`Petition for Inter Partes Review of Patent No. 7,764,777
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
`
`v.
`
`Focal IP, LLC,
`Patent Owner
`
`Patent No. 7,764,777 B2
`Filing Date: Nov. 30, 2007
`Issue Date: July. 27, 2010
`
`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`
`
`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,764,777
`
`Inter Partes Review No. ______
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`Bright House Networks - Ex. 1002, Page 1
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`1.
`I, Thomas F. La Porta, declare as follows:
`
`2.
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`I have personal knowledge of the facts stated in this declaration, and
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`could and would testify to these facts under oath if called upon to do so.
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`I.
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`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Bright House Networks, LLC,
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`WideOpenWest Finance, LLC, Knology of Florida,
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`Inc., and Birch
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`Communications, Inc. (Petitioners) in this case as an expert in the relevant art. I am
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`being compensated for my work at the rate of $550 per hour. No part of my
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`compensation is contingent upon the outcome of this petition.
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`4.
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`I was asked to study U.S. Patent No. 7,764,777 (“the ‘777 patent”), its
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`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 ‘777 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 late 1990s to
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`May 2000 time frame. I understand that the claims being challenged in the Petition
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`are claims 18, 21, 23, 25-26, 28-31, 37, 38, 41, 45 and 46 (“the challenged
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`claims”).
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`B.
`5.
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`Summary of Opinions
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`After studying the ‘777 patent, its file history, and the prior art, and
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`considering the subject matter of the claims of the ‘777 patent in light of the state
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`of technical advancement in the area of telephony in circuit-switched and packet-
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`switched networks in the mid-1990s to 2000 time frame, I reached the conclusions
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`discussed herein.
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`6.
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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 of
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`the ‘777 patent were invalid as obvious in light of the knowledge of skill in the art
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`in the late 1990s and early 2000 and the teachings, suggestions, and motivations
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`present in the prior art and commercially.
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`7.
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`This declaration, and the conclusions and opinions herein, provide
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`support for the Petition for Inter Partes Review of the ‘777 patent filed by
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`Petitioners. I have reviewed the Petition in its entirety as well as its corresponding
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`exhibits.
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`C. Qualifications and Experience
`8.
`I am the Director of the School of Electrical Engineering and
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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
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`and Engineering and the Department of Electrical Engineering at Penn State
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`University. I am the founding Director of the Institute of Networking and Security
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`Research at Penn State. I have worked on telecommunications networks since
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`1986.
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`1.
`Education
`I received my B.E. and M.E. in Electrical Engineering from The
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`9.
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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
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`1992.
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`Career
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`2.
`I joined AT&T Bell Labs (which later became Bell Labs, Lucent
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`10.
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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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`11. 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
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`on telecommunication signaling and control, including IEEE ICCC ’93, IEEE ICC
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`’94, and IEEE ICNP ’94.
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`12.
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`In 1997, I became the Director of the Mobile Networking Research
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`Department within Bell Labs Research. This group, which included approximately
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`4
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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
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`Lucent Technologies. My role in this job was to work with development
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`organizations to turn technology into products.
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`13. During both my development and research careers, I interacted
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`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
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`research manager, I oversaw a department that executed many large-scale joint
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`projects with development organizations
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`to release products for Lucent
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`Technologies. Examples of these joint projects include the control software for
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`Lucent Technologies’ 3G network access controllers used for interconnecting
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`CDMA base stations, processor overload controls in Lucent Technologies’ cellular
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`soft 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.
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`These interactions exposed me to a wide range of computer scientists and
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`engineers working on telecommunication network technologies.
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`14.
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`I also taught as an adjunct member of the faculty at Columbia
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`University in 1993 and from 1996-2001. I taught graduate classes in networking
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`protocol design (1993) and mobile networking (1996-2001). As such, I am
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`familiar with the curricula being taught to Electrical Engineers and Computer
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`Scientists from the early 1990s through today.
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`3.
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`15.
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`Patents and Publications
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`I am a co-inventor on 38 United States Patents and 18 foreign
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`patents, the large majority pertaining to telecommunications. One of my patents
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`pertaining to a method for routing voice traffic in a cellular access network (United
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`States Patent No. 5,953,331) was awarded the Thomas Alva Edison Patent Award
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`by the Research and Development Council of New Jersey. Another of my patents
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`pertaining to a Home Location Register (HLR) for global roaming and
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`interworking between packet switched cellular networks and circuit switched
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`cellular networks (United States Patent No. 7,522,632) was awarded another
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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
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`Distinguished Staff Award.
`
`16.
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`
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`A series of my patents were directed at providing control of
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`resources and telecommunication services in a distributed environment. See
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`United States 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.
`
`17.
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`
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`One of the projects I worked on after joining Penn State
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`University was directed at the security of cellular networks due to vulnerabilities in
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`the text messaging service. This work resulted in several scientific publications,
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`and was featured in the business section of the New York Times.
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`18.
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`
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`My work on security related to text messaging was one of the
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`reasons I was appointed to The President’s National Security Telecommunications
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`Advisory Committee. My role on this Committee was to identify security risks for
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`current and evolving cellular networks.
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`19.
`
`
`
`Based on this experience, and my continuing work at Penn
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`State University, I have intimate knowledge of telecommunication networks. I
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`have been highly recognized as an expert in such systems. I was recognized with
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`the Bell Labs Distinguished Member of Technical Staff award in 1996. My award
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`letter stated in part, “[y]our contributions to wireless call processing have
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`profoundly impacted Lucent. You are very well-known as demonstrated by your
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`three best paper awards. . . .” I was named a Bell Labs Fellow in 2000 “[f]or
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`outstanding contributions in mobile wireless networks in the area of call
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`processing, signaling, mobility management, and applications.” I was named an
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`IEEE Fellow in 2002 “for contributions to systems for advanced broadband,
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`mobile data and mobile telecommunication networks.”
`
`20.
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`
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`I previously served as the Editor-in-Chief of IEEE Personal
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`Communications Magazine, and was the founding Editor-in-Chief of IEEE
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`Transactions on Mobile Computing. I have published well over 200 technical
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`papers in this field.
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`21.
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`
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`My research has been supported primarily by the Department of
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`Defense and the National Science Foundation. I am the Director of a center funded
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`by the U.S. Army Research Lab studying network science as it relates to
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`communication networks. The center includes over 20 researchers and 7
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`universities. The focus of the center is to improve the quality of information
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`transported across tactical networks to soldiers and intelligence analysts. I am also
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`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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`4.
`Curriculum Vitae
`22. Additional details of my education and employment history, patents,
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`and publications are set forth in my current curriculum vitae attached to this
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`declaration. My curriculum vitae also includes a list of all the cases within the last
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`five years for which I have provided testimony.
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`D. Materials Considered
`23. My analysis is based on my education and experience as set out above
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`and in my CV, including the documents I have read and authored and systems I
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`have developed and used since then.
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`24. Furthermore, I have reviewed the various relevant publications from
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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 ‘777 patent, to which this Declaration
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`relates. I have also reviewed the Petition in its entirety. Based on my experience
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`as a person having ordinary skill in the art (“POSA”) at the time of the alleged
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`invention, the references accurately characterize the state of the art at the relevant
`
`time. Specifically, I have reviewed the following:
`
`Description of Document
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,764,777 (“the ’777 patent”)
`1003 U.S. Patent No. 6,683,870 to Archer (“Archer”)
`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. 8,457,113 (“the ’113 patent”)
`1007 U.S. Patent No. 8,115,298 (“the ’298 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
`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
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
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`1025
`
`Exhibit
`Description of Document
`No.
`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
`1024 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
`1029 Helmstetter, Increasing Hits and Selling More on your Web Site
`(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)
`1033 Random House Webster’s Computer & Internet Dictionary 3rd ed.
`(1999)
`1034 Request for Comments – The TLS Protocol (Jan. 1999)
`1035 Request for Comments – Hypertext Transfer Protocol – HTTP/1.1
`(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 (“La Porta”)
`1040 U.S. Patent No. 5,509,010 (“La Porta”)
`1041 U.S. Patent No. 5,563,939 (“La Porta”)
`1042 U.S. Patent No. 5,659,544 (“La Porta”)
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`
`Exhibit
`Description of Document
`No.
`1043 U.S. Patent No.5,943,408 (“Chen”)
`1044 U.S. Patent No. 6,081,715 (“La Porta”)
`1045 U.S. Patent No. 6,298,039 (“Buskens”)
`SEC Form S-1, Net2Phone, Inc. (May 1999)
`1046
`Terplan, The Telecommunications Handbook (1999)
`1047
`Lakshmi-Ratan, The Lucent Technologies Softswitch—Realizing the
`1048
`Promise of Convergence (April-June 1999)
`Tanenbaum, Computer Networks 3rd ed. (1996)
`1049
`IBM PCjr The easy one for everyone (1983)
`1050
`PacketCable™ 1.0 Architecture Framework Technical Report (1999)
`1051
`Table of applications and patents in the ’777 patent’s family
`1052
`1053 Curriculum vitae (CV) of Thomas F. La Porta
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`25.
`I am not a patent attorney, nor have I independently researched the
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`law on patent validity. Attorneys for the Petitioner explained certain legal
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`principles to me that I have relied upon in forming my opinions set forth in this
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`report.
`
`A.
`26.
`
`Person Having Ordinary Skill in the Art (“POSA”)
`
`I understand that I must undertake my assessment of the claims of the
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`‘777 patent from the perspective of what would have been known or understood by
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`a POSA as of the invention dates of the prior art references in 1997 and 1998. I
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`understand the claimed priority date of the ‘777 patent claims is May 4, 2000. The
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`opinions and statements that I provide herein regarding the ‘777 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.
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`27. Counsel has advised me that, to determine the appropriate level of one
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`of ordinary skill in the art, I may consider the following factors: (a) the types of
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`problems encountered by those working in the field and prior art solutions thereto;
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`(b) the sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`28. The
`
`relevant
`
`technology
`
`field
`
`for
`
`the
`
`‘777 patent
`
`is
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`telecommunications networks. Based on this, a POSA at the time of the ‘777 patent
`
`filing would have been an engineer or computer scientist with at least a bachelor’s
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`degree, or equivalent experience in electrical engineering, or a related field, and at
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`least three years of industry experience in the fields of analog and digital
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`communications, inclusive of exposure to telecommunications standards as applied
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`in circuit-switched and packet-switched networks.
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`29. Unless otherwise specified, when I mention a POSA or someone of
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`ordinary skill, I am referring to someone with at least the above level of knowledge
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`and understanding.
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`30. Based on my experiences, I have a good understanding of the
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to
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`being a person of at least ordinary skill in the art, I have worked closely with—and
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`taught—many such persons over the course of my career.
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`31. Although my qualifications and experience exceed those of the
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`hypothetical person having ordinary skill in the art defined above, my analysis and
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`opinions regarding the ‘777 patent have been based on the perspective of a person
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`of ordinary skill in the art in the mid-1990s to mid-2000 time frame.
`
`32. My opinions regarding the level of ordinary skill in the art are based
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`on, among other things, the content of the ‘777 patent, my years of experience in
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`the field, my understanding of the basic standards that would be relevant to
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`telecommunications networks, and my familiarity with the backgrounds of
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`colleagues, both past and present.
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`33. My opinions herein regarding the person of ordinary skill in the art,
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`and my other opinions set forth herein, would remain the same if the person of
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`ordinary skill in the art were determined to have somewhat more or less education
`
`or experience than I have identified above.
`
`B.
`34.
`
`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
`
`
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`Petition for Inter Partes Review of Patent No. 7,764,777
`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
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`the POSA is presumed to have knowledge of the relevant prior art.
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`35. As discussed below, I understand that the Patent Owner has asserted
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`that the challenged claims of the ‘777 patent are entitled to a May 4, 2000 priority
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`date. Because the state of the art was relatively the same at the time of the
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`invention of the prior art, 1997 to 1999, as it was in 2000, my analysis considers
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`the skill of a POSA during that time frame.
`
`C. Claim Interpretation
`36.
`I understand that, in Inter Partes Review, the claim terms are to be
`
`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
`37.
`I have been provided the following instruction from the Model Patent
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`Jury Instructions for the Northern District of California (July 16, 2014) for
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`anticipation, and instructions from the Federal Circuit Bar Association Model
`
`Instructions regarding obviousness, which is reproduced in part below. I apply this
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`understanding in my analysis, with the caveat that I have been informed that the
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`Patent Office will find a patent claim invalid in inter partes review if it concludes
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`that it is more likely than not that the claim is invalid (i.e., a preponderance-of-the-
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`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`evidence standard), which is a lower burden of proof than the “clear-and-
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`convincing” standard that is applied in United States district court (and described
`
`in the jury instruction below):
`
`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]:
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`[– 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.];]
`
`[– 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
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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.]
`
`(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
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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] [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
`
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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).)
`
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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
`20
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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
`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].
`
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`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);
`
`(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
`
`
`
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`Declaration of Thomas F. La Porta
`Petition for Inter Partes Review of Patent No. 7,764,777
`(k) Whether the inventor proceeded contrary to accepted
`wisdom in the field.
`
`Federal Circuit Bar Association Model Jury Instructions §4.3c (2014).
`
`38.
`
`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:
`
`(a) Combining prior art elements ac