UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CELLCO PARTNERSHIP D/B/A VERIZON WIRELESS,
`
`AT&T MOBILITY LLC,
`
`Petitioners,
`
`V.
`
`SOLOCRON MEDIA, LLC,
`Patent Owner
`
`Patent No. 7,319,866
`Issued: January 15, 2008
`Filed: August 11, 2004
`Inventor: Michael E. Shanahan
`
`Title: METHODS AND APPARATUSES FOR PROGRAMMING USER-
`
`DEFINED INFORMATION INTO ELECTRONIC DEVICES
`
`Inter Partes Review No. 2015-
`
`Declaration of Henry Houh Regarding
`
`U.S. Patent No. 7,319,866
`
`Verizon Wireless
`Exhibit 1089-0001
`
`

`
`1, Henry Houh, 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 2,2014
`
`I.
`
`_
`0/
`'*_ 31)’4r'é£,7'
`
`H 1
`'
`‘:/‘’/l-
`
`Page ii
`
`Verizon Wireless
`Exhibit 1089-0002
`
`

`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................... . .
`
`....... ..l
`
`A.
`
`B.
`
`C.
`
`D.
`
`Engagement ............................................................................... ..
`
`....... ..l
`
`Background and Qualifications ................................................. ..
`
`....... ..l
`
`Compensation and Prior Testimony .......................................... ..
`
`....... .. 5
`
`Information Considered ............................................................. ..
`
`....... .. 6
`
`LEGAL STANDARDS FOR PATENTABILITY .............................. ..
`
`....... ..7
`
`A.
`
`B.
`
`Anticipation ............................................................................... ..
`
`....... .. 8
`
`Obviousness ............................................................................... ..
`
`....... .. 9
`
`III.
`
`THE ’866 PATENT ............................................................................. ..
`
`..... .. 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`Effective Filing Date of the ’866 Patent ................................... ..
`
`..... .. 15
`
`Prosecution History of the ‘866 Patent ..................................... ..
`
`..... .. 17
`
`The Person of Ordinary Skill In the Art .................................... ..
`
`..... .. 18
`
`Overview of Claim 10 of the ’866 Patent ................................. ..
`
`..... .. 18
`
`IV.
`
`GENERAL ISSUES RELATED TO MY PATENTABILITY
`
`ANALYSIS .......................................................................................... ..
`
`..... .. 19
`
`A.
`
`B.
`
`C.
`
`Claim 10 of the ‘866 Patent ....................................................... ..
`
`..... .. 19
`
`Interpretation of Certain Claim Terms ...................................... ..
`
`..... ..20
`
`Prior Art References .................................................................. ..
`
`..... ..23
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`.0‘
`
`7.
`
`8.
`
`Exhibit 1070 - Nokia 9110 UM ...................................... ..
`
`..... ..24
`
`Exhibit 1083- Nokia 9110 FAQ ..................................... ..
`
`..... ..25
`
`Exhibit 1074 -Nikkei Electronics Article (Nikkei) ........ ..
`
`..... ..25
`
`Exhibit 1081 - Perez ....................................................... ..
`
`..... ..26
`
`Exhibit 1014- International Patent No. 1998025397 to
`
`Rizet ................................................................................ ..
`
`..... ..26
`
`Exhibit 1063- U.S. Patent No. 6,366,791 to Lin ............ ..
`
`..... ..26
`
`Exhibit 1075- U.S. Patent No. 7,088,990 to Isomursu
`
`..... ..27
`
`Exhibits 1020, 1053 and 1054 -Yamaha Sound Chip
`Materials (Yl\/IU757) ...................................................... ..
`
`..... ..27
`
`Page iii
`
`Verizon Wireless
`Exhibit 1089-0003
`
`

`
`9.
`
`Exhibit 1077 — Hosoda ........................................................... .. 28
`
`PATENTABILITY ANALYSIS OF CLAIM 10 OF THE ‘866
`
`PATENT ..................................................................................................... .. 28
`
`A.
`
`Nokia 9110 User Manual (Exhibit 1070) ......................................... .. 28
`
`1.
`
`2.
`
`Overview of 9110 User Manual ............................................. .. 28
`
`Comparison of UM to Claim 10 of the ‘866 Patent ............... .. 29
`
`a.
`
`Claim 10 ....................................................................... .. 29
`
`B.
`
`C.
`
`D.
`
`E.
`
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`9110 FAQ (Exhibit 1083) ................................................................ .. 50
`
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`9110 FAQ (Exhibit 1083) and Nikkei (Exhibit 1074) ..................... .. 52
`
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`9110 FAQ (Exhibit 1083) and Perez (Exhibit 1081) ....................... .. 57
`
`Nokia 9110 User Manual (Exhibit 1070) and 9110 FAQ
`(Exhibit 1083) in combination with Nikkei (Exhibit 1074) and
`Perez (Exhibit 1081) ......................................................................... .. 60
`
`F.
`
`Rizet (Ex. 1014) in combination with Nikkei (Exhibit 1074) .......... .. 61
`
`1.
`
`2.
`
`Overview of Rizet .................................................................. .. 62
`
`Comparison of Rizet to Claim 10 of the ‘866 Patent ............. .. 62
`
`a.
`
`Claim 10 ....................................................................... .. 62
`
`3.
`
`Combining Rizet with Nikkei ................................................ .. 78
`
`Rizet (Ex. 1014) in combination with Nikkei (Exhibit 1074 and
`either Perez (Exhibit 1081) or Yl\/[U75 7 (Exhibits 1020, 1053
`and 1054) .......................................................................................... .. 82
`
`1.
`
`2.
`
`Combining Perez with Rizet and Nikkei ............................... .. 83
`
`Combining YMU75 7 with Rizet and Nikkei ......................... .. 85
`
`Rizet (Exhibit 1014) in combination with Hosoda (Exhibit
`1077) ................................................................................................. .
`
`. 90
`
`Lin (Exhibit 1063) and Isomursu (Exhibit 1075) in combination
`with Nikkei (Exhibit 1074) ............................................................ .. 101
`
`1.
`
`Overview of Lin ................................................................... .. 102
`
`a.
`
`Claim 10 ..................................................................... .. 102
`
`G.
`
`H.
`
`1.
`
`Page iv
`
`Verizon Wireless
`Exhibit 1089-0004
`
`

`
`2.
`
`3.
`
`4.
`
`Overview of Isomursu .......................................................... .. 112
`
`Comparison of Isomursu to Claim 10 of the ‘866 Patent .... .. 113
`
`a.
`
`Claim 10 ..................................................................... .. 113
`
`Combining Lin, Isomursu and Nikkei ................................. .. 127
`
`VI.
`
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ......... .. 130
`
`VII. SUPPLEMENTATION ............................................................................ .. 131
`
`VIII. CONCLUSION ......................................................................................... .. 131
`
`Page V
`
`Verizon Wireless
`Exhibit 1089-0005
`
`

`
`TABLE OF APPENDICES
`
`Appendix A:
`
`Curriculum Vitae
`
`Appendix B:
`
`List of Materials Considered
`
`Page Vi
`
`Verizon Wireless
`Exhibit 1089-0006
`
`

`
`I.
`
`INTRODUCTION
`
`A.
`
`Engagement
`
`1.
`
`I have been retained by counsel for Cellco Partnership d/b/a Verizon
`
`Wireless (“Verizon Wireless”) as an expert witness in the above-captioned
`
`proceeding.
`
`I have been asked to provide my opinion about the state of the art of
`
`the technology described in U.S. Patent No. 7,319,866 (“the ’866 patent”) and on
`
`the patentability of claim 10 of the ‘866 patent. The following is my written report
`
`on these topics.
`
`B.
`
`Background and Qualifications
`
`2.
`
`My Curriculum Vitae is submitted herewith as Appendix A to my
`
`Declaration.
`
`3.
`
`I received a Ph.D. in Electrical Engineering and Computer Science
`
`from the Massachusetts Institute of Technology in 1998.
`
`I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science Degree in Electrical Engineering and Computer Science in
`
`1990, and a Bachelor of Science Degree in Physics in 1989.
`
`4.
`
`As further indicated in my C.V.,
`
`I have worked in the electrical
`
`engineering and computer science fields,
`
`including web site and web server
`
`development, on several occasions. As part of my doctoral research at MIT from
`
`1991-1998, I worked as a research assistant in the Telemedia Network Systems
`
`(TNS) group at the Laboratory for Computer Science. The TNS group built a high
`
`Page 1
`
`Verizon Wireless
`Exhibit 1089-0007
`
`

`
`speed gigabit network and applications which ran over the network, such as remote
`
`video capture, processing and display on computer terminals. In addition to helping
`
`design the core network components, designing and building the high speed links,
`
`and designing and writing the device drivers for the interface cards, I also set up
`
`the group’s web server, which at the time was one of the first several hundred web
`
`servers in existence.
`
`5.
`
`I authored or co-authored twelve papers and conference presentations
`
`on our group’s research. I also co-edited the final report of the gigabit networking
`
`research effort with the Professor (David Tennenhouse) and Senior Research
`
`Scientist of the group (David Clark), who is generally considered to be one of the
`
`fathers of the Internet Protocol.
`
`6.
`
`I started building web servers in 1993, having set up the web server
`
`for the research group, to which I belonged. Our group’s web server went on to
`
`provide what was one of the first live Internet video initiated from a web site. Our
`
`web server also archived a number of recorded video clips (including audio) which
`
`could be browsed, and updated the library of video/audio clips on an ongoing
`
`basis.
`
`7.
`
`In 1994, I founded a company called Agora Technology Group which
`
`set up advertising-supported web site service for college recruiting called HIRES
`
`(Hypennedia Internet Recruitment and Employment Services). Agora also
`
`Page 2
`
`Verizon Wireless
`Exhibit 1089-0008
`
`

`
`provided web consulting services to companies, Agora set up web sites for Bay
`
`Networks (later purchased by Nortel) and Data Communications Magazine, among
`
`others.
`
`8.
`
`While at MIT, I also studied communications, wireless networking,
`
`video and audio encoding, and streaming media. As part of my expert witness
`
`work, I have also studied cell phone applications, including phone applications and
`
`back end systems that have the capability for a mobile device such as a cell phone
`
`to browse a remote music library for both downloading music and streaming
`
`music.
`
`9.
`
`From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems that streamed
`
`packetized audio over data networks instead of using traditional phone lines. NBX
`
`was later acquired by 3Com Corporation, and the phone system is still available
`
`and being used at tens of thousands of businesses or more. As part of my work at
`
`NBX, I designed the core audio reconstruction algorithms for the telephones, as
`
`well as the packet transmission algorithms. I also designed and validated the core
`
`packet transport protocol used by the phone system. The protocol is used millions
`
`of times daily currently.
`
`10.
`
`The NBX system had the capability for users to select the ringing tone
`
`of their own telephone. This capability was configured through a web server
`
`Page 3
`
`Verizon Wireless
`Exhibit 1089-0009
`
`

`
`running on the NBX call processor. The ring tones were stored on the NBX call
`
`processor and downloaded as an audio file to the NBX telephone upon bootup or
`
`when changed. Two of the company founders and I received U.S. Patent No.
`
`6,697,963 titled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time sensitive data,” for some of the work I did there.
`
`11.
`
`Starting in 2001, I was architect for the next generation of web testing
`
`product by Empirix known as e-Test Suite. e-Test Suite is now owned by Oracle
`
`Corporation.
`
`e-Test provided functional and load testing for web sites.
`
`e-Test
`
`emulated a user's interaction with a web site and provided web developers with a
`
`method of creating various scripts and providing both functional testing (e.g., did
`
`the web site provide the correct response) and load testing (e.g., could the web site
`
`handle 5000 users on its web site simultaneously). Among Empirix’s customers
`
`was H&R Block, who used e-Test Suite to test the tax filing functionality of their
`
`web site as whether the web site could handle a large expected load prior to the
`
`filing deadline.
`
`12.
`
`I have also continued to develop web sites for various business
`
`projects, as well as setting up web sites on a volunteer basis for various groups that
`
`I am associated with.
`
`13.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`Page 4
`
`Verizon Wireless
`Exhibit 1089-0010
`
`

`
`publications are listed on my C.V. (attached hereto as Exhibit A).
`
`C. Compensation and Prior Testimony
`
`14.
`
`I am being compensated at a rate of $550 per hour for my study and
`
`testimony in this matter.
`
`I am also being reimbursed for reasonable and customary
`
`expenses associated with my work and testimony in this investigation. My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony.
`
`15.
`
`I have testified in Federal District Court as an expert witness four
`
`times. Most recently, I testified in the Prism Technologies LLC v. AT&T Mobility
`
`LLC in the District of Nebraska.
`
`I have also testified in the Two—Way Media LLC
`
`v. AT&T Inc. matter in the Western District of Texas and Verizon v. Vonage and
`
`Verizon v. Cox matters, both in the Eastern District of Virginia.
`
`I also testified at
`
`the hearing in In the Matter of Certain Digital Media Devices,
`
`Including
`
`Televisions, Blu—Ray Disc Players, Home Theater Systems, Tablets and Mobile
`
`Phones, Components Thereof and Associated Software, Investigation No. 337-TA-
`
`882, U.S. International Trade Commission, filed expert reports and was deposed.
`
`I
`
`have provided deposition testimony for other cases filed in Federal District Court
`
`as well.
`
`I also have testified in Federal District Court once as a fact witness.
`
`I6.
`
`In
`
`addition,
`
`I
`
`have
`
`filed
`
`declarations
`
`in Microsoft
`
`v.
`
`Telecommunications
`
`Systems
`
`Inc.
`
`(IPR20l4-01568
`
`and
`
`IPR20l5-00193),
`
`Page 5
`
`Verizon Wireless
`Exhibit 1089-0011
`
`

`
`Microsoft V. B.E. Technology, LLC (IPR20l4-00039, IPR20l4-00040); Microsoft
`
`v. Biscotti Inc., Apple Inc. V. Evolutionary Intelligence, LLC (IPR2014-00086);
`
`Twitter, Inc. and Yelp Inc. V. Evolutionary Intelligence, LLC, Neulion Inc. v. Patent
`
`Owner; Cisco Systems,
`
`Inc.
`
`v. AIP Acquisition LLC, Cisco Systems,
`
`Inc. V.
`
`Constellation Teclznologies LLC, and Samsung Electronics Co., LTD et al v.
`
`StraiglztPatlz IP Group, Inc.
`
`D.
`
`Information Considered
`
`17. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials.
`
`In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in Exhibit B.
`
`18.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by Solocron.
`
`I may also consider additional documents and
`
`information in forming any necessary opinions—including documents that may not
`
`yet have been provided to me.
`
`19. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date.
`
`I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`Page 6
`
`Verizon Wireless
`Exhibit 1089-0012
`
`

`
`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`20.
`
`In expressing my opinions and considering the subject matter of claim
`
`10 of the ‘866 patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`21.
`
`First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`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 that, in this proceeding, Verizon Wireless has the burden
`
`of proving that claim 10 of the ‘866 patent is 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 claims
`
`after being construed in this manner are then to be compared to the information in
`
`the prior art.
`
`Page 7
`
`Verizon Wireless
`Exhibit 1089-0013
`
`

`
`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 patents and printed publications that are prior art to the
`
`claims.
`
`26.
`
`I understand that there are two ways in which 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. My understanding of the two legal standards is
`
`set forth below.
`
`A. Anticipation
`
`27.
`
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`28.
`
`I have applied these standards in my evaluation of whether claim 10
`
`of the ’866 patent 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 claim in the patent.
`
`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
`
`Page 8
`
`Verizon Wireless
`Exhibit 1089-0014
`
`

`
`art, each and every requirement of the claim 1nust be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim.
`
`I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`31.
`
`I understand that, for a piece of prior art to anticipate a claim, it only
`
`need to have the same level of disclosure as the asserted patent.
`
`I also understand
`
`that it is acceptable to consider evidence other than the information in a particular
`
`prior art document to determine if a feature is necessarily present in or inherently
`
`described by that reference.
`
`B. Obviousness
`
`32.
`
`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.
`
`33.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § lO3(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
`
`Page 9
`
`Verizon Wireless
`Exhibit 1089-0015
`
`

`
`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.
`
`34.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious.
`
`I have applied these standards in my
`
`evaluation of whether claim 10 of the ’866 patent would have been considered
`
`obvious in December of 1999.
`
`35.
`
`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):
`
`0 The scope and content of the prior art;
`
`0 The differences between the prior art and the claims at issue;
`
`0 The knowledge of a person of ordinary skill in the pertinent art; and
`
`0 Whatever objective factors indicating obviousness or non-obviousness
`
`may be present in any particular case.
`
`36.
`
`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 of the patent claim.
`
`37.
`
`I understand the objective factors indicating obviousness or non-
`
`Page 10
`
`Verizon Wireless
`Exhibit 1089-0016
`
`

`
`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 those 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 accepted wisdom of the prior art.
`
`I also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention.
`
`1 am not presently aware of any evidence of “objective factors”
`
`suggesting the claimed methods are not obvious; and reserve my right to address
`
`any such evidence if it is identified in the future.
`
`38.
`
`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
`
`that solution obvious in another related field.
`
`I also understand that market
`
`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
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art.
`
`Page 11
`
`Verizon Wireless
`Exhibit 1089-0017
`
`

`
`39.
`
`I also understand that if a person of ordinary skill can implement a
`
`predictable variation,
`
`that variation would have been considered obvious.
`
`I
`
`understand that for similar reasons, if a technique has been used to improve one
`
`device, and a person of ordinary skill in the art would recognize that it would
`
`improve similar devices in the same way, using that technique to improve the other
`
`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation.
`
`40.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim, but
`
`instead can take account of the “ordinary innovation” and experimentation that
`
`does no more than yield predictable results, which are inferences and creative steps
`
`that a person of ordinary skill in the art would employ.
`
`41.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents,
`
`the effects of demands known to the design
`
`community or present
`
`in the marketplace, and the background knowledge
`
`possessed by a person having ordinary skill in the art.
`
`I understand that all these
`
`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.
`
`42.
`
`I understand that the obviousness analysis cannot be confined by a
`
`fonnalistic conception of the words “teaching, suggestion, and motivation.”
`
`I
`
`Page 12
`
`Verizon Wireless
`Exhibit 1089-0018
`
`

`
`understand that, in 2007, the Supreme Court issued its decision in KSR Int ’Z Co. v.
`
`Teleflex, Inc. where the Court rejected the previous 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 obviousness.
`
`It
`
`is my
`
`understanding that KSR confinns that any motivation that 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 references would have
`
`been combined.
`
`43.
`
`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 teaches
`
`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
`
`in December of 1999 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,
`
`Page 13
`
`Verizon Wireless
`Exhibit 1089-0019
`
`

`
`the individual prior art references themselves need not all be directed towards
`
`solving the same problem.
`
`44.
`
`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 discourages or leads 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 a
`
`clear indication that the combination should not be attempted (eg, because it
`
`would not work or explicit statements saying the combination should not be made).
`
`45.
`
`I understand that a person of ordinary skill is also a person of ordinary
`
`creativity.
`
`46.
`
`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 number of identified, predictable solutions, a person of
`
`ordinary skill has good reason to pursue the known options within their technical
`
`grasp.
`
`If this leads to the anticipated success,
`
`it is likely the product not of
`
`innovation but of ordinary skill and common sense.
`
`In that instance the fact that a
`
`Page 14
`
`Verizon Wireless
`Exhibit 1089-0020
`
`

`
`combination was obvious to try might show that it was obvious. The fact that a
`
`particular combination of prior art elements was “obvious to try” may indicate that
`
`the combination was obvious even if no one attempted the combination.
`
`If the
`
`combination was obvious to try (regardless of whether it was actually tried) or
`
`leads to anticipated success,
`
`then it
`
`is likely the result of ordinary skill and
`
`common sense rather than innovation.
`
`III. THE ’866 PATENT
`
`A.
`
`Effective Filing Date of the ’866 Patent
`
`47.
`
`I understand that the ‘866 patent issued from U.S. Application No.
`
`10/915,866, filed August 11, 2004, and is a continuation of U.S. Application
`
`10/223,200 filed August 16, 2002, which is a continuation of U.S. Application No.
`
`09/518,712, which was filed on March 3, 2000, which claims priority to
`
`Provisional Application No. 60/169,158, which was filed on December 6, 1999
`
`(“the December 1999 provisional application”).
`
`48.
`
`I understand that,
`
`in order
`
`to claim priority to a provisional
`
`application,
`
`the specification of the provisional application must contain an
`
`adequate written description of the invention as claimed in the nonprovisional, and
`
`must enable a person of ordinary skill to practice the invention claimed in the
`
`nonprovisional, To satisfy the written description requirement, I understand that
`
`each claim limitation must be actually or inherently disclosed.
`
`Page 15
`
`Verizon Wireless
`Exhibit 1089-0021
`
`

`
`49.
`
`I have reviewed the December 1999 provisional application.
`
`It is my
`
`opinion that the December 1999 provisional application does not actually or
`
`inherently disclose at least two claim limitations in claim 10 of the ‘866 patent: i)
`
`the “browsing application program that allows a user of the telephone to browse
`
`the polyphonic audio files”, and ii) the “enhanced performance speaker capable of
`
`providing a substantially full range of audio sounds from the selected polyphonic
`
`audio file when the selected polyphonic audio file is played.”
`
`50.
`
`For example, the “enhanced speaker” limitation does not appear to be
`
`disclosed anywhere. There is no discussion of “enhancement” or the “substantially
`
`full range of audio sounds.”
`
`The provisional application includes a single
`
`reference to a “speaker / microphone”, and a few references to “transducer”, but all
`
`of their uses appear to be in the context of capturing audio, not reproducing a
`
`ringtone, much less a polyphonic ringtone. Exhibit 1003 at 0006-0007. While
`
`there is a statement that the device can “play the audio” (id. at 0005), there is no
`
`discussion of what plays the audio, whether it is for example, a “conventional
`
`speaker” or an “enhanced speaker”—nor is there any discussion of quality, the
`
`nature of any “enhancement” or any “full range of audio sounds.” Thus, regardless
`
`of any other disclosure, claim 10 is limited to the March 2000 filing.
`
`51.
`
`Furthermore, neither “browse”, “browser” or “browsing application”
`
`appears anywhere in the provisional—much less a “browsing application program
`
`Page 16
`
`Verizon Wireless
`Exhibit 1089-0022
`
`

`
`that allows a user of the telephone to browse the polyphonic audio files”. Exhibit
`
`1003 at 0004-08.
`
`52. Nor are the full scopes of these limitations necessarily disclosed in my
`
`view by the provisional application. Based on my review, it is my opinion that the
`
`provisional application fails to sufficiently disclose the invention to establish that
`
`l\/Ir. Shanahan possessed the full scope of the subject matter of claim 10 at any
`
`point prior to March 2000.
`
`53.
`
`I have therefore used March 3 2000, as the earliest effective filing
`
`date of the ‘866 patent claims in my analysis. Nevertheless, even if the December
`
`1999 date is used in my analysis, many of the prior art references described below
`
`would still invalidate claim 10.
`
`B.
`
`Prosecution History of the ‘866 Patent
`
`54.
`
`The application that matured into the ‘866 patent was filed on August
`
`11, 2004.
`
`Initially,
`
`the Patent Office only made an obviousness-type double
`
`patenting rejection on the pending claims, based upon claims in another pending
`
`application. Exhibit 1007, at 0135 (March 7, 2006 Office Action). The patentee
`
`responded by cancelling certain claims and asserting that other claims did not
`
`conflict with the claims in other pending application. Id. at 0114-0115.
`
`55.
`
`The Examiner subsequently withdrew the obviousness-type double
`
`patenting rejection and rejected all claims over two references, Isomursu and Lin.
`
`Page 17
`
`Verizon Wireless
`Exhibit 1089-0023
`
`

`
`Id. at 0092-0093.
`
`In response, the patentee distinguished the purported invention
`
`as follows:
`
`Additional novel featu