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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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`BRADIUM TECHNOLOGIES LLC
`Patent Owner
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`CASE: To Be Assigned
`Patent No. 7,139,794 B2
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`Microsoft Corp. Exhibit 1008
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 82
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`I hereby declare that all the statements made in this Declaration are of my
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`own knowledge and true; that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false
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`statements may jeopardize the validity of the application or any patent issued
`..
`therepn.
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`I declare under the penalty of perjury that all statements made in this
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`Declaration are true and correct.
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`Executed June 2nd
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`2015 in Douglas
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`MA - - - -
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`William R. Michalson
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`41826-3084/LEGAL 12585534 1.4
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`Microsoft Corp. Exhibit 1008
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`
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`TABLE OF CONTENTS
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`Page
`LIST OF APPENDICES .......................................................................................... iv
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`SUMMARY OF OPINIONS .......................................................................... 3
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 4
`A.
`Education and Work Experience .......................................................... 4
`B.
`Compensation ....................................................................................... 8
`C.
`Documents and Other Materials Relied Upon ..................................... 8
`IV. STATEMENT OF LEGAL PRINCIPLES ..................................................... 9
`A.
`Claim Construction .............................................................................. 9
`B.
`Anticipation .......................................................................................... 9
`C.
`Obviousness ........................................................................................ 10
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 10
`V.
`VI. TECHNOLOGY BACKGROUND OF THE 794 PATENT ....................... 13
`A. Data Communications over the Internet ............................................ 13
`B.
`Data Communications in Wireless Mobile Systems .......................... 15
`C.
`Image Tiles and Image Pyramids ....................................................... 17
`D.
`Compression of Image Tiles .............................................................. 22
`E.
`Progressive Image Resolution Enhancement ..................................... 23
`F.
`Three-Dimensional Graphics ............................................................. 25
`1.
`Overview of 3D Computer Graphics principles ...................... 25
`2.
`Texture ..................................................................................... 31
`G. Mip-Maps ........................................................................................... 35
`H.
`Progressive Meshes ............................................................................ 41
`VII. OVERVIEW OF THE 794 Patent ................................................................ 42
`VIII. IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINIONS .................................................................................................... 47
`IX. CLAIM CONSTRUCTION ......................................................................... 48
`-i-
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`41826-3084/LEGAL125855341.4
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`Microsoft Corp. Exhibit 1008
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`TABLE OF CONTENTS
`(continued)
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`Page
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`X. UNPATENTABILITY OF THE 794 PATENT CLAIMS ........................... 49
`A. GROUND 1: CLAIMS 1 AND 2 ARE UNPATENTABLE
`UNDER 35 U.S.C. § 103(a) AS BEING OBVIOUS OVER
`POTMESIL, HORNBACKER, AND LINDSTROM ........................ 49
`1.
`Overview of Potmesil, Hornbacker, and Lindstrom ............... 51
`2. Motivation to Combine Potmesil, Hornbacker, and
`Lindstrom. ................................................................................ 58
`Claim 1 is Rendered Obvious by Potmesil, Hornbacker,
`and Lindstrom .......................................................................... 62
`Claim 2 is Rendered Obvious by Potmesil, Hornbacker,
`and Lindstrom .......................................................................... 85
`GROUND 2: CLAIM 1 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER RUTLEDGE IN
`VIEW OF LIGTENBERG AND COOPER ..................................... 101
`1.
`Overview of Rutledge, Ligtenberg, and Cooper .................... 101
`2. Motivation to Combine Rutledge, Ligtenberg, and
`Cooper .................................................................................... 110
`Claim 1 Is Rendered Obvious by the Combination of
`Rutledge, Ligtenberg, and Cooper ......................................... 115
`GROUND 3: CLAIM 2 IS UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER RUTLEDGE IN
`VIEW OF LIGTENBERG, COOPER AND MIGDAL................... 126
`1.
`Overview of Migdal ............................................................... 126
`2. Motivation to Combine Migdal with Rutledge,
`Ligtenberg, and Cooper ......................................................... 127
`Claim 2 Is Rendered Obvious By Rutledge in view of
`Ligtenberg, Cooper, and Migdal ............................................ 128
`XI. OTHER PERTINENT GROUNDS OF PRIOR ART ................................ 135
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`B.
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`C.
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`3.
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`4.
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`3.
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`3.
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`Microsoft Corp. Exhibit 1008
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`TABLE OF CONTENTS
`(continued)
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`Page
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`A.
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`B.
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`C.
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`D.
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`CLAIMS 1 AND 2 ARE UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER FULLER IN
`VIEW OF HORNBACKER ............................................................. 136
`1.
`Claim 1 is Rendered Obvious by Fuller and Hornbacker ...... 138
`2.
`Claim 2 is Rendered Obvious by Fuller and Hornbacker ...... 149
`CLAIMS 1 AND 2 ARE UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER YAP IN VIEW
`OF RABINOVICH ........................................................................... 157
`1.
`The 794 Patent Fails To Distinguish Over Yap ..................... 158
`2.
`Claim 1 is Rendered Obvious by Yap and Rabinovich ......... 163
`3.
`Claim 2 is Rendered Obvious by Yap and Rabinovich ......... 172
`CLAIMS 1 AND 2 ARE UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER FULLER IN
`VIEW OF YAP ................................................................................ 179
`CLAIMS 1 AND 2 ARE UNPATENTABLE UNDER 35
`U.S.C. § 103(a) AS BEING OBVIOUS OVER POTMESIL IN
`VIEW OF HORNBACKER AND COOPER .................................. 180
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`-iii-
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`41826-3084/LEGAL125855341.4
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`Microsoft Corp. Exhibit 1008
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`LIST OF APPENDICES
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`Appendix A
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`Appendix B
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`Appendix C
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`Curriculum Vitae of William R. Michalson
`Excerpt of Hanan Samet, The Design and Analysis of Spatial
`Data Structures (1989, Reprinted with corrections in Jan. 1994)
`U.S. Patent No. 5,263,136 (DeAguiar et al.)
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`Appendix D
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`U.S. Patent 4,972,319 (Delorme)
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`Appendix E
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`Appendix F
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`Appendix G
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`Appendix H
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`Appendix I
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`Appendix J
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`Appendix K
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`Appendix L
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`Appendix M
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`Appendix N
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`B. Fuller and I. Richer, “The MAGIC Project: From Vision to
`Reality,” IEEE Network May/June 1996, pp. 15-25.
`
`International Telegraph and Telephone Consultative Committee
`(“CCITT”) Recommendation T.81, September 1992
`Ken Cabeen & Peter Gent, Image Compression and the
`Discrete Cosine Transform
`M. Antonini, Image Coding Using Wavelet Transform, IEEE
`Transactions on Image Processing, Vol. 1, No. 2, April 1992.
`U.S. Patent No. 5,321,520 (Inga et al.)
`
`U.S. Patent No. 6,182,114 (Yap et al.)
`
`U.S. Patent No. 5,179,638 (Dawson et al.)
`Lance Williams, Pyramidal Parametrics, Computer Graphics,
`vol. 17, no. 3, July 1983
`OpenGL 1.1 Standard, March 1997, available online at
`https://www.opengl.org/documentation/specs/version1.1/glspec
`1.1/node84.html#SECTION00681100000000000000
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`H. Hoppe, “Progressive Meshes,” SIGGRAPH ’96:
`Proceedings of the 23rd annual conference on computer
`graphics and interactive techniques, pp. 99-108.
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`Appendix O
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`U.S. Pat. 5,798,770 (Baldwin)
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`U.S. Patent No. 5,987,256 (Wu et al.)
`-iv-
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`41826-3084/LEGAL125855341.4
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`Appendix P
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`Microsoft Corp. Exhibit 1008
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`Appendix Q
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`Appendix R
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`Appendix S
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`Appendix T
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`Appendix U
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`Appendix V
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`Appendix W
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`Appendix X
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`Appendix Y
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`Appendix Z
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`Wireless LAN Product Listings: - 915 MHz Category
`Boris Rabinovich & Craig Gotsman, Visualization of Large
`Terrains in Resource-Limited Computing Environments (1997)
`User Datagram Protocol (UDP) (Windows CE 5.0, Microsoft)
`Available: https://msdn.microsoft.com/en-
`us/library/ms885773.aspx [Accessed April 28, 2015].
`OpenGL Standard Version 1.2.1, April 1999, available online at
`https://www.opengl.org/documentation/specs/version1.2/opengl
`1.2.1.pdf.
`
`Claim Chart Showing Teachings of Potmesil (Exhibit 1002)
`and Hornbacker (Exhibit 1003) Pertinent to Challenged Claims
`of U.S. patent No. 7,139,794
`
`Claim Chart Showing Teachings of Rutledge (Exhibit 1005),
`Ligtenberg (Exhibit 1004), and Cooper (Exhibit 1006) Pertinent
`to Challenged Claims of U.S. patent No. 7,139,794
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`Claim Chart Showing Teachings of Rutledge (Exhibit 1005),
`Ligtenberg (Exhibit 1004), Cooper (Exhibit 1006), and Migdal
`(Exhibit 1007) Pertinent to Challenged Claims of U.S. Patent
`No. 7,139,794
`
`George H. Forman and John Zahorjan, “The challenges of
`mobile computing,” Computer vol. 27, no. 4, pp. 38, 47 (April
`1994)
`K. Brown and S. Singh, A Network Architecture for Mobile
`Computing, INFOCOM ’96, Fifteenth Annual Joint Conference
`of the IEEE Computer Societies, Networking the Next
`Generation, Proceedings IEEE vol. 3, pp. 1388-139
`
`Kreller, B. et al. “UMTS: A Middleware Architecture and
`Mobile API Approach,” Personal Communications, IEEE, vol.
`5, no. 2, pp. 32-38 (April 1998)
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`-v-
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`41826-3084/LEGAL125855341.4
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`Microsoft Corp. Exhibit 1008
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`Appendix AA
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`Appendix BB
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`Appendix CC
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`Appendix DD
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`Hansen, J. et al., “Real-time synthetic vision cockpit display for
`general aviation,” AeroSense ’99, International Society for
`Optics and Photonics, 1999.
`
`Claim Chart Showing Teachings of Fuller and Hornbacker
`Pertinent to Challenged Claims of U.S. Patent No. 7,139,794
`
`Claim Chart Showing Teachings of Yap and Rabinovich
`Pertinent to Challenged Claims of U.S. Patent No. 7,139,794
`Theresa-Marie Rhyne, A Commentary on GeoVRML: A Tool
`for 3D Representation of GeoReferenced Data on the Web,
`International Journal of Geographic Information Sciences, issue
`4 of volume 13, 1999
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`-vi-
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`Microsoft Corp. Exhibit 1008
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`I.
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`INTRODUCTION
`1. My name is William R. Michalson. I am a professor of electrical and
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`computer engineering at Worcester Polytechnic Institute in Massachusetts.
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`5
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`2.
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`I have been engaged by Microsoft Corporation (“Microsoft”) to
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`investigate and opine on certain issues relating to U.S. Patent No. 7,139,794 B2
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`(the “794 Patent”) entitled “System and methods for network image delivery with
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`dynamic viewing frustum optimized for limited bandwidth communication
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`channels” in Microsoft’s Petition for Inter Partes Review of the 794 Patent
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`(“Microsoft IPR Petition”) which requests the Patent Trial and Appeal Board
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`(“PTAB”) to review and cancel all claims of the 794 Patent—claims 1 and 2
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`(“Challenged Claims”). I have also been engaged by Microsoft to investigate and
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`opine on certain issues relating to two other patents that are related to the 794
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`Patent— U.S. Patent Nos. 7,908,343 B2 and 8,924,506 B2 in additional petitions
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`15
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`for inter partes review by Microsoft. I understand that Bradium Technologies
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`LLC (“Bradium”) is asserting all three patents against Microsoft in an on-going
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`patent infringement lawsuit, No. 1:15-cv-00031-RGA, filed in the U.S. District
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`Court for the District of Delaware on January 9, 2015.
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`3.
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`I understand that the 794 Patent was assigned from the inventors Isaac
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`20
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`Levanon and Yoni Lavi to 3DVU, Inc. on April 7, 2009, then assigned from 3DVU,
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`41826-3084/LEGAL125855341.4
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`1
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`Microsoft Corp. Exhibit 1008
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`Inc. to Inovo Limited on June 5, 2009, and assigned from Inovo Limited to
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`Bradium on June 17, 2013. Bradium is therefore referred to as the “Patent Owner”
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`in this declaration.
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`4.
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`In this declaration, I will first discuss the technology background
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`5
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`related to the 794 Patent and then provide my analyses and opinions on claims 1
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`and 2 of the 794 patent. The discussion of the technology background includes an
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`overview of that technology as it was known before October 1999, which I
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`understand as the earliest invention date of the 794 Patent claimed by the inventors
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`in their inventor declarations submitted to the USPTO during the original
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`10
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`prosecution of the 794 Patent. This overview provides some of the bases for my
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`opinions with respect to the 794 Patent.
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`5.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`continue my investigation and study, which may include a review of documents
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`15
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`and information that may be produced, as well as testimony from depositions that
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`may not yet be taken.
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`6.
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`In forming my opinions, I have relied on information and evidence
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`identified in this declaration, including the 794 Patent, the prosecution history of
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`the 794 Patent, and prior art references listed as Exhibits to the Microsoft IPR
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`Petition and listed as appendices of this declaration.
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`41826-3084/LEGAL125855341.4
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`2
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`Microsoft Corp. Exhibit 1008
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`II.
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`SUMMARY OF OPINIONS
`7.
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`Claims 1 and 2 of the 794 Patent relate to a system and a method for
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`dynamic visualization of image data transferred through a communications channel.
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`For reasons explained below, none of the features described in claims 1 and 2 of
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`5
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`the 794 Patent were novel as of October 1999, nor does the 794 Patent teach a
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`novel and non-obvious way of combining these known features.
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`8.
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`Claims 1 and 2 of the 794 Patent relate to well-known technologies in
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`the computer industry such as multi-resolution hierarchical maps, image
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`compression, packetized data transmission, and three-dimensional (3D) graphics
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`rendering. No element of Claims 1 and 2 is novel, and the Claims 1 and 2 do not
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`bring these elements together in a way that brings any benefit beyond what a
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`person of ordinary skill in art would expect from the known functions of the
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`individual components. Claims 1 and 2 describe techniques that were well-known
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`in the field, and combine them in ways that would have been readily apparent to a
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`person of ordinary skill in the art with predictable results.
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`9.
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`It is my opinion that each of Claims 1 and 2 is invalid under the
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`patentability standard of 35 U.S.C. §103 as I understand them and as explained to
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`me by Microsoft’s counsel. Within this declaration, I discuss specific grounds of
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`invalidity of Claims 1 and 2; however, my opinion that Claims 1 and 2 are invalid
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`under 35 U.S.C. §103 is not limited to these specific grounds, and indeed, it is my
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`41826-3084/LEGAL125855341.4
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`3
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`Microsoft Corp. Exhibit 1008
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`opinion that Claims 1 and 2 would have been invalid in light of the general
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`knowledge of a person of ordinary skill in the art at the time of the alleged
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`invention.
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`10. For purposes of my analyses in this declaration only, I provide my
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`5
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`proposed construction of certain terms in Claims 1 and 2 in detail in a later part of
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`this declaration.
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`11. The subsequent sections of this declaration will first provide my
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`qualifications and experience and then describe details of my analyses and
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`observations.
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`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`12. I received a Ph.D. degree in Electrical Engineering in 1989 and a
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`Master of Science degree in Electrical Engineering in 1985 from the
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`Worcester Polytechnic Institute. I received a Bachelor of Science
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`15
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`degree in Electrical Engineering from Syracuse University in 1981.
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`13.
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`I have more than twenty years of experience in the fields of electrical
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`engineering, computer systems, navigation systems, and communications systems.
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`My experience includes the design, implementation and use of geographic
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`information systems (“GIS”), as well as the design, implementation and use of
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`navigation systems relying on GPS and other positioning system technologies. I
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`41826-3084/LEGAL125855341.4
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`4
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`Microsoft Corp. Exhibit 1008
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`also have extensive experience in computer communication and data processing
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`systems as well as systems for the efficient transmission of digital images and
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`other data. Additionally, I have experience in the design and implementation of
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`hardware and software systems used to render image data for display.
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`14.
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`I have published 16 papers in technical journals and 97 papers in
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`technical conferences. I hold eight U.S. patents in the fields of handheld GPS
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`(Global Positioning System), portable geolocation devices, and communication
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`networks. I have also authored one book chapter relating to optical interconnect
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`networks for massively parallel computers. I became a Senior Member of the
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`Institute of Electrical and Electronics Engineers (IEEE) in 2003.
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`15. My experience spans from product designs and R&D in industry,
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`teaching, research and development in an educational and research institution to
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`technology consulting to industry. I was an engineer at Raytheon Company for ten
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`years from 1981 to 1991. During this period, I worked on projects related to
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`15
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`computer display hardware for various applications, including air traffic control
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`applications.
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`16. After leaving Raytheon Company, I joined the Worcester Polytechnic
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`Institute and became a full-time faculty member there in 1991. My research at WPI
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`focuses on navigation systems and related technologies. I am the director of WPI’s
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`Center for Advanced Integrated Radio Navigation.
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`41826-3084/LEGAL125855341.4
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`5
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`Microsoft Corp. Exhibit 1008
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`17. My research projects at WPI cover various technologies and include
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`
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`(1) a system using tracking and communications technologies to track shipping
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`containers, (2) an automotive based system that combined GPS and map data in an
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`automotive environment, (3) a remote hazard detection system using GPS and
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`5
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`radio communications, and (4) a differential GPS system that combined GPS and
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`radio technologies to determine the precise path of vehicles operating off-road
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`during forest operations.
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`18.
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`I have worked as a consultant in the navigation and communication
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`systems fields, e.g., in the context of space shuttle docking operations, transfer of
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`traffic information to GPS devices, combinations of GPS and cellular
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`communications for tracking purposes, and map-based handheld tracking devices.
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`19.
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`I am familiar with numerous GIS and mapping products that existed
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`in the market since the late 1980s, including systems and software developed by
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`Etak, Microsoft, DeLorme, and others. In the conduct of my research and other
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`15
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`work, I have routinely used commercially available GIS and mapping products and
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`have developed mapping and visualization software for specialized applications.
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`Additionally, I have used and incorporated database systems such as Microsoft
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`Access, Borland Paradox, Oracle, SQL and others in my research and have
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`incorporated database systems into other hardware and software systems for use in
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`20
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`storing and retrieving GIS-related data.
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`41826-3084/LEGAL125855341.4
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`6
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`Microsoft Corp. Exhibit 1008
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`20.
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`I have done extensive research work in communications and
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`
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`networking system design, and have worked with all of the digital, analog and
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`software components needed to build communications and navigation systems. My
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`work with communications and networking protocols began in the mid-1980s with
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`TCP/IP over packet radio. I have used these and other communications and
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`networking protocols extensively in conducting my research. In addition, my work
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`on GPS and navigation systems involved implementing low-latency
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`communications to support differential techniques that allow a GPS receiver to
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`provide more accurate positioning information.
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`21.
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`I have extensive experience with the development and maintenance of
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`server computers, including the installation and maintenance of web servers and
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`file servers, as well as the design, development, test, and maintenance of web
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`based applications. These applications typically employ C/C++, Java, JavaScript,
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`PHP, HTML, MySQL, and etc. I am also experienced with server-client systems
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`where the client computer exchanges navigation and/or geographical information
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`with server computer through a wired and/or wireless network.
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`22. My curriculum vitae, which provides a detailed summary of my
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`education, work experience, publication, teaching history, and etc. is attached to
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`this declaration as Appendix A.
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`41826-3084/LEGAL125855341.4
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`Microsoft Corp. Exhibit 1008
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
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`B. Compensation
`23.
`I am being compensated for the services I am providing in this and
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`other Microsoft IPR petitions. The compensation is not contingent upon my
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`performance, the outcome of this inter partes review or any other proceedings, or
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`5
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`any issues involved in or related to this inter partes review or any other
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`proceedings.
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`C. Documents and Other Materials Relied Upon
`24. The documents on which I rely for the opinions expressed in this
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`declaration are documents and materials identified in this declaration, including the
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`10
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`794 Patent, patents related to the 794 Patent, the prosecution history for the 794
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`Patent and other patents related to the 794 Patent, the prior art references and
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`information discussed in this declaration, including the references attached as
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`exhibits of the IPR Petition for the 794 Patent: Maps Alive: Viewing Geospatial
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`Information on the WWW, Michael Potmesil, Computer Networks and ISDN
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`15
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`Systems Vol. 29, issues 8-13, pp. 1327-1342 (“Potmesil”) (Ex. 1002), WO
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`99/41675 to Cecil V. Hornbacker, III (“Hornbacker”) (Ex. 1003), An Integrated
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`Global GIS and Visual Simulation System by P. Lindstrom et al., Tech. Rep. GIT-
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`GVU-97-07, March 1997 (“Lindstrom”) (Ex. 1011), U.S. Pat. No. 5,682,441 to
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`Adrianus Ligtenberg et al. (“Ligtenberg”) (Ex. 1004), U.S. Pat. No. 6,650,998 to
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`20
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`Charles Wayne Rutledge et al. (“Rutledge”) (Ex. 1005), U.S. Pat. No. 6,118,456 to
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`41826-3084/LEGAL125855341.4
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`8
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`Microsoft Corp. Exhibit 1008
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`
`
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`David G. Cooper (“Cooper”) (Ex. 1006), and U.S. Pat. No. 5,760,783 to Migdal et
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
`
`al. (“Migdal”) (Ex 1007), B. Fuller and I. Richer, “The MAGIC Project: From
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`Vision to Reality,” IEEE Network May/June 1996, pp. 15-25 (“Fuller”) (Appendix
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`E), U.S. Patent No. 6,182,114 (“Yap”) (Appendix J), and any other references
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`5
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`specifically identified in this declaration, in their entirety, even if only portions of
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`these documents are discussed here in an exemplary fashion.
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`IV. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`25. Microsoft’s counsel has advised that, when construing claim terms of
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`10
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`an unexpired patent, a claim subject to inter partes review receives the broadest
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`reasonable interpretation (BRI) in light of the specification of the patent in which it
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`appears.
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`B. Anticipation
`26. Microsoft’s counsel has advised that in order for a patent claim to be
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`15
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`valid, the claimed invention must be novel. Microsoft’s counsel has further
`
`advised that if each and every element of a claim is disclosed in a single prior art
`
`reference, then the claimed invention is anticipated, and the invention is not
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`patentable according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013.
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`In order for an invention in a claim to be anticipated, all of the elements and
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`20
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`limitations of the claim must be shown in a single prior reference, arranged as in
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`41826-3084/LEGAL125855341.4
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`9
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`Microsoft Corp. Exhibit 1008
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`
`
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`the claim. A claim is anticipated only if each and every element as set forth in the
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
`
`claim is found, either expressly or inherently described, in a single prior art
`
`reference. In order for a reference to inherently disclose a claim limitation, that
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`claim limitation must necessarily be present in the reference.
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`5
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`C. Obviousness
`27. Microsoft’s counsel has also advised me that obviousness under pre-
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`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
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`understand that where a prior art reference does not disclose all of the limitations
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`of a given patent claim, that patent claim is invalid if the differences between the
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`10
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`claimed subject matter and the prior art reference are such that the claimed subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the relevant art. Obviousness can be based on a
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`single prior art reference or a combination of references that either expressly or
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`inherently disclose all limitations of the claimed invention. In an obviousness
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`15
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`analysis, it is not necessary to find precise teachings in the prior art directed to the
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`specific subject matter claimed because inferences and creative steps that a person
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`of ordinary skill in the art would employ can be taken into account.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`28.
`I understand from Microsoft’s counsel that the claims and
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`20
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`specification of a patent must be read and construed through the eyes of a person of
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`41826-3084/LEGAL125855341.4
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`10
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`Microsoft Corp. Exhibit 1008
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`
`
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`ordinary skill in the art at the time of the priority date of the claims. I have also
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
`
`been advised that to determine the appropriate level of a person having ordinary
`
`skill in the art, the following factors may be considered: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`5
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`sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`29. The “Background of the Invention” section of the 794 Patent
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`describes a “well recognized problem” of how to reduce the latency for
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`10
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`transmitting full resolution images over the Internet on an “as needed” basis,
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`particularly for “complex images” such as “geographic, topographic, and other
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`highly detailed maps.” Ex. 1001 at 1:32-47.
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`30. To solve this problem and to address some perceived issues in the
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`existing art, the 794 Patent discloses a system capable of “optimally presenting
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`15
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`image data on client systems with potentially limited processing performance,
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`resources, and communications bandwidth.” Id. at 3:38-42. The 794 Patent states
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`that the disclosed technology can achieve faster image transfer by (1) dividing the
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`source image into parcels/tiles, (2) processing the parcels/tiles into a series of
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`progressively lower resolution parcels/tiles, and (3) requesting and transmitting the
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`41826-3084/LEGAL125855341.4
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`11
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`Microsoft Corp. Exhibit 1008
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`
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`parcels/tiles needed for a particular viewpoint in a priority order, generally lower-
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
`
`resolution tiles first.
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`31.
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`In light of the disclosed technology in the 794 Patent, a person of
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`ordinary skill in the art for the 794 Patent would need education or work
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`5
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`experience in computer network communications. Because a “common
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`application” of the 794 Patent is to transmit “geographic, topographic, and other
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`highly detailed maps,” (id. at 1:35-37), a person of ordinary skill in the art would
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`require some knowledge and experience with geographic information systems
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`(“GIS”).
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`10
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`32. Based on the above considerations and factors, it is my opinion that a
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`person having ordinary skill in the art should have a Master of Science
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`or equivalent degree in electrical engineering or computer science, or
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`alternatively a Bachelor of Science or equivalent degree in electrical
`
`engineering or computer science, with at least 5 years of experience in
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`15
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`a technical field related to geographic information system (“GIS”) or
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`the transmission of image data over a computer network. This
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`description is approximate and additional educational experience
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`could make up for less work experience and vice versa.
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`41826-3084/LEGAL125855341.4
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`12
`
`Microsoft Corp. Exhibit 1008
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,139,794 B2
`
`
`VI. TECHNOLOGY BACKGROUND OF THE 794 PATENT
`33.
`It is my opinion that the 794 Patent describes obvious and predictable
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`combinations of technical features that were well-known in the art at the time the
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`794 Patent was filed and at the time of alleged invention. In this section of my
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`5
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`declaration, I provide an overview of some general principles that were understood
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`and documented in the art at the time of filing of the 794 Patent, and therefore
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`would be within the knowledge of a person of ordinary skill in the art. I use certain
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`references (including both patents and non-patent literature) as examples to
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`illustrate the background knowledge of a person of ordinary skill in the art, but the
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`10
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`knowledge of a person of ordinary skill in the art at the time regarding the claimed
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`features would not have been limited to these specific references.
`
`A. Data Communications over the Internet
`34. The predominant computer networking technology and set of
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`communications protocols used for most online communications today and prior to
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`15
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`the filing of the application for the 794 Patent is known as the Internet Protocol (IP)
`
`suite called TCP/IP, after its two main component protocols: the Transmission
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`Control Protocol and the Internet Protocol. The 794 Patent teaches at 7:28-49 that
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`its preferred embodiment uses TCP/IP to send data packets. In this declaration I do
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`not provide a detailed description of all characteristics of the very well-known
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`20
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`TCP/IP protocols, but focus on a few specific aspects of TCP/IP that are pertinent
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`41826-3084/LEGAL125855341.4
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`13
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`Microsoft Corp. Exhibit 1008
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`to