UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`Samsung Electronics Co., Ltd., and
`Samsung Electronics America, Inc.
`Petitioners
`
`v.
`
`
`
`Parthenon Unified Memory Architecture LLC
`Patent Owner
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 5,960,464
`Case IPR No.: To Be Assigned
`
`DECLARATION OF HAROLD S. STONE, PH.D., REGARDING
`U.S. PATENT NO. 5,960,464
`
`
`
`
`
`
`
`
`
`ZTE Exhibit 1030
`
`Page 1 of 129
`
`

`
`
`
`TABLE OF CONTENTS
`
`I. 
`
`II. 
`
`III. 
`
`INTRODUCTION ........................................................................................... 1 
`A. 
`Engagement ........................................................................................... 1 
`B. 
`Background and Qualifications ............................................................. 1 
`C. 
`Compensation and Prior Testimony ...................................................... 3 
`D. 
`Information Considered ......................................................................... 5 
`LEGAL STANDARDS FOR PATENTABILITY .......................................... 6 
`A.  Anticipation ........................................................................................... 7 
`B. 
`Obviousness ........................................................................................... 8 
`SUMMARY OF THE ’464 PATENT ........................................................... 12 
`A. 
`Effective Filing Date of the ’464 Patent ............................................. 12 
`B. 
`Overview of the ’464 Patent ................................................................ 12 
`C. 
`The Prosecution History of the ’464 Patent ........................................ 14 
`D. 
`Claim Construction ............................................................................. 14 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 16 
`V. 
`COMPARISON OF THE PRIOR ART TO THE ’464 PATENT ................ 17 
`A.  Ground A: Notorianni anticipates claims 1, 3-4, 8-10, 12-13,
`16-21, 23-24, 32-33, 35-36, and 40 ..................................................... 17 
`1. 
`Claim 1 ...................................................................................... 17 
`2. 
`Claim 3 ...................................................................................... 24 
`3. 
`Claim 4 ...................................................................................... 25 
`4. 
`Claim 8 ...................................................................................... 26 
`5. 
`Claim 9 ...................................................................................... 27 
`6. 
`Claim 10 .................................................................................... 29 
`7. 
`Claim 12 .................................................................................... 32 
`8. 
`Claim 13 .................................................................................... 33 
`9. 
`Claim 16 .................................................................................... 33 
`10.  Claim 17 .................................................................................... 34 
`11.  Claim 18 .................................................................................... 35 
`12.  Claim 19 .................................................................................... 37 
`13.  Claim 20 .................................................................................... 40 
`14.  Claim 21 .................................................................................... 41 
`15.  Claim 23 .................................................................................... 42 
`16.  Claim 24 .................................................................................... 42 
`17.  Claim 32 .................................................................................... 43 
`18.  Claim 33 .................................................................................... 47 
`19.  Claim 35 .................................................................................... 48 
`20.  Claim 36 .................................................................................... 49 
`21.  Claim 40 .................................................................................... 52 
`-ii-
`
`Page 2 of 129
`
`

`
`
`
`B. 
`
`E. 
`
`F. 
`
`C. 
`
`Ground B: Notorianni renders obvious claims 7 and 22 .................... 53 
`1. 
`Claim 7 ...................................................................................... 53 
`2. 
`Claim 22 .................................................................................... 56 
`Ground C: Notorianni in view of Moore renders obvious claims
`2 and 11 ............................................................................................... 57 
`1. 
`Claims 2 and 11 ......................................................................... 57 
`D.  Ground D: Notorianni in view of Rathnam renders obvious
`claim 34 ............................................................................................... 59 
`1. 
`Claim 34 .................................................................................... 59 
`Ground E: AGP Specification anticipates claims 10, 16-18, 32,
`36, and 40 ............................................................................................ 61 
`1. 
`Claim 10 .................................................................................... 61 
`2. 
`Claim 16 .................................................................................... 68 
`3. 
`Claim 17 .................................................................................... 70 
`4. 
`Claim 18 .................................................................................... 71 
`5. 
`Claim 32 .................................................................................... 73 
`6. 
`Claim 36 .................................................................................... 76 
`7. 
`Claim 40 .................................................................................... 79 
`Ground F: AGP Specification in view of Rhodes renders
`obvious claims 1, 3-4, 7-9, 12-13, 19-24, 33, and 35 ......................... 80 
`1. 
`Claim 1 ...................................................................................... 80 
`2. 
`Claim 3 ...................................................................................... 93 
`3. 
`Claim 4 ...................................................................................... 94 
`4. 
`Claim 7 ...................................................................................... 96 
`5. 
`Claim 8 ...................................................................................... 99 
`6. 
`Claim 9 ....................................................................................100 
`7. 
`Claim 12 ..................................................................................102 
`8. 
`Claim 13 ..................................................................................103 
`9. 
`Claim 19 ..................................................................................103 
`10.  Claim 20 ..................................................................................107 
`11.  Claim 21 ..................................................................................108 
`12.  Claim 22 ..................................................................................109 
`13.  Claim 23 ..................................................................................110 
`14.  Claim 24 ..................................................................................111 
`15.  Claim 33 ..................................................................................112 
`16.  Claim 35 ..................................................................................113 
`G.  Ground G: AGP Specification in view of Moore renders
`obvious claim 11 ............................................................................... 117 
`1. 
`Claim 11 ..................................................................................117 
`
`-iii-
`
`Page 3 of 129
`
`

`
`
`
`
`
`H.  Ground H: AGP Specification in view of Rhodes and Moore
`renders obvious claim 2 ..................................................................... 119 
`1. 
`Claim 2 ....................................................................................119 
`Ground I: AGP Specification in view of Rathnam renders
`obvious claim 34 ............................................................................... 121 
`1. 
`Claim 34 ..................................................................................121 
`
`I. 
`
`-iv-
`
`Page 4 of 129
`
`

`
`
`
`I, Harold S. Stone, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`A. Engagement
`1.
`I have been retained by counsel for the Petitioners to submit this
`
`declaration in connection with Petitioners’ Petition for Inter Partes Review of
`
`claims 1-4, 7-13, 16-24, 32-36, and 40 of U.S. Patent No. 5,960,464 (“’464
`
`Patent”) (Ex. 1001).
`
`B.
`2.
`
`Background and Qualifications
`
`I was awarded a Ph.D. and Master’s Degree in Electrical Engineering
`
`from the University of California-Berkeley in 1963 and 1961, respectively. I
`
`received a Bachelor of Science degree in Electrical Engineering from Princeton
`
`University in 1960.
`
`3.
`
`After my graduation from Berkeley in 1963, I served as a Research
`
`Engineer at Boeing and SRI International. I then held faculty positions at Stanford
`
`University and at the University of Massachusetts, where I served as a professor of
`
`computer science and electrical engineering.
`
`4.
`
`In 1984, I started working for IBM as a Manager of Advanced
`
`Architecture Studies. In 1990, I became a Research Staff Member at IBM. During
`
`my time at IBM, I managed and conducted research in the area of memory systems
`
`and optical interconnections. I worked at IBM until 1994, when I became a Fellow
`
`at the NEC Research Institute, the highest technical position in the company. At
`1
`
`Page 5 of 129
`
`

`
`
`
`NEC, I conducted research in image processing. I am an inventor of a patent to
`
`NEC regarding a technique for decompressing JPEG images in a novel way that
`
`permits images to be searched without fully decompressing them. The
`
`decompression technique is based on inverse discrete cosine transforms, which are
`
`one of the basic elements of MPEG decompression.
`
`5.
`
`I have authored, coauthored, or edited 9 books in various technical
`
`areas, the most recent of which appeared in 2011. My textbooks have sold over
`
`100,000 copies. My work on the use of the perfect shuffle interconnections for
`
`supercomputers is widely recognized, and many supercomputers based on these
`
`interconnections were developed and marketed. For this work and my textbook
`
`contributions to the field, I was elected an IEEE Fellow and ACM Fellow, and
`
`received the IEEE Piore Field Award, the IEEE Computer Society Taylor Booth
`
`Award, and the Charles Babbage Award. I am the principal inventor or co-inventor
`
`of 27 patents, including seven in the area of computer architecture - U.S. Patent
`
`Nos. 4,989,131, 5,065,310, 5,163,149, 5,611,070, 5,742,785, 5,790,823, and
`
`6,311,260.
`
`6.
`
`I have served as a consultant to industry while holding my academic
`
`positions and have extensive experience in computer design for embedded
`
`computers as a consequence, including low-power computers for use in satellites
`
`and ultra-reliable computers for use in nuclear submarine navigation systems. In
`
`2
`
`Page 6 of 129
`
`

`
`
`
`recent years I have been a member of two Division Review Committees at Los
`
`Alamos National Laboratory in the area of Nuclear Nonproliferation and a
`
`consultant to NASA in the area of satellite image processing.
`
`7. My work influenced the industry to develop several different
`
`“hypercube” computers in the 1980s, all of which had interconnections based on
`
`the perfect shuffle. In the 1990s, near when the ’464 patent was filed, Intel, Sun,
`
`HP, and MIPS Technologies, Inc., introduced extension instruction sets for
`
`multimedia applications, all of which incorporated perfect shuffle data movement
`
`operations. The shuffle and its inverse are common operations used by MPEG
`
`software algorithms in processors that have multimedia instructions sets.
`
`8.
`
`In 1977, together with W. Kahan and J. Coonen, I authored the
`
`original proposal (“the KCS proposal”) to the working group charged for
`
`developing a floating-point standard, which is now known as the IEEE 754
`
`Floating Point Standard. The standard that emerged is that proposal with small
`
`changes and additions. It has been implemented in several billion processors.
`
`9. My Curriculum Vitae is submitted herewith as Ex. 1029.
`
`C. Compensation and Prior Testimony
`10.
`I am being compensated at a rate of $500 per hour for my study and
`
`other work in this matter, plus actual expenses. My compensation is not contingent
`
`on the outcome of this matter or the specifics of my testimony.
`
`3
`
`Page 7 of 129
`
`

`
`
`
`11.
`
`I am also acting as an expert in the pending litigation between Patent
`
`Owner and Petitioners.
`
`12.
`
`I previously prepared declarations in support of inter partes review
`
`petitions filed by Petitioners and other defendants in the pending litigation, which I
`
`understand are now identified as IPR2015-01494, IPR2015-01500, IPR2015-
`
`01501, IPR2015-01502, and IPR2015-01503.
`
`13. Previously, I have testified either by deposition or at trial in the
`
`following litigation matters. The list below includes all deposition and trial
`
`testimony within the last five years:
`
` Parthenon Unified Memory Architecture LLC v. Samsung
`
`Electronics Co., Ltd. et al. (U.S. District Court, Eastern District of
`
`Texas), Case No. 2:14-cv-00902-JRG-RSP;
`
` Advanced Internet Technologies, Inc. v. Dell, Inc. (U.S. District
`
`Court, Eastern District of North Carolina), Case No. 5:07-cv-
`
`00426-H;
`
` Microunity Systems Engineering Inc v. Acer Inc et al. (U.S.
`
`District Court, Eastern District of Texas), Case No. 2:10-cv-00091-
`
`LED-RSP;
`
`4
`
`Page 8 of 129
`
`

`
`
`
` Technology Service Corporation v. Mountcastle et al. (U.S.
`
`District Court, Eastern District of Virginia – Alexandria), Case
`
`No. 1:10-cv-00901-TSE-TCB;
`
` BIAX Corporation v. Motorola Solutions, Inc. et al. (U.S. District
`
`Court, District of Colorado – Denver), Case No. 1:10-cv-03013-
`
`PAB-KLM;
`
` Certain Computing Devices with Associated Instructions Sets and
`
`Software (International Trade Commission), Inv. 337-TA-812;
`
` Stragent, LLC et al. v. Intel Corporation (U.S. District Court,
`
`Eastern District of Texas – Tyler), Case No. 6:11-cv-00421-TBD-
`
`JDL; and
`
` Convolve Inc. et al. v. Compaq Computer Corporation et al., (U.S.
`
`District Court, Southern District of New York – Foley Square),
`
`Case No. 1:00-cv-05141-GBD-JCF.
`
`D.
`Information Considered
`14. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this declaration and those
`
`listed in Appendix A.
`
`5
`
`Page 9 of 129
`
`

`
`
`
`15.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional documents
`
`and information in forming any necessary opinions — including documents that
`
`may not yet have been provided to me.
`
`16. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`17.
`In expressing my opinions and considering the subject matter of the
`
`claims of the ’464 Patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`18. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`19.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`6
`
`Page 10 of 129
`
`

`
`
`
`20.
`
`I understand that the prior art includes patents and printed publications
`
`that existed before the earliest filing date (the “effective filing date”) of the claim
`
`in the patent. I also understand that a patent will be prior art if it was filed before
`
`the effective filing date of the claimed invention, while a printed publication will
`
`be prior art if it was publicly available before that date.
`
`21.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`person having ordinary skill in the art. My understanding of the two legal standards
`
`is set forth below.
`
`A. Anticipation
`22.
`I understand that the following standards govern the determination of
`
`whether a patent claim is “anticipated” by the prior art.
`
`23.
`
`I have applied these standards in my evaluation of whether the claims
`
`of the ’464 Patent would have been anticipated by the prior art.
`
`24.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim. I understand that
`
`claim limitations that are not expressly described in a prior art reference may still
`
`be there if they are “inherent” to the thing or process being described in the prior
`
`7
`
`Page 11 of 129
`
`

`
`
`
`art. For example, an indication in a prior art reference that a particular process
`
`complies with a published standard would indicate that the process must inherently
`
`perform certain steps or use certain data structures that are necessary to comply
`
`with the published standard.
`
`25.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`26.
`
`I understand that it is acceptable to consider evidence other than the
`
`information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that reference.
`
`B. Obviousness
`27.
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person having ordinary skill in the field of the invention at the
`
`time the invention was made.
`
`28.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not
`
`identically disclosed or described as set forth in section
`
`102 of this title, if the differences between the subject
`
`matter sought to be patented and the prior art are such
`
`8
`
`Page 12 of 129
`
`

`
`
`
`that the subject matter as a whole would have been
`
`obvious at the time the invention was made to a person
`
`having ordinary skill in the art to which said subject
`
`matter pertains. Patentability shall not be negatived by
`
`the manner in which the invention was made.
`
`29.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether the asserted claims of the ’464 Patent would have been
`
`considered obvious as of the effective filing date of the claims in the ’464 Patent.
`
`30. When considering the issue of obviousness, I understand that I am to
`
`do the following: (i) determine the scope and content of the prior art; (ii) ascertain
`
`the differences between the prior art and the claims at issue; (iii) resolve the level
`
`of ordinary skill in the art; and (iv) consider objective evidence of non-obviousness
`
`(also known as “secondary considerations” of non-obviousness). Examples of
`
`evidence of secondary considerations of non-obviousness include evidence of
`
`commercial success, long-felt but unsolved needs, failure of others, and
`
`unexpected results. I am not presently aware of any evidence of “objective factors”
`
`suggesting any of the challenged claims of the ’464 Patent are not obvious, and
`
`reserve my right to address any such evidence if it is identified in the future.
`
`9
`
`Page 13 of 129
`
`

`
`
`
`31.
`
`I understand that a person having ordinary skill is also a person of
`
`ordinary creativity.
`
`32. My understanding is that not all innovations are patentable. Even if a
`
`claimed product or method is not disclosed in its entirety in a single prior art
`
`reference, the patent claim is invalid if the invention would have been obvious to a
`
`person having ordinary skill in the art at the time of the invention. In particular, I
`
`understand that a patent claim is normally invalid as obvious if it would have been
`
`a matter of “ordinary innovation” within the relevant field to create the claimed
`
`product or method at the time of the invention.
`
`33.
`
`I also understand that the following exemplary scenarios would
`
`support a conclusion that a claimed product or method would have been obvious:
`
` Combining prior art elements according to known methods to yield
`
`predictable results;
`
` Simple substitution of one known element for another to obtain
`
`predictable results;
`
` Use of known technique to improve similar devices (methods, or
`
`products) in the same way;
`
` Applying a known technique to a known device (method, or
`
`product) ready for improvement to yield predictable results;
`
`10
`
`Page 14 of 129
`
`

`
`
`
` “Obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
` Known work in one field of endeavor may prompt variations of it
`
`for use in either the same field or a different one based on design
`
`incentives or other market forces if the variations are predictable to
`
`one of ordinary skill in the art;
`
` Some teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill to modify the prior art
`
`reference or to combine prior art reference teachings to arrive at
`
`the claimed invention.
`
`34.
`
`I understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents; the effects of demands known to the design
`
`community or present in the marketplace; and the background knowledge
`
`possessed by a person having ordinary skill in the art. I understand that all these
`
`issues may be considered to determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.
`
`35.
`
`I understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or lead away from the line of inquiry
`
`disclosed in the reference(s). A reference does not “teach away” from an invention
`
`11
`
`Page 15 of 129
`
`

`
`
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or preferred. My understanding of the doctrine of teaching away requires a
`
`clear indication that the combination should not be attempted (e.g., because it
`
`would not work or explicit statements saying the combination should not be made).
`
`III. SUMMARY OF THE ’464 PATENT
`A. Effective Filing Date of the ’464 Patent
`36. The ’464 Patent issued from U.S. Application No. 08/701,890 filed
`
`August 23, 1996. Ex. 1001 at Face. I therefore understand that the effective filing
`
`date of the claims of the ’464 Patent is no earlier than August 23, 1996.
`
`B. Overview of the ’464 Patent
`37.
`I have reviewed the ’464 Patent to identify its novel aspects as one
`
`skilled in the art would view them. My high-level summary is that the alleged
`
`novelty is a memory management system to construct a contiguous block of
`
`memory from two or more noncontiguous blocks of memory. For example, under
`
`the “Summary of the Invention,” the ’464 Patent specification states:
`
`Broadly stated, the present invention embodies a control
`
`circuit for use in a computer system. The computer
`
`system is controlled by an operating system and has a
`
`main memory. An electronic device is coupled to the
`
`processor and the main memory and is configured to
`
`request continuous use of several portions of the main
`12
`
`Page 16 of 129
`
`

`
`
`
`memory from the operating system. The memory
`
`portions can have noncontiguous addresses. The control
`
`circuit is also configured to translate the noncontiguous
`
`addresses to contiguous addresses of a block of memory,
`
`wherein the control circuit permits access to the portions
`
`of the main memory as the block of memory based on the
`
`contiguous addresses.
`
`Ex. 1001 at 3:37-48.
`
`38. According to ’464 Patent, conventional operating systems, such as
`
`Windows 95®, “do not permit large blocks of memory to be permanently allocated
`
`for a given application or operation after booting up the computer.” Id. at 2:52-56.
`
`According to the ’464 patent, conventional operating systems present problems
`
`with MPEG 2 decoding because “MPEG 2 decoding requires 2 megabytes of
`
`contiguous memory” and available memory locations are often “scattered” or
`
`fragmented throughout the memory. See, e.g., id. at 2:59-63. The ’464 patent
`
`alleges to solve this problem through the use of a memory management system that
`
`includes a control circuit configured to both request continuous use of the main
`
`memory from the operating system and translate those fragmented, or in other
`
`words noncontiguous, memory location addresses of the main memory to
`
`contiguous addresses of a block of memory. See id. at 3:37-48. But by the ’464
`
`13
`
`Page 17 of 129
`
`

`
`
`
`patent’s priority date, others had solved the same problem of being able to form a
`
`contiguous set of memory addresses from a noncontiguous set of memory
`
`addresses. As detailed below, the prior art, however, discloses otherwise.
`
`C. The Prosecution History of the ’464 Patent
`39. The original application for the ’464 Patent contained 40 claims.
`
`Claims 1-24 were allowed, but claims 25-40 were rejected under 35 USC § 103 as
`
`being unpatentable over Herrell et al., U.S. Patent 5,301,287. See Ex. 1002 at 44.
`
`Claims 25-40 were allowed after being amended by the applicant. See Ex. 1002 at
`
`66.
`
`D. Claim Construction
`40.
`I understand that a claim subject to inter partes review receives the
`
`broadest reasonable interpretation in light of the specification and file history of
`
`the patent in which it appears. I also understand that any term that is not construed
`
`should be given its plain and ordinary meaning under the broadest reasonable
`
`interpretation. I have followed these principles in my analysis. I discuss certain
`
`claim terms below and what I understand to be Petitioners’ construction of these
`
`terms, which I apply in my analysis. The remaining claim terms in the ’464 patent
`
`are given their plain and ordinary meaning under the broadest reasonable
`
`interpretation, which I also apply in my analysis.
`
`14
`
`Page 18 of 129
`
`

`
`
`
`41.
`
`I understand that Petitioners have proposed that the broadest
`
`reasonable interpretation of the claimed term “translate” is “convert.” I agree with
`
`this construction based on the claims and specification of the ’464 patent. For
`
`example, the patent uses both “translate” and “convert” interchangeably. See, e.g.,
`
`Ex. 1001 at Abstract (“the video decoder circuit can perform operations on a 2-
`
`megabyte contiguous block of memory, where the microcontroller employs the
`
`lookup table to translate each 2-megabyte contiguous address requested by the
`
`video decoder circuit to its appropriate page in the main memory”), 8:35-40 (“the
`
`microcontroller 120 receives memory read/write requests from the video decoding
`
`circuit 126 and/or audio decoding circuit 128, and converts these requests to their
`
`appropriate page descriptor addresses based on the lookup table”).
`
`42.
`
`I understand that Petitioners have proposed that the broadest
`
`reasonable interpretation of the claimed term “algorithmically translate the
`
`noncontiguous addresses to the contiguous addresses” is “convert using at least one
`
`mathematical operation.” I agree with this construction based on the claims and
`
`specification of the ’464 patent. For example, the patent both distinguishes address
`
`“translation” using a lookup table from “algorithmic translation” and indicates that
`
`“algorithmic translation” involves the use of at least one “mathematical operation.”
`
`See, e.g., Ex. 1001 at 8:15-28.
`
`15
`
`Page 19 of 129
`
`

`
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`43.
`I understand that the claims of a patent are reviewed from the point of
`
`view of a hypothetical person having ordinary skill in the art as of the effective
`
`filing date of the ’464 Patent.
`
`44. Based on my review of the ’464 Patent specification, claims, and file
`
`history, in my opinion, a person having ordinary skill in the art as of the effective
`
`filing date of the ’464 Patent would have held an accredited Bachelor’s degree in
`
`Electrical Engineering and/or Computer Science and/or Computer Engineering and
`
`had three years’ experience in the fields of data compression and overall computer
`
`system architecture.
`
`45. The reason that I have chosen that definition of a person having
`
`ordinary skill in the art for the ’464 patent is because that person would have been
`
`exposed to compression techniques described in the ’464 Patent. That person
`
`would also be familiar with the basic computer components recited in the claims
`
`and would understand how to use those components to build a computer system
`
`using shared resources like a memory.
`
`46. As described in more detail above, I was a person with at least
`
`ordinary skill in the art as of the effective filing date of the ’464 Patent.
`
`16
`
`Page 20 of 129
`
`

`
`V.
`
`COMPARISON OF THE PRIOR ART TO THE ' 464 PATENT
`
`A. Ground A: N otorianni anticipates claims 1, 3-4, 8-10, 12-13, 16-21,
`23-24, 32-33, 35-36, and 40
`
`1.
`
`Claim 1
`
`47.
`
`In my opinion, Notarianni discloses every feature of claim 1.
`
`Claim
`Language
`[1.0] In a
`
`N OTORIANNI
`
`Notarianni discloses this limitation. See, e.g. , Ex. 1031 at 3:45-61,
`
`computer
`
`Fig. 1, Abstract. For example, Notarianni teaches a compact disc
`
`system having player that includes a main memory (e.g., random access memory
`
`a mam
`
`RAM), a storage device (e.g., read-only memory), and a processor
`
`memory, a
`
`(e.g., microprocessor unit MPU). See, e.g., Ex. 103 1 at 3:45-61.
`
`storage device The microprocessor unit MPU is controlled by an operating
`
`having
`
`system, CDRTOS. See, e.g., id. ; see also id. at Fig. 1 (annotated
`
`encoded data
`
`below).
`
`stored therein
`
`and a
`
`processor
`
`controlled by
`
`an operating
`
`system, an
`
`Page 21 of 129
`
`17
`
`

`
`Claim
`Language
`electronic
`
`device
`
`..
`compnsmg:
`
`Storage
`device
`(encoded
`data)
`
`Operating
`system
`
`NOTORIANNI
`
`lSL
`
`lSR
`
`:Main
`memory
`
`sa
`
`(PAIOll Allll
`FIG.1
`
`The compact disc ROM is a storage device that has encoded data
`
`stored within it. See, e.g., Ex. 1031 at Abstract ("In particular,
`
`image and audio files are to be read from a CD-ROM disc and
`
`decoded in real-time.") (emphasis added); analysis and citations
`
`below for other claim elements.
`
`[1.1] a
`
`Notarianni discloses this limitation. See, e.g. , Ex. 1031 at 3:45-66,
`
`decoding
`
`Fig. 1, Abstract. Notarianni discloses multiple decoding circuits,
`
`circuit coupled
`
`including a video decoder and an adaptive pulse code modulation
`
`to receive and decoder ("ADPCM"). See, e.g., Ex. 1031 at 3:45-66. The
`
`Page 22 of 129
`
`18
`
`

`
`Claim
`Language
`decode the
`
`NOTORIANNI
`
`decoders are each coupled to receive encoded data from the
`
`encoded data
`
`storage device (i.e., CD-ROM). See, e.g., Ex. 1031 at Abstract
`
`from the
`
`("In particular, image and audio files are to be read from a CD-
`
`storage
`
`ROM disc and decoded in real-time.") (emphasis added).
`
`device; and
`
`Storage
`device
`(encoded
`data)
`
`lSL
`
`lSR
`
`Decoding circuit
`
`Decoding
`circuit
`
`SB
`
`!PRIOR AATI
`FIG.1
`
`[1.2] a control Notarianni teaches this element. For example, Notarianni
`
`circuit coupled discloses an