Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`EXPERT DECLARATION OF DR. KEVIN NEGUS
`FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,775,235
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`FatPipe Exhibit 2003, pg. 1
`Viptela v. FatPipe
`IPR2017-00684
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`EXPERT DECLARATION OF DR. KEVIN NEGUS
`FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,775,235
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`FatPipe Exhibit 2003, pg. 1
`Viptela v. FatPipe
`IPR2017-00684
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`TABLE OF CONTENTS
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`I.(cid:1) INTRODUCTION ............................................................................................... 3(cid:1)
`II.(cid:1) QUALIFICATIONS .......................................................................................... 6(cid:1)
`III.(cid:1) PERSON OF ORDINARY SKILL IN THE ART .......................................... 16(cid:1)
`IV.(cid:1) LEGAL UNDERSTANDING ........................................................................ 18(cid:1)
`V.(cid:1) THE ‘235 PATENT ......................................................................................... 25(cid:1)
`VI.(cid:1) CLAIM CONSTRUCTION ............................................................................ 37(cid:1)
`VII.(cid:1) STATE OF THE ART ................................................................................... 42(cid:1)
`VIII.(cid:1) ANTICIPATION AND/OR OBVIOUSNESS OF CLAIMS 4-5, 7-15 AND
`19 OF THE ‘235 PATENT UNDER 35 U.S.C. §§ 102-103 .................................. 74(cid:1)
`IX.(cid:1) CONCLUSION ............................................................................................. 214(cid:1)
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`I.
`
`INTRODUCTION
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`1.
`
`I, Dr. Kevin Negus, submit this declaration in support of a Petition for
`
`Inter Partes Review of United States Patent No. 6,775,235 (“the ‘235 Patent”),
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`owned by FatPipe Networks India Limited (“Fatpipe” or “Patent Owner”). I have
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`been retained in this matter by Pepper Hamilton LLP (“Counsel”) on behalf of
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`Talari Networks, Inc. (“Petitioner”). I understand that Petitioner Talari is the Real
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`Party-in-Interest to this Petition. Talari is a leading provider of Software Defined
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`WAN (SD-WAN) solutions that proactively manage capacity, reliability and
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`performance.
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`2.
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`I make this declaration based upon my personal knowledge. I am over
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`the age of 21 and am competent to make this declaration.
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`3.
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`The statements herein include my opinions and the bases for those
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`opinions, which relate to at least the following documents of the pending inter
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`partes review petition:
`
`(cid:1) U.S. Patent No. 6,775,235 by Sanchaita Datta and Ragula Bhaskar entitled
`
`“Tools and Techniques for Directing Packets over Disparate Networks”
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`(“the ‘235 Patent”) (Ex. 1001).
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`(cid:1) File History for U.S. Patent No. 6,775,235 (Ex. 1002).
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`(cid:1) U.S. Patent No. 7,406,048 by Sanchaita Datta and Ragula Bhaskar entitled
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`“Tools and Techniques for Directing Packets over Disparate Networks”
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`(“the ‘048 Patent”) (Ex. 1003).
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`(cid:1) File History for U.S. Patent No. 7,406,048 (Ex. 1004).
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`(cid:1) U.S. Patent No. 6,628,617 by Mark John Karol and Malathi Veeraraghavan
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`entitled “Technique for Interconnecting Traffic on Connectionless and
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`Connection-Oriented Networks” (“Karol”) (Ex. 1006).
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`(cid:1) TCP/IP Illustrated Volume 1, The Protocols by W. Richard Stevens,
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`Addison-Wesley Professional Computing Series, 1994, ISBN 0-201-63346-
`
`9, (“Stevens”) (Excerpts provided in Ex. 1007).
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`(cid:1) Data and Computer Communications by William Stallings, Prentice-Hall,
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`5th Edition, 1997, ISBN-81-203-1240-6, (“Stallings”) (Excerpts provided in
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`Ex. 1011).
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`(cid:1) U.S. Patent No. 6,317,431 by Terence G Hodgkinson and Alan W O'Neill
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`entitled “ATM Partial Cut-Through” (“Hodgkinson”) (Ex. 1015).
`
`(cid:1) U.S. Patent No. 6,748,439 by David R. Monachello et al. entitled “System
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`and Method for Selecting Internet Service Providers from a Workstation that
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`is Connected to a Local Area Network” (“Monachello”) (Ex. 1009).
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`(cid:1) PLAINTIFF FATPIPE, INC.’S PATENT RULE 3-1 DISCLOSURE OF
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`ASSERTED CLAIMS AND INFRINGEMENT CONTENTIONS (Ex.
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`1010).
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`(cid:1) Fatpipe’s proposed modifications to the claim construction (Ex. 1014).
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`4. My materials considered for forming my opinions herein have
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`included at least the above-referenced documents.
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`5.
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`Although I am being compensated for my time at a rate of $500 per
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`hour in preparing this declaration, the opinions herein are my own, and I have no
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`stake in the outcome of the review proceeding. My compensation does not depend
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`in any way on the outcome of the Petitioner’s petition.
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`II. QUALIFICATIONS
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`6.
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`I am qualified by education and experience to testify as an expert in
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`the field of telecommunications. Attached, as Attachment A, is a copy of my
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`resume detailing my experience and education. Additionally, I provide the
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`following overview of my background as it pertains to my qualifications for
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`providing expert testimony in this matter.
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`7.
`
`I am a Full Professor of Electrical Engineering at Montana Tech
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`University in Butte, MT. I lead a research program at Montana Tech to improve
`
`the delivery of mobile broadband communications services to rural and remote
`
`areas. I mentor, supervise and teach both senior undergraduate and graduate
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`students of Electrical Engineering in the general fields of telecommunications and
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`networking with an emphasis on wireless systems.
`
`8.
`
`In 1988, I received my Ph.D. in Engineering from the University of
`
`Waterloo in Canada. My Ph.D. research on the modeling of bipolar semiconductor
`
`devices was jointly supervised by the Departments of Electrical Engineering and
`
`Mechanical Engineering. My graduate course work was primarily in Electrical
`
`Engineering and included such subjects as semiconductor device physics and
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`fabrication, wireless circuit design, and wireless propagation analysis. For my
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`Ph.D. work, I received the Faculty Gold Medal in 1988 for the best Ph.D. thesis in
`
`the entire Faculty of Engineering across all Departments for that year. My Ph.D.
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`thesis research also formed the basis of a paper published in 1989 that won the
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`award for Best Paper in 1989 for the IEEE (Institute of Electrical and Electronic
`
`Engineers) journal in which it was published.
`
`9.
`
`In 1984 and 1985, respectively, I received the B.A.Sc. and M.A.Sc.
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`degrees in Mechanical Engineering from the University of Waterloo in Canada.
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`My coursework and research work included, amongst many other topics, extensive
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`embedded firmware development for automation applications and implementation
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`of networks and communications protocols. For my M.A.Sc. research and
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`academic achievements, I received the prestigious University Gold Medal in 1985
`
`for the best Masters thesis in the entire University of Waterloo for that year.
`
`10.
`
`In 1986, I joined the Palo Alto Research Center of Fairchild
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`Semiconductor in Palo Alto, CA. I worked directly for Dr. James Early who was
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`the well known discoverer of the Early effect in bipolar semiconductor devices and
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`pioneer of the common emitter amplifier topology that forms the basis of many
`
`wireless circuits to this day. At Fairchild, I participated in the development of
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`devices and products for high speed applications such as wired networking, RISC
`
`microprocessors and wireless communications.
`
`11.
`
`In 1988, I took the position of Member of the Technical Staff at
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`Avantek, Inc. in Newark, CA. I was hired to develop products for both wireless
`
`and wired data networking applications. Some of the components I developed early
`
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`in my career at Avantek were used for 1st generation wireless local area network
`
`(WLAN) products, voiceband modem equipment, wired data networking both in
`
`the LAN and WAN and 1st generation cellular handsets and base stations based on
`
`AMPS or TACS.
`
`12.
`
`In 1991, Avantek, Inc. was purchased by the Hewlett-Packard
`
`Company. I continued to work for Hewlett-Packard until 1998 in such roles as IC
`
`Design Manager, Director of Chipset Development and Principal System
`
`Architect. In 1992, Hewlett-Packard assigned me to work on the “Field of Waves”
`
`project, which was a major multi-division effort to build WLAN products for
`
`mobile computers. The project was cancelled in 1993. However, the work I did on
`
`the project was leveraged into producing the world’s first IEEE 802.11 chipset,
`
`which my division at Hewlett-Packard first offered for sale in 1994. I led the
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`project to develop and market this chipset for many early WLAN product
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`companies including Proxim, Symbol (now part of Motorola) and Aironet (now
`
`part of Cisco). I also helped coordinate efforts within Hewlett-Packard’s many
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`product divisions to guide extensive research projects on WLAN protocols and
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`technology at Hewlett-Packard’s central research laboratories in Palo Alto, CA and
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`Bristol, U.K.
`
`13.
`
`I developed or led the development of multiple chips and chipsets for
`
`2G cellular radio systems based on GSM, IS-54 (TDMA), and IS-95 (CDMA). A
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`number of these chips were directed solely to cellular mobile stations and done
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`specifically for major Hewlett-Packard customers and cellular handset and module
`
`manufacturers such as Motorola, Ericsson and Siemens. I was also involved in the
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`development of power amplifier chips and modules for cellular mobile stations,
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`cordless phones, wireless networking devices and cellular infrastructure products
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`including those directed towards then emerging 3rd generation cellular standards
`
`such as WCDMA, 1xRTT and EV-DO.
`
`14. During my time at Avantek and Hewlett-Packard, I also developed or
`
`led development teams for numerous chipsets or general purpose chips used in
`
`other wired and wireless communications applications such as fiber optic
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`transceivers, cordless telephones, cable set-top receivers, wired networking
`
`equipment, cellular infrastructure equipment, voiceband and broadband wired
`
`modems and satellite TV receivers.
`
`15.
`
`In 1998, I joined Proxim, Inc. in Mountain View, CA. At that time,
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`Proxim was engaged in the development and sale of wired and wireless products
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`for home and enterprise networking applications based on several different wired
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`and wireless networking protocols. I stayed at Proxim through 2002 and was the
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`Chief Technology Officer for this publicly-traded company at the time of my
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`departure. During my career at Proxim, I led or participated in the development of
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`many WLAN and WWAN products and/or chipsets for network adapters, OEM
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`design-in modules, access points, bridges, switches, and routers that used a wide
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`variety of bus, LAN, or WAN wired interfaces. I have supervised many engineers
`
`including those responsible for embedded firmware development to implement
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`various wired and wireless networking, reservation, and security protocols at the
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`MAC layer and above, those responsible for HDL code creation of baseband chips
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`to implement PHY and MAC algorithms, as well as other engineers that developed
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`hardware reference designs, modem algorithms and chipsets.
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`16. During my many years of development of products providing voice,
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`data and/or streaming media capabilities, I have acquired a deep understanding of
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`the cellular radio system, the Public Switched Telephone Network (PSTN) and the
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`public Internet network architectures and protocols. A partial list of networking
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`and telephony protocols that I am familiar with includes DHCP, SNMP, TCP,
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`UDP, IP, SIP, ICMP, SS7, ISDN, ISUP, TCAP, and MTP.
`
`17.
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`I have been involved over the course of my career specifically with
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`voiceband modems for both wireless and wired networks including the PSTN on
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`multiple occasions. I am familiar with many ITU-T (or CCITT) Recommendations
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`for voiceband modems including at least V.8, V.25, V.34, V.90 and V.92.
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`18. Over the past 25+ years I have personally developed, modified, or
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`analyzed numerous software or firmware modules for many different applications
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`as well as supervised many engineers performing the same tasks. I have
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`implemented or supervised the implementation of software and firmware code
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`and/or hardware description language (HDL) code for many different
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`communications protocols across all layers. I have developed or supervised the
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`development of chips with both wireless baseband modem functionality and
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`embedded processors including those licensed by ARM and MIPS. I have
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`programmed with multiple high level languages for software and firmware code
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`including C, C++, Fortran, Forth, BASIC, Pascal, Lisp and COBOL. I have
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`developed products with HDL code including VHDL and Verilog. I also have
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`firsthand experience with assembly language programming. I have personally
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`designed a wide variety of analog, RF, and digital circuit elements at both the chip
`
`and board level using various netlist-driven, schematic capture and manual or
`
`automated layout CAE/CAD tools.
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`19. Since 2002, I have been an independent consultant and have provided
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`services to a number of companies including some that have developed IEEE
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`802.11 products. In particular, from 2002 until 2007 I was Chairman of WiDeFi,
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`Inc. – a company that developed chips and embedded firmware for 802.11 repeater
`
`products based on 802.11a, b, g and draft n amendments. From 2007-2011, I was
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`Chairman of Tribal Shout – a company that delivered IP voice and audio streaming
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`media using VoIP to any cellular or landline phone including those reachable only
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`by the circuit-switched connections such as the PSTN and 2nd generation cellular
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`radio. Since 2010, I have been Chairman and Chief Technology Officer of CBF
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`Networks, Inc. (dba Fastback Networks) – a company that develops fiber extension
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`products for backhaul of data networks including WiFi, HSPA, CDMA2000,
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`WiMax and LTE cellular radio systems. I have architected the products of
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`Fastback Networks specifically around the re-use of chips originally developed and
`
`intended for LTE standards-based operation.
`
`20.
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`I have been or am currently a Board Observer on behalf of the venture
`
`capital firm Camp Ventures at two companies that develop semiconductor
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`components including one that is developing technology specifically to improve
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`the system performance of HSPA and LTE cellular radio systems (Quantance) and
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`another that provides system on a chip (SOC) microcontrollers, OEM design-in
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`modules and firmware with 802.11 and wired interfaces for embedded applications
`
`(GainSpan). I have also been a technology and/or business strategy advisor to
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`multiple early stage companies that are developing such products as new wireless
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`communications systems (AirTight), radios (Mojix) and components (SiTime).
`
`21.
`
`I have actively monitored or participated in the IEEE 802.11 standards
`
`process continuously since 1989. I am a listed contributor to the highly successful
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`IEEE 802.11g standard published in 2003 that describes the wireless
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`communications protocols used by over 1 billion wireless network adapters
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`deployed to date. In 2002 and 2003, I participated in the IEEE 802.11 Wireless
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`Next Generation Committee that was responsible for launching the 802.11n
`
`standards development process.
`
`22.
`
`In 1996, I was assigned the responsibility within the Hewlett-Packard
`
`Company for developing the HomeRF standard for WLANs specifically for home
`
`networking applications. I eventually became Chairman of the Technical
`
`Subcommittee of HomeRF that wrote the HomeRF standard. The HomeRF
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`standard was essentially a modification of the IEEE 802.11 standard with
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`significant changes to the PHY and MAC layers to lower cost and improve
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`performance and security for home networking applications including integrated
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`voice capability over both IP and circuit-switched connections. From 1998 to 2002,
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`millions of wireless network adapters and access points from several different
`
`companies were shipped based upon compliance to the HomeRF standard.
`
`23.
`
`I have specific experience with many wired and wireless networking
`
`standards including IEEE 802.1 and 802.3 (the “Ethernet” family of wired LANs),
`
`IEEE 802.11 (the “WiFi” family of wireless LANs), IEEE 802.15 (personal area
`
`networks or “PAN”), IEEE 802.16 (also known as “WiMax”), various cellular
`
`communications standards (such as IS-19, IS-41, IS-54, IS-95, IS-136, IS-826, IS-
`
`707, IS-856, IS-2000, GSM, GPRS, EDGE, UMTS, CAMEL, WCDMA, HSPA,
`
`and LTE), various cordless telephone standards (such as CT-2, DECT, and PHS),
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`and other wired networking standards (such as DOCSIS, SONET and FDDI).
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
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`24.
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`I am an author or co-author of many papers that have been published
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`in distinguished engineering journals or conferences such as those of the IEEE or
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`ASME. An exemplary list of these publications is included in my resume.
`
`25.
`
`I am also a former member of the Federal Communication
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`Commission’s Technological Advisory Committee as an appointee of then
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`Chairman Michael Powell. I have also served on the Wyoming
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`Telecommunications Council as an appointee of then Governor Jim Geringer after
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`confirmation by the Wyoming State Senate.
`
`26.
`
`I am named as an inventor on numerous U.S. patents all of which
`
`have related in at least some way to products for wired and/or wireless networks. I
`
`believe that the following is a complete list of my issued US Patents: 4,839,717,
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`5,111,455, 5,150,364, 5,436,595, 5,532,655, 6,587,453, 7,035,283, 7,085,284,
`
`7,187,904, 8,095,067, D704174, 8,238,318, 8,300,590, 8,311,023, 8,385,305,
`
`8,422,540, 8,467,363, 8,502,733, 8,638,839, 8,649,418, 8,761,100, 8,811,365,
`
`8,824,442, 8,830,943, 8,872,715, 8,897,340, 8,928,542, 8,942,216, 8,948,235,
`
`8,982,772, 8,989,762, 9,001,809, 9,049,611, 9,055,463, 9,178,558, 9,179,240,
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`9,226,315, 9,226,295, 9,252,857.
`
`27. During the past several years, I have provided expert testimony,
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`reports or declarations in the cases of Agere v. Sony (on behalf of plaintiff Agere),
`
`Linex v. Belkin et al (on behalf of defendant Cisco), CSIRO v. Toshiba et al
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`(multiple related cases on behalf of plaintiff CSIRO), Freedom Wireless v.
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`Cingular et al (on behalf of plaintiff Freedom Wireless), Rembrandt v. HP et al (on
`
`behalf of defendant HP), DNT v. Sprint et al (on behalf of the defendants), Teles v.
`
`Cisco (on behalf of defendant Cisco), WiAV v. HP (on behalf of defendant HP),
`
`SPH v. Acer et al (on behalf of the defendants), LSI v. Funai (on behalf of plaintiff
`
`LSI), WiAV v. Dell and RIM (on behalf of the defendants), Wi-LAN v. RIM (on
`
`behalf of defendant RIM), LSI v. Barnes&Noble (on behalf of plaintiff LSI),
`
`Novatel v. Franklin and ZTE (on behalf of plaintiff Novatel), LSI v. Realtek (on
`
`behalf of plaintiff LSI), Wi-LAN v. Apple et al (on behalf of the defendants), EON
`
`v. Sensus et al (on behalf of defendants Motorola, US Cellular and Sprint), M2M v
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`Sierra et al (multiple related cases on behalf of defendants Sierra and Novatel),
`
`Intellectual Ventures v. AT&T et al (on behalf of the defendants), Intellectual
`
`Ventures v. Motorola (on behalf of defendant Motorola), TQ Beta v. Dish et al. (on
`
`behalf of the defendants), and Qurio v. Dish et al. (on behalf of the defendants).
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`III. PERSON OF ORDINARY SKILL IN THE ART
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`28.
`
`I understand that the content of a patent (including its claims) and
`
`prior art should be interpreted the way a person of ordinary skill in the art would
`
`have interpreted the material at the time of invention.
`
`29.
`
`I understand that the “time of invention” here is the date that the
`
`applicants for the ‘235 Patent first filed a related application in the United States
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`Patent and Trademark Office, namely, Dec. 29, 2000.
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`30.
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`It is my opinion that one of ordinary skill in the art at the time of the
`
`filing date of the ‘235 Patent would have had at least a Bachelor of Science in
`
`Computer Science, Computer Engineering, Electrical Engineering, or an equivalent
`
`field as well as at least 2 years of academic or industry experience in any type of
`
`networking field.
`
`31.
`
`In addition to my testimony as an expert, I am prepared to testify as
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`someone who actually practiced in the field from 1986 to present, who actually
`
`possessed at least the knowledge of a person of ordinary skill in the art in that time
`
`period, and who actually worked with others possessing at least the knowledge of a
`
`person of ordinary skill in the art in that time period.
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`32.
`
`I understand that the person of ordinary skill is a hypothetical person
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`who is assumed to be aware of all the pertinent information that qualifies as prior
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`art. In addition, the person of ordinary skill in the art makes inferences and takes
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`creative steps.
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`IV. LEGAL UNDERSTANDING
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`33.
`
`I have a general understanding of validity based on my experience
`
`with patents and my discussions with counsel.
`
`34.
`
`I have a general understanding of prior art and priority date based on
`
`my experience with patents and my discussions with counsel.
`
`35.
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`I understand that inventors are entitled to a priority date up to one year
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`earlier than the date of filing to the extent that they can show complete possession
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`of particular claimed inventions at such an earlier priority date and reasonable
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`diligence to reduce the claims to practice between such an earlier priority date and
`
`the date of filing of the patent. I understand that if the Patent Owner contends that
`
`particular claims are entitled to an earlier priority date than the date of filing of the
`
`patent, then the Patent Owner has the burden to prove this contention with
`
`specificity.
`
`36.
`
`I understand that an invention by another must be made before the
`
`priority date of a particular patent claim in order to qualify as “prior art” under 35
`
`U.S.C. § 102 or § 103, that a printed publication or a product usage must be
`
`publicly available before the priority date of a particular patent claim in order to
`
`qualify as “prior art” under 35 U.S.C. § 102(a), that a printed publication or a
`
`product usage or offer for sale must be publicly available more than one year prior
`
`to the date of the application for patent in the United States in order to qualify as
`
`
`- 18 -
`
`FatPipe Exhibit 2003, pg. 18
`Viptela v. FatPipe
`IPR2017-00684
`
`
`
`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`“prior art” under 35 U.S.C. § 102(b), or that the invention by another must be
`
`described in an application for patent filed in the United States before the priority
`
`date of a particular patent claim in order to qualify as “prior art” under 35 U.S.C. §
`
`102(e). I understand that the Petitioner has the burden of proving that any
`
`particular reference or product usage or offer for sale is prior art.
`
`37.
`
`I have a general understanding of anticipation based on my experience
`
`with patents and my discussions with counsel.
`
`38.
`
`I understand that anticipation analysis is a two-step process. The first
`
`step is to determine the meaning and scope of the asserted claims. Each claim
`
`must be viewed as a whole, and it is improper to ignore any element of the claim.
`
`For a claim to be anticipated under U.S. patent law: (1) each and every claim
`
`element must be identically disclosed, either explicitly or inherently, in a single
`
`prior art reference; (2) the claim elements disclosed in the single prior art reference
`
`must be arranged in the same way as in the claim; and (3) the identical invention
`
`must be disclosed in the single prior art reference, in as complete detail as set forth
`
`in the claim. Where even one element is not disclosed in a reference, the
`
`anticipation contention fails. Moreover, to serve as an anticipatory reference, the
`
`reference itself must be enabled, i.e., it must provide enough information so that a
`
`person of ordinary skill in the art can practice the subject matter of the reference
`
`without undue experimentation.
`
`
`- 19 -
`
`FatPipe Exhibit 2003, pg. 19
`Viptela v. FatPipe
`IPR2017-00684
`
`
`
`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`39.
`
`I further understand that where a prior art reference fails to explicitly
`
`disclose a claim element, the prior art reference inherently discloses the claim
`
`element only if the prior art reference must necessarily include the undisclosed
`
`claim element. Inherency may not be established by probabilities or possibilities.
`
`The fact that an element may result from a given set of circumstances is not
`
`sufficient to prove inherency. I have applied these principles in forming my
`
`opinions in this matter.
`
`40.
`
`I have a general understanding of obviousness based on my
`
`experience with patents and my discussions with counsel.
`
`41.
`
`I understand that a patent claim is invalid under 35 U.S.C. § 103 as
`
`being obvious only if the differences between the claimed invention and the prior
`
`art are such that the subject matter as a whole would have been obvious at the time
`
`the invention was made to a person of ordinary skill in that art. An obviousness
`
`analysis requires consideration of four factors: (1) scope and content of the prior
`
`art relied upon to challenge patentability; (2) differences between the prior art and
`
`the claimed invention; (3) the level of ordinary skill in the art at the time of the
`
`invention; and (4) the objective evidence of non-obviousness, such as commercial
`
`success, unexpected results, the failure of others to achieve the results of the
`
`invention, a long-felt need which the invention fills, copying of the invention by
`
`
`- 20 -
`
`FatPipe Exhibit 2003, pg. 20
`Viptela v. FatPipe
`IPR2017-00684
`
`
`
`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`competitors, praise for the invention, skepticism for the invention, or independent
`
`development.
`
`42.
`
`I understand that a prior art reference is proper to use in an
`
`obviousness determination if the prior art reference is analogous art to the claimed
`
`invention. I understand that a prior art reference is analogous art if at least one of
`
`the following two considerations is met. First a prior art reference is analogous art
`
`if it is from the same field of endeavor as the claimed invention, even if the prior
`
`art reference addresses a different problem and/or arrives at a different solution.
`
`Second, a prior art reference is analogous art if the prior art reference is reasonably
`
`pertinent to the problem faced by the inventor, even if it is not in the same field of
`
`endeavor as the claimed invention.
`
`43.
`
`I understand that it must be shown that one having ordinary skill in
`
`the art at the time of the invention would have had a reasonable expectation that a
`
`modification or combination of one or more prior art references would have
`
`succeeded. Furthermore, I understand that a claim may be obvious in view of a
`
`single prior art reference, without the need to combine references, if the elements
`
`of the claim that are not found in the reference can be supplied by the knowledge
`
`or common sense of one of ordinary skill in the relevant art. However, I
`
`understand that it is inappropriate to resolve obviousness issues by a retrospective
`
`
`- 21 -
`
`FatPipe Exhibit 2003, pg. 21
`Viptela v. FatPipe
`IPR2017-00684
`
`
`
`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`analysis or hindsight reconstruction of the prior art and that the use of “hindsight
`
`reconstruction” is improper in analyzing the obviousness of a patent claim.
`
`44.
`
`I further understand that the law recognizes several specific guidelines
`
`that inform the obviousness analysis. First, I understand that a reconstructive
`
`hindsight approach to this analysis, i.e., the improper use of post-invention
`
`information to help perform the selection and combination, or the improper use of
`
`the listing of elements in a claim as a blueprint to identify selected portions of
`
`different prior art references in an attempt to show that the claim is obvious, is not
`
`permitted. Second, I understand that any prior art that specifically teaches away
`
`from the claimed subject matter, i.e., prior art that would lead a person of ordinary
`
`skill in the art to a specifically different solution than the claimed invention, points
`
`to non-obviousness, and conversely, that any prior art that contains any teaching,
`
`suggestion, or motivation to modify or combine such prior art reference(s) points
`
`to the obviousness of such a modification or combination. Third, while many
`
`combinations of the prior art might be “obvious to try”, I understand that any
`
`obvious to try analysis will not render a patent invalid unless it is shown that the
`
`possible combinations are: (1) sufficiently small in number so as to be reasonable
`
`to conclude that the combination would have been selected; and (2) such that the
`
`combination would have been believed to be one that would produce predictable
`
`and well understood results. Fourth, I understand that if a claimed invention that
`
`
`- 22 -
`
`FatPipe Exhibit 2003, pg. 22
`Viptela v. FatPipe
`IPR2017-00684
`
`
`
`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of US Patent No. 6,775,235
`
`arises from the modification or combination of one or more prior art references
`
`uses known methods or techniques that yield predictable results, then that factor
`
`also points to obviousness. Fifth, I understand that if a claimed invention that arises
`
`from the modification or combination of one or more prior art references is the
`
`result of known work in one field prompting variations of it for use in the same
`
`field or a different one based on design incentives or other market forces that
`
`yields predicable variations, then that factor also points to obviousness. Sixth, I
`
`understand that if a claimed invention that arises from the modification or
`
`combination of one or more prior art references is the result of routine
`
`optimization, then that factor also points to obviousness. Seventh, I under
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