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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`APPLE INC.
`Petitioner,
`v.
`CONTENTGUARD HOLDINGS, LLC
`Patent Owner.
`
`Patent No. 7,774,280
`Issued: August 10, 2010
`Filed: October 4, 2004
`Inventors: Mai Nguyen, et al.
`Title: SYSTEM AND METHOD FOR MANAGING
`TRANSFER OF RIGHTS USING SHARED
`STATE VARIABLES
`
`
`
`
`
`
`
`
`
`and
`
`Patent No. 8,001,053
`Issued: August 16, 2011
`Filed: October 4, 2004
`Inventors: Mai Nguyen, et al.
`Title: SYSTEM AND METHOD FOR RIGHTS
`OFFERING AND GRANTING USING SHARED
`STATE VARIABLES
`____________________
`
`Inter Partes Review Nos. IPR2015-00351, 352, 353, 354, 355, 356, 357, and 358
`__________________________________________________________________
`
`Declaration of Atul Prakash Regarding
`U.S. Patent No. 7,774,280 and U.S. Patent No. 8,001,053
`
`
`
`
`
`Petitioner Apple Inc. - Exhibit 1003, Cover
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`
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`12388321314
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`20:18
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`1?34E~E~5E1E153
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`E12382
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`I, Atul Prakash, do hereby declare and state, that all statements made herein
`
`of my own knowledge are true and that all statements made on information and
`
`belief are believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`Dated: December 8, 2014
`
`W {J
`
`Atul Prakash
`
`Petitioner Apple Inc. - Exhibit 1003, Signature
`
`Petitioner Apple Inc. - Exhibit 1003, Signature
`
`
`
`
`
`Table of Contents
`
`I.
`
`Introduction ...................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement ........................................................................................... 1
`
`Background and Qualifications ............................................................. 1
`
`Compensation and Prior Testimony ...................................................... 4
`
`Information Considered ......................................................................... 5
`
`II.
`
`Legal Standards for Patentability .................................................................... 5
`
`A. Anticipation ........................................................................................... 6
`
`B.
`
`Obviousness ........................................................................................... 8
`
`C. Means-Plus-Function Claims .............................................................. 13
`
`III. The Nguyen Patents ....................................................................................... 14
`
`A.
`
`B.
`
`Effective Filing Date ........................................................................... 14
`
`Prosecution History ............................................................................. 16
`
`1.
`
`PTO And Board Decisions Regarding “Meta-Rights” and “State
`
`Variables” .................................................................................. 16
`
`’280 Patent Prosecution History ............................................... 22
`
`’053 Patent Prosecution History ............................................... 24
`
`2.
`
`3.
`
`C.
`
`The Person of Ordinary Skill in the Art .............................................. 26
`
`D. Overview of the Nguyen ’280 and ’053 Patents ................................. 27
`
`
`
`i
`
`Petitioner Apple Inc. - Exhibit 1003, p. i
`
`
`
`
`
`1.
`
`2.
`
`The ’280 patent ......................................................................... 27
`
`The ’053 patent ......................................................................... 34
`
`IV. Background: The State of the Art in 2001 ..................................................... 39
`
`A. Description of Background Technology Relevant to the ’280 and ’053
`
`Patents.................................................................................................. 39
`
`1.
`
`2.
`
`Overview ................................................................................... 39
`
`Usage Rights ............................................................................. 42
`
`3. Meta-rights ................................................................................ 52
`
`4.
`
`5.
`
`State Variables .......................................................................... 67
`
`Sharing Rights, States, and State Variables .............................. 78
`
`V. General Issues Related to My Patentability Analysis ................................... 89
`
`A.
`
`B.
`
`C.
`
`The Claims of the ’280 Patent I Am Addressing in this Report ......... 90
`
`The Claims of the ’053 Patent I Am Addressing in this Report ......... 94
`
`Interpretation of Certain Claim Terms ................................................ 99
`
`1.
`
`Usage Rights ........................................................................... 100
`
`2. Manner of Use ......................................................................... 106
`
`3. Meta-right ................................................................................ 107
`
`4.
`
`5.
`
`6.
`
`Enforcing a Usage Right or a Meta-Right .............................. 112
`
`Created Right .......................................................................... 113
`
`State Variable .......................................................................... 115
`
`
`
`ii
`
`Petitioner Apple Inc. - Exhibit 1003, p. ii
`
`
`
`
`
`7.
`
`8.
`
`Share a Right, State, or State Variable .................................... 117
`
`Repository ............................................................................... 117
`
`9. Wherein the created right “includes” at least one state variable121
`
`10. License .................................................................................... 122
`
`11.
`
`12.
`
`13.
`
`14.
`
`“Sharing” “Inheriting” “Updating” and “Transferring” ......... 123
`
`“Means for obtaining a set of rights” ...................................... 125
`
`“Means for determining …” ................................................... 126
`
`“Means for exercising the meta-right…” ................................ 127
`
`D.
`
`Prior Art References .......................................................................... 128
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Exhibit 1007 – Ginter .............................................................. 128
`
`Exhibit 1008 - Gruse ............................................................... 130
`
`Exhibit 1009 - England ........................................................... 136
`
`Exhibit 1010 - Ireton ............................................................... 142
`
`Exhibit 1011 - Wiggins ........................................................... 145
`
`VI. Patentability Analysis of Claims 1-5, 8, 11-16, 19, 22, 24-28, 31 and 34 of
`
`the ’280 Patent ............................................................................................. 147
`
`A.
`
`Exhibit 1007 – Ginter ........................................................................ 147
`
`1.
`
`2.
`
`3.
`
`Claim 1 .................................................................................... 147
`
`Claim 12 .................................................................................. 167
`
`Claim 24 .................................................................................. 168
`
`
`
`iii
`
`Petitioner Apple Inc. - Exhibit 1003, p. iii
`
`
`
`
`
`
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claims 2, 4, 13, 15, 25, and 27 ............................................... 168
`
`Claims 3, 14, and 26 ............................................................... 172
`
`Claims 5, 16, and 28 ............................................................... 177
`
`Claims 8, 19, and 31 ............................................................... 179
`
`Claims 11, 22, and 34 ............................................................. 181
`
`B.
`
`Exhibit 1008 – Gruse ......................................................................... 183
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 1 .................................................................................... 183
`
`Claim 12 .................................................................................. 198
`
`Claim 24 .................................................................................. 199
`
`Claims 2, 4, 13, 15, 25, and 27 ............................................... 199
`
`Claims 3, 14, and 26 ............................................................... 204
`
`Claims 5, 16, and 28 ............................................................... 208
`
`Claims 8, 19, and 31 ............................................................... 209
`
`Claims 11, 22, and 34 ............................................................. 211
`
`C.
`
`Exhibit 1009 – England ..................................................................... 213
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Claim 1 .................................................................................... 213
`
`Claim 12 .................................................................................. 229
`
`Claim 24 .................................................................................. 230
`
`Claims 2, 4, 13, 15, 25, and 27 ............................................... 230
`
`Claims 3, 14, and 26 ............................................................... 238
`
`iv
`
`Petitioner Apple Inc. - Exhibit 1003, p. iv
`
`
`
`
`
`6.
`
`7.
`
`8.
`
`Claims 5, 16, and 28 ............................................................... 243
`
`Claims 8, 19, and 31 ............................................................... 244
`
`Claims 11, 22, and 34 ............................................................. 244
`
`D.
`
`Exhibit 1010 – Ireton ......................................................................... 245
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 1 .................................................................................... 245
`
`Claim 12 .................................................................................. 268
`
`Claim 24 .................................................................................. 269
`
`Claims 2, 4, 13, 15, 25, and 27 ............................................... 269
`
`Claims 3, 14, and 26 ............................................................... 271
`
`Claims 5, 16, and 28 ............................................................... 276
`
`Claims 8, 19, and 31 ............................................................... 277
`
`Claims 11, 22, and 34 ............................................................. 278
`
`E.
`
`Secondary Considerations ................................................................. 280
`
`VII. Patentability Analysis of Claims 1-5, 8-9, 15-19, 22-23, 26-30, and 33-34 of
`
`the ’053 Patent ............................................................................................. 281
`
`A.
`
`Exhibit 1007 – Ginter ........................................................................ 281
`
`1.
`
`2.
`
`3.
`
`4.
`
`Claims 1, 15, and 26 ............................................................... 281
`
`Claims 2, 4, 16, 18, 27, and 29 ............................................... 294
`
`Claims 3, 17, and 28 ............................................................... 294
`
`Claims 5, 19, and 30 ............................................................... 295
`
`
`
`v
`
`Petitioner Apple Inc. - Exhibit 1003, p. v
`
`
`
`
`
`
`
`5.
`
`6.
`
`Claims 8, 22, and 33 ............................................................... 295
`
`Claims 9, 23, and 34 ............................................................... 295
`
`B.
`
`Exhibit 1008 – Gruse ......................................................................... 297
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claims 1, 15, and 26 ............................................................... 297
`
`Claims 2, 4, 16, 18, 27, and 29 ............................................... 310
`
`Claims 3, 17, and 28 ............................................................... 310
`
`Claims 5, 19, and 30 ............................................................... 311
`
`Claims 8, 22, and 33 ............................................................... 311
`
`Claims 9, 23, and 34 ............................................................... 311
`
`C.
`
`Exhibit 1009 – England ..................................................................... 312
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Claims 1, 15, and 26 ............................................................... 312
`
`Claims 2, 4, 16, 18, 27, and 29 ............................................... 323
`
`Claims 3, 17, and 28 ............................................................... 324
`
`Claims 5, 19, and 30 ............................................................... 324
`
`Claims 8, 22, and 33 ............................................................... 325
`
`Claims 9, 23, and 34 ............................................................... 325
`
`D.
`
`Exhibit 1010 – Ireton ......................................................................... 327
`
`1.
`
`2.
`
`3.
`
`Claims 1, 15, and 26 ............................................................... 327
`
`Claims 2, 4, 16, 18, 27, and 29 ............................................... 338
`
`Claims 3, 17, and 28 ............................................................... 339
`
`vi
`
`Petitioner Apple Inc. - Exhibit 1003, p. vi
`
`
`
`
`
`
`
`
`
`4.
`
`5.
`
`Claims 5, 19, and 30 ............................................................... 340
`
`Claims 9, 23, and 34 ............................................................... 341
`
`E.
`
`Secondary Considerations ................................................................. 342
`
`
`
`vii
`
`Petitioner Apple Inc. - Exhibit 1003, p. vii
`
`
`
`
`
`I.
`
`Introduction
`A. Engagement
`1.
`
`I have been retained by counsel for Apple Inc. as an expert witness in
`
`this Inter Partes Review (IPR). I have been asked to provide my opinion about the
`
`state of the art of the technology described in U.S. Patent No. 7,774,280 (“the ’280
`
`patent”) and U.S. Patent No. 8,001,053 (“the ’053 patent”), and on the patentability
`
`of claims 1-5, 8, 11, 12, 22, 24 of the ’280 patent and on the patentability of claims
`
`1-5, 8, 9, 15, 16, 18, 23, and 26 of the ’053 patent. The following is my written
`
`report on these topics.
`
`B.
`2.
`
`Background and Qualifications
`
`I am an expert in the field of computer and information security, and I
`
`have been a researcher in this field since prior to 1995. I earned my Masters of
`
`Science and Doctorate from the Department of Electrical Engineering and
`
`Computer Science at the University of California, Berkeley, in 1984 and 1989,
`
`respectively. I earned my undergraduate degree, a B. Tech. in Electrical
`
`Engineering, from the Indian Institute of Technology, Delhi in 1982.
`
`3.
`
`I have been a faculty member at the University of Michigan since
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`1989, where I regularly conduct research and teach courses. I am a founding
`
`member of the Software Systems Research Laboratory in the EECS Department at
`
`the University of Michigan. I have also served as the director of the Software
`
`Systems Research Laboratory.
`
`1
`
`Petitioner Apple Inc. - Exhibit 1003, p. 1
`
`
`
`
`
`4.
`
`During my time at the University of Michigan, I have conducted
`
`research in areas that include subjects such as: computer and network security,
`
`access control, security and privacy policies, distributed systems, operating
`
`systems, and software engineering. I have also taught courses that include subjects
`
`of computer and network security, operating systems, databases, and software
`
`engineering. I consider myself to be an expert in these technical subjects, and,
`
`more broadly, in the Computer Science field.
`
`5.
`
`Based on my research, I authored or co-authored numerous articles in
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`peer-reviewed journals and conferences related to the technical areas I listed above.
`
`Some examples of papers I have co-authored in the security area include
`
`“Implementation of Discretionary Access Control Model for Script-based
`
`Systems,” “Requirements of Role-based Access Control for Collaboration
`
`Systems,” and “Antigone: policy-based secure group communication systems and
`
`AMirD: antigone-based secure file mirroring system.”
`
`6.
`
`In addition to giving presentations on peer-reviewed papers that have
`
`been accepted at conferences, I have given invited talks at conferences. For
`
`example, I gave the keynote presentation at the International Conference on
`
`Information Systems and Security in 2007 and at the 8th International Conference
`
`on Security and Privacy in Communication Networks in 2012.
`
`7.
`
`In addition to research, I often work on committees for conferences in
`
`2
`
`Petitioner Apple Inc. - Exhibit 1003, p. 2
`
`
`
`
`
`my field. For example, I was a Program Committee Member at the IEEE Oakland
`
`Symposium on Security and Privacy in 2008 and a Program Committee Member of
`
`IEEE Symposium on Reliable Distributed Systems in 2011. I have also co-chaired
`
`the program committees of several security conferences,
`
`including
`
`the
`
`International Conference on Information Security and Systems (2009 and 2014)
`
`and the IEEE Symposium on Reliable Distributed Systems (2010).
`
`8.
`
`In addition to serving on program committees of conferences, I have
`
`served in an editorial role for a journal in the area of computer and information
`
`security. Specifically, I have served as an Associate Editor of IEEE Transactions
`
`on Secure and Dependable Systems.
`
`9.
`
`I have served on the Ph.D. committees of several graduates from my
`
`department at the University of Michigan in the area of computer and information
`
`security.
`
`10.
`
`In addition to my academic work, I often collaborate on research with
`
`companies in the private sector. For example, I was a Visiting Research Scientist
`
`at the IBM TJ Watson Research Center in Yorktown Heights, New York. I advised
`
`a startup, Aereous, LLC, in the area of computer and information security. This
`
`company was eventually acquired by RSA Security, Inc.
`
`11.
`
`I am an inventor on U.S. Patent Nos. 6,425,016 and 6,988,270 entitled
`
`“System and Method for Providing Collaborative Replicated Objects for
`
`3
`
`Petitioner Apple Inc. - Exhibit 1003, p. 3
`
`
`
`
`
`Synchronous Distributed Groupware Application(s).” These patents generally
`
`relate to technology for supporting collaborative work over a network.
`
`12.
`
`In 1997, I received the Research Excellence Award from the
`
`Department of EECS at the University of Michigan. In 1998, a research project
`
`done by my team was one of the finalists for the Computerworld Smithsonian
`
`Award for the best science project. This honor was for my team’s work on the
`
`Upper Atmospheric Research Collaboratory, one of the earliest systems to support
`
`distributed team science over the Internet. This project was selected for inclusion
`
`in the Smithsonian Permanent Collection.
`
`13. Based on my academic and practical experience in the areas of
`
`computer and network security, distributed systems, operating systems, software
`
`engineering, and multimedia systems, I have a strong understanding of the subject
`
`matters of the ’280 and ’053 patents. I am familiar with the knowledge of a person
`
`having ordinary skill in the art in 2001.
`
`14. My Curriculum Vitae, which provides a comprehensive description of
`
`my relevant experience, including academic and employment history, publications,
`
`conference participation, and U.S. patents, is attached as Exhibit 1004.
`
`C. Compensation and Prior Testimony
`15.
`
`I am being paid $400 per hour for my study and testimony in this
`
`matter. I am also being reimbursed for reasonable expenses. My compensation is
`
`4
`
`Petitioner Apple Inc. - Exhibit 1003, p. 4
`
`
`
`
`
`not contingent on my testimony or the outcome of this matter.
`
`16.
`
`I have been deposed once as an expert in Intellectual Ventures I LLC
`
`v. Check Point Software, et al., C.A. Nos. 10-1067-LPS, 12-1581-LPS, on behalf
`
`of Trend Micro Inc. I have never testified in Federal District Court.
`
`D.
`Information Considered
`17. My opinions are based on my years of education, training, knowledge,
`
`research and experience, as well as my investigation and study of relevant
`
`materials. I have considered the materials I cite, and those listed in Appendix A.
`
`18.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by ContentGuard.
`
`19. My analysis is ongoing and I will continue to review any new material
`
`as it is provided. This report represents only the opinions I have formed to date. I
`
`reserve the right to revise, supplement, and/or amend my opinions based on new
`
`information and on my continuing analysis of the materials already provided.
`
`II. Legal Standards for Patentability
`20. For this report, I am relying upon legal principles that counsel has
`
`explained to me.
`
`21. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be new and not obvious from what was known before the
`
`invention.
`
`5
`
`Petitioner Apple Inc. - Exhibit 1003, p. 5
`
`
`
`
`
`22.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally
`
`includes patents and printed publications (e.g., books,
`
`journal
`
`publications, articles on websites, product manuals, etc.).
`
`23.
`
`I understand in this proceeding Apple has the burden of proving that
`
`the ’280 and ’053 patents are anticipated by or obvious from the prior art by a
`
`preponderance of the evidence. I understand that “a preponderance of the
`
`evidence” is evidence sufficient to show that a fact is more likely true than it is not.
`
`24.
`
`I understand that in this proceeding, the claims must be given their
`
`broadest reasonable
`
`interpretation consistent with
`
`the specification.
`
` The
`
`interpreted claims are then compared to the prior art.
`
`25.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below
`
`compares the claims to prior art patents and printed publications.
`
`26.
`
`I understand that there are two ways that prior art may render a patent
`
`claim unpatentable. First, the prior art can be shown to “anticipate” the claim.
`
`Second, the prior art can be shown to have made the claim “obvious” to a person of
`
`ordinary skill in the art.
`
`A. Anticipation
`27.
`
`I understand that the following standards govern the determination of
`
`6
`
`Petitioner Apple Inc. - Exhibit 1003, p. 6
`
`
`
`
`
`whether a patent claim is “anticipated” by the prior art.
`
`28.
`
`I have applied these standards in my evaluation of whether claims of
`
`the ’280 and ’053 patents would have been anticipated by the prior art.
`
`29.
`
`I understand that the “prior art” includes patents and printed
`
`publications that existed before the earliest filing date (the “effective filing date”)
`
`of the claims in the ’280 and ’053 patents. I also understand that a patent will be
`
`prior art if it was filed before the effective filing date of the claimed invention,
`
`while a printed publication will be prior art if it was publicly available before that
`
`date.
`
`30.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. An anticipatory
`
`reference, however, does not have to duplicate word for word what is in the claims.
`
`Anticipation can occur when a claimed limitation is “inherent” or otherwise
`
`“implicit” in the relevant reference.
`
`31. For example, I understand that claim limitations that are not expressly
`
`found in a prior art reference are inherent if the prior art necessarily functions in
`
`accordance with, or includes, the claim limitations. I understand that it is
`
`acceptable to examine evidence outside the prior art reference (extrinsic evidence)
`
`in determining whether a feature, while not expressly discussed in the reference, is
`
`7
`
`Petitioner Apple Inc. - Exhibit 1003, p. 7
`
`
`
`
`
`necessarily present within that reference.
`
`32.
`
`In considering the disclosure of a reference, I understand that it is
`
`proper to take into account not only specific teachings of the reference but also the
`
`inferences which one skilled in the art would reasonably be expected to draw.
`
`B. Obviousness
`33.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`34.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented 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 having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
`
`35.
`
`I understand that the following standards govern deciding whether a
`
`patent claim is obvious. I have applied these standards in my evaluation of
`
`whether claims of the ’280 and ’053 patents would have been considered obvious
`
`at the time of the invention, i.e., 2001.
`
`8
`
`Petitioner Apple Inc. - Exhibit 1003, p. 8
`
`
`
`
`
`36.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
`The scope and content of the prior art;
`The differences between the prior art and the claims at issue;
`The knowledge of a person of ordinary skill in the pertinent art;
`
`•
`•
`•
`and
`Whatever objective factors indicating obviousness or non-
`•
`obviousness may be present in any particular case.
`
`37.
`
`In addition, I understand that the obviousness inquiry should not be
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date(s) of the patent claim(s).
`
`38.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness (also referred to as “secondary considerations of obviousness”) may
`
`include: commercial success of products covered by the patent claims; a long-felt
`
`need for the invention; failed attempts by others to make the invention; copying of
`
`the invention by others in the field; unexpected results achieved by the invention;
`
`praise of the invention by the infringer or others in the field; the taking of licenses
`
`under the patent by others; expressions of surprise by experts and those skilled in
`
`the art at the making of the invention; and the patentee proceeded contrary to the
`
`9
`
`Petitioner Apple Inc. - Exhibit 1003, p. 9
`
`
`
`
`
`accepted wisdom of the prior art. For these secondary considerations to be
`
`accorded any weight, I understand that its proponent must establish a nexus
`
`between the evidence and the merits of the claimed invention, such that any such
`
`evidence must, at a minimum, be tied to the particular claims.
`
`39.
`
`I understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
`
`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
`
`40.
`
`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that, for similar reasons, 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
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`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yielded unexpected
`
`results or challenges in implementation.
`
`41.
`
`I understand that the obviousness analysis need not seek out precise
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`10
`
`Petitioner Apple Inc. - Exhibit 1003, p. 10
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`
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`
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`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
`
`42.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`43.
`
`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR
`
`International Co. v. Teleflex, Inc. where the Court rejected the previous
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`requirement of a “teaching, suggestion, or motivation to combine” known elements
`
`of prior art for purposes of an obviousness analysis as a precondition for finding
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`obviousness. It is my understanding that KSR confirms that any motivation that
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`would have been known to a person of skill in the art, including common sense, or
`
`derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
`
`11
`
`Petitioner Apple Inc. - Exhibit 1003, p. 11
`
`
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`
`
`44.
`
`I understand that a person of ordinary skill attempting to solve a
`
`problem will not be led only to those elements of prior art designed to solve the
`
`same problem. I understand that under the KSR standard, steps suggested by
`
`common sense are important and should be considered. Common sense shows that
`
`familiar items may have obvious uses beyond the particular application being
`
`described in a reference, that if something can be done once it is obvious to do it
`
`multiple times, and in many cases a person of ordinary skill will be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`at the time of the invention and can provide a reason for combining the elements of
`
`the prior art in the manner claimed. In other words, the prior art does not need to
`
`be directed towards solving the same problem that is addressed in the patent.
`
`Further, the individual prior art references themselves need not all be directed
`
`towards solving the same problem.
`
`45.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourage or lead away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires
`
`12
`
`Petitioner Apple Inc. - Exhibit 1003, p. 12
`
`
`
`
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`some clear discouragement of that combination in the prior art — such as expressly
`
`stated reasons why one should not make the claimed combination or invention.
`
`46.
`
`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
`
`47.
`
`I further understand that in many fields, it may be that there is little
`
`discussion of obvious techniques or combination, and it often may be the case that
`
`market demand, rather than scientific literature or knowledge, will drive design
`
`trends. When there is such a design need or market pressure to solve a problem,
`
`and there are a finite
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