UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`ZTE Corporation and ZTE (USA) Inc.
`
`Petitioners
`
`V.
`
`InterDigital Technology Corporation
`
`Patent Owner
`
`US. Patent No.: 8,380,244
`
`Filed: November 9, 2009
`Issued: February 19, 2013
`
`Title: Dual Mode Unit for Short Range, High Rate and Long Range, Lower Rate
`Data Communications
`
`
`
`DECLARATION OF DR. HARRY BIMS IN SUPPORT OF
`
`THE PETITION FOR INTER PARTES REVIEW
`
`OF US. PATENT NO. 8,380,244
`
`Case No.: IPR2014-00525
`
`Microsoft Corporation
`Exhibit 1002-00001
`
`Microsoft Corporation
`
`

`

`Table of Contents
`
`I.
`
`INTRODUCTION .............................................................................................................. 1
`
`A.
`B.
`
`C.
`D.
`
`Identification of the 244 Patent and Scope of Opinions ......................................... 1
`Education and Work Experience ............................................................................ 2
`1.
`Qualifications .............................................................................................. 2
`2.
`Recent Consulting and Testimony .............................................................. 4
`Compensation ......................................................................................................... 7
`Documents and Other Materials Relied Upon ........................................................ 7
`
`11.
`
`SUMMARY OF OPINIONS .............................................................................................. 8
`
`III.
`
`LEGAL PRINCIPLES ........................................................................................................ 9
`
`A.
`B.
`
`C.
`
`Anticipation ............................................................................................................. 9
`Obviousness .......................................................................................................... 10
`
`1.
`
`Motivations to Combine ........................................................................... 12
`
`Secondary Considerations ......................................................................... 13
`2.
`Date of Invention .................................................................................................. 14
`
`IV.
`
`THE 244 WIRELESS COMIVIUNICATIONS PATH PATENT ..................................... 15
`
`A.
`
`Background of Wireless Communication Path Technology ................................. 15
`1.
`Wireless Local Area Networks ................................................................. 15
`
`2.
`
`Cellular data networks .............................................................................. 16
`
`B.
`
`Overview of the 244 Patent ................................................................................... 17
`
`1 .
`2.
`
`3.
`
`Background ............................................................................................... 17
`Disclosure of the 244 Patent ..................................................................... 19
`
`Detection of a Preferred Communication Path ......................................... 22
`
`Summary of Prosecution History of the 244 Patent and Related Patents. 26
`4.
`Challenged Claims of the 244 Patent ........................................................ 32
`5.
`Person of Ordinary Skill in the Art for the 244 Patent ......................................... 34
`Date of Invention for the 244 Patent ..................................................................... 35
`
`Claim Construction Issues .................................................................................... 36
`
`Overview of Relevant Prior Art ............................................................................ 4O
`
`1.
`
`US. Patent No. 6,243,581 to Jawanda ...................................................... 4O
`
`US. Patent No. 6,681,259 to Lemilainen and Haverinen ......................... 46
`2.
`Cellular Standards (GPRS and Draft WTS) ........................................... 50
`3.
`The Prior Art Landscape ....................................................................................... 57
`Motivation to Combine Prior Art .......................................................................... 68
`
`Invalidity of the 244 Patent In Light of the Prior Art ........................................... 7O
`1.
`US. Patent No. 6,243,581 to Jawanda ...................................................... 71
`
`US. Patent No. 6,681,259 to Lemilainen and Haverinen ......................... 98
`2.
`Draft [HVITS Standards as of August 20, 1999 ....................................... 122
`3.
`Secondary Considerations of Obviousness/Non-Obviousness ........................... 129
`
`C.
`D.
`
`E.
`
`F.
`
`G.
`H.
`
`I.
`
`J.
`
`V.
`
`REVISION OR SUPPLEMENTATION ........................................................................ 130
`
`BIMS DECLARATION
`EX. 1002
`
`i
`
`Microsoft Corporation
`Exhibit 1002-00002
`
`Microsoft Corporation
`
`

`

`I.
`
`INTRODUCTION
`
`A.
`
`1.
`
`Identification of the 244 Patent and Scope of Opinions
`
`My name is Harry Bims. I have been retained by ZTE Corporation and ZTE
`
`(USA), Inc. (collectively “ZTE”) to investigate and opine on certain issues relating to US. Patent
`
`No. 8,380,244 (“the 244 Patent”).
`
`2.
`
`I understand that InterDigital Communications, LLC, InterDigital Technology
`
`Corporation, and IPR Licensing (collectively “InterDigital”) have Challenged Claims 1-8, 14-16,
`
`19-29, 36-3 8, and 41-44 of the 244 Patent in an amended complaint the United States District
`
`Court of Delaware against ZTE (Case No. 13-0009-RGA). The amended complaint that first
`
`identified the 244 patent was filed on March 21, 2013.
`
`I will refer to this litigation as the
`
`“Delaware Litigation.”
`
`3.
`
`I understand that Claims 1-8, 14-16, 19-29, 36-3 8, and 41-44 of the 244 Patent are
`
`challenged in this petition.
`
`I may refer to these claims as the “Challenged Claims.”
`
`4.
`
`I understand that InterDigital owns the 244 Patent. See EX. 1020 [Assignment
`
`Records for the 244 Patent].
`
`5.
`
`In a previous litigation, I provided an expert report, invalidity opinion, and
`
`testimony with respect to the parent of the 244 Patent: US. Patent No. 7,616,970 (“the 970
`
`Patent”). That report, opinion, and testimony was part of an International Trade Commission
`
`Investigation, 337-TA-800, in which the 970 Patent was invalidated.
`
`I will refer to that matter as
`
`the “800 Investigation.”
`
`6.
`
`This declaration is based on information currently available to me.
`
`I note that
`
`while the claims of the 244 Patent may be slightly different from those 970 Patent claims I
`
`analyzed in the 800 Investigation, the specification, drawings, and abstract of the 244 Patent are
`
`identical to those of the 970 Patent. Given the close relationship between the 970 Patent and the
`
`BIMS DECLARATION
`EX. 1002
`
`l
`
`Microsoft Corporation
`Exhibit 1002-00003
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`244 Patent, I have used my prior report, opinions, and testimony as a starting point for my
`
`declaration and opinions in this matter.
`
`7.
`
`I have been asked to determine if any or all of the claims of the 244 Patent are
`
`invalid under 35 U.S.C. §§ 102 and/or 103. As set forth in more detail in this declaration, I have
`
`determined that all Challenged Claims of the 244 Patent are invalid. In this declaration, I explain
`
`the manner in which the technical art, known prior to the applicable dates of the claimed
`
`inventions, discloses each and every limitation of the Challenged Claims or would render these
`
`claims obvious to a person of ordinary skill in the art at the time the inventions were made.
`
`8.
`
`To support my opinions contained in this declaration, I have further been asked to
`
`provide an overview of the technology and discuss the particular technology related to the 244
`
`Patent, including an overview of that technology as it was known at the time of the earliest
`
`available priority date for the 244 Patent.
`
`9.
`
`To the extent that additional information becomes available, I reserve the right to
`
`continue my investigation and study, which may include a review of documents and information
`
`that recently have been or may be made available, as well as testimony from depositions that
`
`may yet be taken in this matter.
`
`I may thus expand or modify my opinions as my investigation
`
`and study continues.
`
`I may also supplement my opinions in response to any additional
`
`information that becomes available to me, any matters raised by InterDigital and/or opinions
`
`provided by InterDigital’s experts, or in light of any relevant orders from the Patent Trial and
`
`Appeal Board (the “PTAB Panel”).
`
`B.
`
`Education and Work Experience
`
`1.
`
`Qualifications
`
`10.
`
`My qualifications are set forth in my curriculum vitae, which is attached to this
`
`report as Attachment A.
`
`BIMS DECLARATION
`EX. 1002
`
`2
`
`Microsoft Corporation
`Exhibit 1002-00004
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`11.
`
`I have worked extensively in the field of digital communications.
`
`I have studied
`
`telecommunications and systems engineering since approximately 1981. Further, I have over
`
`twenty (20) years of industry experience in telecommunications, including wireless
`
`communications. During this period, I have designed and implemented various products that
`
`involve technologies related to the subject matter of the 244 Patent.
`
`12.
`
`I received a BS. in Computer and Systems Engineering from Rensselaer
`
`Polytechnic Institute in 1985. In 1988, I received a MS. in Electrical Engineering from Stanford
`
`University. In 1993, I received a Ph.D. in Electrical Engineering, also from Stanford University.
`
`As a graduate student at Stanford University, I studied the principles of Digital Communications
`
`theory, including data modulation and demodulation, signal constellations and lattices, channel
`
`estimation, equalization, filtering, precoding, synchronization, and trellis coding. My PhD.
`
`thesis at Stanford addressed the application of trellis coding and precoding to a digital
`
`modulation system, and was titled “Trellis Coding for Multi-Level, Partial Response Continuous
`
`Phase Modulation with Precoding.”
`
`13.
`
`After receiving my PhD. in 1993, I worked for Glenayre Technologies — Wireless
`
`Access Group, where I worked on applications for wireless communication, including inventing,
`
`designing, and building a patented two-way pager test system and co-developing a wireless
`
`application protocol. From 1999 to 2001, I was responsible for the software architecture for core
`
`SGSN (Serving GPRS Support Node) and GGSN (Gateway GPRS Support Node) products for
`
`the GPRS (Generic Packet Radio Services) market.
`
`I also held management responsibility for
`
`the Firmware, Hardware, Performance, and Systems Engineering Groups. In 2001, I developed a
`
`business plan for building network infrastructure for 802.11 enterprise networks, and then later
`
`BIMS DECLARATION
`EX. 1002
`
`3
`
`Microsoft Corporation
`Exhibit 1002-00005
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`that year founded AirFlow Networks, Inc. where I invented and received nineteen patents on its
`
`core technology, based on the 802.11 wireless local area network specification.
`
`14.
`
`For example, US. Patent 7,236,470 (“the 470 Patent”) issued on June 26, 2007,
`
`and currently names Broadcom Corporation as its assignee. The application for the ’470 Patent
`
`was filed with the United States Patent Office on September 15, 2003, with priority to an earlier
`
`application filing date of January 11, 2002. Entitled “Tracking Multiple Interface Connections
`
`by Mobile Stations,” this patent discloses a method allowing a mobile station to have a first
`
`connection to a network over a first interface and determining that the mobile station is
`
`attempting to have a second connection to the network over a second interface other than the first
`
`interface.
`
`15.
`
`I am currently an expert consultant for Protocomm Systems, LLC and Bims
`
`Laboratories, LLC, both of which I founded. The services I provide include consulting in
`
`standards setting, technology assessments, engineering lab testing, and product analysis—and I
`
`am named as an inventor on twelve telecommunications-related patents.
`
`16.
`
`In addition, I am currently the Vice-Chair and Secretary of the Institute of
`
`Electrical and Electronics Engineers (hereafter “IEEE”) 802.16 Working Group, which develops
`
`standards for long range, lower data rate wireless networks. Within the IEEE 802.16 Working
`
`Group, I am also Chair of the Study Group on Heterogeneous Networks. This study group was
`
`formed to facilitate a discussion of future standardization activities related to, among other
`
`things, a common network infrastructure that supports a plurality of radio access technologies in
`
`the mobile station.
`
`2.
`
`Recent Consulting and Testimony
`
`17.
`
`I have been retained as an expert witness in the following litigations:
`
`BIMS DECLARATION
`EX. 1002
`
`4
`
`Microsoft Corporation
`Exhibit 1002-00006
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`0 Broadcom v. Netgear Inter Partes Review. Iwas retained by counsel on
`behalf of Broadcom. I have not provided any expert reports or declarations in
`this matter.
`
`0 Hernandez v. Motorola Solutions, Inc. et. al., in the United States District
`Court for the Southern District of Florida.
`I was retained by counsel on behalf
`of Motorola Mobility LLC.
`I have provided an expert report, and declarations
`in this matter.
`
`0 Fujifilm Corporation v. Motorola Mobility LLC, in the United States District
`Court for the Northern District of California.
`I was retained by counsel on
`behalf of Motorola Mobility LLC.
`I have not provided testimony or expert
`reports in this matter.
`
`0
`
`In the Matter of Certain Wireless Devices with 3G Capabilities and
`Components Thereof, United States International Trade Commission,
`Investigation No. 337-TA-800.
`I was retained by counsel on behalf of Nokia,
`Huawei, and ZTE.
`I provided deposition testimony and expert reports in this
`matter.
`
`0 EON Corp. IP Holdings, LLC v. Landis+Gyr, Inc., et. al., in the United States
`District Court for the Eastern District of Texas Tyler Division, I was retained
`by counsel on behalf of EON Corp. IP Holdings, LLC.
`I have provided
`deposition testimony, and an expert report in this matter.
`
`0 EON Corp. IP Holdings, LLC v. Cantaloupe Systems, Inc., et. al, in the
`United States District Court for the Eastern District of Texas Tyler Division, I
`was retained by counsel on behalf of EON Corp. 1P Holdings, LLC.
`I have
`provided expert reports in this matter.
`
`0 Harris Corporation v. Ruckus Wireless, Inc., in the United States District
`Court for the Middle District of Florida Orlando Division. I was retained by
`Harris Corporation.
`I have provided deposition testimony, expert reports and
`declarations in this matter.
`
`0
`
`In the Matter of Certain Mobile Telephones and Modems, United States
`International Trade Commission, Investigation No. 337-TA-75 8, I was
`retained by LG Electronics, Inc.
`I have not provided any testimony in this
`matter.
`
`0 EON Corp. IP Holdings, LLC v. Sensus USA, Inc., et. al., in the United States
`District Court for the Eastern District of Texas Tyler Division. I was retained
`by Eon Corp. 1P Holdings, LLC.
`I provided deposition testimony, expert
`reports, and declarations in this matter.
`
`0
`
`Stragent, LLC, et. al. v. Intel Corporation, in the United States District Court
`for the Eastern District of Texas.
`I was retained by Intel Corporation. I have
`not provided any testimony in this matter.
`
`BIMS DECLARATION
`EX. 1002
`
`U1
`
`Microsoft Corporation
`Exhibit 1002-00007
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`0 Smartphone Technologies, LLC. v. Research in Motion Corp., et. al in the
`United States District Court for the Eastern District of Texas Tyler Division.
`was retained by Apple, Inc.
`I have not provided any testimony in this matter.
`
`I
`
`0 EON Corp. IP Holdings, LLC v. Landis+Gyr, Inc., et. al., in the United States
`District Court for the Eastern District of Texas Tyler Division. I was retained
`by EON Corp. IP Holdings, LLC.
`I have not provided any testimony in this
`matter.
`
`0
`
`SimpleAir, Inc., v. Research in Motion Limited and Research in Motion
`Corporation, et. al., in the United States District Court for the Eastern District
`of Texas Tyler Division.
`I was retained by Research in Motion Limited,
`Research in Motion Corporation, and Apple, Inc.
`I provided deposition
`testimony, and a declaration in this matter.
`
`0 Marvell Semiconductor, Inc., et. al. v. Commonwealth Scientific Industrial
`Research Organisation, in the United States District Court for the Eastern
`District of Texas Tyler Division. I was retained by Marvell Semiconductor,
`Inc.
`I provided deposition testimony, and an expert report in this matter.
`
`0
`
`Saxon Innovations, LLC v. Apple, Inc., et. al., in the United States District
`Court for the Eastern District of Texas Tyler Division. I was retained by Intel
`Corporation. I provided deposition testimony, and a declaration in this matter.
`
`0 Eon Corp. IP Holdings, LLC v. Verizon Clinton Center Drive Corp., et. al., in
`the United States District Court for the Eastern District of Texas Tyler
`Division.
`I was retained by Eon Corp. IP Holdings, LLC.
`I provided
`deposition testimony, and expert reports in this matter.
`
`0 CIF Licensing, LLC d/b/a GE Licensing v. Agere Systems, Inc., in the United
`States District Court for the District of Delaware.
`I was retained by CLF
`Licensing, LLC d/b/a GE Licensing.
`I provided deposition testimony, an
`expert report, and trial testimony.
`
`o Commil USA, LLC v. Cisco Systems, Inc., et. al., in the United States District
`Court for the Eastern District of Texas Marshall Division.
`I was retained by
`Cisco Systems, Inc.
`I provided deposition testimony, and an expert report in
`this matter.
`
`0 Commonwealth Scientific and Industrial Research Organisation v. Toshiba
`America Information Systems, Inc., et. al. , in the United States District for the
`Eastern District of Texas Tyler Division.
`I was retained by Toshiba America
`Information Systems, Inc., et. al. Iprovided deposition testimony, expert
`reports, and declarations in this matter.
`
`0 Rembrandt Technologies, Inc. v. Comcast Corporation, in the United States
`District Court for the Eastern District of Texas Marshall Division.
`I was
`
`retained by Comcast Corporation.
`declaration in this matter.
`
`I provided deposition testimony, and a
`
`BIMS DECLARATION
`EX. 1002
`
`6
`
`Microsoft Corporation
`Exhibit 1002-00008
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`0 MLR, LLC v. Kyocera Wireless Corporation and Novatel Wireless, Inc., in the
`United States District Court for the Southern District of California.
`I was
`
`retained by MLR, LLC.
`
`I provided an expert report in this matter.
`
`0 Fenner Investments, Ltd, v. Juniper Networks, Inc., et. al., in the United
`States District Court for the Eastern District of Texas Marshall Division.
`
`I
`
`was retained by Ericsson, Inc.
`
`I provided an expert report in this matter.
`
`0 McKesson Information Solutions, Inc. v. Bridge Medical Inc., in the United
`States District Court for the Eastern District of California.
`I was retained by
`McKesson Information Solutions, Inc.
`I provided deposition testimony,
`declarations, and bench trial testimony.
`
`C.
`
`Compensation
`
`18.
`
`I am being compensated at $600 per hour for services I provide in this matter.
`
`This compensation is not contingent upon my performance, the outcome of this matter, or any
`
`issues involved in or related to this matter.
`
`D.
`
`Documents and Other Materials Relied Upon
`
`19.
`
`I have reviewed and considered in the preparation of this report materials and
`
`testimony referred to herein, principally including the 244 Patent, its file history, and the prior art
`
`references described below, including the 244 patent, the applications and patents related to the
`
`244 patent, the prosecution histories of the 244 patent and of applications and patents related to
`
`the 244 patent, and the exhibits to the petition for inter partes review of the 244 patent.
`
`Additionally, I have considered my own experience and expertise of the knowledge of the person
`
`of ordinary skill in the relevant art in the timeframe of the claimed priority date of the 244 patent.
`
`I doing so, I have reviewed information generally available to, and relied upon, by a person of
`
`ordinary skill at the time of the invention, including publicly available wireless communication
`
`standards, wireless communication patents, technical reference materials, and well-known
`
`principles of wireless data communications networks.
`
`BIMS DECLARATION
`EX. 1002
`
`7
`
`Microsoft Corporation
`Exhibit 1002-00009
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`20.
`
`I also reviewed the materials I prepared and publically available documents I
`
`reviewed in preparation for my report, opinion, and testimony in the 800 Investigation related to
`
`the invalidity of the 970 patent. In that matter, the ALJ found my testimony credible.
`
`21.
`
`I anticipate using some of the above referenced documents and information, or
`
`other information and material that may be made available during the course of this proceeding
`
`(such as by deposition testimony), as well as representative charts, graphs, schematics, and
`
`diagrams, animations, and models that will be based on those documents, information, and
`
`material, to support and to explain my testimony before the PTAB panel regarding the invalidity
`
`of the 244 Patent.
`
`II.
`
`SUMMARY OF OPINIONS
`
`22.
`
`I have been asked to compare the subject matter recited in the Challenged Claims
`
`of the 244 Patent to each of the prior art references, including publications, products, and patents
`
`that predate the filing date of the 244 Patent. As to the Challenged Claims of the 244 Patent, I
`
`have been asked to express my opinion as to whether each is anticipated or rendered obvious to a
`
`person of ordinary skill in the art in light of prior art references or combinations of references
`
`and the knowledge of a person of ordinary skill in the art at the time of the purported invention
`
`of the 244 Patent.
`
`I expect to testify about the scope of the Challenged Claims of the 244 Patent
`
`as understood by those of ordinary skill in the art.
`
`23.
`
`In performing my analysis, I have relied on my own personal knowledge and
`
`extensive experience in the design, development, network design and operation of the applicable
`
`equipment as well as my review of the materials considered as listed in the associated inter
`
`partes review petition.
`
`24.
`
`It is my opinion that each of the Challenged Claims of the 244 Patent are invalid
`
`because they are rendered obvious by one or more of the prior art references, alone or in
`
`BIMS DECLARATION
`EX. 1002
`
`8
`
`Microsoft Corporation
`Exhibit 1002-00010
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`combination with other references. In other words, the Challenged Claims would have been
`
`obvious to a person of ordinary skill in the art in light of certain single prior art references, or in
`
`the combination of prior art references, in light of the knowledge of a person of ordinary skill in
`
`the art at the time of the 244 Patent.
`
`III.
`
`LE GAL PRINCIPLES
`
`25.
`
`This section summarizes my understanding of the basic legal principles of patent
`
`law, as they have been explained to me by counsel.
`
`26.
`
`I understand that there is no presumption of validity in an inter partes review
`
`proceeding. As a result, I understand that invalidity need only be shown through a
`
`preponderance of evidence.
`
`I understand this burden to be lower than the clear and convincing
`
`standard used in Federal Courts or the International Trade Commission (“ITC”) to overcome the
`
`presumption of validity afforded a patent in the Federal Courts or ITC proceedings.
`
`27.
`
`I understand the first step in determining whether or not a patent claim is valid is
`
`to consider the proper construction of the claims from the point of view of a person of ordinary
`
`skill in the art at the time of the invention, then determining whether the construed claims are
`
`anticipated or rendered obvious in light of the prior art.
`
`A.
`
`Anticipation
`
`28.
`
`I have been informed by counsel and understand that a patent is invalid on the
`
`basis of anticipation (under 35 U.S.C. § 102) if a single prior art reference discloses, either
`
`expressly or inherently, each and every limitation of the claimed invention. Under the principles
`
`of inherency if the prior art necessarily functions in accordance with, or includes the claimed
`
`limitations, it anticipates. Artisans of ordinary skill need not recognize the inherent
`
`characteristics or functioning of the prior art. In addition, a new scientific explanation for the
`
`BIMS DECLARATION
`EX. 1002
`
`9
`
`Microsoft Corporation
`Exhibit 1002-00011
`
`Microsoft Corporation
`
`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`functioning of the prior art does not render the old composition patentable. Such a reference, if it
`
`contained each and every element of a claim, would anticipate the claim.
`
`29.
`
`I understand that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
`
`patented or published anywhere, or was in public use, on sale, or offered for sale in this country,
`
`more than one year prior to the filing date of the patent application. And a claim is invalid, as I
`
`understand, under 35 U.S.C. § 102(e), if an invention described by that claim was described in a
`
`US. patent granted on an application for a patent by another that was filed in the US. before the
`
`date of the invention for such a claim.
`
`B.
`
`Obviousness
`
`30.
`
`I further understand that a claimed invention is unpatentable under 35 U. S.C.
`
`§ 103 if the differences between the invention and the prior art are such that the subject matter as
`
`a whole would have been obvious at the time of the invention to a person having ordinary skill in
`
`the art to which the subject matter pertains. Obviousness, as I understand, is based on the scope
`
`and content of the prior art, the differences between the prior art and the claim, the level of
`
`ordinary skill in the art, and secondary indicia of non-obviousness to the extent they exist.
`
`3 l.
`
`I understand that whether there are any relevant differences, between the prior art
`
`and the claimed invention, is to be analyzed from the view of a person of ordinary skill in the art
`
`at the time of the invention. A person of ordinary skill in the art is a hypothetical person who is
`
`presumed to be aware of all of the relevant art at the time of the invention. The person of
`
`ordinary skill is not an automaton, and may be able to fit together the teachings of multiple
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`patents employing ordinary creativity and the common sense that familiar items may have
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`obvious uses in another context or beyond their primary purposes.
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`32.
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`In analyzing the relevance of the differences between the claimed invention and
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`the prior art, I understand that I must consider the impact, if any, of such differences on the
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`BIMS DECLARATION
`EX. 1002
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`10
`
`Microsoft Corporation
`Exhibit 1002-00012
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`Microsoft Corporation
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`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`obviousness or non-obviousness of the invention as a whole, not merely some portion of it. The
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`person of ordinary skill faced with a problem is able to apply his or her experience and ability to
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`solve the problem and also look to any available prior art to help solve the problem.
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`33.
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`An invention is obvious if a designer of ordinary skill in the art, facing the wide
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`range of needs created by developments in the field, would have seen an obvious benefit to the
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`solutions tried by the applicant. When there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, it would be obvious to
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`a person of ordinary skill to try the known options. If a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique would have been obvious.
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`34.
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`I understand that I do not need to look for precise teaching in the prior art directed
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`to the subject matter of the claimed invention.
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`I understand that I may take into account the
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`inferences and creative steps that a person of ordinary skill in the art would have employed in
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`reviewing the prior art at the time of the invention. For example, if the claimed invention
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`combined elements known in the prior art and the combination yielded results that were
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`predictable to a person of ordinary skill in the art at the time of the invention, then this evidence
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`would make it more likely that the claim was obvious. On the other hand, if the combination of
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`known elements yielded unexpected or unpredictable results, or if the prior art teaches away
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`from combining the known elements, then this evidence would make it more likely that the claim
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`that successfully combined those elements was not obvious.
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`35.
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`In determining whether a claimed invention is invalid for obviousness, one should
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`consider the scope and content of the prior art, the level of ordinary skill in the relevant art, the
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`differences between the claimed invention and the prior art, and whether the claimed invention
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`BIMS DECLARATION
`EX. 1002
`
`l l
`
`Microsoft Corporation
`Exhibit 1002-00013
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`Microsoft Corporation
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`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`would have been obvious to a person having ordinary skill in the art in light of those differences.
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`I understand that hindsight must not be used when comparing the prior art to the invention for
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`obviousness.
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`1.
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`Motivations to Combine
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`36.
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`I understand that a claimed invention may be obvious if some teaching,
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`suggestion or motivation exists that would have led a person of ordinary skill in the art to
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`combine the invalidating references. I also understand that this suggestion or motivation may
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`come from such sources such as explicit statements in the prior art, or from the knowledge of a
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`person having ordinary skill in the art. Alternatively, any need or problem known in the field at
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`the time and addressed by the patent may provide a reason for combining elements of the prior
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`art. I also understand that when there is a design need or market pressure, and there are a finite
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`number of predictable solutions, a person of ordinary skill may be motivated to apply both his
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`skill and common sense in trying to combine the known options in order to solve the problem.
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`37.
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`Obviousness may also be shown by demonstrating that it would have been
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`obvious to modify what is taught in a single piece of prior art to create the patented invention.
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`Obviousness may be shown by showing that it would have been obvious to combine the
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`teachings of more than one item of prior art. In determining whether a piece of prior art could
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`have been combined with other prior art or with other information within the knowledge of a
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`person having ordinary skill in the art, the following are examples of approaches and rationales
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`that may be considered:
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`0 Combining prior art elements according to known methods to yield predictable
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`results,
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`0
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`Simple substitution of one known element for another to obtain predictable results,
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`BIMS DECLARATION
`EX. 1002
`
`12
`
`Microsoft Corporation
`Exhibit 1002-00014
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`Microsoft Corporation
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`

`

`MAY CONTAIN CONFIDENTIAL BUSINESS INFORMATION — SUBJECT TO PROTECTIVE ORDER
`
`0 Use of a known technique to improve similar devices (methods, or products) in the
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`same way;
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`0 Applying a known technique to a known device (method, or product) ready for
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`improvement to yield predictable results;
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`0 Applying a technique or approach that would have been “obvious to try” (choosing
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`from a finite number of identified, predictable solutions, with a reasonable
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`expectation of success);
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`0 Known work in one field of endeavor may prompt variations of it for use in either the
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`same field or a different one based on design incentives or other market forces if the
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`variations would have been predictable to a person having ordinary skill in the art; or
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`0
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`Some teaching, suggestion, or motivation in the prior art that would have led one of
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`ordinary skill to modify the prior art reference or to combine prior art reference
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`teachings to arrive at the claimed invention.
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`2.
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`Secondary Considerations
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`38.
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`I understand that certain objective factors, sometimes known as “se