EXPERT DECLARATION OF DR. KEVIN NEGUS
`EXPERT DECLARATION OF DR. KEVIN NEGUS
`
`FOR
`FOR
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`INTER PARTES REVIEW OF U.S. PATENT NO. 8,648,717
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,648,717
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`1
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`SIERRA WIRELESS 1013
`SIERRA WIRELESS 1013
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`TABLE OF CONTENTS
`TABLE OF CONTENTS
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`I.(cid:1)
`I.
`
`INTRODUCTION AND QUALIFICATIONS ...................................................................3(cid:1)
`INTRODUCTION AND QUALIFICATIONS ................................................................. ..3
`
`A.(cid:1)
`A.
`B.(cid:1)
`B.
`
`Introduction ..............................................................................................................3(cid:1)
`Introduction ............................................................................................................ . .3
`Qualifications ...........................................................................................................4(cid:1)
`Qualifications ......................................................................................................... ..4
`
`II.(cid:1)
`11.
`
`MATERIALS REVIEWED ...............................................................................................11(cid:1)
`MATERIALS REVIEWED ............................................................................................. .. 11
`
`III.(cid:1)
`III.
`
`PERSON OF ORDINARY SKILL IN THE ART .............................................................11(cid:1)
`PERSON OF ORDINARY SKEL IN THE ART ........................................................... .. 11
`
`IV.(cid:1)
`IV.
`
`STANDARDS FOR CLAIM CONSTRUCTION, ANTICIPATION, AND
`STANDARDS FOR CLAIM CONSTRUCTION, ANTICIPATION, AND
`OBVIOUSNESS ................................................................................................................12(cid:1)
`OBVIOUSNESS .............................................................................................................. .. 12
`
`V.(cid:1)
`V.
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`THE ‘717 PATENT ...........................................................................................................19(cid:1)
`THE ‘717 PATENT ......................................................................................................... ..19
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`VI.(cid:1)
`VI.
`
`CLAIM CONSTRUCTION ...............................................................................................23(cid:1)
`CLAIM CONSTRUCTION ............................................................................................. ..23
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`VII.(cid:1) CLAIMS 1-3, 5-7, 10-24 AND 29-30 ARE OBVIOUS UNDER 35 U.S.C. § 103 ..........24(cid:1)
`VII.
`CLAIMS 1-3, 5-7, 10-24 AND 29-30 ARE OBVIOUS UNDER 35 U.S.C. § 103 ........ ..24
`
`1.(cid:1)
`1.
`2.(cid:1)
`2.
`
`Overview of the Invalidity Analysis ..........................................................24(cid:1)
`Overview of the Invalidity Analysis ........................................................ ..24
`Detailed Identification of Disclosures in the Prior Art ..........................34(cid:1)
`Detailed Identification of Disclosures in the Prior Art ........................ ..34
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`VIII.(cid:1) CONCLUSION ..................................................................................................................82(cid:1)
`VIII. CONCLUSION ................................................................................................................ ..82
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`I.
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`INTRODUCTION AND QUALIFICATIONS
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`A.
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`Introduction
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`1.
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`I, Dr. Kevin Negus, submit this declaration in support of Sierra Wireless America,
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`Inc., Sierra Wireless, Inc. and RPX Corp.’s (“Petitioners”) Petition for Inter Partes Review of
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`United States Patent No. 8,648,717 (“the ‘717 Patent”), owned by M2M Solutions LLC.
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`2.
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`I make this declaration based upon my personal knowledge. I am over the age of
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`21 and am competent to make this declaration.
`
`3.
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`The statements herein include my opinions and the bases for those opinions,
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`which relate to the following documents of the pending inter partes review petition:
`
`1001 U.S. Patent No. 8,648,717 (“the ‘717 patent”)
`1002 Prosecution History for U.S. Patent No. 8,648,717 (“the ‘717 prosecution
`history”).
`
`Int’l Patent Pub. No. WO99/49680 (“Whitley”)
`1003
`1004 Digital cellular telecommunications system, Phase 2+; Specification of the
`Subscriber Identity Module - Mobile Equipment, SIM - ME interface,
`GSM 11.11 version 7.4.0 Release 1999 (“SIM+ME Spec”)
`1005 U.S. Patent No. 5,959,529 (“Kail”)
`1006
`Int’l Patent Pub. No. WO 98/35516 (“Eldredge”)
`1007 Digital cellular telecommunications system (Phase 2+); AT command set
`for GSM Mobile Equipment (ME) (GSM 07.07 version 5.8.1 Release
`1996) (“AT Command Set”)
`1008 Excerpts from Expert Report of Dr. Nettleton
`1009 Digital cellular telecommunications system, Phase 2+; General Packet
`Radio Service (GPRS); Service description; Stage 2 (GSM 03.60 version
`6.3.2 Release 1997) (“GPRS Service Description”)
`1010 U.S. Patent No. 5,772,586
`1011 U.S. Patent No. 6,225,901
`
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`1012 U.S. Patent No. 6,804,558
`1014 Digital cellular telecommunications system, Phase 2+; Specification of the
`SIM Application Tookit for the Subscriber Identity Module – Mobile
`Equipment (SIM-ME) interface (GSM 11.14 version 7.3.0 Release 1998)
`1015 The Subscriber Identity Module, European Telecommunications
`Standardization and the Information Society, The State of the Art 1995
`(“State of the Art”)
`
`
`
`4.
`
`Although I am being compensated for my time at a rate of $500 per hour in
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`preparing this declaration, the opinions herein are my own, and I have no stake in the outcome of
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`the review proceeding. My compensation does not depend in any way on the outcome of the
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`Petitioner’s petition.
`
`B. Qualifications
`
`5.
`
`I am qualified by education and experience to testify as an expert in the field of
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`telecommunications. Attached, as Attachment A, is a copy of my resume detailing my
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`experience and education. Additionally, I provide the following overview of my background as it
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`pertains to my qualifications for providing expert testimony in this matter.
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`6.
`
`I am a Full Professor of Electrical Engineering at Montana Tech University in
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`Butte, MT. I lead a research program at Montana Tech to improve the delivery of mobile
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`broadband communications services to rural and remote areas. I mentor, supervise and teach
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`both senior undergraduate and graduate students of Electrical Engineering in the general fields of
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`telecommunications and networking with an emphasis on wireless systems.
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`7.
`
`In 1988, I received my Ph.D. in Engineering from the University of Waterloo in
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`Canada. My Ph.D. research on the modeling of bipolar semiconductor devices was jointly
`
`supervised by the Departments of Electrical Engineering and Mechanical Engineering. My
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`graduate course work was primarily in Electrical Engineering and included such subjects as
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`semiconductor device physics and fabrication, wireless circuit design, and wireless propagation
`
`analysis. For my Ph.D. work, I received the Faculty Gold Medal in 1988 for the best Ph.D. thesis
`
`in the entire Faculty of Engineering across all Departments for that year. My Ph.D. thesis
`
`research also formed the basis of a paper published in 1989 that won the award for Best Paper in
`
`1989 for the IEEE (Institute of Electrical and Electronic Engineers) journal in which it was
`
`published.
`
`8.
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`In 1984 and 1985, respectively, I received the B.A.Sc. and M.A.Sc. degrees in
`
`Mechanical Engineering from the University of Waterloo in Canada. My coursework and
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`research work included, amongst many other topics, extensive embedded firmware development
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`for automation applications and implementation of networks and communications protocols. For
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`my M.A.Sc. research and academic achievements, I received the prestigious University Gold
`
`Medal in 1985 for the best Masters thesis in the entire University of Waterloo for that year.
`
`9.
`
`In 1986, I joined the Palo Alto Research Center of Fairchild Semiconductor in
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`Palo Alto, CA. I worked directly for Dr. James Early who was the well known discoverer of the
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`Early effect in bipolar semiconductor devices and pioneer of the common emitter amplifier
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`topology that forms the basis of many wireless circuits to this day. At Fairchild, I participated in
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`the development of devices and products for high speed applications such as wired networking,
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`RISC microprocessors and wireless communications.
`
`10.
`
`In 1988, I took the position of Member of the Technical Staff at Avantek, Inc. in
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`Newark, CA. I was hired to develop products for both wireless and wired data networking
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`applications. Some of the components I developed early in my career at Avantek were used for
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`1st generation wireless local area network (WLAN) products, voiceband modem equipment,
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`wired data networking both in the LAN and WAN and 1st generation cellular handsets and base
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`stations based on AMPS or TACS.
`
`11.
`
`In 1991, Avantek, Inc. was purchased by the Hewlett-Packard Company. I
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`continued to work for Hewlett-Packard until 1998 in such roles as IC Design Manager, Director
`
`of Chipset Development and Principal System Architect. In 1992, Hewlett-Packard assigned me
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`to work on the “Field of Waves” project, which was a major multi-division effort to build
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`WLAN products for mobile computers. The project was cancelled in 1993. However, the work I
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`did on the project was leveraged into producing the world’s first IEEE 802.11 chipset, which my
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`division at Hewlett-Packard first offered for sale in 1994. I led the project to develop and market
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`this chipset for many early WLAN product companies including Proxim, Symbol (now part of
`
`Motorola) and Aironet (now part of Cisco). I also helped coordinate efforts within Hewlett-
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`Packard’s many product divisions to guide extensive research projects on WLAN protocols and
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`technology at Hewlett-Packard’s central research laboratories in Palo Alto, CA and Bristol, U.K.
`
`12.
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`I developed or led the development of multiple chips and chipsets for 2G cellular
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`radio systems based on GSM, IS-54 (TDMA), and IS-95 (CDMA). A number of these chips
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`were directed solely to cellular mobile stations and done specifically for major Hewlett-Packard
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`customers and cellular handset and module manufacturers such as Motorola, Ericsson and
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`Siemens. I was also involved in the development of power amplifier chips and modules for
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`cellular mobile stations, cordless phones, wireless networking devices and cellular infrastructure
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`products including those directed towards then emerging 3rd generation cellular standards such
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`as WCDMA, 1xRTT and EV-DO.
`
`13.
`
`During my time at Avantek and Hewlett-Packard, I also developed or led
`
`development teams for numerous chipsets or general purpose chips used in other wired and
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`wireless communications applications such as fiber optic transceivers, cordless telephones, cable
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`set-top receivers, wired networking equipment, cellular infrastructure equipment, voiceband and
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`broadband wired modems and satellite TV receivers.
`
`14.
`
`In 1998, I joined Proxim, Inc. in Mountain View, CA. At that time, Proxim was
`
`engaged in the development and sale of wired and wireless products for home and enterprise
`
`networking applications based on several different wired and wireless networking protocols. I
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`stayed at Proxim through 2002 and was the Chief Technology Officer for this publicly-traded
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`company at the time of my departure. During my career at Proxim, I led or participated in the
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`development of many WLAN and WWAN products and/or chipsets for network adapters, OEM
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`design-in modules, access points, bridges, switches, and routers that used a wide variety of bus,
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`LAN, or WAN wired interfaces. I have supervised many engineers including those responsible
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`for embedded firmware development to implement various wired and wireless networking,
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`reservation, and security protocols at the MAC layer and above, those responsible for HDL code
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`creation of baseband chips to implement PHY and MAC algorithms, as well as other engineers
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`that developed hardware reference designs, modem algorithms and chipsets.
`
`15.
`
`During my many years of development of products providing voice, data and/or
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`streaming media capabilities, I have acquired a deep understanding of the cellular radio system,
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`the Public Switched Telephone Network (PSTN) and the public Internet network architectures
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`and protocols. A partial list of networking and telephony protocols that I am familiar with
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`includes DHCP, SNMP, TCP, UDP, IP, SIP, ICMP, SS7, ISDN, ISUP, TCAP, and MTP.
`
`16.
`
`I have been involved over the course of my career specifically with voiceband
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`modems for both wireless and wired networks including the PSTN on multiple occasions. I am
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`familiar with many ITU-T (or CCITT) Recommendations for voiceband modems including at
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`least V.8, V.25, V.34, V.90 and V.92.
`
`17.
`
`Over the past 25+ years I have personally developed, modified, or analyzed
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`numerous software or firmware modules for many different applications as well as supervised
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`many engineers performing the same tasks. I have implemented or supervised the
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`implementation of software and firmware code and/or hardware description language (HDL)
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`code for many different communications protocols across all layers. I have developed or
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`supervised the development of chips with both wireless baseband modem functionality and
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`embedded processors including those licensed by ARM and MIPS. I have programmed with
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`multiple high level languages for software and firmware code including C, C++, Fortran, Forth,
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`BASIC, Pascal, Lisp and COBOL. I have developed products with HDL code including VHDL
`
`and Verilog. I also have firsthand experience with assembly language programming. I have
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`personally designed a wide variety of analog, RF, and digital circuit elements at both the chip
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`and board level using various netlist-driven, schematic capture and manual or automated layout
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`CAE/CAD tools.
`
`18.
`
`Since 2002, I have been an independent consultant and have provided services to
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`a number of companies including some that have developed IEEE 802.11 products. In particular,
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`from 2002 until 2007 I was Chairman of WiDeFi, Inc. – a company that developed chips and
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`embedded firmware for 802.11 repeater products based on 802.11a, b, g and draft n amendments.
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`From 2007-2011, I was Chairman of Tribal Shout – a company that delivered IP voice and audio
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`streaming media using VoIP to any cellular or landline phone including those reachable only by
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`the circuit-switched connections such as the PSTN and 2nd generation cellular radio. Since 2010,
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`I have been Chairman and Chief Technology Officer of CBF Networks, Inc. (dba Fastback
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`Networks) – a company that develops fiber extension products for backhaul of data networks
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`including WiFi, HSPA, CDMA2000, WiMax and LTE cellular radio systems. I have architected
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`the products of Fastback Networks specifically around the re-use of chips originally developed
`
`and intended for LTE standards-based operation.
`
`19.
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`I have been or am currently a Board Observer on behalf of the venture capital
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`firm Camp Ventures at two companies that develop semiconductor components including one
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`that is developing technology specifically to improve the system performance of HSPA and LTE
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`cellular radio systems (Quantance) and another that provides system on a chip (SOC)
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`microcontrollers, OEM design-in modules and firmware with 802.11 and wired interfaces for
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`embedded applications (GainSpan). I have also been a technology and/or business strategy
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`advisor to multiple early stage companies that are developing such products as new wireless
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`communications systems (AirTight), radios (Mojix) and components (SiTime).
`
`20.
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`I have actively monitored or participated in the IEEE 802.11 standards process
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`continuously since 1989. I am a listed contributor to the highly successful IEEE 802.11g
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`standard published in 2003 that describes the wireless communications protocols used by over 1
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`billion wireless network adapters deployed to date. In 2002 and 2003, I participated in the IEEE
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`802.11 Wireless Next Generation Committee that was responsible for launching the 802.11n
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`standards development process.
`
`21.
`
`In 1996, I was assigned the responsibility within the Hewlett-Packard Company
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`for developing the HomeRF standard for WLANs specifically for home networking applications.
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`I eventually became Chairman of the Technical Subcommittee of HomeRF that wrote the
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`HomeRF standard. The HomeRF standard was essentially a modification of the IEEE 802.11
`
`standard with significant changes to the PHY and MAC layers to lower cost and improve
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`performance and security for home networking applications including integrated voice capability
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`over both IP and circuit-switched connections. From 1998 to 2002, millions of wireless network
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`adapters and access points from several different companies were shipped based upon
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`compliance to the HomeRF standard.
`
`22.
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`I have specific experience with many wired and wireless networking standards
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`including IEEE 802.1 and 802.3 (the “Ethernet” family of wired LANs), IEEE 802.11 (the
`
`“WiFi” family of wireless LANs), IEEE 802.15 (personal area networks or “PAN”), IEEE
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`802.16 (also known as “WiMax”), various cellular communications standards (such as IS-19, IS-
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`41, IS-54, IS-95, IS-136, IS-826, IS-707, IS-856, IS-2000, GSM, GPRS, EDGE, UMTS,
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`CAMEL, WCDMA, HSPA, and LTE), various cordless telephone standards (such as CT-2,
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`DECT, and PHS), and other wired networking standards (such as DOCSIS, SONET and FDDI).
`
`23.
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`I am an author or co-author of many papers that have been published in
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`distinguished engineering journals or conferences such as those of the IEEE or ASME. An
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`exemplary list of these publications is included in my resume.
`
`24.
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`I am also a former member of the Federal Communication Commission’s
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`Technological Advisory Committee as an appointee of then Chairman Michael Powell. I have
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`also served on the Wyoming Telecommunications Council as an appointee of then Governor Jim
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`Geringer after confirmation by the Wyoming State Senate.
`
`25.
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`I am named as an inventor on multiple U.S. patents all of which have related in at
`
`least some way to products for wired and/or wireless networks. Some of my patents have been
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`specifically for innovations in wireless network protocols and wireless network product
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`implementations.
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`26.
`
`During the past several years, I have provided expert testimony, reports or
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`declarations in the cases of Agere v. Sony (on behalf of plaintiff Agere), Linex v. Belkin et al (on
`
`behalf of defendant Cisco), CSIRO v. Toshiba et al and several related cases (all on behalf of
`
`plaintiff CSIRO), Freedom Wireless v. Cingular et al (on behalf of plaintiff Freedom Wireless),
`
`Rembrandt v. HP et al (on behalf of defendant HP), DNT v. Sprint et al (on behalf of the
`
`defendants), Teles v. Cisco (on behalf of defendant Cisco), WiAV v. HP (on behalf of defendant
`
`HP), SPH v. Acer et al (on behalf of the defendants), LSI v. Funai (on behalf of plaintiff LSI),
`
`WiAV v. Dell and RIM (on behalf of the defendants), Wi-LAN v. RIM (on behalf of defendant
`
`RIM), LSI v. Barnes&Noble (on behalf of plaintiff LSI), Novatel v. Franklin and ZTE (on behalf
`
`of plaintiff Novatel), LSI v. Realtek (on behalf of plaintiff LSI), Wi-LAN v. Apple et al (on
`
`behalf of the defendants), EON v. Sensus et al (on behalf of defendants Motorola, US Cellular
`
`and Sprint), M2M v Sierra et al (on behalf of defendants Sierra and Novatel), Intellectual
`
`Ventures v. AT&T et al (on behalf of the defendants), Intellectual Ventures v. Motorola (on
`
`behalf of defendant Motorola), and TQ Beta v. Dish (on behalf of Dish).
`
`II. MATERIALS REVIEWED
`
`27.
`
`In forming my opinions, I reviewed the documents referenced above.
`
`III.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`28.
`
`I understand that the content of a patent (including its claims) and prior art should
`
`be interpreted the way a person of ordinary skill in the art would have interpreted the material at
`
`the time of invention.
`
`29.
`
`The ‘717 Patent is a continuation application of U.S. Pat. No. 8,542,111, which is
`
`a continuation of U.S. Pat. App. No. 13/328,095, filed on December 16, 2011, which a
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`continuation of U.S. Pat. No. 8,094,010, which is a continuation of U.S. Pat. No. 7,583,197,
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`which is a continuation of U.S. Pat. App. No. 10/296,571, which was filed as PCT App. No.
`
`PCT/EP01/05738 on May 18, 2001. I understand that the “time of invention” here is the date that
`
`the applicants for the ‘717 Patent first filed their application in the United States Patent and
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`Trademark Office, namely, May 18, 2001.
`
`30.
`
`I note that the ‘717 Patent claims priority to a foreign application: Finnish
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`Application No. 20001239 filed on May 23, 2000.
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`31.
`
`It is my opinion that one of ordinary skill in the art at the time of the filing date of
`
`the patent would have had at least an undergraduate degree in Electrical Engineering and three
`
`years of experience working the development of wireless subscriber terminal systems or
`
`components, or an equivalent combination of education and experience in related fields.
`
`32.
`
`In addition to my testimony as an expert, I am prepared to testify as someone who
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`actually practiced in the field from 1986 to present, who actually possessed at least the
`
`knowledge of a person of ordinary skill in the art in that time period, and who actually worked
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`with others possessing at least the knowledge of a person of ordinary skill in the art in that time
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`period.
`
`33.
`
`I understand that the person of ordinary skill is a hypothetical person who is
`
`assumed to be aware of all the pertinent information that qualifies as prior art. In addition, the
`
`person of ordinary skill in the art makes inferences and takes creative steps.
`
`IV.
`
`STANDARDS FOR CLAIM CONSTRUCTION, ANTICIPATION, AND
`
`OBVIOUSNESS
`
`34.
`
`I have a general understanding of validity based on my experience with patents
`
`and my discussions with counsel.
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`35.
`
`I have a general understanding of prior art and priority date based on my
`
`experience with patents and my discussions with counsel.
`
`36.
`
`I understand that inventors are entitled to a priority date up to one year earlier
`
`than the date of filing to the extent that they can show complete possession of particular claimed
`
`inventions at such an earlier priority date and reasonable diligence to reduce the claims to
`
`practice between such an earlier priority date and the date of filing of the patent. I understand
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`that if the patent holder contends that particular claims are entitled to an earlier priority date than
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`the date of filing of the patent, then the patent holder has the burden to prove this contention with
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`specificity.
`
`37.
`
`I understand that an invention by another must be made before the priority date of
`
`a particular patent claim in order to qualify as “prior art” under 35 U.S.C. § 102 or § 103, that a
`
`printed publication or a product usage must be publicly available before the priority date of a
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`particular patent claim in order to qualify as “prior art” under 35 U.S.C. § 102(a), that a printed
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`publication or a product usage or offer for sale must be publicly available more than one year
`
`prior to the date of the application for patent in the United States in order to qualify as “prior art”
`
`under 35 U.S.C. § 102(b), or that the invention by another must be described in an application
`
`for patent filed in the United States before the priority date of a particular patent claim in order to
`
`qualify as “prior art” under 35 U.S.C. § 102(e). I understand that the Defendants have the
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`burden of proving that any particular reference or product usage or offer for sale is prior art.
`
`38.
`
`I have a general understanding of anticipation based on my experience with
`
`patents and my discussions with counsel.
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`39.
`
`I understand that anticipation analysis is a two-step process. The first step is to
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`determine the meaning and scope of the asserted claims. Each claim must be viewed as a whole,
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`and it is improper to ignore any element of the claim. For a claim to be anticipated under U.S.
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`patent law: (1) each and every claim element must be identically disclosed, either explicitly or
`
`inherently, in a single prior art reference; (2) the claim elements disclosed in the single prior art
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`reference must be arranged in the same way as in the claim; and (3) the identical invention must
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`be disclosed in the single prior art reference, in as complete detail as set forth in the claim.
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`Where even one element is not disclosed in a reference, the anticipation contention fails.
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`Moreover, to serve as an anticipatory reference, the reference itself must be enabled, i.e., it must
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`provide enough information so that a person of ordinary skill in the art can practice the subject
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`matter of the reference without undue experimentation.
`
`40.
`
`I further understand that where a prior art reference fails to explicitly disclose a
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`claim element, the prior art reference inherently discloses the claim element only if the prior art
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`reference must necessarily include the undisclosed claim element. Inherency may not be
`
`established by probabilities or possibilities. The fact that an element may result from a given set
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`of circumstances is not sufficient to prove inherency. I have applied these principles in forming
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`my opinions in this matter.
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`41.
`
`I have a general understanding of obviousness based on my experience with
`
`patents and my discussions with counsel.
`
`42.
`
`I understand that a patent claim is invalid under 35 U.S.C. § 103 as being obvious
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`only if the differences between the claimed invention and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a person of
`
`ordinary skill in that art. An obviousness analysis requires consideration of four factors: (1)
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`scope and content of the prior art relied upon to challenge patentability; (2) differences between
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`the prior art and the claimed invention; (3) the level of ordinary skill in the art at the time of the
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`invention; and (4) the objective evidence of non-obviousness, such as commercial success,
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`unexpected results, the failure of others to achieve the results of the invention, a long-felt need
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`which the invention fills, copying of the invention by competitors, praise for the invention,
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`skepticism for the invention, or independent development.
`
`43.
`
`I understand that a prior art reference is proper to use in an obviousness
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`determination if the prior art reference is analogous art to the claimed invention. I understand
`
`that a prior art reference is analogous art if at least one of the following two considerations is
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`met. First a prior art reference is analogous art if it is from the same field of endeavor as the
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`claimed invention, even if the prior art reference addresses a different problem and/or arrives at a
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`different solution. Second, a prior art reference is analogous art if the prior art reference is
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`reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of
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`endeavor as the claimed invention.
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`44.
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`I understand that it must be shown that one having ordinary skill in the art at the
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`time of the invention would have had a reasonable expectation that a modification or
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`combination of one or more prior art references would have succeeded. Furthermore, I
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`understand that a claim may be obvious in view of a single prior art reference, without the need
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`to combine references, if the elements of the claim that are not found in the reference can be
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`supplied by the knowledge or common sense of one of ordinary skill in the relevant art.
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`However, I understand that it is inappropriate to resolve obviousness issues by a retrospective
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`analysis or hindsight reconstruction of the prior art and that the use of “hindsight reconstruction”
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`is improper in analyzing the obviousness of a patent claim.
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`45.
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`I further understand that the law recognizes several specific guidelines that inform
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`the obviousness analysis. First, I understand that a reconstructive hindsight approach to this
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`analysis, i.e., the improper use of post-invention information to help perform the selection and
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`combination, or the improper use of the listing of elements in a claim as a blueprint to identify
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`selected portions of different prior art references in an attempt to show that the claim is obvious,
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`is not permitted. Second, I understand that any prior art that specifically teaches away from the
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`claimed subject matter, i.e., prior art that would lead a person of ordinary skill in the art to a
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`specifically different solution than the claimed invention, points to non-obviousness, and
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`conversely, that any prior art that contains any teaching, suggestion, or motivation to modify or
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`combine such prior art reference(s) points to the obviousness of such a modification or
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`combination. Third, while many combinations of the prior art might be “obvious to try”, I
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`understand that any obvious to try analysis will not render a patent invalid unless it is shown that
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`the possible combinations are: (1) sufficiently small in number so as to be reasonable to conclude
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`that the combination would have been selected; and (2) such that the combination would have
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`been believed to be one that would produce predictable and well understood results. Fourth, I
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`understand that if a claimed invention that arises from the modification or combination of one or
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`more prior art references uses known methods or techniques that yield predictable results, then
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`that factor also points to obviousness. Fifth, I understand that if a claimed invention that arises
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`from the modification or combination of one or more prior art references is the result of known
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`work in one field prompting variations of it for use in the same field or a different one based on
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`design incentives or other market forces that yields predicable variations, then that factor also
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`points to obviousness. Sixth, I understand that if a claimed invention that arises from the
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`modification or combination of one or more prior art references is the result of routine
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`optimization, then that factor also points to obviousness. Seventh, I understand that if a claimed
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`invention that arises from the modification or combination of one or more prior art references is
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`the result of a substitution of one known prior art element for another known prior art element to
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`yield predictable results, then that factor also points to obviousness.
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`46.
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`I understand that a dependent claim incorporates each and every limitation of the
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`claim from which it depends. Thus, my understanding is that if a prior art reference fails to
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`anticipate an independent claim, then that prior art reference also necessarily fails to anticipate
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`all dependent claims that depend from the independent claim. Similarly, my understanding is that
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`if a prior art reference or combination of prior art references fails to render obvious an
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`independent claim, then that prior art reference or combination of prior art references also
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`necessarily fails to render obvious all dependent claims that depend from the independent claim.
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`47. Whitley is a publication of PCT patent application PCT/US99/06429, designating
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`the United States, which was published on September 30, 1999 and therefore (in my
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`understanding) is prior art under 102(b). Ex. 1003.
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`48.
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`Digital cellular telecommunications system (Phase 2+); Specification of the
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`Subscriber Identity Module - Mobile Equipment (SIM - ME) interface (GSM 11.11 version 7.4.0
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`Release 1998) (“GSM”) was published in December 1999 and therefore (in my understanding) is
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`prior art under 102(b). Ex. 1004, Front page and pg. 134. The specification itself was visible to
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`any member of the interested public without requesting them from an ETSI member. Further,
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`ETSI did not impose restrictions on ETSI members to prevent them from disseminating
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`information about the standard to non-members.
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`49.
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`I also reference below Digital Cellular Telecommunications System (Phase 2+);
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`AT command set for GSM Mobile Equipment (ME) (GSM 07.07 version 5.8.1 Release 1996)
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`(“AT Command Set”), which was published in March 1999 and therefore (in my understanding)
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`is prior art under 10