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. 7,295,864
`Issued: November 13, 2007
`Filed: June 24, 2003
`Inventor: Michael E. Shanahan
`Title: METHODS AND APPARATUSES FOR PROGRAMMING USER(cid:173)
`DEFINED INFORMATION INTO ELECTRONIC DEVICES
`
`Inter Partes Review No. 2015-- -
`
`Declaration of Henry Houh Regarding
`
`U.S. Patent No. 7,295,864
`
`Verizon Wireless
`Exhibit 1089-0001
`
`

`

`I, 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 4, 2014
`
`Page ii
`
`Verizon Wireless
`Exhibit 1 089-0002
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .......................................................................................... 1
`Engagement .......................................................................................... 1
`A.
`Background and Qualifications ............................................................ 1
`B.
`C.
`Compensation and Prior Testimony ..................................................... 5
`D.
`Information Considered ........................................................................ 6
`LEGAL STANDARDS FOR PATENTABILITY ......................................... 7
`A.
`Anticipation .......................................................................................... 8
`B.
`Obviousness .......................................................................................... 9
`THE '864 PATENT ...................................................................................... 15
`A.
`Effective Filing Date of the '864 Patent ............................................ 15
`C.
`The Person of Ordinary Skill In the Art ............................................. 18
`D.
`Overview of the Claims of the '864 Patent. ....................................... 18
`IV. GENERAL ISSUES RELATED TO MY PATENTABILITY
`ANALYSIS ................................................................................................... 18
`The Claims of the '864 Patent I Am Addressing in this Report ........ 19
`A.
`B.
`Interpretation of Certain Claim Terms ............................................... 21
`1.
`Polyphonic Audio Files ............................................................ 22
`2.
`Allowing a User to Search ....................................................... 24
`3.
`Group comprising MP3, MPEG, or WAV files ...................... 24
`4.
`Database ................................................................................... 24
`Prior Art References ........................................................................... 25
`1.
`Exhibit 1070- Nokia 9110 UM ............................................... 25
`2.
`Exhibit 1083- Nokia 9110 FAQ .............................................. 26
`3.
`Exhibit 1094 - 9110 Startup ..................................................... 26
`4.
`Exhibit 1074 -Nikkei Electronics Article (Nikkei) ................. 27
`5.
`Exhibit 1059- U.S. Patent 6,292,668 to Alanara ..................... 28
`6.
`Exhibit 1095- U.S. Patent 7,904,528 (Zilliacus) .................... 29
`
`II.
`
`III.
`
`C.
`
`Page iii
`
`Verizon Wireless
`Exhibit 1 089-0003
`
`

`

`7.
`
`8.
`
`9.
`
`V.
`
`Exhibit 1077- Japanese Patent No. H11-242490
`(Hosoda) ................................................................................... 29
`Exhibit 1014- International Publication No.
`W098/025397 to Rizet ............................................................ 29
`Exhibit 1078 -SDMI Portable Device Specification, Part
`I (July 8, 1988) and RIAA Press Release (July 13, 1999)
`("SDMI Open Standard") ......................................................... 30
`10. Exhibit 1019- JukeBoksi System ........................................... 30
`11. Exhibits 1020 and 1053 -Yamaha Sound Chip Materials
`(YMU757) ................................................................................ 31
`PATENTABILITY ANALYSIS OF CLAIMS 11, 12, 13, 14, 16,
`AND 17 OF THE '864 PATENT ................................................................. 32
`A.
`Japanese Patent No. H11-242490 (Hosoda) (Exhibit 1077) .............. 32
`1.
`Overview of Hosoda ................................................................ 32
`2.
`Comparison ofHosoda to Claims 11, 12, 13, 14, 16, and
`17 of the '864 Patent ................................................................ 33
`a.
`Claim 11 ......................................................................... 33
`b.
`Claim 12 ......................................................................... 53
`c.
`Claim 13 ......................................................................... 55
`d.
`Claim 14 ......................................................................... 58
`e.
`Claim 16 ......................................................................... 60
`f.
`Claim 17 ......................................................................... 62
`Hosoda (Exhibit 1077) in combination with Nikkei (Exhibit
`1074) ................................................................................................... 64
`1.
`Overview of Nikkei and General Motivation to Combine ...... 64
`2.
`Combining Hosoda and Nikkei ................................................ 68
`3.
`Comparison to the claims ......................................................... 69
`a.
`Claim 11 ......................................................................... 69
`b.
`Claim 14 ......................................................................... 71
`c.
`Claim 16 ......................................................................... 72
`d.
`Claim 1 7 ......................................................................... 7 5
`
`B.
`
`Pageiv
`
`Verizon Wireless
`Exhibit 1 089-0004
`
`

`

`C.
`
`D.
`
`E.
`
`F.
`
`Claim 19 ......................................................................... 78
`e.
`Hosoda (Exhibit 1 077) in combination with the SDMI Open
`Standard (Exhibit 1078) ..................................................................... 79
`1.
`Hosoda in combination with the SDMI Open Standard
`Renders Obvious Claim 19 of the '864 Patent ........................ 79
`a.
`Claim 19 ......................................................................... 79
`Jukeboksi (Ex. 1060) in combination with Nikkei (Exhibit
`1074) and/or YMU757 (Exhibits 1020, 1053) ................................... 83
`1.
`Comparison of Jukeboksi to Claims 11, 12, 13, 14 and 16
`of the '866 Patent ..................................................................... 86
`a.
`Claim 11 ......................................................................... 86
`b.
`Claim 12 ......................................................................... 92
`c.
`Claim 13 ......................................................................... 93
`d.
`Claim 14 ......................................................................... 94
`e.
`Claim 16 ......................................................................... 95
`f.
`Claim 19 ......................................................................... 96
`Rizet (Ex. 1014) in combination with Nikkei (Exhibit 1074) ............ 98
`1.
`Overview of Rizet .................................................................... 98
`2.
`Comparison ofRizet to Claim 11 of the '864 Patent.. ........... 100
`a.
`Claim 11 ....................................................................... 100
`Combining Rizet with Nikkei and/or YMU757 .................... 116
`a.
`Claim 12 ....................................................................... 124
`b.
`Claim 13 ....................................................................... 126
`c.
`Claim 14 ....................................................................... 128
`d.
`Claim 16 ....................................................................... 132
`e.
`Claim 17 ....................................................................... 134
`f.
`Claim 19 ....................................................................... 137
`Rizet (Ex. 1014) in combination with YMU 757 (Exhibits 1020,
`1053), and SDMI Open Standard (Exhibit 1078) ............................ 139
`a.
`Claim 19 ....................................................................... 139
`
`3.
`
`Pagev
`
`Verizon Wireless
`Exhibit 1 089-0005
`
`

`

`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`9110 FAQ (Exhibit 1083) ................................................................ 141
`1.
`Overview of 9110 User Manual ............................................. 141
`2.
`Comparison ofUM to Claims 11-14, 16, and 17 of the
`'864 Patent ............................................................................. 141
`a.
`Claim 11 ....................................................................... 141
`b.
`Claim 12 ....................................................................... 153
`c.
`Claim 13 ....................................................................... 154
`d.
`Claim 14 ....................................................................... 156
`e.
`Claim 16 ....................................................................... 157
`f.
`Claim 17 ....................................................................... 158
`Overview of9110 FAQ ......................................................... 158
`3.
`Combining 9110 User Manual with 9110 FAQ .................... 160
`4.
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`9110 FAQ (Exhibit 1083) and Nikkei (Exhibit 1074) ..................... 161
`1.
`Obviousness as to claims 11-14, 16, and 17 .......................... 161
`2.
`Obviousness as to claim 19 .................................................... 165
`Nokia 9110 CD ................................................................................. 167
`1.
`Overview of the 9110 CD ...................................................... 167
`2.
`Discussion of the 9110 CD materials .................................... 168
`a.
`Downloading from the Internet: Comparison to
`Claims 11-14, 16, and 17 of the '864 patent ............... 168
`Downloading from a PC: Comparison to claims
`11-14, 16 and 17 of the '864 patent.. ........................... 171
`Nokia 9110 CD in combination with 9110 FAQ (Exhibit 1083)
`and Nikkei (Exhibit 1074) ................................................................ 178
`Nokia 9110 User Manual (Exhibit 1070) in combination with
`Nikkei (Exhibit 1074) and Zilliacus (Exhibit 1095) ........................ 179
`1.
`Application of Zilliacus to Claims 11-14, 16, 17, and 19 ...... 179
`a.
`Claim 11 ....................................................................... 179
`b.
`Claim 12 ....................................................................... 187
`
`b.
`
`Page vi
`
`Verizon Wireless
`Exhibit 1 089-0006
`
`

`

`L.
`
`Claim 13 ....................................................................... 188
`c.
`Claim 14 ....................................................................... 189
`d.
`Claim 16 ....................................................................... 189
`e.
`Claim 19 ....................................................................... 190
`f.
`Combining the 9110 User Manual, Nikkei, and Zilliacus ..... 191
`2.
`Alanara (Exhibit 1059) in combination with Nikkei (Exhibit
`1074) ................................................................................................. 192
`1.
`Overview of Alanara .............................................................. 193
`2.
`Comparison of Alanara to Claims 11, 13, 14, and 16 of
`the '864 patent. ....................................................................... 193
`a.
`Claim 11 ....................................................................... 193
`b.
`Claim 13 ....................................................................... 199
`c.
`Claim 14 ....................................................................... 199
`d.
`Claim 16 ....................................................................... 200
`Combining Alanara with Nikkei ............................................ 201
`3.
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ........... 202
`VI.
`VII. SUPPLEMENTATION .............................................................................. 204
`VIII. CONCLUSION ........................................................................................... 204
`
`Page vii
`
`Verizon Wireless
`Exhibit 1 089-0007
`
`

`

`TABLE OF EXHIBITS
`
`Exhibit A:
`
`Exhibit B:
`
`Curriculum Vitae
`
`List of Materials Considered
`
`Page viii
`
`Verizon Wireless
`Exhibit 1 089-0008
`
`

`

`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. 7,295,864 ("the '864 patent") (Exhibit
`
`1001) and on the patentability of claims 11-14, 16, 17, and 19 of the '864 patent.
`
`The following is my written report on these topics.
`
`B.
`
`Background and Qualifications
`
`2. My Curriculum Vitae is submitted herewith as Exhibit A hereto.
`
`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
`
`(INS) group at the Laboratory for Computer Science. The INS group built a high
`
`Page 1
`
`Verizon Wireless
`Exhibit 1 089-0009
`
`

`

`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 sites service for college recruiting called HIRES
`
`(Hypermedia Internet Recruitment and Employment Services). Agora also
`
`Page 2
`
`Verizon Wireless
`Exhibit 1089-0010
`
`

`

`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
`
`core 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 1089-0011
`
`

`

`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 US 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 vanous 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 1089-0012
`
`

`

`publications are listed on my C.V. (attached as Exhibit A hereto).
`
`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 filed expert
`
`reports, was deposed, and 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. 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.
`
`16.
`
`In
`
`addition,
`
`I have
`
`filed
`
`declarations m Microsoft
`
`v.
`
`Telecommunications Systems
`
`Inc.
`
`(IPR2014-01568
`
`and
`
`IPR2015-00193),
`
`Page 5
`
`Verizon Wireless
`Exhibit 1089-0013
`
`

`

`Microsoft v. B.E. Technology, LLC (IPR2014-00039, IPR2014-00040); Microsoft
`
`v. Biscotti Inc., Apple Inc. v. Evolutionary Intelligence, LLC (IPR20 14-00086);
`
`Twitter, Inc. and Yelp Inc. v. Evolutionary Intelligence, LLC; Neulion Inc. v. Patent
`
`Owner; Cisco Systems, Inc. v. AlP Acquisition LLC; Cisco Systems, Inc. v.
`
`Constellation Technologies LLC; and Samsung Electronics Co., LTD et al v.
`
`Straight Path 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 1089-0014
`
`

`

`II.
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`20.
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the '864 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 the claims of the '864 patent 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 claims
`
`after being construed in this manner are then to be compared to the information in
`
`Page 7
`
`Verizon Wireless
`Exhibit 1089-0015
`
`

`

`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 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 claims 11-
`
`14, 16, 17, and 19 of the '864 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.
`
`Page 8
`
`Verizon Wireless
`Exhibit 1089-0016
`
`

`

`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. 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
`
`needs 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. § 103(a)) as follows:
`
`Page 9
`
`Verizon Wireless
`Exhibit 1089-0017
`
`

`

`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.
`
`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 claims 11-14, 16, 17, and 19 of the '864 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):
`
`• 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.
`
`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.
`
`Page 10
`
`Verizon Wireless
`Exhibit 1089-0018
`
`

`

`37.
`
`I understand the objective factors indicating obviousness or non-
`
`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.
`
`I 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
`
`Page 11
`
`Verizon Wireless
`Exhibit 1089-0019
`
`

`

`art.
`
`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
`
`Page 12
`
`Verizon Wireless
`Exhibit 1 089-0020
`
`

`

`formalistic conception of the words "teaching, suggestion, and motivation."
`
`I
`
`understand that in 2007, the Supreme Court issued its decision in KSR Int 'l Co. v.
`
`Telejlex, 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 confirms 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
`
`Page 13
`
`Verizon Wireless
`Exhibit 1089-0021
`
`

`

`directed towards solving the same problem that is addressed in