Case IPR2017-01934
`Patent No. 8,799,468
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`UNIFIED PATENTS INC.
`
`Petitioner
`
`vs.
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`MULTIMEDIA CONTENT MANAGEMENT LLC
`
`Patent Owner
`
`_______________
`
`
`Case IPR2017-01934
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`U.S. Patent No. 8,799,468
`
`_______________
`
`DECLARATION OF JOEL R. WILLIAMS
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`MCM, EX2001, pg. 1
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`Case IPR2017-01934
`Patent No. 8,799,468
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 6 
`I. 
`QUALIFICATIONS ...................................................................................... 10 
`II. 
`III.  LEGAL UNDERSTANDING ....................................................................... 15 
`Level of Ordinary Skill in the Art ................................................................. 16 
`Enablement .................................................................................................... 16 
`Anticipation ................................................................................................... 19 
`Inherency ....................................................................................................... 21 
`Obviousness ................................................................................................... 21 
`IV.  SUMMARY OF OPINION ........................................................................... 27 
`V. 
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 29 
`VI.  OVERVIEW OF THE ’468 PATENT .......................................................... 29 
`VII.  MEANING OF SPECIFIC CLAIM TERMS ................................................ 30 
`A. 
`“Service Provider Network” ................................................................ 31 
`B. 
`“Controller Instructions” ..................................................................... 36 
`C. 
`“Gateway Unit” ................................................................................... 40 
`D. 
`“Generate [controller instructions]” .................................................... 43 
`VIII.  PATENTABILITY ANALYSIS FOR CLAIMS 1-5, 9, 11-13, 19,
`23-27, AND 32-34 OF THE ’468 PATENT ................................................. 47 
`A.  GROUND 1 - Freund .......................................................................... 47 
`1. 
`Brief Overview of the Freund Reference ................................. 48 
`Analysis of Claim 1 ....................................................................................... 51 
`1. 
`Freund does not disclose “a processor configured to
`generate controller instructions” ............................................... 52 
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`MCM, EX2001, pg. 2
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`Case IPR2017-01934
`Patent No. 8,799,468
`2. 
`Freund does not disclose “a gateway unit…configured to
`receive the controller instructions from the controller
`node through the service provider network” ............................. 59 
`Freund does not disclose “a gateway unit” .............................. 63 
`3. 
`Analysis of Claim 2 ....................................................................................... 64 
`1. 
`Freund does not disclose “an identifier that uniquely
`identifies the gateway unit” ...................................................... 64 
`Analysis of Claims 3-5, 9, 11-13, and 19 ...................................................... 71 
`Analysis of Claim 23 ..................................................................................... 71 
`1. 
`Freund does not disclose “generating, by a controller
`node…, controller instructions” ................................................ 72 
`Freund does not disclose “receiving, by the gateway
`units, from the controller node, the controller
`instructions” .............................................................................. 72 
`Freund does not disclose “a gateway unit” .............................. 73 
`3. 
`Analysis of Claim 24 ..................................................................................... 73 
`Analysis of Claim 25-27, and 33 ................................................................... 74 
`B. 
`GROUND 2 – Spusta .......................................................................... 74 
`1. 
`Brief Overview of the Spusta Reference .................................. 75 
`Analysis of Claim 1 ....................................................................................... 79 
`1. 
`Spusta does not disclose “a system for regulating access
`to a service provider network” .................................................. 80 
`Spusta does not disclose “a processor configured to
`generate controller instructions” ............................................... 81 
`Spusta does not disclose “controller instructions” .................... 83 
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`2. 
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`2. 
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`3. 
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`MCM, EX2001, pg. 3
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`Case IPR2017-01934
`Patent No. 8,799,468
`4. 
`Spusta does not disclose “the second processor is
`configured to selectively transmit the content requests to
`the service provider network” ................................................... 85 
`Spusta does not disclose a “gateway unit” ................................ 87 
`5. 
`Analysis of Claims 2, 3, 11, and 13 ............................................................... 88 
`Analysis of Claim 23 ..................................................................................... 88 
`1. 
`Spusta does not disclose “a system for regulating access
`to a service provider network” .................................................. 89 
`Spusta does not disclose “a processor configured to
`generate controller instructions” ............................................... 90 
`Spusta does not disclose “controller instructions” .................... 90 
`Spusta does not disclose “the second processor is
`configured to selectively transmit the content requests to
`the service provider network” ................................................... 90 
`Spusta does not disclose a “gateway unit” ................................ 90 
`5. 
`Analysis of Claims 24, 25, 32, and 34 ........................................................... 91 
`IX.  CONCLUSION .............................................................................................. 91 
`X. 
`CERTIFICATION ......................................................................................... 91 
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`3. 
`4. 
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`2. 
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`MCM, EX2001, pg. 4
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`Case IPR2017-01934
`Patent No. 8,799,468
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`EXHIBITS
`2005 RFC 1918 – Address Allocation for Private Internets
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`2006 RFC 2131 – Dynamic Host Configuration Protocol
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`2007 IPTABLES – Administration tool for IPv4 packet filtering and NAT
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`2008 RFC 2616 – Hypertext Transfer Protocol -- HTTP/1.1
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`MCM, EX2001, pg. 5
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`Case IPR2017-01934
`Patent No. 8,799,468
`I.
`INTRODUCTION
`[01] My name is Joel R. Williams. I understand that I am submitting a declaration
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`for Multimedia Content Management LLC (“MCM”). I am offering technical
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`opinions in connection with the above-referenced Inter Partes Review (“IPR”)
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`proceeding in the United States Patent and Trademark Office for U.S. Patent No.
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`8,799,468 (the “’468 Patent”), and references listed in Petitioner’s Exhibit List. I
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`make this declaration based on my personal knowledge. I am over the age of 21 and
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`am competent to make this declaration.
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`[02] The statements herein include my opinions and the bases for those opinions,
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`which relate to at least the following documents and references of the pending IPR
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`Petition, which I have reviewed and considered:
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`
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`U.S. Patent No. 8,799,468 by Burke, II et al entitled “System for
`
`Regulating Access to and Distributing Content in a Network” (the ’468
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`Patent) (EX1001)
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`
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`
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`
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`Andrew S. Tanenbaum, “Computer Networks,” Prentice-Hall, Inc. 3rd
`
`ed., 1996, pp. 4-8, 50-56, 408-413 (EX1002)
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`Declaration of Norman Hutchinson, Ph.D. (EX1003)
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`U.S. Patent No. 5,987,611 to Freund (EX1004)
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`
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`MCM, EX2001, pg. 6
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`U.S. Patent Application No. US 2002/0032870 to Spusta et al
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`(EX1005)
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`
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`Norbert Pohlmann et al., “Firewall Architecture for the Enterprise,”
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`Wiley Publishing, Inc. 2002, pp. 114-135, 149-155, 174-181, 308-315
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`(EX1006)
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` Webster’s New World Dictionary of American English (3rd ed. 1988)
`
`(EX1007)
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`
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`
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`
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`
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`
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`
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`
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`Prosecution History of Application No. 13/369,174, resulting in U.S.
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`Patent No. 8,799,468 (EX1008)
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`U.S. Patent No. 5,987,606 to Cirasole et al. (EX1009)
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`Declaration of Scott Bennett, Ph.D. (EX1010)
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`U.S. Patent No. 8,122,128 to Burke, II et al. (EX1011)
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`U.S. Provisional Patent Application No. 60/523,057 (EX1012)
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`U.S. Provisional Patent Application No. 60/538,370 (EX1013)
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`U.S. Provisional Patent Application No. 60/563,064 (EX1014)
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`MCM, EX2001, pg. 7
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`RFC 1918 – Address Allocation for Private Internets (EX2005)1
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`
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`
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`RFC 2131 – Dynamic Host Configuration Protocol (EX2006)2
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`IPTABLES – Administration tool for IPv4 packet filtering and NAT
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`(EX2007)3
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`1 In rendering my opinions contained in this declaration, I relied, in part, on this
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`exhibit. This reference is published by the Network Working Group and is a
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`reliable authority regarding Internet best practices.
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`2 In rendering my opinions contained in this declaration, I relied, in part, on this
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`exhibit. This reference is published by the Network Working Group and is a
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`reliable authority regarding Internet best practices.
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`3 In rendering my opinions contained in this declaration, I relied, in part, on this
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`exhibit. This reference describes IP packet filter rules in the Linux kernel and is
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`a reliable authority.
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`MCM, EX2001, pg. 8
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`RFC 2616 – Hypertext Transfer Protocol -- HTTP/1.1 (EX2008)4
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`[03] Although I am being compensated for my time at the rate of $450 per hour in
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`preparing this declaration, the opinions herein are my own, and I have no stake in
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`the outcome of the IPR proceeding. My compensation does not depend in any way
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`on the outcome of the Petitioner’s petition.
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`[04] To the best of my knowledge, I have no financial interest in Petitioner.
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`Petitioner’s counsel has informed me that Multimedia Content Management LLC
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`(“Patent Owner” or “MCM”) purports to own the ’468 Patent. To the best of my
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`knowledge, I have no financial interest in MCM, and I have had no contact with
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`MCM or the named inventors of the patent, Robert M. Burke II and David Z.
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`Carman. To the best of my knowledge, I have no financial interest in the ’468 Patent.
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`To the extent any mutual funds or other investments I own have a financial interest
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`in the Petitioner, Unified Patents Inc., or the ’468 Patent, I am not aware of, nor do
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`I have control over, any financial interest that would affect or bias my judgment.
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`4 In rendering my opinions contained in this declaration, I relied, in part, on this
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`exhibit. This reference is published by the Network Working Group and is a
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`reliable authority regarding Internet best practices.
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`MCM, EX2001, pg. 9
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`Case IPR2017-01934
`Patent No. 8,799,468
`II. QUALIFICATIONS
`[05] I received a B.S. from Ohio State University in Computer Science. A copy of
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`my curriculum vitae, which includes a more detailed summary of my background,
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`experience, patents, and publications, is attached as Appendix A.
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`[06] I have been retained as an independent expert consultant in the fields of
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`network communications, management and administration of computer networks,
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`access controls, Internet devices and protocols, distributed networks, and control
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`systems. I am being compensated for the time I spend on this matter, but my
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`compensation is not dependent on and in no way affects the substance of my
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`statements in this declaration.
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`[07] I have worked on the design of numerous network routers, servers, and other
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`network devices for a number of major Silicon Valley companies, including HP,
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`Cisco, Space Systems Loral, and a number of start-up companies.
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`[08] I worked for Bell Telephone Laboratories from 1970 to 1978. As an Associate
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`Member of the Technical Staff, I participated in the development of network
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`management systems and central office interfaces. My primary focus was on the
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`Engineering and Administrative Data Acquisition System (“EADAS”), a traffic and
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`network management system for long-distance and local networks. EADAS is a
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`distributed system with a central computer that monitors and controls a number of
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`other computerized devices throughout a network. I also worked on the design of
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`MCM, EX2001, pg. 10
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`Case IPR2017-01934
`Patent No. 8,799,468
`components related to operator services including the Automatic Intercept System
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`(“AIS”) and Traffic Service Position System (“TSPS”) for toll operators. While
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`working for Bell Telephone Laboratories, I attended Ohio State University,
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`receiving a Bachelor of Science in Computer Science in 1978.
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`[09] In 1982, I began working as an independent consultant, specializing in the
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`specification,
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`review,
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`design
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`and
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`implementation
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`of
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`networking,
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`telecommunications, and computer operating systems. Since 1982, I have worked
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`on a substantial number of relevant networking projects, including the following:
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`
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`
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`
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`
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`
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`Qubix – networked Sun Microsystems workstations (1983-1985)
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`Racal-Vadic – modem control systems / Point-of-Presence systems
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`(1983-1990)
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`Coastcom – distributed network equipment management system (1986-
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`1988)
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`Hewlett Packard – network protocols & provisioning, distributed
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`system configuration (1988-1989, 1994)
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`Voice-mail systems, and networked associated systems (speech-to-text
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`systems, operator interfaces, and Interactive Voice Response (“IVR”))
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`OCTEL (1990‒1992)
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`MCM, EX2001, pg. 11
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`Fiberoptic
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`to
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`the home networking system
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`including remote
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`provisioning of equipment from centralized computer. Raynet (1991‒
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`1992)
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`Multi-computer distributed licensing and authorization system –
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`MetaSoftware (1992)
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`Asset management systems – distributed computing – Zitel/PMI
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`Network routers and ATM switch development Network Equipment
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`Technologies (NET) (1993-1994), Cisco (1995-1996), Ipsilon (1995-
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`1997)
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`Digital Generation Systems – media distribution system, remote
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`provisioning (1995)
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`DAVIC – Digital Audio Video Counsel – standards for distributed
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`systems for audio and video delivery. Stanford Telecom (1995-1997)
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`Fiberoptic distributed network control system – Ditech Networks
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`(1996-2000)
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`
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`
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`
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`
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` Wireless networking, routing, distributed systems – Space Systems
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`Loral (1999-2003)
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`MCM, EX2001, pg. 12
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`Home gateway - DSL modems, including packet filtering and remote
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`configuration from central server. (1999-2000) Telocity/Direct TV
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`
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`Deep packet inspection, routing, firewall – Cloudshield (2002)
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`Cellphone provisioning and networking – T-Mobile (2005-2006)
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`Remote provisioning of home computer devices –Pie Digital (2007)
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`Remote control and provisioning of distributed controllers for power
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`industry – Natis Communications (2007-2008)
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`Networked computer systems for aircraft – Luminator (2007)
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`Set-top-box development – streaming video, remote configuration –
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`Sezmi (2010)
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`Distributed
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`lighting control system – networking and remote
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`provisioning – Sensity Systems (2015)
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`[10] From 1978 to 1982, I worked at the Vidar Division of TRW as a Supervisor
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`of Software Engineering, where I was responsible for the design and implementation
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`of telephone central office switching and transmission equipment. I was specifically
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`responsible for software development of a central office switch and coupled remote
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`MCM, EX2001, pg. 13
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`Case IPR2017-01934
`Patent No. 8,799,468
`switching nodes. I also developed call processing software, and software interfaces
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`for switching.
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`[11] Over the course of my career I have provided services to a substantial number
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`of companies and organizations, many of which were developing networking
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`technology. I have also held a number of positions (including leadership positions)
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`in a variety of professional associations. I was a past contributing member of
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`DAVIC, the DSL Forum and the Wi-Fi Alliance. I am a Member of the Association
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`for Computing Machinery (“ACM”), and am a Life Senior Member of the Institute
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`of Electrical and Electronics Engineers (“IEEE”), and a Senior Certified
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`Professional Consultant in the Professional and Technical Consultants Association,
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`the latter of which I previously served for as president. I previously served as a Vice
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`Chair of the IEEE Consultants Network of Silicon Valley (“CNSV”) and currently
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`serve on the Board of Directors.
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`[12] I am a named inventor on six patents issued by the United States Patent and
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`Trademark Office, the following of which are directed to networking:
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`
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`
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`U.S. Patent No. 9,367,552 – System and Method for Event Registration
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`U.S. Patent No. 6,151,312 — Network Protocol for Wireless
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`Broadband-ISDN Using ATM
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`
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`MCM, EX2001, pg. 14
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`Case IPR2017-01934
`Patent No. 8,799,468
`
`U.S. Patent No. 5,914,956 — Cache for Improving the Connection
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`Capacity of a Communications Switch
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`
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`U.S. Patent No. 5,886,989 — System for the Delivery of Wireless
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`Broadband Integrated Services Digital Network (ISDN) Using
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`Asynchronous Transfer Mode (ATM)
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`[13] I am not an attorney and offer no legal opinions, but in my work, I have had
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`experience studying and analyzing patents and patent claims from the perspective of
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`a person skilled in the art, and I am a named inventor on several patents.
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`III. LEGAL UNDERSTANDING
`[14] My understanding of the law regarding patent validity is based on all my prior
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`work on patents and patent matters. In formulating my opinions and conclusions in
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`this case, I have been provided with an understanding of the prevailing principles of
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`U.S. patent law that govern the issues of patent claim interpretation and validity. As
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`a result, I understand the following principles of U.S. patent law and have applied
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`these principles in analyzing the allegations of invalidity of the claims presented in
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`the IPR Petition and in forming my opinions.
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`[15] I understand that it is a basic principle of patent law that assessing the validity
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`of a patent claim involves a two-step analysis. In the first step, the claim language
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`must be properly construed to determine its scope and meaning. In the second step,
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`
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`MCM, EX2001, pg. 15
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`Case IPR2017-01934
`Patent No. 8,799,468
`the claim as properly construed must be compared to the alleged prior art to
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`determine whether the claim is valid.
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`[16] As explained herein, my analysis of the validity of the ’468 Patent will be
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`undertaken from the perspective of what would have been known or understood by
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`one of ordinary skill in the art relevant to the patent in question when the inventors
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`of the patent conceived of and reduced the claimed inventions to practice. Whether
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`any of the claims of the ’468 Patent is anticipated or rendered obvious by systems
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`and/or methods alleged by Petitioner to have been publicly disclosed, invented by
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`another and/or in public use prior to the invention date is thus determined based on
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`an understanding of a person of ordinary skill in the relevant art.
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`Level of Ordinary Skill in the Art
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`[17] The level of ordinary skill in the art is based on factors such as the educational
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`level of the inventor, the educational level of those who work in the industry, and
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`the sophistication of technology involved, in addition to the type of problems
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`encountered in the art, prior art solutions to those problems, and the rapidity with
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`which innovations are made in the particular technology.
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`Enablement
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`[18] I understand that, in order to be considered prior art that would anticipate or
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`render a claimed invention obvious and invalid, a reference must be enabling and
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`
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`MCM, EX2001, pg. 16
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`Case IPR2017-01934
`Patent No. 8,799,468
`must describe the claimed invention sufficiently to have placed it in the possession
`
`of a person of ordinary skill in the field of the invention. In other words, the
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`disclosure within the “four corners” of the alleged prior art document must be
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`sufficiently detailed to enable a person of ordinary skill in the relevant field to make
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`and use the claimed invention.
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`[19] I understand that the information contained in the disclosure of an application
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`must be sufficient to inform those skilled in the relevant art how to both make and
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`use the claimed invention. However, to comply with the enablement requirement, it
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`is not necessary to “enable one of ordinary skill in the art to make and use a perfected,
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`commercially viable embodiment absent a claim limitation to that effect.”
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`[20] I also understand that detailed procedures for making and using the invention
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`may not be necessary if the description of the invention itself is sufficient to permit
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`those skilled in the art to make and use the invention. Further, I understand that a
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`patent need not teach, and preferably omits, what is well known in the art.
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`[21] I also understand that the fact that experimentation may be complex does not
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`necessarily make it undue, if the art typically engages in such experimentation – the
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`test of enablement is not whether any experimentation is necessary, but whether, if
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`experimentation is necessary, it is undue.
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`
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`MCM, EX2001, pg. 17
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`Case IPR2017-01934
`Patent No. 8,799,468
`[22] I understand there are many factors to be considered when determining
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`whether there is sufficient evidence to support a determination that a disclosure does
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`not satisfy the enablement requirement and whether any necessary experimentation
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`is “undue.” These factors include, but are not limited to:
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`
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`
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`
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`
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`
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`
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`
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`
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`the breadth of the Claims,
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`the nature of the invention,
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`the state of the prior art,
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`the level of one of ordinary skill,
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`the level of predictability in the art,
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`the amount of direction provided by the inventor,
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`the existence of working examples, and
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`the quantity of experimentation needed to make or use the invention
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`based on the content of the disclosure.
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`[23] I also understand that it is improper to conclude that a disclosure is not
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`enabling based on an analysis of only one of the above factors while ignoring one or
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`more of the others. A conclusion of lack of enablement means that, based on the
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`evidence regarding each of the above factors, the specification, at the time the
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`
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`MCM, EX2001, pg. 18
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`Case IPR2017-01934
`Patent No. 8,799,468
`application was filed, would not have taught one skilled in the art how to make
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`and/or use the full scope of the claimed invention without undue experimentation.
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`[24] I further understand that the determination that “undue experimentation”
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`would have been needed to make and use the claimed invention is not a single,
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`simple factual determination. Rather, it is a conclusion reached by weighing all the
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`above noted factual considerations.
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`[25] Furthermore, I understand that to anticipate a patent Claim under 35 U.S.C. §
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`102, a single asserted prior art reference must disclose each and every element of the
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`claimed invention, either explicitly or inherently to a person of ordinary skill in the
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`art. There must be no difference between the claimed invention and the disclosure
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`of the alleged prior art reference as viewed from the perspective of the person of
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`ordinary skill in the art.
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`Anticipation
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`[26] It is my understanding that a patent is anticipated under 35 U.S.C. § 102 if (a)
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`the invention was known or used by others in this country, or patented or described
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`in a printed publication in this or a foreign country, before the invention thereof by
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`the applicant for patent, or (b) the invention was patented or described in a printed
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`publication in this or a foreign country or in public use or on sale in this country,
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`more than one year prior to the date of the application for patent in the United States.
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`
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`MCM, EX2001, pg. 19
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`Case IPR2017-01934
`Patent No. 8,799,468
`The priority of invention goes to the first party to reduce an invention to practice
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`unless the other party can show that it was the first to conceive the invention and
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`that it exercised reasonable diligence in later reducing that invention to practice. It
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`is my understanding that for prior art to be known under § 102(a), it must be publicly
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`accessible and it must be sufficient to enable one with ordinary skill in the art to
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`practice the invention. Public use under 35 U.S.C. § 102(b) includes any use of the
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`claimed invention by a person other than the inventor who is under no limitation,
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`restriction or obligation of frequency.
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`[27] It is my understanding that to establish anticipation under § 102(a) on the basis
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`of a printed publication, a defendant must demonstrate where in the publication each
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`and every limitation of the claimed invention is found. Thus, each and every
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`limitation must be found either expressly or inherently in a single prior art reference.
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`A limitation is inherent if it is necessarily present in the prior art. The identical
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`invention must be shown in as complete detail as is contained in the claim.
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`[28] Furthermore, it is my understanding that a reference must clearly and
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`unequivocally disclose the claimed invention or direct those skilled in the art to the
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`claimed invention without any need for picking, choosing, and combining various
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`disclosures not directly related to each other by the teachings of the cited reference.
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`MCM, EX2001, pg. 20
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`[29] Similarly, it is my understanding that, under § 102(b), a device that is used in
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`public or sold may render a patent invalid on the basis of anticipation only if the
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`device includes every limitation of the later claimed invention.
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`Inherency
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`[30] Also, I understand that in order for a reference to be an anticipating reference,
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`it must describe the claimed subject matter with sufficient clarity to establish that
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`the subject matter existed and that its existence was recognized by persons of
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`ordinary skill in the field of the invention. In addition, I understand that in order to
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`establish that an element of a claim is “inherent” in the disclosure of an asserted prior
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`art reference, the extrinsic evidence (or the evidence outside the four corners of the
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`asserted prior art reference) must make clear that the missing element is the
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`inevitable outcome of the process and/or thing that is explicitly described in the
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`asserted prior art reference and that it would be recognized as necessarily present by
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`persons of ordinary skill in the relevant field. Inherency, I understand inherency may
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`not be established by mere probabilities or possibilities. In other words, the mere
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`fact that a certain thing may result from a given set of circumstances is not sufficient.
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`Obviousness
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`[31] I understand that even though a prior art reference does not fully anticipate a
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`claim of a patent, a claim may, nonetheless, be rendered obvious to one of ordinary
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`MCM, EX2001, pg. 21
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`Patent No. 8,799,468
`skill in the art if the differences between the subject matter set forth in the patent
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`claim and the prior art are such that the subject matter as a whole of the claim would
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`have been obvious at the time the claimed invention was made. In addition, I
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`understand that obviousness is a determination of law based on various underlying
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`determinations of fact. In particular, these underlying factual determinations include
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`(1) the scope and content of the prior art; (2) the level of ordinary skill in the art at
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`the time the claimed invention was made; (3) the differences between the claimed
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`invention and the prior art; and (4) the extent of any secondary conditions of non-
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`obviousness.
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`[32] I understand that secondary considerations are any considerations other than
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`the first three enumerated above that tend to show that the claimed subject matter
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`would not have been obvious. Such evidence may include the following:
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`
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`Commercial success: An invention that is commercially successful is
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`unlikely to have been obvious because it otherwise would have been
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`invented by others earlier.
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`
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`Copying: Copying a solution, rather than inventing a different solution,
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`shows that the patented solution would not have been obvious.
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`
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`MCM, EX2001, pg. 22
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`Long-standing problem or need: A persistent problem or need in the
`
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`art that went unresolved clearly implies that the solution could not have
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`been obvious.
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`
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`Prior failure: The failure of others to come up with a solution shows
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`that the solution could not have been obvious.
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`
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`Licensing: When industry players would rather take a license than try
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`to come up with an alternative solution, those players acknowledge that
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`the solution was not obvious.
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`
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`Praise by others: When those of ordinary skill, aficionados, and the
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`defendants themselves praise the claimed invention on the merits of the
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`invention it could not have been obvious.
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`
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`Teaching away: When those of ordinary skill in the art facing the same
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`problem as the inventor looked in different directions than the inventor,
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`and when following their lead would lead further away from the
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`patented solution, that is a significant indication of non-obviousness.
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`By the same token, when the charge in the “wrong” direction is led by
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`those who are well-resourced, well placed, or of higher-than-average
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`
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`MCM, EX2001, pg. 23
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`Case IPR2017-01934
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`skill, it is an even stronger indication of non-obviousness when their
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`teachings lead away.
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`
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`Unexpected Results or Industry Skepticism: When experts,
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`aficionados, and the defendants themselves expressly or implicitly
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`acknowledge that the claimed technology was unexpected or expressed
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`skepticism in it, that is strong evidence that the improvements could not
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`have been obvious.
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`[33] To ascertain the scope and content of the prior art, it is necessary to first
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`examine the field of the inventor’s endeavor and the particular problem with which
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`the inventor was involved at the time the invention was made. Moreover, a
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`determination of obviousness cannot be based on the hindsight combination of
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`components selectively culled from the prior art to fit the parameters of the claimed
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`invention. Instead, I understand that: in order to render a patent claim invalid as
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`being obvious from a combination of references, there must be some evidence within
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`the prior art as a whole to suggest the desirability, and thus the obviousness, of
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`making the combination in a way that would produce the claimed invention. In
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`addition, I understand that in order to find a patent claim invalid for obviousness,
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`there must be a finding that each element in each limitation of the patent claim is
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`disclosed or taught by the asserted combination of prior art references or elsewhere
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`
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`MCM, EX2001, pg. 24
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`Case IPR2017-01934
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`in the relevant prior art. I further understand that in making a combination, the
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`principle of operation of a reference should not be changed and that the prior art
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`cannot be rendered unsuitable for its intended purpose.
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`[34] I understand that a patent composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently, known in the
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`prior art. This is so because inventions in most, if not all, instances rely upon building
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`blocks long since discovered, and claimed discoveries almost of necessity will be
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`combinations of what, in some sense, is already known. I further understand that
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`most inventions arise from a combination of old elements and each element may
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`often be found in the prior art. However, mere identification in the prior art of each
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`element is insufficient to defeat the patentability of the combined subject matter as
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`a whole. Rather, to establish a case of obviousness based on a combination of
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`elements disclosed