IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
`
`FREDMAN BROS. FURNITURE COMPANY, INC.
`D/B/A GLIDEAWAY SLEEP PRODUCTS
`Petitioner
`
`v.
`
`BEDGEAR, LLC
`Patent Owner
`
`____________
`
`IPR2017-00351
`U.S. Patent No. 9,015,883
` ____________
`
`DECLARATION OF JENNIFER FRANK RHODES
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`IPR2017-00351
`Fredman EX1059
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
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`I, Jennifer Frank Rhodes, hereby declare the following:
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`I.
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`BACKGROUND AND QUALIFICATIONS
`1.
`I am over 21 years of age and otherwise competent to make this
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`Declaration. I make this Declaration based on facts and matters within my own
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`knowledge and on information provided to me by others.
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`2.
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`I have been retained by Petitioner and am submitting this declaration to
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`offer my independent expert opinions concerning certain issues requested by
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`Petitioner and raised in the accompanying petition for inter partes review
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`(“Petition”) in this matter. My compensation is not based on the substance of the
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`opinions rendered here.
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`3.
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`I have summarized in this section my educational background, career
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`history, and other relevant qualifications. I have also attached a current version of
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`my resume as Exhibit 1056.
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`4.
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`I am an expert in the field of Textile Design and Textile Product
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`Development.
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`5.
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`I am the owner of Twin Gingers LLC, a creative services and
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`consulting company serving the textile and consumer products industries
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`specializing in the design, development and commercialization of textiles and
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`textile consumer products, particularly bedding products. I am also an adjunct
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`professor at Philadelphia University teaching a course called Survey of the Textile
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`Industry, an entry level course for textile and fashion majors providing an
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`overview of all textile manufacturing processes from fiber to finished fabric
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`including yarn manufacturing, fabric formation, fabric decoration and finishing
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`processes, testing and compliance, industry best practices, and the properties and
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`characteristics of all major fiber types both natural and manmade.
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`6.
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`I received a Bachelor of Science degree
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`in Textile Design,
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`concentration in Wovens, from Philadelphia College of Textiles and Science (now
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`known as Philadelphia University) in 1996.
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`7.
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`From 1996 to 1998 I was employed by Collins & Aikman Products Co.
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`Inc. (C&A). Upon successful completion of their eight week long corporate
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`management training program and three months long study of specialized weaving
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`defects, for one year I held the position of Third Shift Supervisor, Dobby Weave
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`Room. In this role I was responsible for quality control, production, and labor for
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`one hundred fifty (150) dobby velvet weaving machines and thirty (30) employees.
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`Following my role as supervisor I became the Flat Wovens Technical Designer for
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`Automotive in C&A’s Product Development Department. In this role I was
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`charged with developing and testing new yarns and fabric constructions that would
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`meet or exceed the stringent performance requirements of flat woven automotive
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`upholstery. During this time, I created a fabric that was in production for select
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`Jeep Cherokee models. I also completed Technician Training School for Dornier
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`Rapier Looms.
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`8.
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`For two and one half years I was a Systems Consultant at Pointcarré
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`USA from 1998 to 2001. I established and managed accounts in the woven and
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`printed textile manufacturing markets. I successfully doubled the annual sales
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`volume of Pointcarré CAD/CAM software in the Textile business unit.
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`9.
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`From 2001 to 2008, for over seven years, I was Senior Designer at
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`Belding Hausman, Inc. In this role, I designed and developed custom and open-
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`line fabrics for the decorative bedding, drapery, decorative jobbers, contract, and
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`greige goods markets. I was also responsible for conducting regular trend, color,
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`and market research as well as editing and updating color palettes for all fabric
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`collections and yarn libraries. Original fabrics I designed were produced and sold
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`as finished products at retailers such as: Lilly Pulitzer, May Company Department
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`Stores, Federated Department Stores, JCPenney, Sears, Target, and Bed, Bath &
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`Beyond. Additionally, original fabric designs were produced and distributed by
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`companies such as Robert Allen, Carole Fabrics, Kasmir, and Fabricut.
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`10.
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`I was employed by FXI, formerly Foamex Innovations, Inc., for three
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`and one half years from 2009 to 2012 as Product Development Manager in the
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`company’s Consumer Products/Retail division. It was my responsibility to design,
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`develop, and source all textile covers and components for memory foam sleep and
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`comfort products; primarily mattresses, mattress toppers and pillows. I sourced
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`fabric and sewn product from domestic textile mills and cut & sew operations, and
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`from international mills. I worked intimately with the Research & Development
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`engineers to test the viability of new product development and to create and
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`substantiate all product claims. I created Quality Assurance procedures for all
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`textile inventory and managed the compliance of new product with federal labeling
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`laws, flammability regulations, and other testing requirements. During my time at
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`FXI, original product designs were produced and sold at retailers such as QVC,
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`Bed, Bath & Beyond, Costco, Walmart.com, Samsclub.com, and Anatomic Global.
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`Just before leaving the company, I completed all the design and development of a
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`line of memory foam pillows for the Dr. Breus brand; production began at the time
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`I left the company. FXI was the majority supplier to QVC’s private label memory
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`foam sleep products brand, PedicSolutions, and I was a member of the team that
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`built the FXI portion of that business from brand launch to $25MM in just two
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`years for which my team was recognized with an internal corporate award in 2010
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`and a vendor award from QVC in 2011. My focus at FXI was to find new and
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`innovative textile technologies and deliver them to the consumer in a sleep product
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`that was aesthetically pleasing, but more importantly would enhance the quality of
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`their sleep with meaningful features and real benefits. I have provided further
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`specific discussion of my background and experience in using spacer fabrics in
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`mattresses and pillows for the purposes of ventilation and cooling in my
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`“Background of the Technology” discussion in Section IV.B below.
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`II. MATERIALS REVIEWED
`11. As part of my work in connection with this matter, I have studied U.S.
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`Patent No. 9,015,883 (“the ‘883 patent”), including its written description, figures,
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`and claims, in addition to the its U.S. Patent and Trademark Office file history, as
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`well as the related U.S. Patent Nos. 8,646,134 (“the ‘134 Patent) and 8,887,332
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`(“the ‘332 Patent), and their respective file histories, as well as U.S. Provisional
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`Application No. No. 61/499,907, filed June 22, 2011, to which I understand the
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`‘883 Patent purports to claim a priority date. I have also reviewed the
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`accompanying Petition for Inter Partes Review of the ‘883 Patent and have also
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`analyzed and considered the following exhibits and prior art references:
`
`Exhibit 1001 U.S. Patent No. 8,887,332 (“the ‘332 Patent”), entitled “Pillow
`With Gusset Of Open Cell Construction”
`Exhibit 1002 File History for U.S. Patent Application No. 14/107,665, which
`issued as U.S. Patent No. 8,887,332
`Exhibit 1003 File History for U.S. Patent Application No. 13/531,122 (“the
`Parent Application”), which issued as U.S. Patent No. 8,646,134
`Exhibit 1004 U.S. Provisional Patent Application No. 61/499,907, filed June 22,
`2011
`Exhibit 1006 PCT
`International Publication No. WO 2010/075294
`Rasmussen (“Rasmussen”)
`Exhibit 1007 U.S. Provisional Application No. 61/140,622 to Rasmussen
`(“Rasmussen Provisional”)
`Exhibit 1008 U.S. Patent No. 3,109,182 to Doak (“Doak”)
`Exhibit 1009 U.S. Patent Application Publication No. US 2007/0261173 to
`Schlussel (“Schlussel”)
`Exhibit 1010 U.S. Patent Application Publication No. US 2009/0049870 to
`
`to
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
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`Garus (“Garus”)
`Exhibit 1011 U.S. Patent No. 6,988,286 to Schecter (“Schecter”)
`Exhibit 1012 U.S. Patent Application Publication No. US 2007/0246157 to
`Mason (“Mason”)
`Exhibit 1013 U.S. Patent No. 6,760,935 to Burton et al. (“Burton”)
`Exhibit 1014 U.S. Patent No. 7,080,421 to Delfs (“Delfs”)
`Exhibit 1015 UK Patent Application GB 2270254A to Starkey (“Starkey”)
`Exhibit 1016 Excerpt From New Oxford American Dictionary Third Edition
`Exhibit 1017 Excerpt from The American Heritage College Dictionary Third
`Edition
`Exhibit 1018 Excerpt from Webster’s New World Dictionary and Thesaurus
`Second Edition
`Exhibit 1019 U.S. Patent No. 5,729,851 to Hollander
`Exhibit 1020 U.S. Patent No. 367,953 to Bowman
`Exhibit 1021 U.S. Patent No. 1,876,591 to Bawden
`Exhibit 1022 U.S. Patent No. 3,290,703 to Worrall
`Exhibit 1023 PCT International Publication No. WO 2010/006372 to Kaplan
`Exhibit 1024 U.S. Patent No. 2,296,559 to Krakauer
`Exhibit 1025 European Patent Application No. EP 1 206 918 to Viviani
`Exhibit 1026 U.S. Patent No. 4,989,284 to Gamm
`Exhibit 1027 U.S. Patent No. 6,277,770 to Smith, III
`Exhibit 1028 U.S. Patent No. 4,665,575 to Raught
`Exhibit 1029 Yip – Study of three-dimensional Spacer Fabrics: Physical and
`Mechanical Properties (2007)
`Exhibit 1030 Bruer – Three-Dimensionally Knit Spacer Fabrics: A Review of
`Production Techniques and Applications
`Exhibit 1031 Warp Knitting / Spacer Fabrics – warpknitting4u.com
`Exhibit 1032 Ye – Development of the Warp Knitted Spacer Fabrics for
`Cushion Applications
`Exhibit 1033 U.S. Patent No. 5,870,785 to Hoorens “Mat, more specifically a
`mat for lying on”
`Exhibit 1034 Schlenker – Use of warp-knitted spacer textiles in mattresses
`Exhibit 1035 Obertshausen – Warp-knitted spacer fabrics for a good nights
`sleep – innovationintextiles.com
`U.S. Patent Application Publication No. 2008/0209638 to Unger
`“Method for the manufacture of pillows and cushions with spacer
`fabric, spacer woven fabric and spacer knitted fabric”
`Exhibit 1037 Ertenkin – Heat, air and water vapor transfer properties of circular
`knitted spacer fabrics
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`Exhibit 1036
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`Exhibit 1043
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`Exhibit 1038 Heide – Spacer fabrics: trends Kettenwirk-Praxis 2001
`Exhibit 1039 U.S. Patent Application Publication No. 2008/0299854 to Hilleary
`“Flame resistant spacer fabric”
`Exhibit 1040 Lehmann – Elastic, moulded spacer fabrics Kettenwirk-Praxis
`1994
`Exhibit 1041 Excerpt from Oxford American Dictionary
`Exhibit 1042
`IPR2016-00715, Paper No. 2, Petition for Inter Partes Review
`(P.T.A.B. March 6, 2016)
`IPR2016-00715, Exhibit No. 1005 – Declaration of S. Adanur
`(P.T.A.B. March 6, 2016)
`
`Exhibit 1044 European Patent Application No. EP 1 378 193 to Vuiton (English
`Translation)
`Exhibit 1045 European Patent Application No. EP 1 378 193 to Vuiton (French)
`Exhibit 1046 King Declaration regarding EP1378193A1 Vuiton Translation to
`English
`Exhibit 1047 U.S. Patent No. 9,015,883 (“the ‘883 Patent”) to Alletto “Pillow
`with gusset of open cell construction”
`Exhibit 1048 File History for U.S. Patent Appl. No. 14/328,008, which issued as
`U.S. Patent No. 9,015,883
`Exhibit 1049
`U.S. Patent No. 8,646,134 (“the ‘134 Patent”) to Alletto, Jr.
`
`“Pillow with gusset of open cell construction”
`Exhibit 1050 U.S. Patent No. 2,639,444 to de Monsabert “Mattress cover”
`Exhibit 1051 Declaration of Robert Cooper regarding Bruer article (Exhibit
`1030)
`Exhibit 1052 Complaint in Bedgear LLC v. Fredman Bros. Furniture Company,
`Inc. d/b/a Glideaway Sleep Products, Case No. 1:15-cv-6759
`(E.D.N.Y) (11-24-2015)
`Exhibit 1053 Waiver of Service of Summons (12-31-2015)
`Exhibit 1054 Complaint for Declaratory Judgment in Fredman Bros. Furniture
`Company, Inc. v. Bedgear LLC, Case No. 4:16-cv-00083-SPM
`(E.D. Mo.) (01-21-2016)
`Exhibit 1055 Order of Dismissal without Prejudice (06-24-2016)
`Exhibit 1057 Comparison of Rasmussen (Exhibit 1006) with Rasmussen
`Provisional (Exhibit 1007)
`Exhibit 1058 U.S. Patent No. 4,349,925 to Macomber (“Macomber”)
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
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`III. LEGAL FRAMEWORK
`12.
`I am a technical expert and do not offer any legal opinions. However,
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`counsel has informed me regarding certain legal principles regarding patentability
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`and related matters under United States patent law, which I have applied in
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`performing my analysis and arriving at my technical opinions in this matter.
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`13.
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`I have been informed that a patent claim must be both new (under 35
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`U.S.C. § 102) and non-obvious (under 35 U.S.C. § 103) over the prior art to be
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`patentable.
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`14.
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`I am informed that “prior art” is defined in pre-AIA 35 U.S.C. § 102
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`(which I have been informed is the version of 35 U.S.C. § 102 governing this
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`proceeding) and is generally the state of technology in the relevant field prior to
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`the time of the alleged invention and includes such documentary materials as
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`patents and publications, as well as evidence of actual uses or sales of a technology
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`within the United States. Categories of prior art include: (1) anything that was
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`publicly known or used in the United States by someone other than the inventor
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`before the inventor made his invention; (2) anything that was in public use or on
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`sale in the United States more than one year before the application for the patent
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`was filed by the inventor; (3) anything that was patented or described in a printed
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`publication anywhere in the world before the inventor made his invention; (4)
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`anything that was patented or described in a printed publication anywhere in the
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`U.S. Patent No. 9,015,883
`world more than one year before the inventor filed the application for the patent;
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`(5) anything that was invented by another person in this country before the
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`inventor made his invention so long as the other person did not abandon, suppress,
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`or conceal his prior invention; and (6) anything that was described in a patent that
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`issued from a patent application filed in the United States or certain foreign
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`countries before the inventor made his invention.
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`15. Notwithstanding all of these categories of prior art, I am informed that
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`patents and printed publications are the only form of prior art that can be set forth
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`in a petition for inter partes review, such as the petition that this declaration
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`accompanies.
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`A. Anticipation
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`16.
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`I am informed that a person cannot obtain a patent on an invention if it
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`is not new, i.e., if someone else has already made the same invention in the prior
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`art. If an invention is not new, then the invention has been “anticipated” by the
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`prior art and is not patentable.
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`17.
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`I am informed that the implicit or inherent disclosures of a prior art
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`reference may anticipate the claimed invention. Therefore, a claim of a patent is
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`“anticipated” by the prior art if each and every limitation of the claim is taught,
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`disclosed, or found, either expressly or inherently, in a single prior art reference. I
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`IPR2017-00351 Rhodes Declaration
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`am informed that for a limitation to be taught by inherency, that limitation must
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`necessarily be present in the prior art reference.
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`18.
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`I am also informed that a single prior art reference may incorporate by
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`reference disclosures from other prior art references and still be considered a single
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`reference. But to incorporate matter by reference, a host document must contain
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`language clearly identifying the subject matter which is incorporated and where it
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`is to be found and a mere reference to another application, or patent, or publication
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`is not an incorporation of anything therein. That is, the host document must
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`identify with detailed particularity what specific material it incorporates and
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`clearly indicate where that material is found in the various documents.
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`B. Obviousness
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`19.
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`I have been informed that a person cannot obtain a patent on an
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`invention if his or her invention would have been obvious to a person of ordinary
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`skill in the art at the time the invention was made. A conclusion of obviousness
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`may be founded upon a combination of two or more prior art references and is not
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`limited to a single item of prior art, like required for anticipation. In determining
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`whether prior art references render a claim obvious, counsel has informed me that
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`courts and the United State Patent and Trademark Office consider the following
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`factors: (1) the scope and content of the prior art, (2) the differences between the
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`prior art and the claims at issue, (3) the level of skill in the pertinent art, and (4)
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`secondary considerations of non-obviousness. In addition, the obviousness inquiry
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`should not be done in hindsight. Instead, the obviousness inquiry should be done
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`through the eyes of a person of ordinary skill in the relevant art at the time the
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`patent was filed (or, if applicable, as of the earliest applicable priority date for the
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`patent).
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`20.
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`In considering whether certain prior art renders a particular patent
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`claim obvious, I understand I can consider the scope and content of the prior art,
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`including the fact that one of skill in the art would regularly look to the disclosures
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`in patents, trade publications, journal articles, industry standards, product literature
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`and documentation, texts describing competitive technologies, requests for
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`comment published by standard setting organizations, and materials from industry
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`conferences. I have been informed that for a reference to be proper for use in an
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`obviousness ground of unpatentability, the reference must be “analogous art” to the
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`claimed invention. Under the correct analysis, any need or problem known in the
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`field of endeavor at the time of the invention and addressed by the patent can
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`provide a reason for combining the elements in the manner claimed. This does not
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`require that the reference be from the same field of endeavor as the claimed
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`invention, in light of the Supreme Court's instruction that when a work is available
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`in one field of endeavor, design incentives and other market forces can prompt
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`variations of it, either in the same field or a different one. Rather, a reference is
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`analogous art to the claimed invention if: (1) the reference is from the same field of
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`endeavor as the claimed invention (even if it addresses a different problem); or (2)
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`the reference is reasonably pertinent to the problem faced by the inventor (even if
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`it is not in the same field of endeavor as the claimed invention). In order for a
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`reference to be “reasonably pertinent” to the problem, it must logically have
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`commended itself to an inventor's attention in considering his problem. In
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`determining whether a reference is reasonably pertinent, an examiner should
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`consider the problem faced by the inventor, as reflected either explicitly or
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`implicitly, in the specification. I believe the references that my opinions in this
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`proceeding are based upon are well within the range of references a person of
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`ordinary skill in the art would consult to address the type of problems described in
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`the Challenged Claims.
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`21.
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`I understand that multiple prior art references can be combined to
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`render a patent claim obvious under 35 U.S.C. § 103 when there was an apparent
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`reason for one of ordinary skill in the art, at the time of the invention, to combine
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`the references, which can include, but is not limited to (A) identifying a teaching,
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`suggestion, or motivation to combine prior art references; (B) combining prior art
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`methods according to known methods to yield predictable results; (C) substituting
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`one known element for another to obtain predictable results; (D) using a known
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`technique to improve a similar device in the same way; (E) applying a known
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`technique to a known device ready for improvement to yield predictable results;
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`(F) trying a finite number of identified, predictable potential solutions, with a
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`reasonable expectation of success; or (G) identifying that known work in one field
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`of endeavor may prompt variations of it for use in either the same field or a
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`different one based on design incentives or other market forces if the variations are
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`predictable to one of ordinary skill in the art.
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`22.
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`I am also informed that a claimed invention can be obvious if it would
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`have been obvious to modify a single prior art reference in light of the knowledge
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`of a person of ordinary skill in the art at the time of the invention if there was an
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`apparent reason for one of ordinary skill in the art, at the time of the invention, to
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`make such a modification and that reason can include, but is not limited, the
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`reasons (A) through (G) listed in the preceding paragraph.
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`23.
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` I am informed that the existence of an explicit teaching, suggestion, or
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`motivation to combine known elements of the prior art is a sufficient, but not a
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`necessary, condition to a finding of obviousness. This so-called “teaching
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`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
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`in an obviousness analysis. In determining whether the subject matter of a patent
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`claim is obvious, neither the particular motivation nor the avowed purpose of the
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`patentee controls. I am informed that if the claim extends to what is obvious; then
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`the claim is invalid. I am further informed the obviousness analysis often
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`necessitates consideration of the interrelated teachings of multiple patents, the
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`effects of demands known to the technological community or present in the
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`marketplace, and the background knowledge possessed by a person having
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`ordinary skill in the art. All of these issues may be considered to determine
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`whether there was an apparent reason to combine the known elements in the
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`fashion claimed by the patent.
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`24.
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`I am also informed that in conducting an obviousness analysis, a
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`precise teaching directed to the specific subject matter of the challenged claim
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`need not be sought out because it is appropriate to take account of the inferences
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`and creative steps that a person of ordinary skill in the art would employ. I
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`understand that the prior art considered can be directed to any need or problem
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`known in the field of endeavor at the time of invention and can provide a reason
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`for combining the elements of the prior art in the manner claimed. In other words,
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`the prior art need not be directed towards solving the same specific problem as the
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`problem addressed by the patent. The individual prior art references themselves
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`need not all be directed towards solving the same problem. Common sense is
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`important and should be considered. Common sense teaches that familiar items
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`may have obvious uses beyond their primary purposes.
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`25.
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`I also understand that the fact that a particular combination of prior art
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`elements was “obvious to try” may indicate that the combination was obvious even
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`if no one attempted the combination. If the combination was obvious to try
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`(regardless of whether it was actually tried) or leads to anticipated success, then it
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`is likely the result of ordinary skill and common sense rather than innovation. I
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`further understand that in many fields it may be that there is little discussion of
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`obvious techniques or combinations, and it often may be the case that market
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`demand, rather than scientific literature or knowledge, will drive the design of an
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`invention. I understand that an invention that is a combination of prior art must do
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`more than yield predictable results to be non-obvious.
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`26.
`
`I understand that for a patent claim to be obvious, the claim must be
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`obvious to a person of ordinary skill in the art at the time of the invention. I
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`understand that the factors to consider in determining the level of ordinary skill in
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`the art include (1) the educational level and experience of people working in the
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`field at the time the invention was made, (2) the types of problems faced in the art
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`and the solutions found to those problems, and (3) the sophistication of the
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`technology in the field.
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`27.
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`I understand that at least the following rationales may support a finding
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`of obviousness:
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`•
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`•
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`•
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`Combining prior art elements according to known methods to yield
`predictable results;
`Simple substitution of one known element for another to obtain
`predictable results;
`Use of a known technique to improve similar devices (methods, or
`products) in the same way;
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`Applying a known technique to a known device (method, or product)
`ready for improvement to yield predictable results;
`“Obvious to try”—choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`A predictable variation of work in the same or a different field of
`endeavor, which a person of ordinary skill would be able to
`implement;
`If, at the time of the alleged invention, there existed a known problem
`for which there was an obvious solution encompassed by the patent’s
`claim;
`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 technological
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; and/or
`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.
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`I understand that even if a prima facie case of obviousness is
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`•
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`•
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`•
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`•
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`28.
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an
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`invention would not have been obvious in view of these considerations, which
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`include: (a) commercial success of a product due to the merits of the claimed
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`invention; (b) a long-felt, but unsatisfied need for the invention; (c) failure of
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`others to find the solution provided by the claimed invention; (d) deliberate
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`copying of the invention by others; (e) unexpected results achieved by the
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`invention; (f) praise of the invention by others skilled in the art; (g) lack of
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`independent simultaneous invention within a comparatively short space of time;
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`(h) teaching away from the invention in the prior art.
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`29.
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` I further understand that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art
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`features. The establishment of a nexus is a question of fact. While I understand
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`that Patent Owner has not offered any secondary considerations at this time, I may
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`supplement my opinions in the event that Patent Owner raises secondary
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`considerations during the course of this proceeding.
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`C. Priority Date
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`30.
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`I understand that the “priority date” of a patent is typically the date on
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`which the application is filed. I understand, however, that the claims of a patent
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`may be entitled to a priority date earlier than the filing date of the application if the
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`patent makes a priority claim to an earlier patent application, such as a provisional
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`patent application or to a parent application if the patent is a continuation or
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`continuation-in-part. To be entitled to such a priority claim, the subject matter of
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`the patent claim must have been adequately disclosed in the earlier patent
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`application within the line of priority and all intervening applications in the line of
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`priority. I am informed that the subject matter was adequately disclosed if it would
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`satisfy the written description requirement of pre-AIA 35 U.S.C. § 112, ¶ 1,
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`described below.
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`31.
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`I am informed that the written description requirement of pre-AIA 35
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`U.S.C. § 112, ¶ 1 provides that the patent application’s specification must convey
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`with reasonable clarity to one of ordinary skill in the art that the inventor was in
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`possession of the claimed invention as of the filing date of the patent application.
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`Possession is shown by describing the claimed invention with all of its limitations
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`using such descriptive means as words, structures, figures, diagrams, formulas,
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`etc., that fully set forth the claimed invention. In other words, for a patent claim to
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`satisfy the written description requirement, the specification must convey with
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`reasonable clarity to one of ordinary skill in the art that the patentee invented what
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`was claimed in the claim.
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`32. The written description requirement mandates that an inventor provide
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`enough detail in the patent application to show that, at the time of filing the patent
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`application, the inventor actually had in mind what is later purported to be the
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`invention, as claimed, from the perspective of one of ordinary skill in the art at the
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`time.
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`33. The purpose of the written description requirement is to ensure that the
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`claims of the invention do not overreach the scope of the inventor’s contribution to
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`the field as set forth in the patent specification. As such, the written description
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`IPR2017-00351 Rhodes Declaration
`U.S. Patent No. 9,015,883
`requirement requires that the claims of a patent can be no broader than the
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`supporting disclosure set forth in the specification.
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`34. The level of detail required to satisfy the written description
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`requirement varies depending on the nature and scope of the claims and on the
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`complexity and predictability of the relevant technology. For generic claims, a
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`number of factors can be utilized for evaluating the adequacy of the disclosure,
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`including the existing knowledge in the particular field, the extent and content of
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`the prior art, the maturity of the science or technology, and the predictability of the
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`aspect at issue. The written description analysis is governed by a comparison
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`between the claims of the invention and the disclosures set forth in the
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`specification.
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`IV. OPINIONS
`A. Overview of the ‘883 Patent
`35. This overview is not meant to describe my full understanding of the
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`‘883 Patent, but is only used to generally highlight some aspects of the ‘883 Patent,
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`as well as its subject matter that was held out by the inventor to be purportedly new
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`and non-obvious.
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`36. To be consistent with other inter partes review petitions filed against
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`the ‘332 and ‘134 Patents, the citations to the ‘883 Patent used in this declaration
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`will be cited from the ‘332 Patent, which shar