UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 8,155,298 B2
`Filing Date: Jul. 5, 2006
`Issue Date: Apr. 10, 2012
`
`TANDEM ACCESS CONTROLLER WITHIN THE PUBLIC SWITCHED
`TELEPHONE NETWORK
`
`
`DECLARATION OF THOMAS LA PORTA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,298
`
`Inter Partes Review No. 2016-01252
`
`
`
`
`
`
`Bright House Networks - Ex. 1002, Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 8,155,298 B2
`Filing Date: Jul. 5, 2006
`Issue Date: Apr. 10, 2012
`
`TANDEM ACCESS CONTROLLER WITHIN THE PUBLIC SWITCHED
`TELEPHONE NETWORK
`
`
`DECLARATION OF THOMAS LA PORTA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,155,298
`
`Inter Partes Review No. 2016-01252
`
`
`
`
`
`
`Bright House Networks - Ex. 1002, Page 1
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`
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`1.
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`2.
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`I, Thomas F. La Porta, declare as follows:
`
`I have personal knowledge of the facts stated in this declaration, and
`
`could and would testify to these facts under oath if called upon to do so.
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`I have been retained by counsel for Petitioners in this case as an
`3.
`
`expert in the relevant art. I am being compensated for my work at the rate of $550
`
`per hour. No part of my compensation is contingent upon the outcome of this
`
`petition.
`
`4.
`
`I was asked to study U.S. Patent No. 8,155,298 (“the ’298 patent”), its
`
`prosecution history, and the prior art, and to render opinions on the obviousness or
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`non-obviousness of the claims of the ’298 patent in light of the teachings of the
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`prior art, as understood by a person of ordinary skill in the art in the May 2000
`
`time frame. I understand that the claims being challenged in the Petitions are
`
`claims 1 and 20 (“the challenged claims”).
`
`5.
`
`I understand that due to word count limits Petitioners are filing two
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`Petitions for Inter Partes Review against the ’298 patent—one against claim 1 and
`
`another against claim 20 (together “Petitions”). Because the substance of the
`
`claims and the prior art overlap substantially, I offer this common declaration in
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`support of both Petitions. The only difference will be exhibit numbers, which will
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`Bright House Networks - Ex. 1002, Page 2
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`
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`change from series 1000 to series 1100, but the last two digits will be identical for
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`identical references—i.e. Exhibit 1001 in the first Petition will be the same as
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`Exhibit 1101 in the second petition, all the way through to Exhibit 1052 in
`
`comparison to Exhibit 1152.
`
`B.
`6.
`
`Summary of Opinions
`
`After studying the ’298 patent, its file history, and the prior art, and
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`considering the subject matter of the claims of the ’298 patent in light of the state
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`of technical advancement in the area of telephony in circuit-switched and packet-
`
`switched networks in the 2000 time frame, I reached the conclusions discussed
`
`herein.
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`7.
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`In light of these general conclusions, and as explained in more detail
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`throughout this declaration, it is my opinion that each of the challenged claims
`
`were invalid as obvious in light of the knowledge of skill in the art in the late
`
`1990s and early 2000 and the teachings, suggestions, and motivations present in
`
`the prior art and commercially.
`
`8.
`
`This declaration, and the conclusions and opinions herein, provide
`
`support for the Petition for Inter Partes Review of the ’298 patent filed by
`
`Petitioners. I have reviewed the Petition in its entirety as well as its corresponding
`
`exhibits.
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`Bright House Networks - Ex. 1002, Page 3
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`
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`C. Qualifications and Experience
`I am the Director of the School of Electrical Engineering and
`9.
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`Computer Science at Penn State University. I am also an Evan Pugh Professor and
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`the William E. Leonhard Chair Professor in the Department of Computer Science
`
`and Engineering and the Department of Electrical Engineering at Penn State
`
`University. I am the founding Director of the Institute of Networking and Security
`
`Research at Penn State. I have worked on telecommunications networks since
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`1986.
`
`Education
`
`1.
`I received my B.E. and M.E. in Electrical Engineering from The
`
`10.
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`Cooper Union for the Advancement of Science and Art in 1986 and 1987,
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`respectively, and my Ph.D. in Electrical Engineering from Columbia University in
`
`1992.
`
`Career
`
`2.
`I joined AT&T Bell Labs (which later became Bell Labs, Lucent
`
`11.
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`Technologies) in 1986 after receiving my B.E. degree, and pursued my M.E.
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`degree part-time. In my first job at Bell Labs, I tested the performance and
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`interoperability of many data communication devices within the AT&T network. I
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`transferred into Bell Labs Research in 1990 to pursue research full-time.
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`Bright House Networks - Ex. 1002, Page 4
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`12. Starting in 1993, I performed research directed towards signaling and
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`control of broadband telecommunication networks, which I then extended to
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`include mobile and wireless networks. A large portion of my work was directed at
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`architectures, protocols, and software for providing advanced services in
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`telecommunication networks. I gave several tutorials at professional conferences
`
`on telecommunication signaling and control, including IEEE ICCC ’93, IEEE ICC
`
`’94, and IEEE ICNP ’94.
`
`13.
`
`In 1997, I became the Director of the Mobile Networking Research
`
`Department within Bell Labs Research. This group, which included approximately
`
`30 researchers and support developers, carried out basic research on mobile
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`networks including telephony. Starting in 2000, I was also the Director of the
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`Advanced Mobile Networking Department within the Wireless Business Unit of
`
`Lucent Technologies. My role in this job was to work with development
`
`organizations to turn technology into products.
`
`14. During both my development and research careers, I interacted
`
`extensively with computer scientists and engineers responsible for the design,
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`development, and testing of telephony and data networking products. As a research
`
`manager, I oversaw a department that executed many large-scale joint projects
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`with development organizations to release products for Lucent Technologies.
`
`Examples of these joint projects include the control software for Lucent
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`Bright House Networks - Ex. 1002, Page 5
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`
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`Technologies’ 3G network access controllers used for interconnecting CDMA base
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`stations, processor overload controls in Lucent Technologies’ cellular soft
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`switches, and the industry’s first multi-protocol Home Location Register, and
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`servers and protocols for enabling interactive text messaging via cellular networks.
`
`These interactions exposed me to a wide range of computer scientists and
`
`engineers working on telecommunication network technologies.
`
`15.
`
`I also taught as an adjunct member of the faculty at Columbia
`
`University in 1993 and from 1996-2001. I taught graduate classes in networking
`
`protocol design (1993) and mobile networking (1996-2001). As such, I am familiar
`
`with the curricula being taught to Electrical Engineers and Computer Scientists
`
`from the early 1990s through today.
`
`3.
`
`
`16.
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`Patents and Publications
`
`I am a co-inventor on 38 United States Patents and 18 foreign
`
`patents, the large majority pertaining to telecommunications. One of my patents
`
`pertaining to a method for routing voice traffic in a cellular access network (United
`
`States Patent No. 5,953,331) was awarded the Thomas Alva Edison Patent Award
`
`by the Research and Development Council of New Jersey. Another of my patents
`
`pertaining to a Home Location Register (HLR) for global roaming and
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`interworking between packet switched cellular networks and circuit switched
`
`cellular networks (United States Patent No. 7,522,632) was awarded another
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`Bright House Networks - Ex. 1002, Page 6
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`
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`Thomas Alva Edison Patent Award. For my early work I was recognized with an
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`Eta Kappa Nu Outstanding Young Electrical Engineer Award and the Bell Labs
`
`Distinguished Staff Award.
`
`17.
`
`
`
`A series of my patents were directed at providing control of
`
`resources and telecommunication services in a distributed environment. See United
`
`State Patent Nos. 5,434,852; 5,473,679; 5,509,010; 5,563,939; 5,659,544;
`
`5,943,408; 6,081,715; and 6,298,039.
`
`18.
`
`
`
`One of the projects I worked on after joining Penn State was
`
`directed at the security of cellular networks due to vulnerabilities in the text
`
`messaging service. This work resulted in several scientific publications, and was
`
`featured in the business section of the New York Times.
`
`19.
`
`
`
`My work on security related to text messaging was one of the
`
`reasons I was appointed to The President’s National Security Telecommunications
`
`Advisory Committee. My role on this Committee was to identify security risks for
`
`current and evolving cellular networks.
`
`20.
`
`
`
`Based on this experience, and my continuing work at Penn
`
`State University, I have intimate knowledge of telecommunication networks. I
`
`have been highly recognized as an expert in such systems. I was recognized with
`
`the Bell Labs Distinguished Member of Technical Staff award in 1996. My award
`
`letter stated in part, “[y]our contributions to wireless call processing have
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`Bright House Networks - Ex. 1002, Page 7
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`
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`profoundly impacted Lucent. You are very well-known as demonstrated by your
`
`three best paper awards. . . .” I was named a Bell Labs Fellow in 2000 “[f]or
`
`outstanding contributions in mobile wireless networks in the area of call
`
`processing, signaling, mobility management, and applications.” I was named an
`
`IEEE Fellow in 2002 “for contributions to systems for advanced broadband,
`
`mobile data and mobile telecommunication networks.”
`
`21.
`
`
`
`I previously served as the Editor-in-Chief of IEEE Personal
`
`Communications Magazine, and was the founding Editor-in-Chief of IEEE
`
`Transactions on Mobile Computing. I have published well over 200 technical
`
`papers in this field.
`
`22.
`
`
`
`My research has been supported primarily by the Department of
`
`Defense and the National Science Foundation. I am the Director of a center funded
`
`by the U.S. Army Research Lab studying network science as it relates to
`
`communication networks. The center includes over 20 researchers and 7
`
`universities. The focus of the center is to improve the quality of information
`
`transported across tactical networks to soldiers and intelligence analysts. I am also
`
`leading a project funded by the Defense Threat Reduction Agency to improve
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`telecommunication network reliability against attack by weapons of mass
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`destruction.
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`Bright House Networks - Ex. 1002, Page 8
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`
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`Curriculum Vitae
`
`4.
`23. Additional details of my education and employment history, patents,
`
`and publications are set forth in my current curriculum vitae, attached to this
`
`declaration. My curriculum vitae also includes a list of all the cases within the last
`
`five years for which I have provided testimony.
`
`D. Materials Considered
`24. My analysis is based on my education and experience as set out above
`
`and in my CV, attached hereto, including the documents I have read and authored
`
`and systems I have developed and used since then.
`
`25. Furthermore, I have reviewed the various relevant publications from
`
`the art at the time of the alleged invention and the claim charts that are included in
`
`the Petition for Inter Partes Review of the ’298 patent, to which this Declaration
`
`relates. I have also reviewed the Petition in its entirety. Based on my experience as
`
`a person having ordinary skill in the art (“POSA”) at the time of the alleged
`
`invention, the references accurately characterize the state of the art at the relevant
`
`time. Specifically, I have reviewed the following:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,115,298 (“the ’298 patent”)
`Expert Declaration of Dr. Thomas La Porta (“TLP”)
`1002
`1003 U.S. Patent No. 6,683,870 to Archer (“Archer”)
`
`Bright House Networks - Ex. 1002, Page 9
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`
`
`Exhibit
`Description of Document
`No.
`1004 U.S. Patent No. 5,958,016 to Chang et al. (“Chang”)
`1005 U.S. Patent No. 6,445,694 to Swartz (“Swartz”)
`1006 U.S. Patent No. 7,764,777 (“the ’777 patent”)
`1007 U.S. Patent No. 8,457,113 (“the ’113 patent”)
`File history of U.S. Patent No. 8,115,298
`1008
`File history of U.S. Patent No. 8,457,113
`1009
`File history of U.S. Patent No. 7,764,777
`1010
`1011 WO 97/23899 to Harris (“Harris”)
`1012 U.S. Patent No. 5,802,160 to Kugell
`1013 U.S. Patent No. 5,206,901 to Harlow
`1014 U.S. Patent No. 6,353,660 to Burger (“Burger”)
`1015 WO 98/54913 to Arkko
`1016 U.S. Patent No. 5,434,852 to La Porta
`1017 U.S. Patent No. 6,463,145 to O’Neal
`ITU-T Recommendation H.323 (“H.323”) (02/98)
`1018
`ITU-T Recommendation H.225 (“H.225”) (09/99)
`1019
`ITU-T Recommendation Q.1211 (“Q.1211”) (03/93)
`1020
`ITU-T Recommendation Q.1215 (“Q.1215”) (10/95)
`1021
`ITU-T Recommendation Q.1221 (“Q.1221”) (09/97)
`1022
`ITU-T Recommendation H.245 (“H.245”) (09/98)
`1023
`Request for Comments - SIP: Session Initiation Protocol (March
`1999) (“SIP”)
`Tech Report CUCS-002-99 Implementing Intelligent Network
`Services with the Session Initiation Protocol
`Low, The Internet Telephony Red Herring (1996)
`1026
`1027 Modarressi, An Overview of Signaling System No. 7 (1992)
`1028 Crumlish, The ABCs of the Internet
`
`1024
`
`1025
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`Bright House Networks - Ex. 1002, Page 10
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`
`
`Exhibit
`No.
`
`1049
`1050
`1051
`
`Description of Document
`Helmstetter, Increasing Hits and Selling More on your Web Site
`1029
`(1997)
`1030 Comer, Internetworking with TCP/IP 2d, Vol. I (1991)
`Judson, netmarketing – How Your Business Can Profit from the
`1031
`Online Revolution (1996)
`1032 Newton’s Telecom Dictionary 15th ed. (Aug. 1999)
`Random House Webster’s Computer & Internet Dictionary 3rd ed.
`1033
`(1999)
`1034 Request for Comments – The TLS Protocol (Jan. 1999)
`Request for Comments – Hypertext Transfer Protocol – HTTP/1.1
`1035
`(June 1999)
`ITU-T Recommendation Q.931 (“Q.931”) (05/98)
`1036
`Engineering and Operations in the Bell System (1984)
`1037
`Thӧrner, Intelligent Networks (1994)
`1038
`1039 U.S. Patent No. 5,473,679 to La Porta
`1040 U.S. Patent No. 5,509,010 to La Porta
`1041 U.S. Patent No. 5,563,939 to La Porta
`1042 U.S. Patent No. 5,659,544 to La Porta
`1043 U.S. Patent No.5,943,408 to Chen
`1044 U.S. Patent No. 6,081,715 to La Porta
`1045 U.S. Patent No. 6,298,039 to Buskens
`SEC Form S-1, Net2Phone, Inc. (May 1999)
`1046
`Terplan, The Telecommunications Handbook (1999)
`1047
`Lakshmi-Ratan, The Lucent Technologies Softswitch—Realizing the
`Promise of Convergence (April-June 1999)
`Tanenbaum, Computer Networks 3rd ed. (1996)
`IBM PCjr The easy one for everyone (1983)
`PacketCable™ 1.0 Architecture Framework Technical Report (1999)
`
`1048
`
`Bright House Networks - Ex. 1002, Page 11
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`
`
`Exhibit
`No.
`1052
`
`Description of Document
`Table of Related Applications
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`I am not a patent attorney, nor have I independently researched the
`26.
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`law on patent validity. Attorneys for the Petitioners explained certain legal
`
`principles to me that I have relied upon in forming my opinions set forth in this
`
`report.
`
`A.
`27.
`
`Person Having Ordinary Skill in the Art (“POSA”)
`
`I understand that I must undertake my assessment of the claims of the
`
`’298 patent from the perspective of what would have been known or understood by
`
`a POSA as of the invention dates of the prior art references in 1997 and 1998. I
`
`understand the earliest-claimed priority date of the patent claim is May 4, 2000.
`
`The opinions and statements that I provide herein regarding the ’298 patent and the
`
`references that I discuss are made from the perspective of the person of ordinary
`
`skill in the art in the time frame of the mid- to late 1990s and 2000.
`
`28. Counsel has advised me that to determine the appropriate level of one
`
`of ordinary skill in the art I may consider the following factors: (a) the types of
`
`problems encountered by those working in the field and prior art solutions thereto;
`
`(b) the sophistication of the technology in question, and the rapidity with which
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`Bright House Networks - Ex. 1002, Page 12
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
`
`29. The
`
`relevant
`
`technology
`
`field
`
`for
`
`the
`
`’298 patent
`
`is
`
`telecommunications networks and data networks. Based on this, a POSA at the
`
`time of the ’298 patent filing would have been an engineer or computer scientist
`
`with at least a bachelor’s degree, or equivalent experience in electrical engineering,
`
`or a related field, and at least three years of industry experience in the fields of
`
`analog and digital communications, inclusive of exposure to telecommunications
`
`standards as applied in circuit-switched and packet-switched networks. The
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`education and experience levels may vary between POSAs; for example, some
`
`persons would have a Bachelor’s degree with two to three years of work
`
`experience, and others would have a Master’s degree, with one to two years of
`
`work experience.
`
`30. Unless otherwise specified, when I mention a POSA or someone of
`
`ordinary skill, I am referring to someone with at least the above level of knowledge
`
`and understanding.
`
`31. Based on my experiences, I have a good understanding of the
`
`capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to
`
`being a person of at least ordinary skill in the art, I have worked closely with—and
`
`taught—many such persons over the course of my career.
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`Bright House Networks - Ex. 1002, Page 13
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`32. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’298 patent have been based on the perspective of a person
`
`of ordinary skill in the art between mid-1999 and mid-2000.
`
`33. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, the content of the ’298 patent, my years of experience in
`
`the field, my understanding of the basic standards that would be relevant to
`
`telecommunications networks, and my familiarity with the backgrounds of
`
`colleagues, both past and present.
`
`34. My opinions herein regarding the person of ordinary skill in the art,
`
`and my other opinions set forth herein, would remain the same if the person of
`
`ordinary skill in the art were determined to have somewhat more or less education
`
`or experience than I have identified above.
`
`B.
`35.
`
`Prior Art
`
`I understand that the law provides categories of information that
`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`To be prior art to a particular patent under the relevant law, a reference must have
`
`been made, known, used, published, or patented, or be the subject of a patent
`
`application by another, before the priority date of the patent. I also understand that
`
`the POSA is presumed to have knowledge of the relevant prior art.
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`Bright House Networks - Ex. 1002, Page 14
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`36. As discussed below, I understand that the ’298 patent claims priority
`
`to an application filed May 4, 2000. Because a PSOA’s level of skill and
`
`understanding of the state of the art was relatively the same at the time of the
`
`invention of the prior art, in 1997 to 1999, as it was in mid-2000, my analysis
`
`considers the skill of a POSA during that time frame.
`
`C. Claim Interpretation
`I understand that, in Inter Partes Review, the claim terms are to be
`37.
`
`given their broadest reasonable interpretation (BRI) in light of the specification.
`
`See 37 C.F.R. § 42.100(b).
`
`D. Legal Standards for Anticipation & Obviousness
`I have been provided the following instruction from the Model Patent
`38.
`
`Jury Instructions for the Northern District of California (July 16, 2014) for
`
`anticipation, and instructions from the Federal Circuit Bar Association Model
`
`Instructions regarding obviousness, which is reproduced in part below. I apply this
`
`understanding in my analysis, with the caveat that I have been informed that the
`
`Patent Office will find a patent claim invalid in inter partes review if it concludes
`
`that it is more likely than not that the claim is invalid (i.e., a preponderance-of-the-
`
`evidence standard), which is a lower burden of proof than the “clear-and-
`
`convincing” standard that is applied in United States district court (and described
`
`in the jury instruction below):
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`Bright House Networks - Ex. 1002, Page 15
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`4.3a1 ANTICIPATION
`
`A patent claim is invalid if the claimed invention is not new. For the
`claim to be invalid because it is not new, all of its requirements must
`have existed in a single device or method that predates the claimed
`invention, or must have been described in a single previous
`publication or patent that predates the claimed invention. In patent
`law, these previous devices, methods, publications or patents are
`called “prior art references.” If a patent claim is not new we say it is
`“anticipated” by a prior art reference.
`
`The description in the written reference does not have to be in the
`same words as the claim, but all of the requirements of the claim must
`be there, either stated or necessarily implied, so that someone of
`ordinary skill in the field of [identify field] looking at that one
`reference would be able to make and use the claimed invention.
`
`Here is a list of the ways that [alleged infringer] can show that a
`patent claim was not new [use those that apply to this case]:
`
`[– if the claimed invention was already publicly known or publicly
`used by others in the United States before [insert date of conception
`unless at issue];]
`
`[– if the claimed invention was already patented or described in a
`printed publication anywhere in the world before [insert date of
`conception unless at issue]. [A reference is a “printed publication” if it
`is accessible to those interested in the field, even if it is difficult to
`find.];]
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`Bright House Networks - Ex. 1002, Page 16
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`[– if the claimed invention was already made by someone else in the
`United States before [insert date of conception unless in issue], if that
`other person had not abandoned the invention or kept it secret;]
`
`[– if the claimed invention was already described in another issued
`U.S. patent or published U.S. patent application that was based on a
`patent application filed before [insert date of the patent holder’s
`application filing date] [or] [insert date of conception unless at issue];]
`
`[– if [named inventor] did not invent the claimed invention but instead
`learned of the claimed invention from someone else;]
`
`[– if the [patent holder] and [alleged infringer] dispute who is a first
`inventor, the person who first conceived of the claimed invention and
`first reduced it to practice is the first inventor. If one person conceived
`of the claimed invention first, but reduced to practice second, that
`person is the first inventor only if that person (a) began to reduce the
`claimed invention to practice before the other party conceived of it
`and (b) continued to work diligently to reduce it to practice. [A
`claimed invention is “reduced to practice” when it has been tested
`sufficiently to show that it will work for its intended purpose or when
`it is fully described in a patent application filed with the PTO].]
`
`[Since it is in dispute, you must determine a date of conception for the
`[claimed invention] [and/or] [prior invention]. Conception is the
`mental part of an inventive act and is proven when the invention is
`shown in its complete form by drawings, disclosure to another or
`other forms of evidence presented at trial.]
`
`Bright House Networks - Ex. 1002, Page 17
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`
`
`(Model Patent Jury Instructions for the Northern District of California
`at 30-31, § 4.3a1 (July 16, 2015).)
`
`4.3a2 STATUTORY BARS
`
`A patent claim is invalid if the patent application was not filed within
`the time required by law. This is called a “statutory bar.” For a patent
`claim to be invalid by a statutory bar, all of its requirements must have
`been present in one prior art reference dated more than one year
`before the patent application was filed. Here is a list of ways [alleged
`infringer] can show that the patent application was not timely filed:
`[choose those that apply]
`
`[– if the claimed invention was already patented or described in a
`printed publication anywhere in the world before [insert date that is
`one year before effective filing date of patent application]. [A
`reference is a “printed publication” if it is accessible to those
`interested in the field, even if it is difficult to find.];]
`
`[– if the claimed invention was already being openly used in the
`United States before [insert date that is one year before application
`filing date] and that use was not primarily an experimental use (a)
`controlled by the inventor, and (b) to test whether the invention
`worked for its intended purpose;]
`
`[– if a device or method using the claimed invention was sold or
`offered for sale in the United States, and that claimed invention was
`ready for patenting, before [insert date that is one year before
`application filing date]. [The claimed invention is not being [sold] [or]
`
`Bright House Networks - Ex. 1002, Page 18
`
`
`
`[offered for sale] if the [patent holder] shows that the [sale] [or] [offer
`for sale] was primarily experimental.] [The claimed invention is ready
`for patenting if it was actually built, or if the inventor had prepared
`drawings or other descriptions of the claimed invention that were
`sufficiently detailed to enable a person of ordinary skill in the field to
`make and use the invention based on them.];]
`
`[– if the [patent holder] had already obtained a patent on the claimed
`invention in a foreign country before filing the original U.S.
`application, and the foreign application was filed at least one year
`before the U.S. application.]
`
`For a claim to be invalid because of a statutory bar, all of the claimed
`requirements must have been either (1) disclosed in a single prior art
`reference, (2) implicitly disclosed in a reference to one skilled in the
`field, or (3) must have been present in the reference, whether or not
`that was understood at the time. The disclosure in a reference does not
`have to be in the same words as the claim, but all the requirements
`must be there, either described in enough detail or necessarily implied,
`to enable someone of ordinary skill in the field of [identify field]
`looking at the reference to make and use the claimed invention.
`
`(Model Patent Jury Instructions for the Northern District of California at 32,
`
`§ 4.3a2 (July 16, 2015).)
`
`Bright House Networks - Ex. 1002, Page 19
`
`
`
`4.3c OBVIOUSNESS
`
`Even though an invention may not have been identically disclosed or
`described before it was made by an inventor, in order to be patentable,
`the invention must also not have been obvious to a person of ordinary
`skill in the field of technology of the patent at the time the invention
`was made.
`
`[Alleged infringer] may establish that a patent claim is invalid by
`showing, by clear and convincing evidence, that the claimed invention
`would have been obvious to persons having ordinary skill in the art at
`the time the invention was made in the field of [insert the field of the
`invention].
`
`In determining whether a claimed invention is obvious, you must
`consider the level of ordinary skill in the field [of the invention] that
`someone would have had at the time the [invention was made] or
`[patent was filed], the scope and content of the prior art, and any
`differences between the prior art and the claimed invention.
`
`Keep in mind that the existence of each and every element of the
`claimed invention in the prior art does not necessarily prove
`obviousness. Most, if not all, inventions rely on building blocks of
`prior art. In considering whether a claimed invention is obvious, you
`may but are not required to find obviousness if you find that at the
`time of the claimed invention [or the patent’s filing date] there was a
`reason that would have prompted a person having ordinary skill in the
`field of [the invention] to combine the known elements in a way the
`
`Bright House Networks - Ex. 1002, Page 20
`
`
`
`claimed invention does, taking into account such factors as (1)
`whether the claimed invention was merely the predictable result of
`using prior art elements according to their known function(s); (2)
`whether the claimed invention provides an obvious solution to a
`known problem in the relevant field; (3) whether the prior art teaches
`or suggests the desirability of combining elements claimed in the
`invention; (4) whether the prior art teaches away from combining
`elements in the claimed invention; (5) whether it would have been
`obvious to try the combinations of elements, such as when there is a
`design need or market pressure to solve a problem and there are a
`finite number of identified, predictable solutions; and (6) whether the
`change resulted more from design incentives or other market forces.
`To find it rendered the invention obvious, you must find that the prior
`art provided a reasonable expectation of success. Obvious to try is not
`sufficient in unpredictable technologies.
`
`In determining whether the claimed invention was obvious, consider
`each claim separately. Do not use hindsight, i.e., consider only what
`was known at the time of the invention [or the patent’s filing date].
`
`In making these assessments, you should take into account any
`objective evidence (sometimes called “secondary considerations”) that
`may shed light on the obviousness or not of the claimed invention,
`such as:
`
`(a) Whether the invention was commercially successful as a result of
`the merits of the claimed invention (rather than the result of design
`needs or market-pressure advertising or similar activities);
`
`Bright House Networks - Ex. 1002, Page 21
`
`
`
`(b) Whether the invention satisfied a long-felt need;
`
`(c) Whether others had tried and failed to make the invention;
`
`(d) Whether others invented the invention at roughly the same time;
`
`(e) Whether others copied the invention;
`
`(f) Whether there were changes or related technologies or market
`needs contemporaneous with the invention;
`
`(g) Whether the invention achieved unexpected results;
`
`(h) Whether others in the field praised the invention;
`
`(i) Whether persons having ordinary skill in the art of the invention
`expressed surprise or disbelief regarding the invention;
`
`(j) Whether others sought or obtained rights to the patent from the
`patent holder; and
`
`(k) Whether the inventor proceeded contrary to accepted wisdom in
`the field.
`
`Federal Circuit Bar Association Model Jury Instructions §4.3c (2014).
`
`39.
`
`I am also informed that the United States Patent Office supplies its
`
`examining corps with a Manual of Patent Examining Procedure that provides
`
`exemplary rationales that may support a conclusion of obviousness and I apply
`
`these principles in my analysis below, including:
`
`Bright House Networks - Ex. 1002, Page 22
`
`
`
`(a) Combining prior art elements according to known methods to yield
`predictable results;
`
`(b) Simple substitution of one known element for another to obtain
`predictable results;
`
`(c) Use of known technique to improve similar devices (methods, or
`products) in the same way;
`
`(d) Applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`
`(e) “Obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`
`(f) Known work in one field of endeavor may prompt variations of it
`for use in either the same field or a different one based on design
`incentives or other market forces if the variations are predictable to
`one of ordinary skill in the art; or
`
`(g) 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.
`
`MPEP § 2143.
`
`Bright House Networks - Ex. 1002, Page 23
`
`
`
`III. TECHNOLOGY TUTORIAL
`technology background
`40. The following
`
`is based on my own
`
`observations and experience in the industry as well as the materials considered.
`
`Where appropriate, I have provided specific exemplary citations.
`
`A.
`41.
`
`Introduction
`
`In the early 1990s, the telecommunications industry was evolving
`
`from a model of simple telephony services to a model that supported more
`
`sophisticated call features. Ex. 1026, 1-2; Ex. 1049, 14-16; see also Ex. 1037, 151.
`
`It was simultaneously facing the specter of competition from Internet technologies
`
`for
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