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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`EXPERT DECLARATION OF DR. RAYMOND. J. LEOPOLD
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`FOR
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`INTER PARTES REVIEW OF U.S. PATENT NO 6,240,073
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`Pet., Exh. 1003, p. 1
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`TABLE OF CONTENTS
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`I. 
`INTRODUCTION ........................................................................................... 4 
`II.  QUALIFICATIONS ........................................................................................ 6 
`III.  BACKGROUND DISCUSSION ................................................................... 10 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART OF THE ‘073 PATENT ... 14 
`V.  LEGAL UNDERSTANDING ....................................................................... 15 
`VI.  STATE OF THE ART ................................................................................... 23 
`VII.  THE ‘073 PATENT IN VIEW OF THE STATE OF THE ART .................. 24 
`VIII. CLAIM CONSTRUCTION .......................................................................... 29 
`A.  Transmitter Means ................................................................................... 30 
`B.  First Communication Means and Second Communication Means ......... 32 
`C.  Switching Means ..................................................................................... 37 
`D.  Receiver Means ....................................................................................... 42 
`E.  Means for Switching – Claim 2 .............................................................. 45 
`F.  Means for Switching – Claim 3 .............................................................. 45 
`G.  Means for Switching – Claim 4 .............................................................. 50 
`H.  Means for Switching – Claim 5 .............................................................. 52 
`I.  Means for Switching – Claim 6 .............................................................. 55 
`J.  Means for Switching – Claim 7 .............................................................. 57 
`K.  Collision Detection Means – Claim 8 ..................................................... 59 
`L.  Means for Generating A Request – Claim 28 ......................................... 60 
`M.  Means for Polling – Claim 29 ................................................................. 62 
`IX.  PRIOR ART ................................................................................................... 63 
`X.  ANTICIPATION AND/OR OBVIOUSNESS OF CLAIMS 2-8, 28, 29 OF
`THE ‘730 PATENT UNDER 35 U.S.C. §§ 102-103 .................................. 65 
`A.  Summary Disclosure of the Rudrapatna Patent ...................................... 65 
`B.  Anticipation and Obviousness of claims 2-8, 28, and 29 of the ‘073
`patent under 35 U.S.C. §§ 103 in view of Rudrapatna ........................... 75 
`1. Claim 2 is obvious over Rudrapatna in view of Kou .......................... 75 
`2. Claim 3 is obvious over Rudrapatna in view of Kou; Claim 3 is
`obvious over Rudrapatna in view of Nakamura ..................................... 93 
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`Pet., Exh. 1003, p. 2
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`3. Claim 4 is obvious over Rudrapatna in view of Beal .......................101 
`4. Claim 5 is obvious over Rudrapatna in view of Kou ........................107 
`5. Claim 6 is obvious over Rudrapatna in view of Kou; Claim 6 is also
`obvious over Rudrapatna in view of Nakamura ...................................110 
`6. Claim 7 is obvious over Rudrapatna in view of Kou ........................117 
`7. Claim 8 is obvious over Rudrapatna in view of Wilkinson ..............125 
`8. Claim 28 is anticipated by Rudrapatna .............................................131 
`9. Claim 29 is obvious over Rudrapatna in view of Quick ...................149 
`C.  Summary Disclosure of the Quick Patent ............................................. 155 
`D.  Anticipation and obviousness of claims 2-8, 28, and 29 of the ‘073
`patent under 35 U.S.C. §§ 103 in view of Quick .................................. 164 
`1. Claim 2 is obvious over Quick in view of Kou .................................165 
`2. Claim 3 is obvious over Quick in view of Kou; Claim 3 is obvious
`over Quick in view of Nakamura ..........................................................186 
`3. Claim 4 is obvious over Quick in view of Beal ................................193 
`4. Claim 5 is obvious over Quick in view of Kou .................................196 
`5. Claim 6 is obvious over Quick in view of Kou; Claim 6 is also
`obvious over Quick in view of Nakamura ............................................197 
`6. Claim 7 is obvious over Quick in view of Kou .................................202 
`7. Claim 8 is obvious over Quick in view of Wilkinson .......................206 
`8. Claim 28 is anticipated by Quick ......................................................211 
`9. Claim 29 is obvious over Quick ........................................................232 
`XI.  CONCLUSION ............................................................................................ 234 
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`DECLARATION OF DR. RAYMOND J. LEOPOLD
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`I.
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`INTRODUCTION
`1.
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`I, Dr. Raymond J. Leopold, submit this declaration in support of the
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`Petitions for Inter Partes Review of United States Patent No. 6,240,073 (“the ‘073
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`Patent” or “Exhibit 1001”), owned by Elbit Systems Land (“Elbit”). I have been
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`retained in this matter by Baker Botts L.L.P. (“Counsel”) on behalf of Hughes
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`Network Systems, LLC (collectively, the “Petitioner”).
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`2.
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`I make this declaration based upon my personal knowledge. I am
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`over the age of 21 and am competent to make this declaration. I have personal
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`knowledge of the facts stated in this Declaration and could testify competently to
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`them if asked to do so
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`3.
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`The statements herein include my opinions and the bases for those
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`opinions, which relate to at least the following documents of the pending inter
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`partes review petition:
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`4.
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`Exhibit 1004 - EP 0719062 to Rudrapatna (“Rudrapatna”) filed May
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`12, 1995 and published on June 26, 1996. Rudrapatna is prior art under at least 35
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`U.S.C. § 102(b) because it was filed on May 21, 1995 and published on June 26,
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`1996.
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`5.
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`Exhibit 1005 - U.S. Patent No. 5,673,259 to Quick, (“Quick”) filed
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`May 17, 1995 and issued on September 30, 1997. Quick is prior art under at least
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`Pet., Exh. 1003, p. 4
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`35 U.S.C. § 102(e) because it was filed on May 17, 1995 and issued into a U.S.
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`Patent on September 30, 1997.
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`6.
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`Exhibit 1006 - U.S. Patent No. 5,172,375 to Kou, (“Kou”) filed on
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`June 25, 1990 and issued on December 15, 1992. Kou is prior art under at least 35
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`U.S.C. § 102(b) because it was filed on June 25, 1990 and issued into a U.S. Patent
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`on December 15, 1992.
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`7.
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`Exhibit 1007 - U.S. Patent No. 5,172,375 to Beal, et al. (“Beal”) filed
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`on March 2, 1992 and issued on December 27, 1994. Beal is prior art at least under
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`at least 35 U.S.C. § 102(b) because it was filed on March 2, 1992 and issued into a
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`U.S. Patent on December 27, 1994.
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`8.
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`Exhibit 1008 - Application No. WO/95/10920 by Nakamura
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`(“Nakamura”) filed on October 13, 1994 and published on April 20, 1995.
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`Nakamura is prior art under at least 35 U.S.C. § 102(b) because it was filed on
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`October 13, 1994 and published on April 20, 1995.
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`9.
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`Exhibit 1009 - U.S. Patent No. 4,532,636 to Dent P. Wilkinson
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`(“Wilkinson”) filed on June 18, 1982 and issued on July 30, 1985. Wilkinson is
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`prior art under at least under 35 U.S.C. § 102(b) because it was filed on June 18,
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`1982 and issued on July 30, 1985.
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`10.
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`The materials I considered in forming my opinions herein include at
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`least the above-referenced documents.
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`Pet., Exh. 1003, p. 5
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`11.
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`Although I am being compensated for my time spent preparing this
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`declaration at a rate of $480 per hour, the opinions herein are my own, and I have
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`no stake in the outcome of the review proceeding. My compensation does not
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`depend in any way on the outcome of the Petitioner’s petition.
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`II. QUALIFICATIONS
`12.
`I provide the following overview of my background as it pertains to
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`my qualifications for providing expert testimony in this matter.
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`13.
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` I have over 40 years of experience in satellite system design and
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`implementation and related fields and am the named inventor on numerous issued
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`patents in the field. I was a co-inventor of the Iridium System, an early and well-
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`known personal communications system. The Iridium System supported the
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`operation of subscriber units across
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`the entire world, and allowed for
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`interconnection of those subscriber units with any other Iridium phone, cell phone,
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`or wired phone utilizing the global Public Switched Telephone Network (PSTN).
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`Iridium was put into operation on November 1, 1998 and has operated continuously
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`since then. The backbone of the Iridium system is an operational constellation of
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`66 satellites that were put in orbit beginning in May 1997. These satellites have far
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`exceeded their contracted lifetimes, due in no small part to the robustness that we
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`built into their design. Generally, there was a flurry of technological development
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`in the area of satellite construction and communications leading up to and around
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`the time of the launch of the Iridium system in late 1998.
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`14.
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`The Iridium System was built and launched by Motorola, Inc., where
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`I worked as an engineer developing and producing satellite communications and
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`telecommunications systems. While at Motorola, I served as Chief Engineer of the
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`Satellite Communications Group and was eventually promoted to Vice President
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`and Chief Technical Officer of that business unit. My primary responsibility while
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`at Motorola was the design and implementation of the Iridium Satellite
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`Communications Program, which culminated in the deployment of the Iridium
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`System described above. This work led to the issuance of a number of the patents
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`that I am named as an inventor on. In addition to my work at Motorola, I also
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`served as an “unofficial member” of the United States delegation that attended the
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`International Telecommunications Union’s (ITU) World Administrative Radio
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`Conference (WARC’92) from Feb 3, 1992 to Mar 3, 1992 in Torremolinos, Spain,
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`where
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`the world’s first allocation of electromagnetic spectrum for non-
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`geostationary satellite systems (NGSS) occurred. Later, I led the Motorola
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`technical team at the FCC’s Negotiated Public Rulemaking (NPRM) event in
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`Washington, DC, from Jan 6, 1993 to Apr 6, 1993, where we wrote the rules for the
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`use of the NGSS spectrum. The FCC issued Motorola’s license for the Iridium
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`System in 1995. The spectrum discussed at both WARC’92 and at the FCC’s
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`NPRM included user links in both L-Band and S-Band as well as feeder links and
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`inter-satellite links in different portions of K-Band.
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`15.
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`Through my involvement at WARC’92, the FCC’s NPRM, as well as
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`many technical forums around the world, I became intimately familiar with the
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`Globalstar, GPS, GLONASS, and other satellite-based services and concepts. I also
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`continued to make presentations on the Iridium System at industry events and
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`supported the development of broadband communications systems that could serve
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`as next-generation replacements for Iridium. In recognition for our work on
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`Iridium, my co-inventors and were named Aviation Week & Space Technology
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`magazine’s “Laureates for Space” whereby we were installed into their Hall of
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`Fame at the National Air & Space Museum, where one of our satellites and my
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`laboratory notebook were on display for 12 years. The American Institute of
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`Aeronautics and Astronautics (AIAA) awarded us their Biennial Communications
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`Award, and The Mobile Satellite Users Association presented us with their Pioneer
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`Award. Motorola, Inc. also named the three of us Distinguished Innovators and in
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`1995, conferred upon me their highest technical honor, The Title of Dan Nobel
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`Fellow, “…for leadership in creative and innovative technical contributions and,
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`in particular, for his role in co-inventing the overall Iridium satellite cellular
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`communications system and in gaining its critical global backing.”
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`16.
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`Additionally, I was individually named as an IEEE Fellow in 1997.
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`The IEEE, The Institute of Electrical and Electronic Engineers, is the world’s
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`Pet., Exh. 1003, p. 8
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`largest professional association for engineers, in recognition of, “…leadership and
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`contributions to worldwide satellite communications and personal wireless.”
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`Three years later, the IEEE also conferred upon me their Third Millennium Medal.
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`17.
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`Following my role as Vice President and Chief Technical Officer of
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`Motorola Satellite Communications, I became the Vice President and Chief
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`Technical Officer of the Motorola Global Telecom Solutions Sector, where I was
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`responsible for the development and production of all of Motorola’s cellular
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`telephone infrastructure equipment.
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`18.
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`Prior to working at Motorola, I worked as an engineer in the US Air
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`Force, where I was involved with several military communications programs. I
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`served as Program Director of the Seek Talk Radio Program (aka the Enhanced
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`Joint Tactical Information Distribution System) and then Acting Director of the
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`Milstar System Program Office (a military satellite-based system) at the Air Force
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`Electronics System Division in Massachusetts. I also served in the Office of the
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`Secretary of Defense in The Pentagon.
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`19.
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`I hold bachelor’s, master’s, and doctorate degrees in electrical
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`engineering from ABET-accredited institutions, and I have also served on, and led,
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`ABET (Accreditation Board for Engineering and Technology) accreditation
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`renewal teams for engineering schools across our country. I was an engineering
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`professor at the US Air Force Academy, an adjunct engineering professor at The
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`9
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`Pet., Exh. 1003, p. 9
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`George Washington University, and the Jerome C. Hunsaker Visiting Professor in
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`The Department of Aeronautics and Astronautics at The Massachusetts Institute of
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`Technology. I am currently the sole proprietor of a consulting business and have
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`served as an expert witness in matters involving satellite communications and
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`telecommunications.
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`20. My full CV is attached as Exhibit A.
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`III. BACKGROUND DISCUSSION
`21.
`I am aware that U.S. Patent No. 6,240,073 is one of two patents which
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`are the subjects of a lawsuit (C.A. No. 2:15-cv-00037-RWS-RSP in the Eastern
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`District of Texas – the “lawsuit”) in which the plaintiff is Elbit,” who purchased
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`the assignee rights to this patent from “Shiron,” the original assignee, and where
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`the defendant is “Hughes,” together with some of their customers.
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`22.
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`In preparation for making this declaration, I have reviewed U.S.
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`Patent No. 6,240,073 (“the ‘073 patent”) as well as the file history for the ‘073
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`patent, and the prior art contained therein. Within that file history are several
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`pieces of prior art that are particularly pertinent to establishing that the terminology
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`used in and concepts referred to in this ‘073 patent were known at the time of its
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`filing. I have listed these references below to emphasize what was known in the art
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`prior to the filing of the application that issued as the ‘073 patent.:
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`23. US Patent 5,729,544 (“Lev”) was raised by Examiner Harry Wu, (see
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`pp. 103-104 of Exx. 1002). EExaminer WWu stated tthat:
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`224.
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` Zhenng (US Pattent 5,392,,280) expanands the teaaching of LLev (abovee) by
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`addressing the sswitching
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`from thee first traansmissionn mode t
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`o the seccond
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`transmi
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`ssion mode. Examinner Wu statted that:
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`Spec
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`ifically, ZZheng teaaches that t additiona
`hronous
`al asynch
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`mission iss permittedd when emmpty queuee of synchhronous
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`data
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`is detecteed, i.e. thee system wwould swiitched (sicc) from
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`hronous traansmissionn to asynchhronous tr
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`ansmissionn when
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`data is emmpty.
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`transmmission quueue of synnchronous
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`12
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`Pet., Exh. 1003, p. 12
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`Ex. 1002 at 105.
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`25. Massey goes into detail on Aloha and access collisions, while Pursely
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`provides more detail on slotted ALOHA access as well as on frequency hopping
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`and asynchronous links in satellite communications, establishing each of these
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`items as known art.
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`26. The two cited papers by Abramson discuss the various forms of
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`access, including ALOHA for FDMA and TDMA and CDMA for satellite
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`communications systems.
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`27. Yang, Kim and Bigloo (each cited references) establish the prior
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`knowledge of using frequency-hopped spread spectrum in their cited papers, while
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`Bigloo also describes the collision detection and decoding improvement concept
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`included in ‘073.
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`28. Laufer (one of the ‘073 inventors and co-author of another cited
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`reference) establishes the prior art of synchronous satellite access in his cited
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`paper.
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`29. Wang US Patent 5,850,392 (“Wang”), teaches a hybrid satellite
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`system which allows both TDMA/FDMA (synchronous) communications links
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`and CDMA (asynchronous) communications links in a common architecture, and
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`Wang also teaches the polling concept included in ‘073.
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`13
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`Pet., Exh. 1003, p. 13
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`IV. LEVEL OF ORDINARY SKILL IN THE ART OF THE ‘073 PATENT
`30.
`I understand that the content of a patent (including its claims) and
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`prior art should be interpreted in the way a person of ordinary skill in the art would
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`have interpreted the material at the time of invention.
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`31.
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`I understand that the “time of invention” here is the date that the
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`applicants for the ‘073 Patent first filed their application in the United States Patent
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`and Trademark Office, namely, November 14, 1997.
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`32.
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`It is my opinion that a person of ordinary skill in the relevant art
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`disclosed and described in the ‘073 patent would possess at least a master’s degree
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`in electrical engineering or a related communications or telecommunications field,
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`along with three years of experience in wireless communications or a more
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`advanced degree in the field with less experience but knowledge of wireless
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`communications theory and telecommunications.
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`33.
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`In addition to my testimony as an expert, I am prepared to testify as
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`someone who has actually practiced in the field from 1969 to present, who actually
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`possesses at least the knowledge of a person of ordinary skill in the art in that time
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`period, and who has actually worked with others possessing at least the knowledge
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`of a person of ordinary skill in the art in that time period.
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`34.
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`I understand that the person of ordinary skill is a hypothetical person
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`who is assumed to be aware of all the pertinent information that qualifies as prior
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`art. In addition, the person of ordinary skill in the art makes inferences and takes
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`creative steps.
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`V. LEGAL UNDERSTANDING
`35.
`I have a general understanding of validity based on my experience
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`with patents and my discussions with counsel.
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`36.
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`I have a general understanding of prior art and priority date based on
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`my experience with patents and my discussions with counsel.
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`37.
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`I understand that inventors are entitled to a priority date up to one year
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`earlier than the date of filing to the extent that they can show complete possession
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`of particular claimed inventions at such an earlier priority date and reasonable
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`diligence in reducing the claims to practice between such an earlier priority date
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`and the date of filing of the patent. I understand that if the patent holder contends
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`that particular claims are entitled to an earlier priority date than the date of filing of
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`the patent, then the patent holder has the burden of proving this contention with
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`specificity.
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`38.
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`I understand that an invention by another must be made before the
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`priority date of a particular patent claim in order to qualify as “prior art” under 35
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`U.S.C. § 102 or § 103, that a printed publication or a product usage must be
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`publicly available before the priority date of a particular patent claim in order to
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`qualify as “prior art” under 35 U.S.C. § 102(a), that a printed publication or a
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`Pet., Exh. 1003, p. 15
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`product usage or offer for sale must be publicly available more than one year prior
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`to the date of the application for patent in the United States in order to qualify as
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`“prior art” under 35 U.S.C. § 102(b), and that the invention by another must be
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`described in an application for patent filed in the United States before the priority
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`date of a particular patent claim in order to qualify as “prior art” under 35 U.S.C. §
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`102(e). I understand that defendants have the burden of proving that any particular
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`reference or product usage or offer for sale is prior art.
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`39.
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`I have a general understanding of anticipation based on my experience
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`with patents and my discussions with counsel.
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`40.
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`I understand that the anticipation analysis is a two-step process. The
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`first step is to determine the meaning and scope of the asserted claims. Each claim
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`must be viewed as a whole, and it is improper to ignore any element of the claim.
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`For a claim to be anticipated under U.S. patent law: (1) each and every claim
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`element must be identically disclosed, either explicitly or inherently, in a single
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`prior art reference; (2) the claim elements disclosed in the single prior art reference
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`must be arranged in the same way as in the claim; and (3) the identical invention
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`must be disclosed in the single prior art reference in as complete detail as set forth
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`in the claim. Where even one element is not disclosed in a reference, the
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`anticipation contention fails. Moreover, to serve as an anticipatory reference, the
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`reference itself must be enabled, i.e., it must provide enough information so that a
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`Pet., Exh. 1003, p. 16
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`person of ordinary skill in the art can practice the subject matter of the reference
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`without undue experimentation. However, I understand that a printed publication
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`is presumed to be enabling and that if the patent holder contends that a particular
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`printed publication prior art reference is not enabled, then the patent owner has the
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`burden to prove that a printed publication prior art reference is not enabled.
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`41.
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`I understand that claim elements may be expressed as a means for
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`performing a recited function as set out in 35 U.S.C. § 112, ¶ 6. I further
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`understand that for such a means-plus-function element, the element is to be
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`construed to cover only the structure or structures described in the patent
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`specification for performing the exact function recited by the element and
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`structural equivalents thereof. Thus, in an infringement (or anticipation) analysis
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`involving such claim elements, one is required to consult the patent specification in
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`order to determine the composition of the specific relevant structures for
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`performing the recited functions. I further understand that if a person of ordinary
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`skill in the art would be unable to recognize the structure in the specification and
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`associate it with the corresponding function in the claim, a means-plus-function
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`claim element is indefinite.
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`42.
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`I understand that a claim including a means-plus-function element is
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`literally infringed (or anticipated) if the accused product or method (or prior art
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`reference) is found to have a structure that performs the exact recited function
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`17
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`Pet., Exh. 1003, p. 17
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`wherein that structure is identical or equivalent to structure disclosed in the patent
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`for performing the exact recited function. I further understand that structures are
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`deemed equivalent if they are insubstantially different. One way of determining
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`whether structures are equivalent is to determine whether each performs the exact
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`recited function in a substantially similar way to obtain a substantially similar
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`result. I understand that a structural equivalence analysis must be supported by
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`specific evidence and that a conclusory statement alleging that a structure within
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`an accused product or process is equivalent to a structure disclosed in the patent for
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`performing the exact recited function is insufficient. I further understand that an
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`equivalent structure must have been available at the time of the issuance of the
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`claim including the means-plus-function element being considered.
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`43.
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`I also understand
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`that when construing means-plus-function
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`limitations that concern a computer or a microprocessor that is programmed to
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`carry out an algorithm, the structure is to be construed as the algorithm as disclosed
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`in the patent specification. I further understand that literal infringement (or
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`anticipation) of a means-plus-function claim limitation directed to a computer
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`programmed to perform an algorithm requires that the software in the accused
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`device (or prior art reference) use an algorithm that performs the same steps as the
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`algorithm disclosed in the patent specification.
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`44.
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`I further understand that where a prior art reference fails to explicitly
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`18
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`Pet., Exh. 1003, p. 18
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`Expert Declaration of Dr. Raymond Leopold for Inter Parties Review of US Patent No. 6,240,073
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`disclose a claim element, the prior art reference inherently discloses the claim
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`element only if the prior art reference must necessarily include the undisclosed
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`claim element. Inherency may not be established by probabilities or possibilities.
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`The fact that an element may result from a given set of circumstances is not
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`sufficient to prove inherency. I have applied these principles in forming my
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`opinions in this matter.
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`45.
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`I have a general understanding of obviousness based on my
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`experience with patents and my discussions with counsel.
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`46.
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`I understand that a patent claim is invalid under 35 U.S.C. § 103 as
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`being obvious only if the differences between the claimed invention and the prior
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`art are such that the subject matter as a whole would have been obvious at the time
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`the invention was made to a person of ordinary skill in that art. An obviousness
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`analysis requires consideration of four factors: (1) scope and content of the prior
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`art relied upon to challenge patentability; (2) differences between the prior art and
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`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
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`success, unexpected results, the failure of others to achieve the results of the
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`invention, a long-felt need which the invention fills, copying of the invention by
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`competitors, praise for the invention, skepticism for the invention, or independent
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`development.
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`19
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`Pet., Exh. 1003, p. 19
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`47.
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`I understand that a prior art reference is proper to use in an
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`obviousness determination if the prior art reference is analogous art to the claimed
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`invention. I understand that a prior art reference is analogous art if at least one of
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`the following two considerations is met. First a prior art reference is analogous art
`
`if it is from the same field of endeavor as the claimed invention, even if the prior
`
`art reference addresses a different problem and/or arrives at a different solution.
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`Second, a prior art reference is analogous art if the prior art reference is reasonably
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`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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`48.
`
`I understand that it must be shown that one having ordinary skill in
`
`the art at the time of the invention would have had a reasonable expectation that a
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`modification or combination of one or more prior art references would have
`
`succeeded. Furthermore, I understand that a claim may be obvious in view of a
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`single prior art reference, without the need to combine references, if the elements
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`of the claim that are not found in the reference can be supplied by the knowledge
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`or common sense of one of ordinary skill in the relevant art. However, I
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`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
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`reconstruction” is improper in analyzing the obviousness of a patent claim.
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`49.
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`I further understand that the law recognizes several specific guidelines
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`20
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`Pet., Exh. 1003, p. 20
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`that inform the obviousness analysis. First, I understand that a reconstructive
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`hindsight approach to this analysis, i.e., the improper use of post-invention
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`information to help perform the selection and combination, or the improper use of
`
`the listing of elements in a claim as a blueprint to identify selected portions of
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`different prior art references in an attempt to show that the claim is obvious, is not
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`permitted. Second, I understand that any prior art that specifically teaches away
`
`from the claimed subject matter, i.e., prior art that would lead a person of ordinary
`
`skill in the art to a specifically different solution than the claimed invention, points
`
`to non-obviousness, and conversely, that any prior art that contains any teaching,
`
`suggestion, or motivation to modify or combine such prior art reference(s) points
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`to the obviousness of such a modification or combination. Third, while many
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`combinations of the prior art might be “obvious to try,” I understand that any
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`obvious to try analysis will not render a patent invalid unless it is shown that the
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`possible combinations are: (1) sufficiently small in number so as to be reasonable
`
`to conclude that the combination would have been selected; and (2) such that the
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`combination would have been believed to be one that would produce predictable
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`and well understood results. Fourth, I understand that if a claimed invention that
`
`arises from the modification or combination of one or more prior art references
`
`uses known methods or techniques that yield predictable results, then that factor
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`also points to obviousness. Fifth, I understand that if a claimed invention that arises
`
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`21
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`Pet., Exh. 1003, p. 21
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`from the modification or combination of one or more prior art references is the
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`result of known work in one field prompting v