UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`AT HOME BONDHOLDERS' LIQUIDATING TRUST
`Patent Owner
`
`_____________________
`
`Case IPR No. Unassigned
`U.S. Patent 6,286,045
`_____________________
`
`DECLARATION OF PETER KENT
`
`
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`IPR of US Pat. No. 6,286,045
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`Google Inc.
`GOOG 1003
`IPR of U.S. Patent No. 6,286,045
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`i
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`TABLE OF CONTENTS
`
`I. 
`Overview ......................................................................................................... 1 
`II.  My Background and Qualifications ................................................................ 2 
`III.  List of Documents Considered in Formulating My Opinion ......................... 4 
`IV.  Person of Ordinary Skill in the Art ................................................................. 5 
`V. 
`State of the Art ................................................................................................ 6 
`VI.  Overview of the '045 Patent.......................................................................... 11 
`VII.  Overview of Prior Art References ................................................................ 13 
`VIII.  Claim Construction ....................................................................................... 14 
`A. 
`"Banner" .............................................................................................. 15 
`B. 
`"Content General Request Signal" ...................................................... 16 
`C. 
`"Content Specific Request Signal" ...................................................... 18 
`IX.  Legal Principles ............................................................................................ 19 
`X.  Grounds of Unpatentability .......................................................................... 23 
`A.  Ground 1: Angles, Merriman, and HTTP1.0 (49, 51-53, 55-
`58, 64-67, and 70-71) .......................................................................... 23 
`Ground 2: Angles, Merriman, HTTP1.0, and Davis (50 and
`69) ........................................................................................................ 43 
`Ground 3: Wexler and HTTP1.0 (49-53 and 55-57) ........................... 46 
`C. 
`D.  Ground 4: Wexler, HTTP1.0, and Meeker (58, 64-67, and
`69-71) .................................................................................................. 60 
`XI.  Conclusion .................................................................................................... 66 
`
`B. 
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`I, Peter Kent, hereby declare as follows.
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`
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`
`
`I.
`
`Overview
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`1.
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`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration.
`
`2.
`
`I have been retained as an expert witness on behalf of Google Inc. for
`
`the above-captioned inter partes review (IPR). I am being compensated for my
`
`time in connection with this IPR at my standard consulting rate, which is $350 per
`
`hour. I understand that the petition for inter partes review involves U.S. Patent No.
`
`6,286,045 ("the '045 patent", GOOG 1001), which resulted from U.S. Application
`
`No. 08/858,650 ("the '650 application"), filed on May 19, 1997, naming Michael
`
`John Griffiths and James David McElhiney as the inventors. I understand that the
`
`effective filing date of the '045 patent is May 19, 1997. I further understand that,
`
`according to USPTO records, the '045 patent is currently assigned to At Home
`
`Bondholders' Liquidating Trust ("Patentee").
`
`3.
`
`In preparing this Declaration, I have reviewed the '045 patent and
`
`considered each of the documents cited herein, in light of general knowledge in the
`
`art. In formulating my opinions, I have relied upon my experience in the relevant
`
`art. I have also considered the viewpoint of a person of ordinary skill in the art
`
`(i.e., a person of ordinary skill in the field of web-based information management
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`and delivery, defined further below in Section IV) prior to May 19, 1997. I am
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`familiar with the technology at issue as of the May 19, 1997 effective filing date of
`
`the '045 patent. I am also familiar with the level of ordinary skill in the art with
`
`respect to the technology at issue as of the May 19, 1997 effective filing date.
`
`II. My Background and Qualifications
`
`4.
`
`Throughout the remainder of this declaration, I will refer to the field
`
`of network architecture and information delivery as the relevant field or the
`
`relevant art. In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience in the relevant art. A copy of my current curriculum
`
`vitae is provided as GOOG 1004, and it provides a comprehensive description of
`
`my academic and employment history.
`
`5.
`
`I had direct experience with banner advertising dating back to the
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`mid-1990s and am very familiar with banner advertising mechanisms during that
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`time frame. I am experienced with a variety of advertising systems from the mid-
`
`1990s to the present, all of which included various tools for counting ad
`
`impressions. Over the last 20 years, I worked with numerous systems that count
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`hits of various kinds such as Google Analytics, Analog, AWStats, Webalizer,
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`Urchin, and Webtrends.
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`6.
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`I am knowledgeable with respect to clearing and blocking browser
`
`caches and cache-blocking mechanisms that ensure that the correct ad is displayed
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`with various HTML meta tags, such as the pragma and cache-control tags. I began
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`working with HTML in 1993 and have been involved in Web development in
`
`various roles since then.
`
`7.
`
`In addition to authoring online-advertising portions of Poor Richard's
`
`Web Site in 1997, I authored Pay Per Click Search Engine Marketing for Dummies
`
`in 2005.
`
`8. My other publications related to online advertising include How to
`
`Make Money Online with eBay, Yahoo!, and Google; Poor Richard's Internet
`
`Marketing and Promotions: How to Promote Yourself, Your Business, Your Ideas
`
`Online; and The CDnow Story: Rags to Riches on the Internet.
`
`9.
`
`I have extensive online experience, dating back to 1984 (e.g.,
`
`participating in bulletin boards and online services, designing CompuServe
`
`navigation tools, and creating web pages). I have been working on the Internet day-
`
`to-day since 1993. I also have been working in software development since 1981
`
`and in cyberspace-software development since 1991.
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`10.
`
`I received a B.A. degree, in Geography/Geology, from University of
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`Sheffield, United Kingdom, in 1978.
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`Inter Partes Review of USPN 6,286,045
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`11. My additional contributions to the field are set forth in my current
`
`curriculum vitae (GOOG 1004).
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`III. List of Documents Considered in Formulating My Opinion
`
`12.
`documents:
`
`
`Google
`Exhibit # 
`1001
`
`1002 
`
`1007
`
`1008
`
`1009
`
`1010
`
`1012
`
`1013
`
`1014
`
`In formulating my opinion, I have considered
`
`the following
`
`Description
`
`Griffiths et al., U.S. Patent No. 6,286,045 (filed May 19, 1997;
`issued September 4, 2001).  
`
`File History for U.S. Patent No. 6,286,045.
`
`Wexler, U.S. Patent No. 5,960,409 (filed October 11, 1996, issued
`September 28, 1999).
`
`Fielding et al., "HTTP Working Group Internet Draft Hypertext
`Transfer Protocol – HTTP/1.0"(dated February 19, 1996; published
`February 20, 1996). 
`
`Garland et al., "Implementing Distributed Server Groups for the
`World Wide Web" Carnegie Mellon University (January 25, 1995).
`
`Meeker, Mary, "Technology: Internet/New Media The Internet
`Advertising Report" Morgan Stanley, U.S. Investment Research
`(January 1997).
`
`Angles et al., U.S. Patent No. 5,933,811 (filed August 20, 1996,
`issued August 3, 1999). 
`
`Merriman et al., U.S. Patent No. 5,948,061 (filed October 29, 1996,
`issued September 7, 1999).
`
`Davis et al., U.S. Patent No. 5,796,952 (filed March 21, 1997, issued
`August 18, 1998).
`
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`Google
`Exhibit # 
`1016
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`Description
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`J. Mogul and P. Leach, "Simple Hit-Metering for HTTP" (dated
`January 21, 1997; published January 22, 1997).
`
`1017
`
`1018
`
`1019
`
`1021
`
`C. Brown and S. Benford, "Tracking WWW Users: Experience from
`the Design of HyperVisVR," Webnet 96, Oct. 15-19, 1996.
`
`H. Skardal, "A Trip Report and some reflections," W3C Meeting on
`Web Efficiency and Robustness (Apr. 22, 1996).
`"WRQ Express PageMeter delivers breakthrough accuracy in Web
`metering," Business Wire, Apr. 28, 1997.
`Lopez-Ortiz, et al., "A Multicollaborative Push-Caching HTTP
`Protocol for the WWW," December 28, 1995.
`
`
`
`IV. Person of Ordinary Skill in the Art
`
`13.
`
`I understand that a person of ordinary skill in the art is one who is
`
`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
`
`art, and is a person of ordinary creativity. A person of ordinary skill in the art
`
`("POSA") would have had knowledge of Internet advertising including banner
`
`display counting, cache usage, and various HTTP-related technologies as of 1997.
`
`14. Applying the above understanding, it is my opinion that, as a general
`
`matter, a POSA at the time of the filing of the ’045 patent would have had at least
`
`(a) a Bachelor of Science degree in computer science and/or a similar field or (b) at
`
`least 3 years of experience in web-based information management and delivery
`
`systems.
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`V.
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`State of the Art
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`15. Counting accuracy for delivered content was a widely known issue at
`
`the time the '045 patent was filed, and the proposed solution in the '045 patent was
`
`also already widely known. In fact, attempting to improve counting accuracy via
`
`cache avoidance was such a burden on the Web's bandwidth that by early 1997 that
`
`other proposals were already being made to move advertisers away from the use of
`
`cache-avoidance. As stated in a HTTP Working Group memo:
`
`For a variety of reasons, content providers want to be
`able to collect information on the frequency with which
`their content is accessed. This desire leads to some of the
`"cache-busting" done by existing servers (exactly how
`much is unknown). This kind of cache-busting is done
`not for the purpose of maintaining transparency or
`security properties, but simply to collect demographic
`information. It has also been pointed out that some
`cache-busting
`is also done to provide different
`advertising images to appear on the same page (i.e.,
`each retrieval of the page sees a different ad.)
`
`…
`
`HTTP/1.1 already allows origin servers to prevent
`caching of responses, and we have evidence that at least
`some of the time, this is being done for the sole purpose
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`of collecting counts of the number of accesses of specific
`pages.
`
`(GOOG 1016, pp. 2-31.)
`
`16. Another reference describes various cache avoidance techniques
`
`including HTTP no-cache pragma, appending a random segment to the URL, and
`
`using a cgi script to generate dynamic pages:
`
`Many content providers have resorted to "beating the
`cache" when attempting to obtain full access statistics
`and
`tracking
`information. HTTP/1.0 specifies a
`'Pragma: no-cache' header, which is an instruction to the
`cache server not to cache that object. However, due to the
`misuse of the header by content providers, many proxy
`cache administrators have resorted to ignoring the header
`and caching the resource anyway. Cache busting
`methods include appending a random segment to the
`URL which confuses the cache into thinking that all
`the resources are different, and generating all pages
`dynamically through a cgi-script, the results of which
`do not get cached.
`
`(GOOG 1017, pp. 7-8.)
`
`
`1 Emphasis added throughout, unless otherwise noted.
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`17. The idea of using "cache-busting" to get accurate hit counts for an
`
`advertisement server was widely known and used. For example, Skardal states that
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`"[t]here are phenomenons in the Web working against caching. One is the 'hit
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`count problem' where content providers modify the URL's to be CGI/non-
`
`cacheable URL's in order to improve
`
`'hit count', which is needed for
`
`advertisement counting." (GOOG 1018, p. 2.) In another example, Business Wire
`
`reported that "[u]ntil now, web metering products could not accurately count page
`
`requests because of caching by both proxy servers and browsers. With Express
`
`PageMeter, however, the web server is notified each time the page is requested,
`
`even when it is served from cache." (GOOG 1019, p. 1.)
`
`18. HTTP redirect was also widely employed in the field of information
`
`delivery (including delivery of online advertisements). Among many examples,
`
`Wexler describes a third party accounting and statistical service "configured to
`
`issue a '302' redirect response when a specific URL is requested." (GOOG 1007,
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`5:16-17.) Similarly, Merriman describes an advertisement server for "send[ing] the
`
`redirect message causing the user's browser to receive the URL for the advertiser's
`
`web site based upon data stored in the server." (GOOG 1013, 7:22-26.)
`
`19. HTTP redirect provided many benefits that web developers at the time
`
`(including developers for web-based online advertisements) would recognize. One
`
`well-known use of HTTP redirect messages was to refer a client computer to a
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`server located in the close geographical proximity of the client for reducing
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`latency. (See GOOG 1021, p. 6; see also GOOG 1009, p. 9 ("The dispatcher would
`
`then take network load and proximity into account when deciding which server to
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`transfer a client to.") Another well-known use of HTTP redirect messages was to
`
`refer the client computer to a selected server in a group of distributed servers. It
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`was well known in the art that using a group of web servers can reduce latency
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`because a distributed web server group can balance the load and dispatch the
`
`request to the least loaded web server. (See GOOG 1009, pp. 1 and 3.) It was also
`
`well known in the art at the time that a group of web servers could use a HTTP
`
`redirect message to tell the web browser to contact the least loaded server. (See
`
`GOOG 1009, p. 4.)
`
`20.
`
`In web-based systems, a cache is a collection of locally stored web
`
`resources, such as web pages, embedded images, and other types of digital data
`
`retrieved over the Internet using HTTP. HTTP1.0 defines a cache as:
`
`A program's local store of response messages and the
`subsystem that controls its message storage, retrieval, and
`deletion. A cache stores cachable responses in order to
`reduce
`the response
`time and network bandwidth
`consumption on future, equivalent requests. Any client or
`server may include a cache, though a cache cannot be
`used by a server while it is acting as a tunnel.
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`(GOOG 1008, p. 6.)
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`HTTP1.0 also defines the standard function when caching is involved:
`
`Any party to the communication which is not acting as a
`tunnel may employ an internal cache for handling
`requests. The effect of a cache
`is
`that
`the
`request/response chain is shortened if one of the
`participants along the chain has a cached response
`applicable to that request. The following illustrates the
`resulting chain if B has a cached copy of an earlier
`response from O (via C) for a request which has not been
`cached by UA or A.
`
`request chain ---------->
`
`UA -----v----- A -----v----- B - - - - - - C - - - - - - O
`
`<--------- response chain
`
`(GOOG 1008, pp. 6-7.)
`
`21. Caching behavior may be modified. "Not all responses are cachable,
`
`and some requests may contain modifiers which place special requirements on
`
`cache behavior. Some HTTP/1.0 applications use heuristics to describe what is or
`
`is not a 'cachable' response, but these rules are not standardized." (GOOG 1008, p.
`
`7.)
`
`22.
`
`In other words, with default functioning of caching (i.e., no cache
`
`modifier specified), before the web browser on a client device sends a HTTP
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`request, the web browser first checks to see if there is a cached copy of the
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`requested response on the client device. If not, the web browser sends the HTTP
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`request. If a proxy is used to forward the HTTP request to the web server, the
`
`proxy processes the HTTP request similarly. The proxy first checks to see if there
`
`is a cached copy of the requested response. If not, the proxy forwards the HTTP
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`request to the web server.
`
`VI. Overview of the '045 Patent
`
`23. The '045 patent describes methods for "allowing information [e.g.,
`
`advertisement banners] to be accessed by terminals connected to the computer
`
`network." (GOOG 1001, Abstract.) Despite the length of the '045 patent claims,
`
`these claims do no more than add a few conventional steps to a standard method of
`
`delivering a "banner" referenced in a web page. The added steps include sending a
`
`non-blockable first request and a redirect signal triggering a second request to
`
`retrieve the banner. As discussed further below, these added steps themselves were
`
`well known in the art before the earliest possible priority date for the present
`
`application.
`
`24.
`
`In the Background of the Invention section of the '045 patent, Patentee
`
`argues that the "nature and extent of the problem of miscounting displays of
`
`banners is not well known or even understood in the industry or by people of
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`ordinary skill in the art." (GOOG 1001, 3:10-13.) Accordingly, "despite the well-
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`developed state of the art in the displaying of information, banners, and
`
`advertisements in conjunction with web pages, documents, or other information,
`
`there is still a need for a system for storing and delivering information and banners
`
`on a computer network where accurate counts of the number of times each piece of
`
`information and banner is displayed can be made and the information and banners
`
`are displayed quickly and efficiently to users or terminals." (GOOG 1001, 3:13-
`
`21.)
`
`25. To achieve this so-called "accurate count[] of the number of times
`
`each piece of information and banner is displayed," the '045 patent essentially
`
`retrieves a banner utilizing two requests. The first request is non-blockable, and the
`
`server basically counts the number of non-blockable requests received as the
`
`number of displays. The second request is triggered by a redirect signal returned by
`
`the server, and the client computer sends the second request to retrieve the banner
`
`and display the banner in a web page. The second request is blockable (that is,
`
`there is nothing special about the second request; it is a HTTP request with
`
`standard default cache behavior).
`
`26. Given the practice of cache avoidance and well-known operation of
`
`using a HTTP redirect to trigger a second HTTP request, combining a non-
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`blockable HTTP request and a HTTP redirect message would have been obvious to
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`Inter Partes Review of USPN 6,286,045
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`a POSA at the time of filing of the '045 patent.
`
`27.
`
`Indeed, a skilled person would have understood that the prior art
`
`references render obvious the claims. Not only are the independent claims a mere
`
`recitation of known technology, but the dependent claims do not serve to claim
`
`further novel features. Rather, they provide increasing levels of detail for otherwise
`
`conventional banner delivery and counting systems and processes.
`
`VII. Overview of Prior Art References
`
`28. U.S. Patent No. 5,960,409 to Wexler (GOOG 1007), filed October 11,
`
`1996. It is my understanding that Wexler is a prior art reference to the '045 patent.
`
`29.
`
`"HTTP Working Group Internet Draft Hypertext Transfer Protocol –
`
`HTTP/1.0," by Fielding et al. (HTTP1.0 or GOOG 1008), published on February
`
`20, 1996. It is my understanding that HTTP1.0 is a prior art reference to the '045
`
`patent.
`
`30.
`
`"Technology: Internet/New Media The Internet Advertising Report"
`
`by Meeker (GOOG 1010), published in January 1997. It is my understanding that
`
`Meeker is a prior art reference to the '045 patent.
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`31. U.S. Patent No. 5,933,811 to Angles et al. (GOOG 1012), filed on
`
`August 20, 1996. It is my understanding that Angles is a prior art reference to the
`
`'045 patent.
`
`32. U.S. Patent No. 5,948,061 to Merriman et al. (GOOG 1013), filed on
`
`October 29, 1996. It is my understanding that Merriman is a prior art reference to
`
`the '045 patent.
`
`33. U.S. Patent No. 5,796,952 to Davis et al. (GOOG 1014), filed on
`
`March 21, 1997. It is my understanding that Davis is a prior art reference to the
`
`'045 patent.
`
`34. By 1997 and prior to the invention, all the technology at issue in the
`
`'045 patent was broadly applied and well known by developers of web-based
`
`information delivery. No individual elements of the '045 claims were novel at the
`
`time of the alleged invention, and there was nothing novel about the manner in
`
`which those elements were combined in the claim. Further, there were no
`
`technological barriers to combining these elements to form the claimed invention.
`
`VIII. Claim Construction
`
`35.
`
`I understand that the challenged claims must be given their broadest
`
`reasonable interpretations ("BRI") in light of the specification of the '045 patent,
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`which means that the words of the claims should be given their broadest possible
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`meaning consistent with the specification of the '045 patent.2
`
`A.
`
`"Banner"
`
`36. Claims 49, 53, 58, 64, 79, and 71 recite a "banner." The '045 patent
`
`specification states:
`
`invention, the term
`the present
`For purposes of
`"banner" is meant to be construed very broadly and
`includes any information displayed in conjunction with a
`web page wherein the information is not part of the same
`file as the web page. That is, a banner includes anything
`that is displayed or used in conjunction with a web page,
`but which can exist separately from the web page or
`which can be used in conjunction with many web pages.
`Banners can include graphics, textual information, video,
`audio, animation, and links to other computer sites, web
`sites, web pages, or banners.
`
`
`2 I also understand that the broadest reasonable interpretation used here may
`
`be different from the interpretation that a POSA may give to the claims in another
`
`context—e.g., in litigation—and that the broadest reasonable interpretation may be
`
`informed by the construction advanced by a patentee in litigation.
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` (GOOG 1001, 2:28-37.)
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`37. Under BRI, a POSA would therefore have understood the term
`
`"banner" to mean "information displayed in conjunction with a web page wherein
`
`the information is not part of the same file as the web page." This would include
`
`graphics, textual information, video, audio, animation, and links to other computer
`
`sites, web sites, web pages, or banners.
`
`B.
`
`"Content General Request Signal"
`
`38. Claim 51 recites a "content general request signal." The '045 patent
`
`specification states:
`
`In other words, the initial banner request signal generated
`by terminal 36 during the step 112 can be a content
`general signal and may contain only the minimum
`amount of information needed to tell a designated
`computer site, information server, or other device which
`receives the initial banner request signal and on which a
`banner may or may not be stored or located, only that the
`terminal 36 desires that an unspecified banner be served
`to the terminal.
`
` (GOOG 1001, 15:8-16.)
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`39. The '045 patent specification further states "[i]f the optional selection
`
`step 113 is used with the method 110, the terminal 36 will only request during step
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`112 that a banner be served to the terminal 36, but the terminal 36 will not specify
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`which banner is to be served to the terminal 36." (GOOG 1001, 15:25-29.)
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`40. The '045 patent specification additionally states:
`
`A general content URL address for a banner does not
`provide the necessary information to determine which
`banner is to be displayed. Rather a general content URL
`address for a banner only indicates that a banner is to be
`displayed and the receiver of the signal generated by the
`terminal 36 during the step 112 can decide which banner
`is to be displayed during the selection step 113. A general
`content URL address for a banner could be of the form
`http://www.bannersite1.com/image;spacedesc=contentsit
`ename.
`
`(GOOG 1001, 16:50-58.)
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`41. Further, "The space descriptor field in the general content URL
`
`address can reference different groups of banners such as, for example, a collection
`
`of car advertisements, a collection of detergent advertisements, etc., depending on
`
`the web page providing the general content URL address." (GOOG 1001, 17:3-8.)
`
`42. Under BRI, a POSA would therefore have understood the term
`
`"content general request signal" to mean "a request indicating that information is to
`
`be displayed and that the receiver can decide what information is to be displayed."
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`C.
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`"Content Specific Request Signal"
`
`43. Claim 52 recites a "content specific request signal." The '045 patent
`
`specification states:
`
`If the optional selection step 113 is not used with the
`method 110, the terminal 36 will request during the step
`112 that a specific banner to [sic] be served to the
`terminal 36.
`
` (GOOG 1001, 15:23-25.)
`
`44. The '045 patent specification states:
`
`In order to speed up the process of downloading,
`transmitting, or serving a specific banner from an
`information server to the terminal 56, the content specific
`URL address of the requested or selected banner sent to
`the terminal during step 114 can contain the exact
`Internet Protocol (IP) address of the requested or selected
`banner. For example, instead of providing the specific
`content URL
`address
`for
`the banner 62
`as
`http://www.bannersite1.com/banner1.gif,
`the
`specific
`content URL address for the banner 62 could be provided
`as, for example, http://236.45.78.190/banner1.gif, thereby
`removing any need to use the Domain Name System
`(DNS)
`to
`convert
`the
`alphanumeric
`address
`
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`Declaration of Peter Kent (GOOG 1003)
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`"www.bannersite1.com" of the information server to its
`exact IP address.
`
`(GOOG 1001, 18:62-19:8.)
`
`45. Under BRI, a POSA would therefore have understood the term
`
`"content specific request signal" to mean "a request containing a content specific
`
`URL address with the location of the information."
`
`IX.
`
`Legal Principles
`
`46.
`
` I understand that my analysis requires an understanding of the scope
`
`of the '045 patent claims. I understand that claims subject to inter partes review are
`
`given the "broadest reasonable construction in light of the specification of the
`
`patent in which it appears." 42 C.F.R. § 42.100(b).
`
`47.
`
`I understand that a claim is invalid if it is anticipated or obvious. I
`
`understand that anticipation of a claim requires that every element of a claim is
`
`expressly or inherently disclosed in a single prior art reference. I do not render
`
`opinions regarding anticipation in connection with this proceeding.
`
`48.
`
`I understand that an obviousness analysis involves comparing a claim
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention
`
`("POSA") in view of the prior art and in light of the general knowledge in the art. I
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`also understand that when a POSA would have reached the claimed invention
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`Declaration of Peter Kent (GOOG 1003)
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`through routine experimentation, the invention may be deemed obvious.
`
`49.
`
`I also understand that obviousness can be established by combining or
`
`modifying the teachings of the prior art. Specific teachings, suggestions, or
`
`motivations to combine any first or primary prior art reference with a second prior
`
`art reference can be explicit or implicit, but must have existed before the '045
`
`patent was filed. I understand that prior art references themselves may be one
`
`source of a specific teaching or suggestion to combine features of the prior art, but
`
`that such suggestions or motivations to combine art may come from other sources
`
`as well. Specifically, the sources may include logic, judgment, and common sense
`
`available to a POSA rather than explicit statements in the prior art. I understand
`
`that it is not proper to combine references when there is a teaching away of such a
`
`combination. However, a reference's mere disclosure of more than one alternative
`
`does not constitute teaching away from any of these alternatives.
`
`50.
`
`I further understand that whether there is a reasonable expectation of
`
`success from combining references in a particular way is also relevant to the
`
`analysis. I understand there may be a number of rationales that may support a
`
`conclusion of obviousness, including:
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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` Substitution of one known element for another to obtain predictable
`
`results;
`
` Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
` Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
` "Obvious to try" – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
` Known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to
`
`one of ordinary skill in the art; or
`
` Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art teachings to arrive at the claimed invention.
`
`51.
`
`I understand that it is not proper to use hindsight to combine
`
`references or elements of references to reconstruct the invention using the claims
`
`as a guide. My analysis of the prior art is made as of the time the invention was
`
`made.
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`Inter Partes Review of USPN 6,286,045
`Declaration of Peter Kent (GOOG 1003)
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`52.
`
`I understand that so-called objective considerations may be relevant to
`
`the determination of whether a claim is obvious should the Patent Owner allege
`
`such evidence. Such objective considerations can include evidence of commercial
`
`success caused by an invention, evidence of a long-felt need that was solved by an
`
`invention, evidence that others copied an invention, or evidence that an invention
`
`achieved a surprising result. I understand that such evidence must have a nexus, or
`
`causal relationship to the elements of a claim, in order to be relevant to the
`
`obviousness or non-obviousness of the claim. I am unaware of any such secondary
`
`considerations having a nexus to the claims at issue in this proceeding.
`
`53.
`
`I understand that for a reference to be used to show a claim is obvious,
`
`the referenc