Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Facebook, Inc., WhatsApp, Inc.
`Petitioners
`
`v.
`
`Uniloc USA, Inc., Uniloc Luxembourg S.A.,
`Patent Owner
`
`U.S. Patent No. 8,995,433
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`DECLARATION OF TAL LAVIAN, PH.D.
`
`Facebook's Exhibit No. 1002/1102
`Page 1
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`TABLE OF CONTENTS
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`Page
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`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A. Qualifications and Experience ............................................................. 1
`B. Materials Considered ............................................................................ 5
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 7
`II.
`III. BASIS FOR MY OPINION AND STATEMENT OF LEGAL
`PRINCIPLES .................................................................................................. 9
`A.
`Claim Construction .............................................................................. 9
`B.
`Anticipation .......................................................................................... 9
`C.
`Obviousness ........................................................................................ 10
`1. Motivation to Combine ............................................................ 13
`IV. RELEVANT TECHNOLOGY BACKGROUND ....................................... 15
`A.
`The Internet and TCP/IP Protocol Suite ............................................. 15
`B.
`Voice over IP (VoIP) .......................................................................... 16
`C.
`Instant messaging (IM) ....................................................................... 19
`1.
`IETF in RFC 2778 – “A Model for Presence and Instant
`Messaging” ............................................................................... 23
`IETF in RFC 2779 – “Instant Messaging / Presence
`Protocol Requirements” ........................................................... 24
`Prior Art Instant Messaging (“IM”) Systems .......................... 24
`3.
`THE ’433 PATENT ...................................................................................... 28
`A.
`The Specification ................................................................................ 28
`B.
`The Claims of the ’433 Patent ............................................................ 30
`C.
`Claim Construction ............................................................................ 30
`“instant voice messaging application” ..................................... 30
`
`“client platform system” .......................................................... 37
`
`VI. APPLICATION OF THE PRIOR ART TO THE CLAIMS ........................ 39
`A.
`Brief Description and Summary of the Prior Art ............................... 40
`Brief Summary of Zydney [Ex. 1003/1103] ............................ 40
`
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`2.
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`V.
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`B.
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`Brief Summary of Greenlaw [Ex. 1010/1110] ........................ 47
`Brief Summary of Clark [Ex. 1008/1108] ............................... 48
`Brief Summary of Appelman [Ex. 1004/1104] ....................... 51
`Brief Summary of Newton [Ex. 1006/1106] ........................... 56
`
`Zydney Renders Obvious Claims 9, 12, 14, 17, and 25-26 ............... 56
`Independent Claim 9 ................................................................ 56
`
`(a)
`Preamble of Claim 9: “A system, comprising:” ........... 57
`(b)
`“an instant voice messaging application
`comprising:” (Claim 9[a]) ............................................. 57
`“wherein the instant voice message application
`attaches one or more files to the instant voice
`message.” (Claim 9[b]) .................................................. 70
`Dependent Claim 12 ................................................................ 74
`(a)
`Preamble of Claim 12: “The system according to
`claim 9,” ......................................................................... 75
`“wherein the instant voice messaging application
`encrypts the instant voice message.” (Claim 12[a]) ...... 75
`Dependent Claim 14 ................................................................ 77
`(a)
`Preamble of Claim 14: “The system according to
`claim 9,” ......................................................................... 77
`“wherein the instant voice messaging application
`invokes a document handler to create a link
`between the instant voice message and the one or
`more files.” (Claim 14[a]) ............................................. 78
`Dependent Claim 17 ................................................................ 83
`(a)
`Preamble of Claim 17: “The system according to
`claim 9 further comprising” ........................................... 83
`
`(c)
`
`(b)
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`(b)
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`TABLE OF CONTENTS
`(continued)
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`C.
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`TABLE OF CONTENTS
`(continued)
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`(b)
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`(b)
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`(c)
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`(d)
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`“an instant voice messaging server receiving the
`instant voice message and an indication of one or
`more intended recipients of the instant voice
`message.” (Claim 17[a]) ................................................ 84
`Dependent Claim 25 ................................................................ 89
`(a)
`Preamble of Claim 25: “The system of claim 17” ......... 89
`(b)
`“wherein the instant voice messaging server
`determines availability of the one or more intended
`recipients for receipt of the instant voice message.”
`(Claim 25[a]) ................................................................. 89
`Dependent Claim 26 ................................................................ 91
`(a)
`Preamble of Claim 26: “The system of claim 25,
`wherein the instant voice messaging server” ................. 92
`“delivers the instant voice message to the one or
`more intended recipients who are determined to be
`currently available;” (Claim 26[a]) ............................... 92
`“stores the instant voice message for the one or
`more intended recipients who are not currently
`available; and” (Claim 26[b]) ........................................ 93
`“delivers the instant voice message to the one or
`more intended recipients who are not currently
`available when the instant voice messaging server
`determines that the not currently available one or
`more intended recipients become available.”
`(Claim 26[c] ................................................................... 95
`Zydney in View of Greenlaw Discloses and Renders Obvious
`Claims 11, 15, and 16 ......................................................................... 97
`Dependent Claim 11 ................................................................ 97
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`TABLE OF CONTENTS
`(continued)
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`Page
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`(a)
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`(b)
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`(b)
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`(b)
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`
`
`D.
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`E.
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`Preamble of Claim 11: “The system according to
`claim 9,” ......................................................................... 97
`“wherein the instant voice messaging application
`displays one or more controls for audibly playing
`the instant voice message.” (Claim 11[a]) ..................... 97
`Dependent Claim 15 .............................................................. 103
`(a)
`Preamble of Claim 15: “The system according to
`claim 9,” ....................................................................... 104
`“wherein the instant voice messaging application
`displays the attachment.” (Claim 15[a]) ...................... 104
`Dependent Claim 16 .............................................................. 105
`(a)
`Preamble of Claim 16: “The system according to
`claim 9,” ....................................................................... 106
`“wherein the instant voice messaging application
`displays one or more controls for performing at
`least one of reviewing, re-recording or deleting the
`instant voice message.” (Claim 16[a]) ......................... 106
`Zydney in View of Newton Discloses and Renders Obvious
`Claim 10 ........................................................................................... 108
`Dependent Claim 10 .............................................................. 108
`
`(a)
`Preamble of Claim 10: “The system according to
`claim 9,” ....................................................................... 108
`“wherein the packet-switched network comprises a
`WiFi network.” (Claim 10[a]) ..................................... 108
`Zydney in View of Clark Renders Obvious Claims 1-6 and 8 ........ 113
`Independent Claim 1 .............................................................. 113
`
`(a)
`Preamble of claim 1: “A system, comprising:” .......... 114
`
`(b)
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`TABLE OF CONTENTS
`(continued)
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`Page
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`(b)
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`(c)
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`(d)
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`“an instant voice messaging application including
`a client platform system for generating an instant
`voice message and a messaging system for
`transmitting the instant voice message over a
`packet-switched network via a network interface;”
`(Claim 1[a]) ................................................................. 114
`“wherein the instant voice messaging application
`displays a list of one or more potential recipients
`for the instant voice message;” (Claim 1[b]) ............... 118
`“wherein the instant voice messaging application
`includes a message database storing the instant
`voice message,” (Claim 1[c]) ...................................... 119
`“wherein the instant voice message is represented
`by a database record including a unique identifier;
`and” (Claim 1[d]) ......................................................... 130
`“wherein the instant voice messaging application
`includes a file manager system performing at least
`one of storing, deleting and retrieving the instant
`voice messages from the message database in
`response to a user request.” (Claim 1[e]) .................... 132
`Dependent Claim 2 ................................................................ 143
`(a)
`Preamble of Claim 2: “The system according to
`claim 1” ........................................................................ 143
`“wherein the message database includes a plurality
`of instant voice messages received over the packet-
`switched network.” (Claim 2[a]) ................................. 143
`Dependent Claim 3 ................................................................ 145
`(a)
`Preamble of Claim 3: “The system according to
`claim 2” ........................................................................ 145
`
`(e)
`
`(f)
`
`(b)
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`TABLE OF CONTENTS
`(continued)
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`Page
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`(b)
`
`(b)
`
`“wherein the instant voice messaging application
`displays at least one of the plurality of instant
`voice messages stored in the message database.”
`(Claim 3[a]) ................................................................. 145
`Dependent Claim 4 ................................................................ 149
`(a)
`Preamble of Claim 4: “The system according to
`claim 1” ........................................................................ 149
`“wherein the instant voice messaging application
`includes an audio file creation system creating an
`audio file for the instant voice message based on
`input received via an audio input device.” (Claim
`4[a]) .............................................................................. 149
`Dependent Claim 5 ................................................................ 151
`(a)
`Preamble of Claim 5: “The system according to
`claim 1” ........................................................................ 151
`“wherein the instant voice messaging application
`includes an encryption/decryption system for
`encrypting the instant voice messages to be
`transmitted over the packet-switched network and
`decrypting the instant voices messages received
`over the packet-switched network.” (Claim 5[a]) ....... 152
`Independent Claim 6 .............................................................. 153
`(a)
`Preamble of Claim 6: “A system comprising:” ........... 154
`(b)
`“an instant voice messaging application including
`a client platform system for generating an instant
`voice message and a messaging system for
`transmitting the instant voice message over a
`packet-switched network via a network interface;”
`(Claim 6[a]) ................................................................. 154
`
`(b)
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`F.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`(c)
`
`(d)
`
`(e)
`
`“wherein the instant voice messaging application
`displays a list of one or more potential recipients
`for the instant voice message;” (Claim 6[b]) ............... 154
`“wherein the instant voice messaging application
`includes a file manager system performing at least
`one of storing, deleting and retrieving the instant
`voice messages from a message database in
`response to a user request; and” (Claim 6[c]) ............. 155
`“wherein the instant voice messaging application
`includes a compression/decompression system for
`compressing the instant voice messages to be
`transmitted over the packet-switched network and
`decompressing the instant voice messages received
`over the packet-switched network.” (Claim 6[d]) ....... 155
`Dependent Claim 8 ................................................................ 159
`(a)
`Preamble of Claim 8: “The system according to
`claim 1” ........................................................................ 159
`“wherein the instant voice message application
`generates an audible or visual effect indicating
`receipt of an instant voice message.” (Claim 8[a]) ..... 160
`Zydney in View of Clark and Appelman Renders Obvious
`Claim 7 ............................................................................................. 161
`Dependent Claim 7 ................................................................ 161
`
`(a)
`Preamble of Claim 7: “The system according to
`claim 1” ........................................................................ 161
`“wherein the instant voice messaging application
`displays an indicia for each of the one or more
`potential recipients indicating whether the
`potential recipient is currently available to receive
`an instant voice message.” (Claim 7[a]) ...................... 162
`
`
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`(b)
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`(b)
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`- vii -
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`TABLE OF CONTENTS
`(continued)
`
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`VII. ENABLEMENT OF THE PRIOR ART .................................................... 169
`VIII. CONCLUSION ........................................................................................... 172
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`Page
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,994,433
`
`I, Tal Lavian, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I have more than 25 years of experience in the networking,
`
`telecommunications, Internet, and software fields. I received a Ph.D. in Computer
`
`Science, specializing in networking and communications, from the University of
`
`California at Berkeley in 2006 and obtained a Master’s of Science (“M.Sc.”)
`
`degree in Electrical Engineering from Tel Aviv University, Israel, in 1996. In
`
`1987, I obtained a Bachelor of Science (“B.Sc.”) in Mathematics and Computer
`
`Science, also from Tel Aviv University.
`
`2.
`
`I am employed by the University of California at Berkeley and was
`
`appointed as a lecturer and Industry Fellow in the Center of Entrepreneurship and
`
`Technology (“CET”) as part of UC Berkeley College of Engineering. I have been
`
`with the University of California at Berkeley since 2000 where I served as
`
`Berkeley Industry Fellow, Lecturer, Visiting Scientist, Ph.D. Candidate, and
`
`Nortel’s Scientist Liaison. I have taught several classes on wireless devices and
`
`smartphones. Some positions and projects were held concurrently, while others
`
`were held sequentially.
`
`- 1 -
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`
`3.
`
`I have more than 25 years of experience as a scientist, educator and
`
`technologist, and much of my experience relates to telecommunication, data
`
`communications, and computer networking technologies. For eleven years from
`
`1996 to 2007, I worked for Bay Networks and Nortel Networks. Bay Networks
`
`was in the business of making and selling computer network hardware and
`
`software. Nortel Networks acquired Bay Networks in 1998, and I continued to
`
`work at Nortel after the acquisition. Throughout my tenure at Bay and Nortel, I
`
`held positions
`
`including Principal Scientist, Principal Architect, Principal
`
`Engineer, Senior Software Engineer, and led the development and research
`
`involving a number of networking technologies. I led the efforts of Java
`
`technologies at Bay Networks and Nortel Networks. In addition, during 1999-
`
`2001, I served as the President of the Silicon Valley Java User Group with over
`
`800 active members from many companies in the Silicon Valley.
`
`4.
`
`Prior to that, from 1994 to 1995, I worked as a software engineer and
`
`team leader for Aptel Communications, designing and developing wireless
`
`technologies, mobile wireless devices and network software products.
`
`5.
`
`From 1990 to 1993, I worked as a software engineer and team leader
`
`at Scitex Ltd., where I developed system and network communications tools
`
`(mostly in C and C++).
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`
`6.
`
`I have extensive experience
`
`in communications
`
`technologies
`
`including wireless technologies, routing and switching architectures and protocols,
`
`including Multi-Protocol Label Switching Networks, Layer 2 and Layer 3 Virtual
`
`Private Networks, and Pseudowire technologies. Much of my work for Nortel
`
`Networks (mentioned above) involved the research and development of these
`
`technologies. For example, I wrote software for Bay Networks and Nortel
`
`Networks switches and routers, developed network technologies for the Accelar
`
`8600 family of switches and routers, the OPTera 3500 SONET switches, the
`
`OPTera 5000 DWDM family, and the Alteon L4-7 switching product family. I
`
`wrote software for Java-based device management, including a software interface
`
`for device management and network management in the Accelar routing switch
`
`family’s network management system. I have also worked on enterprise Wi-Fi
`
`solutions, wireless mobility management, and wireless infrastructure.
`
`7.
`
`I am named as a co-inventor on more than 100 issued patents and I co-
`
`authored more than 25 scientific publications, journal articles, and peer-reviewed
`
`papers. Furthermore, I am a member of a number of professional affiliations,
`
`including the Association of Computing Machinery (“ACM”) and the Institute of
`
`Electrical and Electronics Engineers (“IEEE”) (senior member). I am also certified
`
`under the IEEE WCET (Wireless Communications Engineering Technologies)
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`Program, which was specifically designed by the IEEE Communications Society
`
`(ComSoc) to address the worldwide wireless industry’s growing and ever-evolving
`
`need for qualified communications professionals.
`
`8.
`
`From 2007 to the present, I have served as a Principal Scientist at my
`
`company TelecommNet Consulting Inc., where I develop network communication
`
`technologies and provide research and consulting in advanced technologies, mainly
`
`in computer networking and Internet technologies. In addition, I have served as a
`
`Co-Founder and Chief Technology Officer (CTO) of VisuMenu, Inc. from 2010 to
`
`the present, where I design and develop architecture of visual IVR technologies for
`
`smartphones and wireless mobile devices in the area of network communications.
`
`9.
`
`I have worked on wireless and cellular systems using a variety of
`
`modulation technologies including time-division multiple-access (TDMA), code-
`
`division multiple-access (CDMA), and orthogonal frequency-division multiplexing
`
`(OFDM). I have additionally worked on various projects
`
`involving
`
`the
`
`transmission and streaming of digital media content.
`
`10. The above outline of my experience with communications systems is
`
`not comprehensive of all of my experience over my years of technical experience.
`
`Additional details of my background are set forth in my curriculum vitae, attached
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`as Exhibit A to this Declaration, which provides a more complete description of
`
`my educational background and work experience.
`
`11.
`
`I am being compensated for the time I have spent on this matter at the
`
`rate of $400 per hour. My compensation does not depend in any way upon the
`
`outcome of this proceeding. I hold no interest in the Petitioners (Facebook, Inc.
`
`and WhatsApp Inc.) or the Patent Owner (Uniloc Luxembourg, S.A.) or plaintiff
`
`Uniloc USA, Inc.
`
`B. Materials Considered
`12. The analysis that I provide in this Declaration is based on my
`
`education and experience in the telecommunications and information technology
`
`industries, as well as the documents I have considered, including U.S. Patent No.
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`8,995,433 (“’433” or “’433 patent”) [Ex. 1001/1101],1 which states on its face that
`
`it issued from an application filed on March 25, 2014, in turn claiming priority
`
`back to an earliest application filed on December 18, 2003. For purposes of this
`
`Declaration, I have assumed December 18, 2003 as the effective filing date for the
`
`’433 patent. I have cited to the following documents in my analysis below:
`
`Title of Document
`Exhibit No.
`1001/1101 U.S. Patent No. 8,995,433 to Michael J. Rojas (filed March 25,
`2014, issued Mar. 31, 2015)
`1003/1103 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney
`et al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (“Zydney”)
`1004/1104 U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24,
`1997, issued June 15, 2004) (“Appelman”)
`1005/1105 Excerpts from Margaret Levine Young, Internet: The Complete
`Reference (2d ed. 2002) (“Young”)
`
`
`1 I am informed by counsel that the Petitioners will be filing two separate
`
`petitions challenging the claims addressed in this Declaration, a first petition
`
`challenging claims 1-8, and a second petition challenging claims 9-12, 14-17, 25,
`
`and 26. I am further informed that the Petitioner will be filing the same exhibits in
`
`both petitions, but will number the exhibits in the first petition as “10xx,” and as
`
`“11xx” in the second petition. Because my Declaration is being filed in both
`
`petitions, my citations will reflect both sets of exhibit numbers.
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`
`Title of Document
`Exhibit No.
`1006/1106 Excerpts from Harry Newton, Newton’s Telecom Dictionary (2002)
`(“Newton”)
`1007/1107 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October
`16, 2000, issued June 29, 2004) (“Bogard”)
`1008/1108 U.S. Patent No. 6,725,228 to David Morley Clark et al. (filed Oct.
`31, 2000, issued April 20, 2004) (“Clark”)
`1009/1109 Excerpts from Microsoft Computer Dictionary (3d ed. 1997)
`1010/1110 Excerpts from Raymond Greenlaw et al., Introduction to the
`Internet for Engineers (1999) (“Greenlaw”)
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`13.
`I understand that an assessment of claims of the ’433 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is December 18, 2003. I have
`
`also been advised that to determine the appropriate level of a person having
`
`ordinary skill in the art, the following factors may be considered: (1) the types of
`
`problems encountered by those working in the field and prior art solutions thereto;
`
`(2) the sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (3) the educational level of active workers in the
`
`field; and (4) the educational level of the inventor.
`
`14. The ’433 patent states that the perceived problem and the purported
`
`solution are generally related to the field of Internet telephony (IP telephony). The
`
`patent states: “More particularly, the present invention is directed to a system and
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`method for enabling local and global instant VoIP messaging over an IP network,
`
`such as the Internet, with PSTN support.” (’433, 1:20-23.) The ’433 patent
`
`purports to describe a voice messaging system and method for delivering instant
`
`messages over a packet switched network. (Id., Abstract). The ’433 patent
`
`purports to depict architectures of Internet and PSTN technologies, global and
`
`local IP networks, VoIP switches and gateways, and phone systems. The patent
`
`also purports to disclose local and global instant voice messaging servers
`
`communicating over an IP Network. In the Summary of the Invention, the
`
`applicant states: “The present invention is directed to a system and method for
`
`enabling local and global instant VoIP messaging over an IP network, such as the
`
`Internet.” (Id., 2:58-60.)
`
`15.
`
`In my opinion, a person of ordinary skill in the art as of December
`
`2003 would have possessed at least a bachelor’s degree in computer science,
`
`computer engineering, or electrical engineering with at least two years of
`
`experience in development and programming relating to network communication
`
`systems (or equivalent degree or experience).
`
`16. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 25 years of experience in computer science and
`
`network communications, my understanding of the basic qualifications that would
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`be relevant to an engineer or scientist tasked with investigating methods and
`
`systems in the relevant area, and my familiarity with the backgrounds of
`
`colleagues, co-workers, and employees, both past and present.
`
`17. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’433 patent have been based on the perspective of a person
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`of ordinary skill in the art as of December 2003.
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`III. BASIS FOR MY OPINION AND STATEMENT OF LEGAL PRINCIPLES
`18. My opinions and views set forth in this declaration are based on my
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`education, training, and experience in the relevant field, as well as the materials I
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`have reviewed for this matter, and the scientific knowledge regarding the subject
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`matter that existed prior to December 2003.
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`A. Claim Construction
`19.
`It is my understanding that, when construing claim terms, a claim
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`subject to inter partes review receives the “broadest reasonable construction in
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`light of the specification of the patent in which it appears.”
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`B. Anticipation
`20.
`It is my understanding that in order for a patent claim to be valid, the
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`claimed invention must be novel. It is my understanding that if each and every
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`element of a claim is disclosed in a single prior art reference, then the claimed
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`Facebook's Exhibit No. 1002/1102
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`invention is anticipated, and the invention is not patentable according to pre-AIA
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`35 U.S.C. § 102 effective before March 16, 2013. In order for the invention to be
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`anticipated, each element of the claimed invention must be described or embodied,
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`either expressly or inherently, in the single prior art reference. In order for a
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`reference to inherently disclose a claim limitation, that claim limitation must
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`necessarily be present in the reference.
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`C. Obviousness
`21. Counsel has advised me that obviousness under pre-AIA 35 U.S.C.
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`§ 103 effective before March 16, 2013 is the basis for invalidity in the Petition.
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`Counsel has advised me that a patent claim may be found invalid as obvious if, at
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`the time when the invention was made, the subject matter of the claim, considered
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`as a whole, would have been obvious to a person having ordinary skill in the field
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`of the technology (the “art”) to which the claimed subject matter belongs. I
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`understand that the following factors should be considered in analyzing
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`obviousness: (1) the scope and content of the prior art; (2) the differences between
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`the prior art and the claims; and (3) the level of ordinary skill in the pertinent art. I
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`also understand that certain other factors known as “secondary considerations,”
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`such as commercial success, unexpected results, long felt but unsolved need,
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`industry acclaim, simultaneous invention, copying by others, skepticism by experts
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`Page 19
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`in the field, and failure of others, may be utilized as indicia of nonobviousness. I
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`understand, however, that secondary considerations should be connected, or have a
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`“nexus”, with the invention claimed in the patent at issue. I understand that a
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`person of ordinary skill in the art is assumed to have knowledge of all prior art. I
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`understand that one skilled in the art can combine various prior art references
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`based on the teachings of those prior art references, the general knowledge present
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`in the art, or common sense. I understand that a motivation to combine references
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`may be implicit in the prior art, and there is no requirement that there be an actual
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`or explicit teaching to combine two references. Thus, one may take into account
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`the inferences and creative steps that a person of ordinary skill in the art would
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`employ to combine the known elements in the prior art in the manner claimed by
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`the patent at issue. I understand that one should avoid “hindsight bias” and ex post
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`reasoning in performing an obviousness analysis. But this does not mean that a
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`person of ordinary skill in the art for purposes of the obviousness inquiry does not
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`have recourse to common sense. I understand that when determining whether a
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`patent claim is obvious in light of the prior art, neither the particular motivation for
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`the patent nor the stated purpose of the patentee is controlling. The primary
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`inquiry has to do with the objective reach of the claims, and that if those claims
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`extend to something that is obvious, then the entire patent claim is invalid. I
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`Page 20
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,995,433
`
`understand one way that a patent can be found obvious is if there existed at the
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`time of the invention a known problem for which there was an obvious solution
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`encompassed by the patent’s claims. I understand that a motivation to combine
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`various prior art references to solve a particular problem may come from a variety
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`of sources, including market demand or scientific literature. I understand that a
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`need or problem known in the field at the time of the invention can also provide a
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`reason to combine prior art references