`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`HTC AMERICA, INC.
`Petitioner
`
`v.
`
`VIRGINIA INNOVATION SCIENCES, INC.
`Patent Owner
`
`____________________
`
`Patent No. 8,712,471
`____________________
`
`DECLARATION OF DR. KEVIN C. ALMEROTH IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,712,471
`
`
`
`
`
`
`
`HTC EXHIBIT 1003
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1 
`I. 
`BACKGROUND AND QUALIFICATIONS ................................................. 2 
`II. 
`III.  MATERIALS REVIEWED .......................................................................... 11 
`IV.  LEGAL STANDARDS ................................................................................. 15 
`V. 
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 21 
`VI.  TECHNICAL BACKGROUND ................................................................... 23 
`A.  General Mobile Devices ...................................................................... 23 
`B.  High Definition Television (HDTV) ................................................... 27 
`C.  High Definition Multimedia Interface (HDMI) .................................. 28 
`D.  Digital Visual Interface (DVI) ............................................................ 30 
`E. 
`Codecs and Transcoding ..................................................................... 32 
`F. 
`Display Format Technologies ............................................................. 38 
`G.  Display Device Processing of Multimedia Signals ............................. 42 
`VII.  OVERVIEW OF THE ’471 PATENT .......................................................... 43 
`VIII.  CLAIM CONSTRUCTION .......................................................................... 49 
`A. 
`“display terminal” ................................................................................ 49 
`B. 
`“convert” / “converting” / “converted” ............................................... 50 
`IX.  OVERVIEW OF THE PRIOR ART ............................................................. 51 
`A.  Nam ..................................................................................................... 51 
`B. 
`Takeda ................................................................................................. 52 
`C. 
`Seaman ................................................................................................ 59 
`D.  Hardacker ............................................................................................ 60 
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`
`X. 
`
`THE PRIOR ART DISCLOSES OR SUGGESTS ALL OF THE
`FEATURES OF CLAIMS 26, 27, 41-48, and 50 (“CHALLENGED
`CLAIMS”) ..................................................................................................... 61 
`A.  Nam and Seaman Disclose or Suggest the Features of Claims
`26, 27, and 50 ...................................................................................... 61 
`1. 
`Claim 21 (Canceled) ................................................................. 62 
`2. 
`Claim 26 .................................................................................... 83 
`3. 
`Claim 27 .................................................................................... 87 
`4. 
`Claim 50 .................................................................................... 90 
`B.  Nam, Seaman, and Takeda Disclose or Suggest the Features of
`Claims 41 and 43-48 ........................................................................... 91 
`1. 
`Claim 41 .................................................................................... 91 
`2. 
`Claim 43 ..................................................................................108 
`3. 
`Claim 44 ..................................................................................114 
`4. 
`Claim 45 ..................................................................................115 
`5. 
`Claim 46 ..................................................................................119 
`6. 
`Claim 47 ..................................................................................123 
`7. 
`Claim 48 ..................................................................................124 
`C.  Nam, Seaman, and Hardacker Disclose or Suggest the Features
`of Claim 42 ........................................................................................125 
`1. 
`Claim 42 ..................................................................................125 
`XI.  SECONDARY CONSIDERATIONS .........................................................129 
`XII.  THE ’358 PROVISIONAL APPLICATION ..............................................131 
`XIII.  CONCLUSION ............................................................................................136 
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`I, Kevin C. Almeroth, declare as follows:
`
`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
`
`
`I.
`
`INTRODUCTION
`1.
`
`I have been asked to submit this declaration on behalf of HTC
`
`America, Inc. (“HTC”) in connection with a petition for inter partes review of U.S.
`
`Patent No. 8,712,471 (“the ’471 patent”) that I understand is being submitted to the
`
`Patent Trial and Appeal Board (“Board”) of the United States Patent and
`
`Trademark Office (“PTO” or “USPTO”) by HTC (“Petitioner”).
`
`2.
`
`I am being compensated at a rate of $600 per hour for my work in this
`
`proceeding. My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of this or
`
`any other proceeding. I have no other interest in this proceeding.
`
`3.
`
`I have been asked to consider whether certain references disclose or
`
`suggest the features recited in the claims of the ’471 patent (Ex. 1001)1. My
`
`opinions are set forth below. In particular, I have been asked to study and provide
`
`my opinions on the technology relating to the ’471 patent and the patentability of
`
`claims 26, 27, 41-48, and 50 of the ’471 patent (“the challenged claims”). I
`
`understand that while claim 21 is cancelled, I have also been asked to study and
`
`
`1 Where appropriate, I refer to exhibits that I understand are to be attached to the
`
`petition for inter partes review of the ’471 patent.
`
`
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`1
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`provide my opinions relating to the patentability of that claim as the challenged
`
`claims depend from claim 21. I understand that the ’471 patent is owned by
`
`Virginia Innovation Sciences, Inc. (“VIS” or “Patent Owner”).
`
`II. BACKGROUND AND QUALIFICATIONS
`4.
`I am currently a Professor in the Department of Computer Science at
`
`the University of California, Santa Barbara. I also hold an appointment and am a
`
`founding member of the Computer Engineering (CE) Program. I am a founding
`
`member of the Media Arts and Technology (MAT) Program, and the Technology
`
`Management Program (TMP). I also served as the Associate Director of the Center
`
`for Information Technology and Society (CITS) from 1999 to 2012. I have been a
`
`faculty member at UCSB since July 1997.
`
`5.
`
`I hold three degrees from the Georgia Institute of Technology: (1) a
`
`Bachelor of Science degree in Information and Computer Science (with minors in
`
`Economics, Technical Communication, and American Literature) earned in June,
`
`1992; (2) a Master of Science degree in Computer Science (with specialization in
`
`Networking and Systems) earned in June, 1994; and (3) a Doctor of Philosophy
`
`(Ph.D.) degree in Computer Science (Dissertation Title: Networking and System
`
`Support for the Efficient, Scalable Delivery of Services in Interactive Multimedia
`
`System, minor in Telecommunications Public Policy) earned in June, 1997.
`
`During my education, I have taken a wide variety of courses as demonstrated by
`
`
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`my minor. My undergraduate degree also included a number of courses that are
`
`more typical of a degree in electrical engineering including digital logic, signal
`
`processing, and telecommunications theory.
`
`6.
`
`One of the major themes of my research has been the delivery of
`
`multimedia content and data between computing devices and users. In my research,
`
`I have looked at large-scale content delivery systems and the use of servers located
`
`in a variety of geographic locations to provide scalable delivery to hundreds, even
`
`thousands, of users simultaneously. I have also looked at smaller-scale content
`
`delivery systems in which content, including interactive communication like voice
`
`and video data, is exchanged between computers and portable computing devices.
`
`As a broad theme, my work has examined how to exchange content more
`
`efficiently across computer networks, including the devices that switch and route
`
`data traffic. More specific topics include the scalable delivery of content to many
`
`users, mobile computing, satellite networking, delivering content to mobile
`
`devices, and network support for data delivery in wireless and sensor networks.
`
`7.
`
`Beginning in 1992, at the time I started graduate school, the initial
`
`focus of my research was the provision of interactive functions (e.g., VCR-style
`
`functions like pause, rewind, and fast-forward) for near video-on-demand systems
`
`in cable systems, in particular, how to aggregate requests for movies at a cable
`
`head-end and then how to satisfy a multitude of requests using one audio/video
`
`
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`stream to broadcast to multiple receivers simultaneously. Continued evolution of
`
`this research has resulted in the development of new techniques to scalably deliver
`
`on-demand content, including audio, video, web documents, and other types of
`
`data, through the Internet and over other types of networks, including over cable
`
`systems, broadband telephone lines, and satellite links.
`
`8.
`
`An important component of my research from the very beginning has
`
`been investigating the challenges of communicating multimedia content between
`
`computers and across networks. Although the early Internet was used mostly for
`
`text-based non-real time applications, the interest in sharing multimedia content
`
`quickly developed. Multimedia-based applications ranged from downloading
`
`content to a device to streaming multimedia content to be instantly used. One of
`
`the challenges was that multimedia content is typically larger than text only
`
`content, but there are also opportunities to use different delivery techniques since
`
`multimedia content is more resilient to errors. I have worked on a variety of
`
`research problems and used a number of systems that were developed to deliver
`
`multimedia content to users.
`
`9.
`
`In 1994, I began to research issues associated with the development
`
`and deployment of a one-to-many communication facility (called “multicast”) in
`
`the Internet (first deployed as the Multicast Backbone, a virtual overlay network
`
`supporting one-to-many communication). Some of my more recent research
`
`
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`U.S. Patent No. 8,712,471
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`endeavors have looked at how to use the scalability offered by multicast to provide
`
`streaming media support for complex applications like distance learning,
`
`distributed
`
`collaboration, distributed games,
`
`and
`
`large-scale wireless
`
`communication. Multicast has also been used as the delivery mechanism in
`
`systems that perform local filtering (i.e., sending the same content to a large
`
`number of users and allowing them to filter locally content in which they are not
`
`interested).
`
`10. Starting in 1997, I worked on a project to integrate the streaming
`
`media capabilities of the Internet together with the interactivity of the web. I
`
`developed a project called the Interactive Multimedia Jukebox (IMJ). Users would
`
`visit a web page and select content to view. The content would then be scheduled
`
`on one of a number of channels, including delivery to students in Georgia Tech
`
`dorms delivered via the campus cable plant. The content of each channel was
`
`delivered using multicast communication.
`
`11.
`
`In the IMJ, the number of channels varied depending on the
`
`capabilities of the server including the available bandwidth of its connection to the
`
`Internet. If one of the channels was idle, the requesting user would be able to watch
`
`their selection immediately. If all channels were streaming previously selected
`
`content, the user’s selection would be queued on the channel with the shortest wait
`
`time. In the meantime, the user would see what content was currently playing on
`
`
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`U.S. Patent No. 8,712,471
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`other channels, and because of the use of multicast, would be able to join one of
`
`the existing channels and watch the content at the point it was currently being
`
`transmitted.
`
`12. The IMJ service combined the interactivity of the web with the
`
`streaming capabilities of the Internet to create a jukebox-like service. It supported
`
`true video-on-demand when capacity allowed, but scaled to any number of users
`
`based on queuing requested programs. As part of the project, we obtained
`
`permission from Turner Broadcasting to transmit cartoons and other short-subject
`
`content. We also attempted to connect the IMJ into the Georgia Tech campus cable
`
`television network so that students in their dorms could use the web to request
`
`content and then view that content on one of the campus’s public access channels.
`
`13. More recently, I have also studied issues concerning how users choose
`
`content, especially when considering the price of that content. My research has
`
`examined how dynamic content pricing can be used to control system load. By
`
`raising prices when systems start to become overloaded (i.e., when all available
`
`resources are fully utilized) and reducing prices when system capacity is readily
`
`available, users’ capacity to pay as well as their willingness can be used as factors
`
`in stabilizing the response time of a system. This capability is particularly useful in
`
`systems where content is downloaded or streamed on-demand to users.
`
`
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`U.S. Patent No. 8,712,471
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`14. As a parallel research theme, starting in 1997, I began researching
`
`issues related to wireless devices and sensors. In particular, I was interested in
`
`showing how to provide greater communication capability to “lightweight
`
`devices,” i.e., small form-factor, resource-constrained (e.g., CPU, memory,
`
`networking, and power) devices. Starting by at least 2004, I researched techniques
`
`to wirelessly disseminate information, for example advertisements, between users
`
`using ad hoc networks. In the system, called Coupons, an incentive scheme is used
`
`to encourage users to relay information, including advertisements, to other nearby
`
`users.
`
`15. Starting in 1998, I published several papers on my work to develop a
`
`flexible, lightweight, battery-aware network protocol stack. The lightweight
`
`protocols we envisioned were similar in nature to protocols like Universal Plug and
`
`Play (UPnP) and Digital Living Network Alliance (DLNA).
`
`16. From this initial work, I have made wireless networking—including
`
`ad hoc, mesh networks and wireless devices—one of the major themes of my
`
`research. One topic includes developing applications for mobile devices, for
`
`example, virally exchanging and tracking “coupons” through “opportunistic
`
`contact” (i.e., communication with other devices coming into communication
`
`range with a user). Other topics include building network communication among a
`
`set of mobile devices unaided by any other kind of network infrastructure. Yet
`
`
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`U.S. Patent No. 8,712,471
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`another theme is monitoring wireless networks, in particular different variants of
`
`IEEE 802.11 compliant networks, to (1) understand the operation of the various
`
`protocols used in real-world deployments, (2) use these measurements to
`
`characterize use of the networks and identify protocol limitations and weaknesses,
`
`and (3) propose and evaluate solutions to these problems.
`
`17. Protecting networks, including their operation and content, has been
`
`an underlying theme of my research almost since the beginning. Starting in 2000, I
`
`have also been involved in several projects that specifically address security,
`
`network protection, and firewalls. After significant background work, a team on
`
`which I was a member successfully submitted a $4.3M grant proposal to the Army
`
`Research Office (ARO) at the Department of Defense to propose and develop a
`
`high-speed intrusion detection system. Once the grant was awarded, we spent
`
`several years developing and meeting the milestones of the project. I have also
`
`used firewalls in developing techniques for the classroom to ensure that students
`
`are not distracted by online content.
`
`18. As an important component of my research program, I have been
`
`involved in the development of academic research into available technology in the
`
`market place. One aspect of this work is my involvement in the Internet
`
`Engineering Task Force (IETF) including many content delivery-related working
`
`groups like the Audio Video Transport (AVT) group, the MBone Deployment
`
`
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`U.S. Patent No. 8,712,471
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`(MBONED) group, Source Specific Multicast (SSM) group, the Inter-Domain
`
`Multicast Routing (IDMR) group, the Reliable Multicast Transport (RMT) group,
`
`the Protocol Independent Multicast (PIM) group, etc. I have also served as a
`
`member of
`
`the Multicast Directorate (MADDOGS), which oversaw
`
`the
`
`standardization of all things related to multicast in the IETF. Finally, I was the
`
`Chair of the Internet2 Multicast Working Group for seven years.
`
`19.
`
`I am an author or co-author of approximately 200 technical papers,
`
`published software systems, IETF Internet Drafts and IETF Request for Comments
`
`(RFCs). A list of these papers is included in my CV. (Ex. 1004.)
`
`20. My involvement in the research community extends to leadership
`
`positions for several journals and conferences. I am the co-chair of the Steering
`
`Committee for the ACM Network and System Support for Digital Audio and
`
`Video (NOSSDAV) workshop and on
`
`the Steering Committees for
`
`the
`
`International Conference on Network Protocols (ICNP), ACM Sigcomm
`
`Workshop on Challenged Networks (CHANTS), and IEEE Global Internet (GI)
`
`Symposium. I have served or am serving on the editorial boards of IEEE/ACM
`
`Transactions on Networking, IEEE Transactions on Mobile Computing, IEEE
`
`Transactions on Networks and System Management, IEEE Network, ACM
`
`Computers in Entertainment, AACE Journal of Interactive Learning Research
`
`(JILR), and ACM Computer Communications Review.
`
`
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`U.S. Patent No. 8,712,471
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`21. Furthermore, in the courses I teach, the class spends significant time
`
`covering all aspects of the Internet including each of the layers of the Open System
`
`Interconnect (OSI) protocol stack commonly used in the Internet. These layers
`
`include the physical and data link layers and their handling of signal modulation,
`
`error control, and data transmission. I also teach DOCSIS, DSL, and other
`
`standardized protocols for communicating across a variety of physical media
`
`including cable systems, telephone lines, wireless, and high-speed Local Area
`
`Networks (LANs). I teach the configuration and operation of switches, routers, and
`
`gateways including routing and forwarding and the numerous respective protocols
`
`as they are standardized and used throughout the Internet. Topics include a wide
`
`variety of standardized Internet protocols at the Network Layer (Layer 3),
`
`Transport Layer (Layer 4), and above.
`
`22.
`
`In addition, I co-founded a technology company called Santa Barbara
`
`Labs that was working under a sub-contract from the U.S. Air Force to develop
`
`very accurate emulation systems for the military’s next generation internetwork.
`
`Santa Barbara Labs’ focus was in developing an emulation platform to test the
`
`performance characteristics of the network architecture in the variety of
`
`environments in which it was expected to operate, and in particular, for network
`
`services including IPv6, multicast, Quality of Service (QoS), satellite-based
`
`communication, and security. Applications for this emulation program included
`
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`U.S. Patent No. 8,712,471
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`communication of a variety of multimedia-based services. Within this testing
`
`infrastructure, we used a wide range of switches and routers.
`
`23.
`
`In addition to having co-founded a technology company myself, I
`
`have worked for, consulted with, and collaborated with companies such as IBM,
`
`Hitachi Telecom, Digital Fountain, RealNetworks, Intel Research, Cisco Systems,
`
`and Lockheed Martin.
`
`24.
`
`I am a Member of the Association of Computing Machinery (ACM)
`
`and a Fellow of the Institute of Electrical and Electronics Engineers (IEEE).
`
`25. Additional details about my employment history, fields of expertise,
`
`and publications are further included in my curriculum vitae (Ex. 1004).
`
`26.
`
`I am not an attorney and offer no legal opinions, but in the course of
`
`my work, I have had experience studying and analyzing patents and patent claims
`
`from the perspective of a person skilled in the art.
`
`III. MATERIALS REVIEWED
`27. The opinions in this declaration are based on the documents I
`
`reviewed, my knowledge and experience, and professional judgment. In forming
`
`my opinions expressed in this declaration, I have reviewed the following materials:
`
`the ’471 (Ex. 1001); Prosecution History of U.S. Patent No. 7,899,492 (U.S. Patent
`
`Application No. 11/165,341 (“the ’341 application”)) (Ex. 1002); U.S. Patent No.
`
`7,480,484 to Nam (“Nam”) (Ex. 1005); U.S. Patent No. 6,781,635 to Takeda
`
`
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`U.S. Patent No. 8,712,471
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`(“Takeda”) (Ex. 1006); U.S. Provisional Application No. 60/588,358 (“the ’358
`
`application”) (Ex. 1007); U.S. Patent No. 6,902,427 to Kuo (“Kuo”) (Ex. 1008);
`
`Opinion and Order, Va. Innovation Scis., Inc. v. Samsung Elecs. Co., No. 2:12-cv-
`
`00548, Dkt. 413 (E.D. Va. Jan. 8, 2014) (Ex. 1009); U.S. Patent No. 7,580,005 to
`
`Palin (Ex. 1010); Institute of Electrical and Electronics Engineers, The
`
`Authoritative Dictionary of IEEE Standard Terms (7th Ed., IEEE Press 2000) (Ex.
`
`1011); The Merriam Webster Dictionary (New Ed., Merriam-Webster Inc. 2004)
`
`(Ex. 1012); Digital Visual Interface DVI Revision 1.0, April 2, 1999 (Ex. 1013);
`
`U.S. Patent No. 7,236,209 to Martin (“Martin”) (Ex. 1014); U.S. Patent
`
`Application Publication No. 2004/0223614 A1 to Seaman (“Seaman”) (Ex. 1015);
`
`U.S. Patent Application Publication No. 2003/0128197 A1 to Turner (Ex. 1016);
`
`U.S. Patent Application Publication No. 2003/0137609 A1 to Hayakawa
`
`(“Hayakawa”) (Ex. 1017); European Patent Application No. EP 1 175 069 A1 to
`
`Matsubara et al. (“Matsubara”) (Ex. 1018); Prosecution History of U.S. Patent No.
`
`8,712,471 (U.S. Patent Application No. 13/845,171 (“the ’171 application”)) (Ex.
`
`1019); Korean Patent No. 10-2004-0004307 (Ex. 1020)2; U.S. Patent No.
`
`
`2 Ex. 1020 includes Korean Patent No. 10-2004-0004307 to Yoo et al., the English
`
`translation of Yoo, and a certificate of translation of Yoo. My citations to Ex. 1020
`
`are to the English translation of the exhibit.
`
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`6,663,420 to Xiao (“Xiao”) (Ex. 1021); U.S. Patent No. 7,295,608 to Reynolds et
`
`al. (“Reynolds”) (Ex. 1023); International Published Application WO 97/31445 to
`
`Carmel et al. (“Carmel I”) (Ex. 1024); International Published Application WO
`
`99/10836 to Carmel et al. (“Carmel II”) (Ex. 1025); U.S. Patent No. 7,899,492
`
`(“the ’492 patent”) (Ex. 1026); U.S. Patent No. 7,920,623 to Stone (“Stone”) (Ex.
`
`1027); U.S. Patent No. 7,020,121 to Hardacker et al. (“Hardacker”) (Ex. 1028);
`
`U.S. Patent Application Publication No. 2004/0158873 (“Pasqualino”) (Ex. 1029);
`
`Va. Innovation Scis., Inc. v. Samsung Elecs. Co., No. 2:12-cv-00548, Dkt. 198
`
`(E.D. Va. September 25, 2013); Va. Innovation Scis., Inc. v. Samsung Elecs. Co.,
`
`No. 2014-1477, slip op. (Fed. Cir. Jun. 9, 2015); IPR2013-00572, Paper 15 (Mar.
`
`6, 2014) (Decision Denying Institution of Inter Partes Review of the ’492 patent);
`
`IPR2013-00572, Paper 12 (Patent Owner Preliminary Response); U.S. Patent No.
`
`8,050,711; U.S. Patent No. 8,903,451; U.S. Patent No. 8,948,814; U.S. Patent No.
`
`9,118,794; U.S. Patent No. 9,286,853; U.S. Patent No. 9,355,611; and any other
`
`materials I refer to in this declaration in support of my opinions.3
`
`
`3 In other matters involving the ’471 patent for which I provided an opinion, I
`
`reviewed other materials, such as for my declaration submitted in IPR2015-00054
`
`and my work in litigations involving the ’471 patent. (See, e.g., Ex. 1005,
`
`Appendix B, submitted in IPR2015-00054.) Unless specifically identified in this
`
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`28. My opinions contained in this declaration are based on the materials I
`
`reviewed and my knowledge and professional judgment. My opinions have also
`
`been guided by my appreciation of how a person of ordinary skill in the art would
`
`have understood the claims and the specification of the ’471 patent at the time of
`
`the alleged invention, which I have been asked to initially consider as around the
`
`mid-2004 time frame (including July 16, 2004, the filing date of the ’358
`
`application, whose benefit is claimed by the ’171 application, from which the ’471
`
`patent issued). My opinions reflect how one of ordinary skill in the art would have
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`understood the ’471 patent, the prior art to the patent, and the state of the art at the
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`time of the alleged invention.
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`29. Based on my experience and expertise, it is my opinion that certain
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`prior art references disclose all the features recited in claims 26, 27, 41-48, and 50
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`of the ’471 patent, as I discuss in detail below.4
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`declaration, I do not rely on those materials for purposes of this declaration for this
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`proceeding.
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`4 Claims 26, 27, 41-48, and 50 depend from claim 21. As I understand, claim 21
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`was cancelled by Patent Owner. However, because of the dependency on claim
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`21, as I explain below, it is also my opinion that certain prior art references
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`IV. LEGAL STANDARDS
`30. As noted, I am not an attorney and have not been asked to offer my
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`opinion on the law. However, I understand my opinions in this declaration may be
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`relied upon to support an analysis of the ’471 patent under the legal principals of
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`anticipation and/or obviousness. Below, I provide a summary of my understanding
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`of legal principles that may be applied in an analysis of patentability for
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`anticipation and obviousness pursuant to 35 U.S.C. §§ 102 and 103. I understand
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`that, in an inter partes review proceeding, patent claims may be deemed
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`unpatentable if it is shown that they were anticipated and/or rendered obvious by
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`one or more prior art patents or publications.
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`31. As I understand, for a claim to be anticipated under § 102, every
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`limitation of the claimed invention must be found in a single prior art reference,
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`either expressly or inherently.
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`32.
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`I understand that a claim element is inherently present in a prior art
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`reference if the element must necessarily be present and one of ordinary skill in the
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`art would have recognized that the element must necessarily be present. However,
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`discussed in this declaration also disclose the limitations of claim 21 that are
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`incorporated into claims 26, 27, 41-48, and 50.
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`I understand that inherent anticipation does not require that a person of ordinary
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`skill in the art at the time would have recognized the inherent disclosure.
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`33.
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`I understand that under 35 U.S.C. § 103, “[a] patent for a claimed
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`invention may not be obtained, notwithstanding that the claimed invention is not
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`identically disclosed as set forth in section 102, if the differences between the
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`claimed invention and the prior art are such that the claimed invention as a whole
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`would have been obvious before the effective filing date of the claimed invention
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`to a person having ordinary skill in the art to which the claimed invention
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`pertains.” When considering the issues of obviousness, I understand that the
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`following are considered:
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` Determine the scope and content of the prior art;
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` Ascertain the differences between the prior art and the claims at issue;
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` Resolve the level of ordinary skill in the pertinent art; and
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` Consider evidence of secondary indicia of non-obviousness (if
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`available).
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`34.
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`I understand that obviousness is a determination of law based on
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`underlying determinations of fact. I understand that these factual determinations
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`include the scope and content of the prior art, the level of ordinary skill in the art,
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`the differences between the claimed invention and the prior art, and secondary
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`considerations of non-obviousness.
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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`35. With respect to secondary indicia of non-obviousness, I have been
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`informed that such evidence may include the following:
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` Commercial success: It is my understanding that a strong showing
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`of commercial success that can be attributed to the merits of the
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`invention should be considered an indication of non-obviousness.
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` Copying: It is my understanding that evidence that an accused
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`party copied the patented invention, as opposed to a prior art
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`device, is an indication of non-obviousness.
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` Long-standing problem or need: It is my understanding that
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`evidence of a persistent problem or need in the art that was
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`resolved by the patented invention is an indication of non-
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`obviousness.
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` Prior failure: It is my understanding that evidence that others have
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`tried and failed to solve the problem or provide the need resolved
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`by the claimed invention is an indication of non-obviousness.
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` Commercial acquiescence of competitors: It is my understanding
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`that the willingness of industry to license the patent at issue is an
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`indication of non-obviousness, though consideration must be given
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`to distinguishing respect for the invention from a desire to avoid
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`litigation.
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`Declaration of Dr. Kevin C. Almeroth
`U.S. Patent No. 8,712,471
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` Skepticism: It is my understanding that evidence that those of
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`ordinary skill were skeptical as to the merits of the invention, or
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`even taught away from the invention, are indications of non-
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`obviousness.
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` Independent development: It is my understanding that evidence
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`that others developed the claimed invention about the same time is
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`an indication of obviousness. In contrast, their failure to do so, it
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`follows, would be an indication of non-obviousness.
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` Prior litigation: It is my understanding that prior litigation may
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`support an inference of commercial success or copying.
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` Unexpected results: It is my understanding that evidence that those
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`of ordinary skill in the art were