
`
`served on the RioPort.com board of directors and became involved in their
`
`product and technology strategy. I also managed engineering and marketing for
`
`the Rio product line for a period of time as an interim general manager.
`
`5 
`
`BLACKBERRY Ex. 1012, page 8
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`

`

` 
`
`16.
`
`I served as a board member and technical advisor at KBGear Inc.
`
`from 1999-2001. KBGear Inc. designed and produced digital cameras and
`
`music players that included USB ports and flash memory.
`
`17.
`
`I have published more than 50 peer-reviewed papers in computer
`
`architecture and computer systems and IC design.
`
`18.
`
`I also have chaired IEEE and ACM conferences in
`
`microarchitecture and integrated circuit design and served as an associate editor
`
`for IEEE and ACM journals.
`
`19.
`
`20.
`
`I am a named inventor on 36 U.S. patents and 24 foreign patents.
`
`In 2002, I was the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International
`
`Conference on Multimedia. From 1990 through 2005, I have also been an
`
`invited speaker on various aspects of technology and the PC industry at
`
`numerous industry events including the Intel Developer’s Forum, Microsoft
`
`Windows Hardware Engineering Conference, Microprocessor Forum,
`
`Embedded Systems Conference, Comdex, and Consumer Electronics Show, as
`
`well as at the Harvard Business School and the University of Illinois Law
`
`School. I have been interviewed on subjects related to computer graphics and
`
`video technology and the electronics industry by publications such as the Wall
`
`Street Journal, New York Times, Los Angeles Times, Time, Newsweek, Forbes,
`
`6 
`
`BLACKBERRY Ex. 1012, page 9
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`

`

` 
`
`and Fortune as well as CNN, NPR, and the BBC. I have also spoken at dozens
`
`of universities including MIT, Stanford, University of Texas, Carnegie Mellon,
`
`UCLA, University of Michigan, Rice, and Duke.
`
`21. Based on my technical education, and my years of professional
`
`experience as both an engineer and as an educator, I consider myself to be an
`
`expert in the field of computer architecture and computer system design,
`
`consumer electronics, and computer programming, including computer busses,
`
`interfaces, and input/output ports. Moreover, I am very familiar with the
`
`operation and functional capabilities and limitations of commercial computers
`
`and computer peripherals existing during the late 1990s.
`
`22. My professional experience with computer peripheral device
`
`interface design and with USB technology, as well as my educational
`
`background, is summarized in more detail in my C.V., which is attached as
`
`Exhibit 1021 to the Petition.
`
`III. MATERIALS CONSIDERED AND PREPARED
`
`23.
`
`In forming the opinions expressed below, I considered the ’825
`
`patent and the other patents in its family (U.S. Patent Nos. 6,012,103 and
`
`6,493,770) (collectively the “USB Patents”) and their file histories as well as the
`
`prior art references and related documentation discussed herein. I have also
`
`relied upon my education, background, and experience.
`
`7 
`
`BLACKBERRY Ex. 1012, page 10
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`

`

` 
`
`24.
`
`In addition, I have reviewed the declaration of Geert Knapen that
`
`was presented with respect to a prior IPR petition related to the ’825 patent. In
`
`most cases, I found the presentation of pertinent facts and the accompanying
`
`analysis in that declaration to be both accurate and well written. Furthermore, in
`
`many cases, my relevant opinions are identical to Mr. Knapen’s. In these cases,
`
`I have duplicated Mr. Knapen’s language in this declaration to simplify the
`
`presentation to the PTAB. Where my opinions differ from Mr. Knapen’s or I
`
`felt that a different form of presentation is preferable, I have written new text.
`
`IV. SUMMARY OF OPINIONS
`
`25. Based on my investigation and analysis, and for the reasons set
`
`forth below, it is my opinion that all of the elements and steps recited in claims
`
`1–3, 5, 7, 10–13, and 15–20 of the ’825 patent are disclosed in prior art
`
`references and that those claims are anticipated and/or rendered obvious in view
`
`of these references. In particular, I have relied primarily on the five prior art
`
`references identified below in support of my opinions:
`
`(1)
`
`Patent Owner’s Admitted Prior Art (“APA”) (Ex. 1001);
`
`(2) U.S. Patent No. 6,073,193 to Yap (“Yap”) (Ex. 1002);
`
`(3) U.S. Patent No. 5,628,928 to Michelson (“Michelson”) (Ex. 1003);
`
`(4)
`
`PCCextend100 User’s Manual (“PCCextend”) (Ex. 1004);
`
`(5) U.S. Patent No. 5,862,393 to Davis (“Davis”) (Ex. 1005);
`
`8 
`
`BLACKBERRY Ex. 1012, page 11
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`

`

` 
`
`(6) Universal Serial BusSpecification v1.0, January 15, 1996,
`
`Copyright 1996, Compaq Computer Corporation, Digital Equipment
`
`Corporation,IBM PC Company, Intel Corporation, Microsoft Corporation, NEC,
`
`Northern Telecom (“USB 1.0 Specification”) (Ex. 1013); 
`
`26. Besides the above documents, I have also considered the following
`
`references in preparing my declaration:
`
`(1)
`
`(2)
`
`(3)
`
`Prosecution History of U.S. Patent 6,012,103 (Ex. 1006);
`
`Prosecution History of U.S. Patent 6,249,825 (Ex. 1007);
`
`Prosecution History of U.S. Patent 6,493,770 (Ex. 1008);
`
`(4) U.S. Patent No. 5,590,273 to Balbinot (Ex. 1014)
`
`(5) U.S. Patent No. 6,338,109 to Snyder (Ex. 1015)
`
`(6) Quinnell, Richard A., “USB: A Neat Package with a Few Loose
`
`Ends,” EDN Magazine (October 24, 1996) (Ex. 1016).
`
`(7) Levine, Larry. PCMCIA Primer, pp. 117-130 (M&T Books 1995)
`
`(Ex. 1017).
`
`(8)
`
`PCMCIA PC Standard Release 2.01, pp. 3-2 to 3-5; 4-2 to 4-7; 4-10
`
`to 4-19; 4-28 to 4-31; 4-34 to 4-37; 5-2 to 5-5; 5-12 to 5-21; 5-23; 5-48 to 5-51;
`
`6-6 to 6-17 (Ex. 1018).
`
`(9)
`
`PCMCIA Card Services Specification Release 2.0, pp. 3-2 to 3-7;
`
`3- 14 to 3-17; 3-20 to 3-25; 3-28 to 3-29; 5-78 to 5-79 (Ex. 1019)
`
`9 
`
`BLACKBERRY Ex. 1012, page 12
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`

`

` 
`
`(10) U.S. Patent No. 5,537,654 to Bedingfield (Ex. 1020)
`
`27. The bases for my opinions are set forth in greater detail below and
`
`in the claim charts attached as Appendix A.
`
`V.
`
`LEGAL PRINCIPLES USED IN ANALYSIS
`
`28.
`
`I am not a patent attorney and I am presenting no opinions on the
`
`law related to unpatentability. BlackBerry’s attorneys have explained certain
`
`legal principles to me that I have relied on in forming my opinions set forth in
`
`this declaration.
`
`29.
`
`I was informed that my assessment and determination of whether or
`
`not claims 1–3, 5, 7, 10–13, and 15–20 of the ’825 patent are unpatentable must
`
`be undertaken from the perspective of what would have been known or
`
`understood by someone of ordinary skill in the art as of the earliest priority
`
`filing date of the USB Patents—July 2, 1997. From analyzing the USB Patents
`
`and the relevant prior art, it is my opinion that a person of ordinary skill in the
`
`relevant art for the ’825 patent (“PHOSITA”) would be sufficiently skilled in the
`
`design of peripheral devices used in connection with computer systems to
`
`understand and practice the prior art discussed in this declaration. Unless
`
`otherwise specified, when I state that something would be known to or
`
`understood by one skilled in the art or possessing ordinary skill in the art, I am
`
`referring to someone with this level of knowledge and understanding.
`
`10 
`
`BLACKBERRY Ex. 1012, page 13
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`

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` 
`
`A.
`30.
`
`Patent Claims in General
`
`I have been informed that patent claims are the numbered sentences
`
`at the end of each patent. I have been informed that the claims are important
`
`because the words of the claims define what a patent covers. I have also been
`
`informed that the figures and text in the rest of the patent provide a description
`
`and/or examples and help explain the scope of the claims, but that the claims
`
`define the breadth of the patent’s coverage.
`
`31.
`
`I have also been informed that an “independent claim” expressly
`
`sets forth all of the elements that must be met in order for something to be
`
`covered by that claim. I have also been informed that a “dependent claim” does
`
`not itself recite all of the elements of the claim but refers to another claim for
`
`some of its elements. In this way, the claim “depends” on another claim and
`
`incorporates all of the elements of the claim(s) from which it depends. I also
`
`have been informed that dependent claims add additional elements. I have been
`
`informed that, to determine all the elements of a dependent claim, it is necessary
`
`to look at the recitations of the dependent claim and any other claim(s) on which
`
`it depends.
`
`32.
`
`I have also been informed that patent claims may be expressed as
`
`“methods” or “apparatuses/devices/systems.” That is, I have been informed that
`
`a patent may claim the steps of a “method,” such as a particular way to perform
`
`11 
`
`BLACKBERRY Ex. 1012, page 14
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`

`

` 
`
`a process in a series of ordered steps, or may claim a combination of various
`
`elements in an “apparatus,” “device,” or “system.”
`
`B.
`33.
`
`Prior Art
`
`I have been informed that the law provides categories of
`
`information (known as “prior art”) that may anticipate or render obvious patent
`
`claims. I have been informed that, to be prior art with respect to a particular
`
`patent in this proceeding, a reference must have been published, or patented, or
`
`be the subject of a patent application by another, before the priority date of the
`
`patent. I have also been informed that a person of ordinary skill in the art is
`
`presumed to have knowledge of all prior art. I have been asked to presume that
`
`the reference materials that I opine on, i.e., the APA; U.S. Patent No. 6,073,193
`
`to Yap; U.S. Patent No. 5,628,028 to Michelson; PCCextend 100 User’s
`
`Manual; U.S. Patent No. 5,862,393 to Davis; and USB 1.0 Specification, are
`
`prior art from a technical perspective – that is, all were available to a person of
`
`ordinary skill in the art on or before the priority date of the patent.
`
`C. Unpatentability – Anticipation
`34.
`
`I have been informed and understand that determination of whether
`
`a patent claim is “anticipated” is a two-step process. First, the language of the
`
`claim is construed as it would be understood by one of ordinary skill in the art at
`
`the time of the filing of the patent application. Reference is made to the intrinsic
`
`12 
`
`BLACKBERRY Ex. 1012, page 15
`
`

`

` 
`
`evidence of record, which includes the language of the claim itself and other
`
`issued claims, the patent specification, and the prosecution history. Words in a
`
`claim will be given their ordinary or accustomed meaning unless it appears that
`
`the inventor used them differently. The prosecution history may limit the
`
`interpretation of the claim, especially if the applicant disavowed or disclaimed
`
`any coverage in order to obtain allowance of the claim.
`
`35. Second, I understand that after the patent claim has been construed,
`
`determining anticipation of the patent claim requires a comparison of the
`
`properly construed claim language to the prior art on an element-by-element
`
`basis.
`
`36.
`
`I understand that a claimed invention is “anticipated” if each and
`
`every element of the claim has been disclosed in a single prior art reference, or
`
`has been embodied in a single prior art device or practice, either explicitly or
`
`inherently (i.e., necessarily present or implied).
`
`37.
`
`I understand that although anticipation cannot be established by
`
`combining references, additional references may be used to interpret the
`
`anticipating reference by, for example, indicating what the anticipating reference
`
`would have meant to one having ordinary skill in the art.
`
`13 
`
`BLACKBERRY Ex. 1012, page 16
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`

`

` 
`
`D. Unpatentability -- Obviousness
`38.
`
`I have been informed that, even if every element of a claim is not
`
`found explicitly or implicitly in a single prior art reference, the claim may still
`
`be unpatentable if the differences between the claimed elements and the prior art
`
`are such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person of ordinary skill in the art. That is, the
`
`invention may be obvious to a person having ordinary skill in the art when seen
`
`in light of one or more prior art references. I have been informed that a patent is
`
`obvious when it is only a combination of old and known elements, with no
`
`change in their respective functions, and that these familiar elements are
`
`combined according to known methods to obtain predictable results. I have been
`
`informed that the following four factors are considered when determining
`
`whether a patent claim is obvious: (1) the scope and content of the prior art; (2)
`
`the differences between the prior art and the claim; (3) the level of ordinary skill
`
`in the art; and (4) secondary considerations tending to prove obviousness or
`
`nonobviousness. I have also been informed that the courts have established a
`
`collection of secondary factors of nonobviousness, which include: unexpected,
`
`surprising, or unusual results; prior art that teaches away from the alleged
`
`invention; substantially superior results; synergistic results; long-standing need;
`
`commercial success; and copying by others. I have also been informed that there
`
`14 
`
`BLACKBERRY Ex. 1012, page 17
`
`

`

` 
`
`must be a connection, or nexus, between these secondary factors and the scope
`
`of the claim language.
`
`39.
`
`I have also been informed that some examples of rationales that
`
`may support a conclusion of obviousness include:
`
`a)
`
`Combining prior art elements according to known methods to
`
`yield predictable results;
`
`b)
`
`Simply substituting one known element for another to obtain
`
`predictable results;
`
`c)
`
`Using known techniques to improve similar devices (or
`
`product) in the same way (e.g. obvious design choices);
`
`d)
`
`Applying a known technique to a known device (or product)
`
`ready for improvement to yield predictable results;
`
`e)
`
`Choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success—in other
`
`words, whether something is “obvious to try”;
`
`f)
`
`Using work in one field of endeavor to prompt variations of
`
`that work for use in either the same field or a different one
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`based on design incentives or other market forces if the
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`variations are predictable to one of ordinary skill in the art;
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`and
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`15 
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`BLACKBERRY Ex. 1012, page 18
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`g)
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`Arriving at a claimed invention as a result of some teaching,
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`suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings.
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`40.
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`I have also been informed that other rationales to support a
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`conclusion of obviousness may be relied upon, for instance, that common sense
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`(where substantiated) may be a reason to combine or modify prior art to achieve
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`the claimed invention.
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`VI. BACKGROUND OF THE PATENT AND RELEVANT
`TECHNOLOGY
`41. The ’825 patent relates to a system and method for interfacing a
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`computer system to a peripheral device. A wide variety of peripheral devices
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`were common at the time of the ’825 patent’s priority date, examples of which
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`included a computer mouse, keyboard, printer, network adapter, modem, data
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`storage device, and computer monitor. Often these peripherals, particularly a
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`network adapter, modem, or data storage device, were in the form of a PC card
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`(also referred to as a PCMCIA card). Various specifications have been
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`developed to facilitate interaction between a computer and a peripheral device.
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`These specifications have included the Personal Computer Memory Card
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`International Association (PCMCIA) Specification and the Universal Serial Bus
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`(USB) Specification.
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`42.
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`In the Background of the ’825 Patent (“Background”), the patentee
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`admits that it was known to connect a peripheral device to a computer using a
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`USB connection. Ex. 1001, 1:59–2:12; 4:5–24; Fig. 1. The patentee also admits
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`in the Background that, when the USB connector of a peripheral is inserted into
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`a powered-up host computer or inserted into a powered-down host computer
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`which is then powered up, the host computer detects the peripheral device and a
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`configuration process known as “enumeration” begins which causes the
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`peripheral device to be recognized by the host computer’s operating system. Ex.
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`1001, 1:59–2:12.1
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`43. The Background further alleges that the only opportunity for
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`associating a software device driver with a peripheral device is at the time when
`                                                            
`1 The USB 1.0 specification actually explained that enumeration is an ongoing
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`activity for the bus and that it is only done at startup time for some busses.
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`“4.6.3 Bus Enumeration Bus enumeration is the activity that identifies and
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`addresses devices attached to a bus. For many buses, this is done at startup time
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`and the information collected is static. Since the USB allows USB devices to
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`attach to or detach from the USB at any time, bus enumeration for this bus is an
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`on-going activity. Additionally, bus enumeration for the USB also includes
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`detection and processing of removals.” Ex. 1013 at 32. “enumerating the USB
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`is an on-going activity” Ex. 1013 at 31.
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`the enumeration process occurs. Ex. 1001, 2:13-16. “Thus, to alter the
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`configuration or personality of a peripheral device, such as downloading new
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`code or configuration information into the memory of the peripheral device, the
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`host computer system must detect a peripheral device connection or a
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`disconnection and then a reconnection.” Id. at 2:17–21.
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`44. This was admitted to be one of the “problems of known systems
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`and methods….” Id. at 2:29–32. Accordingly, it was admitted to be known that
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`a peripheral device could have a first configuration and that a second
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`configuration could be downloaded into the peripheral device over a computer
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`bus. All of these features are also found in one or more of the prior art
`
`references discussed herein.
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`45. The Background describes that the problem that the host computer
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`system must detect a physical disconnection and reconnection is solved by a
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`switch which is connected to one of the USB data lines D+ and D-. Ex. 1001,
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`6:51–55 and 6:66–7:15. It was known that a host detects the connection of a
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`peripheral device by monitoring voltage levels on one of the two USB data lines.
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`Id. at 6:18–21; Ex. 1013 at 114. Thus, by changing the state of the data lines,
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`the switch is electronically simulating a physical disconnection or reconnection
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`of the peripheral over the bus, as recited in independent claims 1, 11, and 18.
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`However, as discussed in more detail below, it was well known in the prior art
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`(e.g., in U.S. Patent No. 6,073,193 to Yap; PCCextend 100 User’s Manual, and
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`U.S. Patent No. 5,862,393 to Davis) to position a switch in the lines of a bus
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`between a peripheral device and host computer which can be opened and closed
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`to simulate a physical disconnection and reconnection over the bus and cause
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`reconfiguration. The method of resetting a USB port after configuration was
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`also well known. Ex. 1013 at 115–117, 119, 14, 29, 165–169, 221–222, 263.
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`Also, the USB specification explained that certain devices had “hardware
`
`support for reset and suspend/resume signaling.” Ex. 1013 at 35. A reset on
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`such a device sets the port state to “Disconnected.” Ex. 1013 at 223. Coming
`
`out of reset, attached devices are redetected. “Upon coming out of reset, a hub
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`must detect which downstream ports have devices connected to them.” Ex.
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`1013 at 224. A reset that switches power on and off to simulate a disconnect
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`was also part of the USB specification. Ex. 1013 at 132, 242. In fact, the USB
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`specification discloses the existence of non-removable devices that can only be
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`reset using this simulation process. Ex. 1013 at 264. Thus, the problem that a
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`host needs to detect a disconnection and reconnection to cause reconfiguration
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`had a well-known solution in the prior art.
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`VII. THE ’825 PATENT
`
`46. The Background admits that physically disconnecting and
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`reconnecting a peripheral device to reconfigure the peripheral device was known
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`19 
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`BLACKBERRY Ex. 1012, page 22
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`at the time of the invention. See supra, Section VI. This physical disconnection
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`and reconnection caused a host computer to perform an enumeration process to
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`recognize the requirements and capabilities of the device and select an
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`appropriate device driver with which to use the peripheral device. See, e.g., Ex.
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`1001, 1:59–2:3.
`
`47. The ’825 Patent relates to using an electronic circuit to simulate the
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`disconnection and reconnection to take the place of an actual physical
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`disconnection and reconnection. Ex. 1001 2:55–3:2 and 5:26–33.
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`48. Figure 2 of the ’825 Patent (reproduced below) illustrates a USB
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`system “in accordance with the invention.” Ex. 1001, 3:42–43 and 4:53–55. The
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`USB system includes a host computer with an operating system that stores “one
`
`or more peripheral device drivers, such as a first peripheral device driver 68”
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`and a “plurality of different configuration information sets 70.” Ex. 1001 4:57–
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`5:3.
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`20 
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`BLACKBERRY Ex. 1012, page 23
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`
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`49. The host computer selects one of the plurality of configuration
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`information sets, such as an updated configuration information set, to download
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`to the peripheral device. Ex. 1001 5:25–43. Instead of relying on a physical
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`disconnection and reconnection of the peripheral device to reconfigure the
`
`peripheral device based on the updated configuration info