Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DISH Network L.L.C.,
`Petitioner
`
`v.
`
`TQ Delta LLC,
`Patent Owner
`
`U.S. Patent No. 8,611,404
`Filing Date: May 6, 2013
`Issue Date: December 17, 2013
`
`Title: Multicarrier Transmission System with Low Power Sleep Mode and Rapid-On
`Capability
`_______________________
`
`
`
`DECLARATION OF W. LEO HOARTY IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,611,404
`
`Inter Partes Review No. ______
`
`
`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 5
`A.
`Engagement Overview ......................................................................... 5
`B.
`Summary of Opinions .......................................................................... 5
`C. Qualifications and Experience ............................................................. 6
`2.
`Career ......................................................................................... 7
`3.
`Publications .............................................................................. 13
`4.
`Curriculum Vitae ...................................................................... 14
`D. Materials Considered .......................................................................... 14
`LEGAL PRINCIPLES USED IN THE ANALYSIS ................................... 18
`A.
`Person Having Ordinary Skill in the Art (“POSITA”) ...................... 18
`B.
`Prior Art .............................................................................................. 20
`C.
`Broadest Reasonable Interpretations .................................................. 21
`D.
`Legal Standards for Anticipation & Obviousness .............................. 21
`III. TECHNOLOGY TUTORIAL ...................................................................... 31
`A.
`Introduction: From Dial-up to Broadband ......................................... 31
`B.
`Challenges of High-Speed Data over the POTS Network ................. 33
`C. Overview of ADSL-High-Speed Data over Copper Twisted-
`Pair Cables .......................................................................................... 36
`Technology Specifics of ADSL ......................................................... 40
`Initialization and Synchronization of an ADSL Link ........................ 45
`Some Detail for Understanding Initialization and
`Synchronization .................................................................................. 49
`Crosstalk in ADSL ............................................................................. 52
`G.
`Bit Loading, Bit Allocation Tables and Bit Swapping ...................... 55
`H.
`Bit Allocation and Power Cut Back ................................................... 58
`I.
`Power Management and Sleep Mode ................................................. 60
`J.
`Summary ............................................................................................ 65
`K.
`IV. THE ‘404 PATENT ...................................................................................... 67
`A. Overview of the ‘404 Patent ............................................................... 67
`2
`
`D.
`E.
`F.
`
`II.
`
`
`
`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`The Claims of the ‘404 Patent ............................................................ 69
`B.
`Interpretation of Claim Limitations in the ‘404 Patent ...................... 70
`C.
`The Priority Claim of the ‘404 Patent ................................................ 71
`D.
`V. OVERVIEW OF THE PRIOR ART ............................................................ 71
`A. Overview of Bowie ............................................................................ 71
`B. Overview of Vanzieleghem ................................................................ 74
`C. Overview of the 1995 ADSL Standard .............................................. 75
`D.
`Bowie, Vanzieleghem and the 1995 ADSL Standard Are
`Analogous Art .................................................................................... 76
`VI. GROUND 1 – CLAIMS 6, 11, 16 AND 20 ARE RENDERED
`OBVIOUS BY BOWIE IN VIEW OF THE 1995 ADSL
`STANDARD AND VANZIELEGHEM UNDER 35 U.S.C. § 103(A) ....... 77
`A.
`Independent claim 6 ........................................................................... 77
`1.
`Claim element 6[b] .................................................................. 77
`2.
`Claim element 6[c] ................................................................... 80
`3.
`Claim element 6[d] .................................................................. 84
`4.
`Claim element 6[e] ................................................................... 88
`5.
`Claim element 6[f] ................................................................... 96
`6.
`Claim element 6[g] .................................................................. 99
`Independent claim 11 ....................................................................... 101
`1.
`Claim element 11[a] ............................................................... 101
`2.
`Claim element 11[b] .............................................................. 102
`3.
`Claim element 11[d] .............................................................. 103
`4.
`Claim element 11[g] .............................................................. 103
`C. Dependent claim 20 .......................................................................... 103
`VII. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS
`EXIST ......................................................................................................... 110
`VIII. CONCLUSION ........................................................................................... 111
`
`
`
`B.
`
`3
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`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`1.
`
`I, W. Leo Hoarty, declare as follows:
`
`2.
`
`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
`3.
`I have been retained by counsel for DISH Network L.L.C.
`
`(“Petitioner” or “DISH”) in this case as an expert in the relevant art. I am being
`
`compensated for my work at the rate of $545 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. 8,611,404 (“the ‘404 patent”), its
`
`prosecution history, and the prior art and to render opinions on the obviousness or
`
`non-obviousness of certain ones of the claims of the ‘404 patent in light of the
`
`teachings of the prior art, as understood by a person of ordinary skill in the art in
`
`the 1998 time frame. I understand that the claims being challenged in the Petition
`
`are claims 6, 11, 16 and 20 (“the challenged claims”).
`
`B.
`5.
`
`Summary of Opinions
`
`After studying the ‘404 patent, relevant excerpts of its prosecution
`
`history, and the prior art, and considering the subject matter of the claims of the
`
`‘404 patent in light of the state of technical advancement in the area of power
`
`conservation in multicarrier communication systems in the 1998 time frame, I
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`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`reached the conclusions discussed herein.
`
`6.
`
`In light of these general conclusions, and as explained in more detail
`
`throughout this declaration, it is therefore my opinion that each of the challenged
`
`claims of the ‘404 patent addressed in this declaration are invalid as they were
`
`anticipated and/or obvious in the 1998 time frame in light of the knowledge of skill
`
`in the art at that time and the teachings, suggestions, and motivations present in the
`
`prior art. This declaration, and the conclusions and opinions herein, provide
`
`support for the Petition for Inter Partes Review of the ‘404 patent filed by
`
`Petitioner. I have reviewed the Petition in its entirety as well as its corresponding
`
`exhibits.
`
`C. Qualifications and Experience
`7.
`I possess the knowledge, skills, experience, and training to form an
`
`expert opinion and testimony in this matter. I have over 40 years of experience in
`
`the field of computer systems and networking, including distributed software
`
`systems and streaming media technology. I also have deep experience in cable
`
`television systems and consumer electronics, including the hardware and software
`
`design of media set-top and mobile devices. I have practiced and researched in the
`
`field of Digital Signal Processing and Computer Science for approximately 35
`
`5
`
`years.
`
`
`
`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`Career
`
`2.
`I am currently a consultant in intellectual property and assist
`
`8.
`
`technology companies in the development of their patent portfolios. I have also
`
`served as an expert witness for numerous cases since 2006.
`
`9.
`
`Relevant to this matter, in the 1990’s, I was engaged in the
`
`development of technology for video-on-demand and interactive television systems
`
`for cable television companies. These systems were in direct competition with the
`
`telephone company ADSL-based video-on-demand (VoD) networks. In fact, my
`
`company, ICTV Inc., first deployed its technology on a Cox Cable System in
`
`Omaha, Nebraska in 1994 while the regional Bell operating company, US West,
`
`was deploying their VoD system nearby. I led the development of the core
`
`technology to send high-speed data from the cable system headend to the home and
`
`from the home back to the headend. The cable headend is in many ways similar to
`
`the telephone company central office. The technology that I developed solved
`
`many technical challenges similar to ADSL. Some of these common problems
`
`include providing a means to send data from the home back through the network to
`
`the cable headend. We developed a unique data communications technology
`
`employing many of the technical methods adopted by ADSL including error
`
`management and channel characterization. Though the fiber and coaxial networks
`
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`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`of cable TV are vastly different from the copper-twisted-pair world of the
`
`telephone companies, sending and receiving data across a city-wide network
`
`presents overlapping technical challenges.
`
`10.
`
`In the course of leading the development of the company’s core
`
`technology for ICTV, a leading interactive television system provider, I studied the
`
`digital signal processing in depth including advanced data modulation methods
`
`such as QAM, forward error correction, and channel equalization, among many
`
`other advanced data communications technologies. I further led the company in the
`
`development of a novel, first of its kind, digital return path for cable TV systems.
`
`Called “CDSL” (for Cable Digital Subscriber Line), the technology allowed a user
`
`to interact with a remote (to the home) video-on-demand server system. The users
`
`of the ICTV system were able to order movies for immediate playback as well as
`
`to interact with various services such as ordering pizza or checking sports scores.
`
`The CDSL technology employed QAM modulation with Reed-Solomon forward
`
`error correction which was similar in many aspects to the modulation means of
`
`ADSL. The channel model was Aloha-based, originally developed for our defense
`
`department in the 1970’s. (Ex. 1030.)
`
`11. Also during the course of developing the company’s technology, I
`
`studied the ADSL system including the ANSI T1.413 specification later in 1996.
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`As the Regional Bell Operating Companies were in direct competition with the
`
`cable TV operators, it was important for me to understand the capabilities of this
`
`competitive technology. As I had already studied and put into practice many of the
`
`core technologies of ADSL (as outlined above), I thoroughly understood the
`
`technology requirements as well as clearly understood the challenges the telcos
`
`faced. I needed to justify to my many investors (which included IBM, Cox
`
`Communications and several Silicon Valley venture capitalists), the merits of my
`
`inventions. My understanding of ADSL and its serious technical limitations and
`
`challenges let me to predict to my investors that cable TV would significantly
`
`outpace the telcos and dominate in both interactive services such as VOD as well
`
`as broadband access.
`
`12. Many years later, in the early 2000’s, I was a founding member of
`
`another technology company that developed novel over-the-air transmission of
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`data over a citywide area to set-top devices designed by me in consumers’ homes.
`
`The company developed a digital signal processing algorithm for over-the-air data
`
`transmission and then developed a sophisticated silicon chip to execute the
`
`process. Many of the processes inside the company’s chip were identical to those
`
`used in ADSL modems including QAM modulation, Reed-Solomon forward error
`
`correction, and Viterbi trellis modulation. The company further designed and built
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`data modulation and transmission means to transmit high-speed data of up to 3
`
`megabits per second over the air throughout an entire metropolitan area. The
`
`company further designed a consumer set-top box that employed the company’s
`
`data receiver chip. The set-top box automatically tuned to the appropriate
`
`frequency and received, stored, and provided playback of data received from the
`
`central transmitter. The system is described further below.
`
`13. Taking a step back, in 1990, I relocated to Silicon Valley in California
`
`where I founded ICTV Inc., one of the first interactive television companies
`
`providing technology to multichannel television system providers. This venture
`
`received funding from IBM and Cox Cablevision companies, as well as private
`
`investors. Between 1990 and 1997, I was responsible for developing the first
`
`interactive TV and video-on-demand systems for cable television. The company
`
`employed IBM’s then-new video server technology and deployed the ICTV system
`
`in Omaha, Nebraska on the Cox Cable network in 1994, among other installations
`
`and cable partners. My primary role was as chief technology officer, and I
`
`continued to lead the development of new technology for the company with a focus
`
`on the emerging digital television technologies. I have authored or co-authored
`
`more than 25 patents for ICTV, several of which have become some of the most
`
`cited in the interactive television and video-on-demand patent field.
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`14. Between 1997 and 1998, I was a technology partner at EnCamera
`
`Sciences Corporation. There, I helped to develop a new MPEG video compression
`
`technology that could be inserted in analog television signals without harming the
`
`underlying analog picture or sound, thus adding a digital television program inside
`
`an analog program. This technology could also transport any digital data
`
`information in addition to a digital TV program.
`
`15.
`
`In 2000, I founded Dotcast Inc., where I was responsible for the
`
`design and development of the Dotcast digital-media national distribution network
`
`as well as the development of a novel system-on-a-chip and set-top box using this
`
`chip. The Dotcast system utilized the technology created by EnCamera Sciences to
`
`distribute digital media, such as recently released feature films. The complete
`
`system provided users with a pre-cached video-on-demand service, which was
`
`continually updated via a national wireless distribution system developed by
`
`Dotcast. Once the content had been downloaded to the hard-drive of the user’s set-
`
`top box, assets could be watched on a pay-per-view basis. The Dotcast system was
`
`later adopted by a Walt Disney Company-led consortium called MovieBeam (the
`
`members of which included all of the Hollywood movie studios) as the basis of
`
`their wireless feature film set-top service which because active across the United
`
`States in the top 100 television markets launching in 2005. Various aspects of the
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`Dotcast / MovieBeam technology won “Best of Show” at the Consumer
`
`Electronics Show (“CES”) in 2004 and 2005.
`
`16. Between 1990 and 2005, I attended numerous conferences including
`
`the National Association of Broadcasters (NAB) Convention, the National Cable
`
`Television Association ("NCTA") conferences, the twice-yearly Society of Cable
`
`Telecommunication Engineers (SCTE) conferences, the International Broadcasting
`
`Convention (IBC) in Amsterdam, which then alternated every other year with the
`
`International Television Symposium and Technical Exhibition in Montreux, as
`
`well as many IEEE conferences and other industry-related trade shows show such
`
`as the annual International CES. I frequently presented papers and spoke on panels.
`
`17.
`
`I have served on a number of technical committees, including
`
`subcommittees of the NCTA Engineering Committee; CableLabs (the U.S. cable
`
`TV industry technology research organization); the International Standards
`
`Organization's Motion Picture Experts Group ("MPEG"); and the U.S. Advanced
`
`Television Standards Committee (ATSC) assisting with the development of the
`
`next-generation High-Definition Television (HDTV).
`
`18.
`
`I assisted as a witness of fact in litigation between Active Video
`
`Networks (formerly ICTV) and Verizon in the Eastern District of Virginia. I was
`
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`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`deposed and testified in court during the trial. I have also testified as an expert
`
`witness in the High Court of England for the matter of Rovi v. Virgin Media.
`
`19.
`
`In summary, I have been involved in research and development and
`
`the formation of many high-technology companies based on this research and
`
`development to exploit new technologies in computing systems, including
`
`distributed computing systems associated with session transfer as well as streaming
`
`media technology.
`
`20. Many top technology corporations and venture capital companies
`
`have provided funding for the companies that I have founded including IBM, Intel
`
`Corporation, Cisco Systems, Samsung Electronics, Cox Communications, Norwest
`
`Ventures, Worldview Technology Partners, GE Capital and Lauder Venture
`
`Partners, among many others.
`
`3.
`Publications
`21. As previously mentioned, I have authored, co-authored and assisted in
`
`writing many patent applications (many of which are still pending). I have
`
`approximately 36 granted patents with claims covering interactive cable television
`
`systems, video-on-demand, media streaming and storage, antenna design,
`
`electronic program guides, speech recognition and other user interface designs.
`
`12
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`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`The patent numbers and titles as well as my co-inventors are listed on the attached
`
`curriculum vitae. (Ex. 1016.)
`
`22.
`
`I am also the author of several journal and conference publications,
`
`which can be provided upon request.
`
`4.
`Curriculum Vitae
`23. Additional details of my education and employment history, patents,
`
`and publications are set forth in my current curriculum vitae, which is provided as
`
`Ex. 1016.
`
`D. Materials Considered
`24. My analysis is based on my experience in the computer systems and
`
`networking,
`
`including distributed software systems and streaming media
`
`technology, industries since 1980, 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 ‘404 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 (“POSITA”) 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:
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`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`Ex. No.
`1001
`1003
`1004
`1005
`
`Description of Document
`U.S. Patent No. 8,611,404 to Greszczuk et al. (“the ’404 patent”)
`File History for U.S. Patent No. 8,611,404
`U.S. Patent No. 5,956,323 to Bowie (“Bowie”)
`European Patent Publication No. EP 0883269 to Vanzieleghem
`(“Vanzieleghem”)
`ANSI T1.413-1995 – “Network and Customer Installation Interfaces –
`Asymmetric Digital Subscriber Line (ADSL) Metallic Interface” (Aug.
`18, 1995) (“1995 ADSL Standard”)
`American National Standards Institute, “Procedures for the
`Development and Coordination of American National Standards”
`(March 22, 1995)
`Library of Congress, Excerpts from “Network and Customer
`Installation Interfaces – Asymmetric Digital Subscriber Line (ADSL)
`Metallic Interface” (Stamped Feb. 2, 1996)
`Linda Hall Library, Excerpts from “Network and Customer Installation
`Interfaces – Asymmetric Digital Subscriber Line (ADSL) Metallic
`Interface” (Stamped Apr. 15, 1996)
`Zogakis and Cioffi, “The Effect of Timing Jitter on the Performance of
`a Discrete Multitone System” (Jul. 1996)
`1011
`U.S. Patent No. 6,144,695 to Helms et al.
`1012
`U.S. Patent No. 5,815,505 to Mills
`1013
`U.S. Patent No. 5,974,139 to McNamara et al.
`1014
`U.S. Patent No. 6,091,722 to Russell et al.
` 1015 U.S. Patent No. 6,134,274 to Sankaranarayanan et al.
`1017
`Edfors, et al., “An introduction to orthogonal frequency-division
`multiplexing” (Sept. 1996)
`Franks, “Carrier and Bit Synchronization in Data Communication – A
`Tutorial Review” (Aug. 1980)
`Hall, “Selecting an ADSL transceiver: ANSI standard offers two levels
`of modem performance” (Oct. 1, 1997)
`14
`
`1018
`
`1019
`
`
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`

`
`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`Ex. No.
`1020
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`1032
`1033
`1034
`
`1035
`
`1036
`
`Description of Document
`“Learning About Saving Energy” (Jan. 1995)
`“Technical Report TR-001: ADSL Forum System Reference Model”
`(May 1996)
`“Technical Report TR-005: ADSL Network Element Management”
`(Mar. 1998)
`“Technical Report TR-007: Interfaces and System Configurations for
`ADSL: Customer Premises” (Mar. 1998)
`“TR-013: Interfaces and System Configuration for ADSL Central
`Office” (Jan. 1999)
`“Technical Report TR-022: The Operation of ADSL-based Networks”
`(1999)
`“DSL Forum Technical Report TR-023: Overview of ADSL Testing”
`(May 26, 1999)
`“Technical Report TR-026: T1.413 Issue 2 ATM based ADSL ICS”
`(Sep. 9, 1999)
`“Technical Report TR-029: ADSL Dynamic Interoperability Testing”
`(Feb. 2000)
`“Technical Report, DSL Forum TR-031: ADSL ANSI T1.413-1998
`Conformance Testing” (Mar. 2000)
`“Technical Report, DSL Forum TR-033: ITU-T G.992.2 (G.lite) ICS”
`(Mar. 2000)
`PowerPoint Presentation, “ADSL and flavors in a nutshell”
`Bingham, “ADSL, VDSL, and Multicarrier Modulation” (2000)
`Kitz, “ADSL Technology and DMT”
`Tretter, “Communication System Design using DSP Algorithms”
`(2008)
`EE Times, “ADSL Technology Explained, Part 1: The Physical Layer”
`(Mar. 2001)
`EE Times, “ADSL2: Taking the Next Step in Broadband Designs” (Jul.
`2002)
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`Ex. No.
`1037
`
`1038
`1039
`
`1040
`
`1041
`1042
`1043
`
`1044
`
`Description of Document
`Rorke, “Introduction to Copper Access Technologies and ADSL,”
`Rhodes University Computer Science Honours (1997)
`Tuijl, “Modem Techniques”
`Frenzel, “Network Timing Reference from Frequency Synchronization
`in xDSL based Access Networks” (Nov. 2010)
`Cordes and Johansson, “Synchronization in ADSL Modems” (Dec.
`1998)
`University of California, “Overview of Cell Phone Technology”
`Radio-Electronics, “GSM Power Control and Power Class”
`ETSI, “Speech and multimedia Transmission Quality (STQ); QoS
`aspects for popular services in mobile networks; Part 2: Definition of
`Quality of Service parameters and their computation” (2016)
`Pettit, “Video Dialtone: Reflections on Changing Perspectives in
`Telecommunications Regulation,” Harvard Journal of Law and
`Technology, Vol. 6 (1993)
`Fankhauser, et al. “The WaveVideo System and Network Architecture:
`Design and Implementation” (Jun. 1998)
`Hernandez, “April 20, 1964: Picturephone Dials Up First
`Transcontinental Video Call” (Apr. 2012)
`DSL Forum, “ADSL2 and ADSL2plus – The New ADSL Standards”
`(Mar. 2003)
`Abramson, “The Alohoa System – Another alternative for computer
`communications”, Fall Joint Computer Conference (1970)
`IEEE, “IEEE Standard for Ethernet” (Dec. 2012)
`Joint Claim Construction Chart, TQ Delta v. Dish Network Corp. et al.,
`15-cv-00614 (Jun. 30, 2016)
`1051 Website, "Streaming Video: Internet Broadcasting for the Masses"
`(1998)
`EE Times, “ADSL Technology Explained, Part 2: Getting to the
`Application Layer” (Apr. 2001)
`
`1045
`
`1046
`
`1047
`
`1048
`
`1049
`1050
`
`1052
`
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
`
`
`Ex. No.
`1053
`
`Description of Document
`U.S. Patent No. 6,181,711
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`26.
`I am not a patent attorney, nor have I independently researched the
`
`law on patent validity. Attorneys for the Petitioner 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 (“POSITA”)
`
`I understand that I must undertake my assessment of the claims of the
`
`‘404 patent from the perspective of what would have been known or understood by
`
`a POSITA as of the earliest possible claimed priority date of the patent claim,
`
`which I understand is January 26, 1998. The opinions and statements that I provide
`
`herein regarding the ‘404 patent and the references that I discuss are made from the
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`perspective of the person of ordinary skill in the art in the early 1998 time frame.
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`28. 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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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`field; and (d) the educational level of the inventor.
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`29. The
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`relevant
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`technology
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`field for
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`the
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`‘404 patent
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`is data
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`communications system technology. Based on this, and the four factors above, it is
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`my opinion that a POSITA would hold a bachelor’s degree (or show the equivalent
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`understanding through actual work experience) in electrical engineering (or related
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`academic fields such as data communications or digital signal processing) and at
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`least four years of additional experience
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`in
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`the area of digital and/or
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`telecommunication system design, or equivalent work experience, or, alternately,
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`eight years of equivalent work experience.
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`30. Unless otherwise specified, when I mention a POSITA 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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`31. Based on my experiences, I have a good understanding of the
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`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 many
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`such persons over the course of my career.
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`32. 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 ‘404 patent have been based on the perspective of a person
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`of ordinary skill in the art in the January 1998 time frame.
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`33. 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 ‘404 patent, my 35 years of experience
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`in the field of digital signal processing, my understanding of the basic
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`qualifications that would be relevant to an engineer tasked with investigating
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`methods and systems in the relevant area, and my familiarity with the backgrounds
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`of colleagues and co-workers, both past and present.
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`34. 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
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`and/or experience than I have identified above.
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`B.
`35.
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`Prior Art
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`I understand that the law provides categories of information that
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`constitute prior art that may be used to anticipate or render obvious patent claims.
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`To be prior art to a particular patent under the relevant law, a reference must have
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`been made, known, used, published, or patented, or be the subject of a patent
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`application by another, before the priority date of the patent. I also understand that
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`the POSITA is presumed to have knowledge of the relevant prior art.
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`36. As discussed below, I understand that the challenged claims of the
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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`‘404 patent are potentially entitled to a January 26, 1998 priority date.
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`C. Broadest Reasonable Interpretations
`37.
`I understand that, in Inter Partes Review, the claim terms are to be
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`given their broadest reasonable interpretation (BRI) in light of the specification.
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`See 37 C.F.R. § 42.100(b). In performing my analysis and rendering my opinions,
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`I have interpreted claim terms for which the Petitioner has not proposed a BRI
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`construction by giving them the ordinary meaning they would have to a POSITA,
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`reading the ‘404 Patent with its earliest priority filing date (January 26, 1998) in
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`mind, and in light of its specification and prosecution history.
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`D. Legal Standards for Anticipation & Obviousness
`38.
`I have been provided the following instruction from the Model Patent
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`Jury Instructions for the Northern District of California (July 1, 2015) for
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`anticipation, and instructions from the Federal Circuit Bar Association Model
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`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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`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
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`in the jury instruction below):
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`Declaration of W. Leo Hoarty
`Petition for Inter Partes Review of Patent No. 8,611,404
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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 o