Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION,
`Petitioner,
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`v.
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`PARALLEL NETWORKS LICENSING, LLC,
`Patent Owner
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`Patent No. 5,894,554
`Issued: April 13, 1999
`Filed: April 23, 1996
`Inventors: Keith Lowery, Andrew B. Levine and Ronald L. Howell
`SYSTEM FOR MANAGING DYNAMIC WEB PAGE
`GENERATION REQUESTS BY INTERCEPTING REQUEST AT
`WEB SERVER AND ROUTING TO PAGE SERVER THEREBY
`RELEASING WEB SERVER TO PROCESS OTHER REQUESTS
`____________________
`Inter Partes Review No. IPR2015-00483
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`
`
`
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`
`
`Title:
`
`DECLARATION OF MICHAEL D. MITZENMACHER REGARDING U.S.
`PATENT NO. 5,894,554
`
`
`
`
`
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`Petitioner Microsoft Corporation - Ex. 1007, p. Cover
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`

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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`
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`TABLE OF CONTENTS
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`I.
`
`INTRODUCTION ......................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 4
`D.
`Information Considered ......................................................................... 6
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 7
`II.
`A. Anticipation ........................................................................................... 9
`B.
`Obviousness ......................................................................................... 10
`III. THE 554 PATENT ....................................................................................... 16
`A.
`Effective Filing Date of the 554 Patent ............................................... 16
`B.
`Other Patent Family Members ............................................................ 16
`C.
`Overview of The 554 Patent ................................................................ 16
`D.
`The Prosecution History of The 554 Patent ........................................ 20
`1. Original Prosecution......................................................................20
`2. Ex Parte Reexamination Proceedings ...........................................21
`E.
`Claims of the 554 Patent ..................................................................... 33
`F.
`Litigation Involving the 554 Patent ..................................................... 45
`Construction of Terms Used in the 554 Patent Claims ....................... 47
`G.
`1. Broadest Reasonable Interpretations .............................................50
`i. “Web server” (All Claims) .....................................................50
`ii. “page server” (All Claims).....................................................53
`iii. “intercepting said request at said Web server” (All Claims) 55
`iv. “dispatching” (All Claims) .....................................................56
`v. “dispatcher” (All Claims) ......................................................61
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`Petitioner Microsoft Corporation - Ex. 1007, p. i
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`Andresen et al, SWEB: Towards A Scalable World Wide Web
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`vi. “releasing said Web server to process other requests” (All
`Claims) ...................................................................................62
`vii. “concurrently processes” (All Claims) ..................................64
`viii. “Web page" (All Claims) ....................................................66
`ix. “routing” (All Claims) ............................................................68
`x. “dynamically generating” (All Claims) .................................69
`xi. “custom HTML extension templates” (Claims 18 & 19) ........71
`xii. “connection cache” (Claim 15) ..............................................72
`xiii. “application software” (Claims 26 and 40) ........................74
`2. Phillips Constructions ...................................................................75
`i. Patent Owner’s Phillips Constructions ..................................75
`ii. Patent Owner's Prior Phillips Constructions ..........................76
`iii. Additional Phillips Constructions ..........................................77
`H.
`Level of Ordinary Skill in the Art ....................................................... 79
`IV. COMPARISON OF THE PRIOR ART TO THE 554 PATENT ........... 79
`Background ......................................................................................... 79
`A.
`B.
`Server On Multicomputers, (“SWEB 95”) (Ex. 1009) ........................ 84
`C.
`U.S. Patent No. 5,754,772 to Leaf (“Leaf”) (Ex. 1060) ...................... 92
`D.
`1995 (“Bradley”) (Ex. 1048) ............................................................... 96
`E.
`and/or In View of Leaf or Bradley ...................................................... 99
`1. Claim 12 Is Unpatentable Over SWEB 95 ...................................99
`i. Preamble .................................................................................99
`ii. Routing Step .........................................................................102
`iii. Processing Step .....................................................................119
`iv. Dynamically Generating Step ..............................................122
`v. Wherein Dispatching Includes: Examining .........................125
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`Bradley et al., Web-based Access to an Online Atlas of
`Anatomy: The Digital Anatomist Common Gateway Interface,
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`Claims 12 through 49 Are Unpatentable Over SWEB 95 Alone
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`Petitioner Microsoft Corporation - Ex. 1007, p. ii
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`vi. Wherein Dispatching Includes: Selecting ............................126
`vii. Wherein Dispatching Includes: Sending ..............................128
`2. Claim 13 Is Unpatentable Over SWEB 95 .................................132
`3. Claim 14 Is Unpatentable Over SWEB 95 Alone and/or In
`View of Leaf ...............................................................................133
`4. Claim 15 Is Unpatentable Over SWEB 95 Alone and/or In
`View of Leaf ...............................................................................138
`5. Claim 16 Is Unpatentable Over SWEB 95 .................................143
`6. Claim 17 Is Unpatentable Over SWEB 95 .................................145
`7. Claim 17 Is Obvious Over SWEB 95 in View of Bradley .........147
`8. Claim 18 Is Obvious Over SWEB 95 Alone and/or In View
`of Leaf .........................................................................................150
`9. Claim 19 Is Obvious Over SWEB 95 Alone and/or In View
`of Leaf .........................................................................................157
`10. Claim 20 Is Unpatentable Over SWEB 95 .................................160
`i. Preamble ...............................................................................160
`ii. Routing Element ...................................................................161
`iii. Processing Element ..............................................................162
`iv. Dynamically Generating Element ........................................162
`v. Wherein Dispatching Includes: Examining .........................162
`vi. Wherein Dispatching Includes: Selecting ............................163
`vii. Wherein Dispatching Includes: Sending ..............................163
`11. Claim 21 Is Unpatentable Over SWEB 95 .................................164
`12. Claim 22 Is Unpatentable Over SWEB 95 .................................168
`13. Claim 23 Is Unpatentable Over SWEB 95 .................................169
`14. Claim 24 Is Unpatentable Over SWEB 95 .................................171
`15. Claim 25 Is Unpatentable Over SWEB 95 .................................172
`16. Claim 26 Is Unpatentable Over SWEB 95 .................................177
`17. Claim 27 Is Unpatentable Over SWEB 95 .................................180
`18. Claim 28 Is Unpatentable Over SWEB 95 .................................181
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`Petitioner Microsoft Corporation - Ex. 1007, p. iii
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`19. Claim 29 Is Unpatentable Over SWEB 95 .................................184
`20. Claim 29 Is Obvious Over SWEB 95 in View of Bradley .........185
`21. Claim 30 Is Unpatentable Over SWEB 95 .................................188
`22. Claim 31 Is Unpatentable Over SWEB 95 .................................189
`23. Claim 32 Is Unpatentable Over SWEB 95 .................................190
`i. Preamble ...............................................................................190
`ii. Routing Step .........................................................................191
`iii. Processing Step .....................................................................191
`iv. Dynamically Generating Step ..............................................191
`v. Wherein Dispatching Includes: Examining .........................192
`vi. Wherein Dispatching Includes: Selecting ............................192
`24. Claim 33 Is Obvious Over SWEB 95 Alone and/or in View
`of Leaf .........................................................................................197
`25. Claim 34 Is Unpatentable Over SWEB 95 .................................204
`i. Preamble ...............................................................................204
`ii. Routing Step .........................................................................205
`iii. Processing Step .....................................................................205
`iv. Dynamically Generating Step ..............................................205
`v. Wherein Dispatching Includes: Examining .........................206
`vi. Wherein Dispatching Includes: Selecting ............................206
`26. Claim 35 Is Unpatentable Over SWEB 95 .................................208
`27. Claim 36 Is Unpatentable Over SWEB 95 .................................208
`28. Claim 37 Is Unpatentable Over SWEB 95 .................................208
`29. Claim 38 Is Unpatentable Over SWEB 95 .................................209
`30. Claim 39 Is Unpatentable Over SWEB 95 .................................209
`31. Claim 40 Is Unpatentable Over SWEB 95 .................................210
`32. Claim 41 Is Unpatentable Over SWEB 95 .................................210
`33. Claim 42 Is Unpatentable Over SWEB 95 .................................210
`34. Claim 43 Is Unpatentable Over SWEB 95 Alone and/or In
`View of Bradley ..........................................................................211
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`Petitioner Microsoft Corporation - Ex. 1007, p. iv
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`35. Claim 44 Is Unpatentable Over SWEB 95 .................................211
`36. Claim 45 Is Unpatentable Over SWEB 95 .................................212
`37. Claim 46 Is Unpatentable Over SWEB 95 .................................212
`i. Preamble ...............................................................................212
`ii. Routing Step .........................................................................212
`iii. Processing Element ..............................................................213
`iv. Dynamically Generating Element ........................................213
`v. Wherein Dispatching Includes: Examining .........................214
`vi. Wherein Dispatching Includes: Selecting ............................214
`38. Claim 47 Is Unpatentable Over SWEB 95 Alone and/or In
`View of Leaf ...............................................................................215
`39. Claim 48 Is Unpatentable Over SWEB 95 .................................216
`i. Preamble ...............................................................................216
`ii. Routing Element ...................................................................216
`iii. Processing Element ..............................................................217
`iv. Dynamically Generating Element ........................................217
`v. Wherein Dispatching Includes: Examining .........................217
`vi. Wherein Dispatching Includes: Selecting ............................218
`40. Claim 49 Is Obvious Over SWEB 95 Alone and/or In View
`of Bradley ....................................................................................218
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`Petitioner Microsoft Corporation - Ex. 1007, p. v
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Microsoft Corporation as an
`1.
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`expert witness in the above-captioned proceeding. I have been asked to provide
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`my opinion about the state of the art of the technology described in U.S. Patent No.
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`5,894,554 (“the 554 Patent”) (Exhibit 1001) and on the patentability of the claims
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`of this patent. The following is my written report on these topics.
`
`B.
`2.
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`Background and Qualifications
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`I am currently employed as a Professor of Computer Science at
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`Harvard University. Specifically, I am the Thomas J. Waston, Sr. Professor of
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`Computer Science in the School of Engineering and Applied Sciences. I joined the
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`faculty of Harvard as an Assistant Professor in January 1999. I was promoted to
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`Associate Professor in 2002 and to Professor in 2005. In 2010, I began a three-
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`year term as Area Dean, which is essentially equivalent to what other schools call
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`Department Chair, of Computer Science, and held that position through June 2013.
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`My work address is 33 Oxford Street, Cambridge, MA 02138.
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`3.
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`I received my undergraduate degree in Mathematics and Computer
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`Science from Harvard College in 1991. I received a Certificate of Advanced Study
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`in Mathematics from Cambridge University in 1992. I received a Ph.D. in
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`Computer Science from the University of California at Berkeley in 1996. From
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`August 1996 to January 1999, I was employed as a Research Scientist at Digital
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`1
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`Petitioner Microsoft Corporation - Ex. 1007, p. 1
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`Systems Research Center. I am listed as an inventor or co-inventor on 18 issued
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`patents, and am the co-author of a textbook entitled “Probability and Computing”
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`published by Cambridge University Press.
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`4.
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`The fields of endeavor at issue in this case are networking and
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`distributed computing — in particular, load balancing for a distributed server, such
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`as for providing content via the Internet and World Wide Web. Much of my work
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`involves issues relating to networking. I have published over 150 research papers
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`in computer science conferences and journals, many of which have explored
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`algorithms and data structures for communication networks and data transmission.
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`I regularly serve on program committees for conferences in networking,
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`algorithms, and communication. For example, I have served on the program
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`committee multiple times for the SIGCOMM conference, which is described on
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`the conference homepage as follows: “SIGCOMM is the flagship annual
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`conference of the ACM Special Interest Group on Data Communication
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`(SIGCOMM) on the applications, technologies, architectures, and protocols for
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`computer communication.” Similarly, I have served several times on the Program
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`Committee for NSDI, the USENIX Symposium on Networked Systems Design and
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`Implementation. I have written papers on networking that have been published in
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`the IEEE/ACM Transactions on Computer Networking, the SIGCOMM
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`conference, the INFOCOM conference, and other major venues for networking
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`2
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`Petitioner Microsoft Corporation - Ex. 1007, p. 2
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`research. My graduate course entitled “Algorithms at the end of the wire” covers
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`many subjects at the intersection of networking and algorithms.
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`5. My research relates to a number of issues in networking and
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`distributed systems generally. My Ph.D. thesis, for example, considered the effects
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`that small amounts of information could have in distributed load balancing,
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`showing that even very small amounts of load information could yield dramatically
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`improved performance. I have written multiple papers on load balancing methods.
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`Much of my research has involved the design and analysis of hash-based
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`algorithms and data structures that are used in network environments and products.
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`In the past, Cisco has provided research funding for my work on hashing-based
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`and sampling-based data structures and algorithms and their potential use in
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`networking hardware. I have also consulted in the past for Huawei, another
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`networking company, on hash-based and sampling-based data structures and
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`algorithms for their potential use in networking hardware. I have also consulted in
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`the past for Microsoft on various networking topics, including working part-time in
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`a role similar to that of a Visiting Researcher at Microsoft Research New England
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`this past year during my sabbatical.
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`6.
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`As other examples of my research in communications and networking,
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`I have worked on coding methods that improve network efficiency and discussed
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`how they can be made compatible with networking protocols such as TCP
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`3
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`Petitioner Microsoft Corporation - Ex. 1007, p. 3
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`(Transmission Control Protocol). I have worked on utilizing overlay networks
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`efficiently for distribution of bulk data. I have worked on congestion control
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`schemes for multicast. I have multiple papers analyzing aspects of TCP. I have
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`worked on efficient means for computing network coordinates for overlay
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`networks for approximating inter-node latency. I have worked on the problem of
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`application identification of network traffic, using network graph algorithmic
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`techniques.
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`7.
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`Several of my patents relate to networking, including the use of error-
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`correction coding and erasure coding techniques in networks, distributed caching
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`for Internet systems, and load balancing for a multiprocessor system.
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`8. My Curriculum Vitae is submitted herewith as Ex. 1008.
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`C. Compensation and Prior Testimony
`I am being compensated at a rate of $750 per hour for my study and
`9.
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`other work in this matter. I am also being reimbursed for reasonable and
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`customary expenses associated with my work in this investigation. My
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`compensation is not contingent on the outcome of this matter or the specifics of my
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`testimony.
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`10. Previously, I have testified either by deposition or at trial in the
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`following litigation matters. The list below includes all deposition and trial
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`testimony within the last five years:
`
`4
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`Petitioner Microsoft Corporation - Ex. 1007, p. 4
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`• Juniper Networks, Inc., v. Palo Alto Networks, Inc. (U.S. District
`
`Court, Delaware), Case No. 1:11-cv-01258-SLR
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`• United States International Trade Commission, Investigation No.
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`337-TA-752 (Motorola Inc. complainant vs. Microsoft Corporation
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`respondent)
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`• U.S. Ethernet Innovations LLC v. Acer Inc. et al. (Northern District
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`of California Federal Court), Case No. 5:10-cv-03724-JW, Case
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`No. 5:10-cv-05254-JW, Case No. 5:10-cv-03481-JW
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`• U.S. Ethernet Innovations LLC v. Ricoh et al. (Eastern District of
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`Texas Federal Court), Case No. 6:12-cv-000235-LED-JDL, Case
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`No. 6:12-cv-000236-LED-JDL, Case No. 6:12-cv-000237-LED-
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`JDL
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`• Edgenet, Inc. vs. Home Depot USA, Inc. et al. (Wisconsin Circuit
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`Court), Case No. 10-CV-01090
`
`• 3Com Corporation vs. D-Link Systems Inc. (Northern District of
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`California Federal Court), Case No. CV-03-2177-VRW
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`• 3Com Corporation vs. Realtek Semiconductor Corporation
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`(Northern District of California), Case No. CV-05-00098-VRW
`
`5
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`Petitioner Microsoft Corporation - Ex. 1007, p. 5
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`• France Telecom S.A. v. Marvell Semiconductor, Inc. (S.D.N.Y.),
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`Case No. 12 Civ. 4986
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`• MiniCheck OCR Inc. vs. Global Payments Check Services, Inc.
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`(125th Judicial Court of Harris County, Texas), No. 2011-72523
`
`• Qiang Wang v. Palo Alto Networks, Inc., Nir Zuk, and Fengmin
`
`Gong (Northern District of California U.S. District Court), Case
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`No. 3:12-cv-05579-WHA
`
`• JobDiva Inc. v. Monster Worldwide Inc. (Southern District of
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`New York U.S. District Court), Case No. 1:13-CV-08229-KBF
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`Information Considered
`
`D.
`11. My opinions are based on my years of education, research, and
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`experience, as well as my investigation and study of relevant materials. In forming
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`my opinions, I have considered the materials I identify in this report and those
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`listed in Appendix A.
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`12.
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`I may rely upon these materials and/or additional materials to respond
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`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions — including
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`documents that may not yet have been provided to me.
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`6
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`Petitioner Microsoft Corporation - Ex. 1007, p. 6
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`13. My analysis of the materials produced in this investigation is ongoing
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`and I will continue to review any new material as it is provided. This report
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`14.
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`claims of the 554 Patent, I am relying upon certain basic legal principles that have
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`been explained to me.
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`15. First, I understand that for an invention claimed in a patent to be
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`found patentable, it must be, among other things, new and not obvious from what
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`was known before the invention was made.
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`16.
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`I understand the information that is used to evaluate whether an
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`invention is new and not obvious is generally referred to as “prior art” and
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`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
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`17.
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`I understand that in this proceeding Microsoft has the burden of
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`proving that the claims of the 554 Patent are anticipated by or obvious from the
`
`prior art by a preponderance of the evidence. I understand that “a preponderance
`
`7
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`Petitioner Microsoft Corporation - Ex. 1007, p. 7
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`of the evidence” is evidence sufficient to show that a fact is more likely true than it
`
`is not.
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`18. As I discuss further in the claim construction section below, I
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`understand that the 554 Patent is not expired, so its claims must be given the
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`broadest reasonable construction consistent with the specification. However, I also
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`understand that it is possible that the 554 Patent will expire before the Board in
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`these proceedings issues a final decision, in which case I understand that it is
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`possible the Board will apply the Phillips standard of claim construction in that
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`final decision, my understanding of which is set forth in greater detail below. The
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`claims after being construed are then to be compared to the information in the prior
`
`art.
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`19.
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`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below
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`compares the claims to patents and printed publications that are prior art to the
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`claims.
`
`20.
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`I understand that there are two ways in which prior art may render a
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`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
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`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
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`set forth below.
`
`8
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`Petitioner Microsoft Corporation - Ex. 1007, p. 8
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`A. Anticipation
`I understand that the following standards govern the determination of
`21.
`
`whether a patent claim is “anticipated” by the prior art.
`
`22.
`
`I have applied these standards in my evaluation of whether the claims
`
`of the 554 Patent would have been anticipated by the prior art.
`
`23.
`
`I understand that the “prior art” includes patents and printed
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`publications that existed before the earliest filing date (the “effective filing date”)
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`of the claim in the patent. I also understand that a patent will be prior art if it was
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`filed before the effective filing date of the claimed invention, while a printed
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`publication will be prior art if it was publicly available before that date.
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`24.
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`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
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`inherently, in a single prior art reference as recited in the claim. I understand that
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`claim limitations that are not expressly described in a prior art reference may still
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`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
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`complies with a published standard would indicate that the process must inherently
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`perform certain steps or use certain data structures that are necessary to comply
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`with the published standard.
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`9
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`Petitioner Microsoft Corporation - Ex. 1007, p. 9
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`25.
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`I understand that if a reference incorporates other documents by
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`reference, the incorporating reference and the incorporated reference(s) should be
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`treated as a single prior art reference for purposes of analyzing anticipation.
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`26.
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`I understand that it is acceptable to consider evidence other than the
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`information in a particular prior art document to determine if a feature is
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`necessarily present in or inherently described by that reference.
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`B. Obviousness
`I understand that a claimed invention is not patentable if it would have
`27.
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`been obvious to a person of ordinary skill in the field of the invention at the time
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`the invention was made.
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`28.
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`I understand that the obviousness standard is defined in the patent
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`statute (35 U.S.C. § 103(a)) as follows:
`
`29. 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
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`between the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`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.
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`10
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`Petitioner Microsoft Corporation - Ex. 1007, p. 10
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`30.
`
`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 the asserted claims of the 554 Patent would have been
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`considered obvious in April 1996.
`
`31.
`
`I understand that to find a claim in a patent obvious, one must make
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`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`understand that the obviousness question requires consideration of four factors
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`(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.
`In addition, I understand that the obviousness inquiry should not be
`
`32.
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`done in hindsight, but must be done using the perspective of a person of ordinary
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`skill in the relevant art as of the effective filing date of the patent claim.
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`33.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by those in the field; the taking
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`of licenses under the patent by others; expressions of surprise by experts and those
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`11
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`Petitioner Microsoft Corporation - Ex. 1007, p. 11
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`skilled in the art at the making of the invention; and the patentee proceeded
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`contrary to the accepted wisdom of the prior art. I also understand that any of this
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`evidence must be specifically connected to the invention rather than being
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`associated with the prior art or with marketing or other efforts to promote an
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`invention. I am not presently aware of any evidence of “objective factors”
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`suggesting the claimed methods are not obvious, and reserve my right to address
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`any such evidence if it is identified in the future.
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`34.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`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
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`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.
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`35.
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`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
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`12
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`Petitioner Microsoft Corporation - Ex. 1007, p. 12
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`36.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`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.
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`37.
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`I understand that sometimes it will be necessary to look to interrelated
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`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
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`combine the known elements in the fashion claimed by the patent at issue.
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`38.
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`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 Int'l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
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`requirement of a “teaching, suggestion, or motivation to combine” known elements
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`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
`
`13
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`Petitioner Microsoft Corporation - Ex. 1007, p. 13
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`Petition for Inter Partes Review of U.S. Patent No. 5,894,554
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`would have been known to a person of skill in the art, including common sense, or
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`derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
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`39.
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`I understand that a person of ordinary skill atte