Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`FITBIT, INC.
`Petitioner
`
`v.
`BLACKBIRD TECH LLC
`Patent Owner
`
`––––––––––
`
`Case IPR2017-02012
`
`––––––––––
`
`DECLARATION OF DR. TANZEEM CHOUDHURY IN SUPPORT OF
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,434,212
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`FITBIT, Ex. 1005
`Page 1
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`

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`
`
`I.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
`
`TABLE OF CONTENTS
`
`Introduction and Professional Background ..................................................... 1
`
`A.
`
`B.
`
`C.
`
`Educational Background ....................................................................... 1
`
`Career History ....................................................................................... 2
`
`Publications and Patents ........................................................................ 3
`
`II. Materials and Other Information Considered .................................................. 4
`
`III. Understanding of the Law ............................................................................... 4
`
`A.
`
`Prior Art ................................................................................................. 4
`
`B. Date of Invention and Priority Date ...................................................... 6
`
`C.
`
`Claim Construction ............................................................................... 6
`
`1. The “Broadest Reasonable Interpretation” Standard ....................... 8
`
`2. The Phillips Standard ....................................................................... 9
`
`D.
`
`Patentability of Claims ........................................................................ 10
`
`1. Anticipation .................................................................................... 10
`
`2. Obviousness ................................................................................... 12
`
`IV. Level of Skill of One of Ordinary Skill in the Art ........................................ 17
`
`V.
`
`Technology Background ................................................................................ 19
`
`VI. The ’212 Patent .............................................................................................. 21
`
`A.
`
`B.
`
`Summary of the ’212 Patent. ............................................................... 21
`
`Prosecution History ............................................................................. 24
`
`1. Parent Application (the ’608 Patent) .............................................. 24
`
`2. The ’212 Patent .............................................................................. 25
`
`C.
`
`Challenged Claims .............................................................................. 26
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`VII. Claim Construction ........................................................................................ 28
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`VIII. Analysis of the Asserted Prior Art ................................................................. 30
`
`A.
`
`B.
`
`Amano .................................................................................................. 31
`
`Kato ..................................................................................................... 35
`
`IX. Amano Anticipates Claims 2 and 5 of the ’212 Patent .................................. 39
`
`A.
`
`Claim 2 ................................................................................................ 39
`
`1. “An exercise monitoring device comprising” ................................ 39
`
`2. “a strap for releasably securing the exercise monitoring
`device to a user” ............................................................................. 42
`
`a. Wrist Band Disclosure ............................................................ 42
`b. Generic Band and Wearable Object Variations ..................... 43
`3. “a step counter joined to the strap” ................................................ 44
`
`a. Wrist Band Variation .............................................................. 47
`b. Generic Band and Worn Object Variations............................ 49
`4. “a heart rate monitor joined to the strap” ....................................... 49
`
`a. Wrist Band Variation .............................................................. 50
`b. Generic Band and Worn Object Variations............................ 51
`5. “a data processor” .......................................................................... 53
`
`6. “programmed to calculate a distance traveled by multiplying
`a number of steps counted by the step counter by a stride
`length that varies in accordance with a stride rate” ....................... 54
`
`7. “wherein the stride length is determined with reference to a
`plurality of calibrations that each calculate a stride length as
`a function of a known stride rate” .................................................. 56
`
`B.
`
`Claim 5 ................................................................................................ 58
`
`1. Limitations Identical to Claim 2 .................................................... 58
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`2. “programmed to calculate a distance traveled by multiplying
`the number of steps counted by the step counter by a stride
`length that varies according to the rate at which steps are
`counted” ......................................................................................... 58
`
`3. “and further programmed to derive the stride length from a
`range of stride
`lengths calculated from a range of
`corresponding stride rates calculated from a plurality of
`calibration samples” ....................................................................... 59
`
`X.
`
`Amano Renders Obvious Claims 2 and 5 of the ’212 Patent ........................ 60
`
`A. General Motivations to Combine Amano’s Different Variations ....... 61
`
`B.
`
`C.
`
`D.
`
`“a strap for releasably securing the exercise monitoring device
`to a user” .............................................................................................. 62
`
`“a step counter joined to the strap” ..................................................... 64
`
`“a heart rate monitor joined to the strap” ............................................ 66
`
`XI. Kato in View of Amano Renders Obvious Claim 6 of the ’212 Patent ......... 68
`
`A. Motivations to Combine Kato and Amano .......................................... 68
`
`B.
`
`Claim 6 ................................................................................................ 69
`
`1. “A pedometer comprising” ............................................................ 69
`
`2. “a step counter” .............................................................................. 74
`
`3. “a transmitter in communication with the step counter to
`generate a step count signal corresponding to each step and
`transmit the step count signal” ....................................................... 76
`
`4. “a receiver mountable on a user body portion to receive the
`step count signal transmitted from the user” .................................. 77
`
`5. “a data processor” .......................................................................... 80
`
`6. “programmed to calculate a distance traveled by multiplying
`a number of steps counted by a stride length that varies
`according to a rate at which steps are taken” ................................. 81
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`7. “and further programmed to derive an actual stride length
`from a range of stride lengths calculated from a range of
`corresponding stride rates” ............................................................. 83
`
`XII. Conclusion ..................................................................................................... 85
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`
`I.
`
`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
`
`I, Tanzeem Choudhury, declare as follows:
`
`INTRODUCTION AND PROFESSIONAL BACKGROUND
`1. My name is Tanzeem Choudhury, Ph.D. I have been retained by
`
`Petitioner Fitbit, Inc. (“Petitioner”) to provide my expert opinions regarding U.S.
`
`Patent No. 6,434,212 (“the ’212 Patent”) in connection with Petitioner’s petition
`
`for inter partes review of the ’212 Patent.
`
`2.
`
`I am being compensated for my work in this matter at my standard
`
`hourly rate of $600 for consulting services. My compensation in no way depends
`
`on the outcome of this proceeding.
`
`3.
`
`I describe below my professional background,
`
`including my
`
`educational background, career history, publications and patents, and other
`
`relevant qualifications.
`
` My full curriculum vitae (“CV”) is attached as
`
`Appendix A to this declaration.
`
`A. Educational Background
`4.
`I received my Ph.D
`in Media Arts and Sciences from
`
`the
`
`Massachusetts Institute of Technology (MIT) in February 2004. I previously
`
`received a Master of Science in Media Arts and Science from MIT in September
`
`1999, and received a Bachelor of Science in Electrical Engineering from the
`
`University of Rochester in May 1997.
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`5.
`
`I worked on facial feature tracking and video compression for my
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`
`
`senior thesis as an undergraduate degree. My master’s thesis was on face and facial
`
`expression recognition. My doctor thesis was on a developing wearable device (the
`
`sociometer) to track human behavior and social networks in the physical world.
`
`This work gave rise to the area of Reality Mining and my thesis work was
`
`recognized by MIT Technology Review’s 2008 TR 35 award that select 35 top
`
`innovators under the age of 35.
`
`B. Career History
`6.
`Since July 2011, I have been an Associate Professor for the
`
`Department of Information Science at Cornell University (“Cornell”) in Ithaca,
`
`New York. I direct the People Aware Computing group at Cornell, which
`
`develops wearable and mobile sensing systems for understanding life patterns of
`
`individuals, groups, and societies and to support individuals with physical and
`
`mental illness and shaping the future of technology-assisted wellbeing. As an
`
`Associate Professor, I teach and oversee both graduate and undergraduate students.
`
`I have taught various courses in both computer and information science, including
`
`courses on programming, ubiquitous computing and wearable devices.
`
`7.
`
`In May 2014, I co-founded Health Rhythms Inc. (“HealthRhythms”),
`
`and am currently the company’s Chief Executive Officer. The company is
`
`transforming healthcare by providing real-time mental health monitoring as a
`
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`service. HealthRhythms develops and licenses a smartphone-based behavioral
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`health sensing and trending engine to create a truly personalized assessment of
`
`individuals’ health in real time.
`
`8.
`
`Prior to joining Cornell, I was an Assistant Professor for the
`
`Department of Computer Science at Dartmouth College. I held that position from
`
`April 2008 through June 2011. From September 2003 through January 2008, I was
`
`a Member of Research Staff at Intel in Seattle, Washington, where I led the effort
`
`on human activity recognition using wearable sensors. The foundational work
`
`inspired a lot of the following work in activity recognition. In 2016, I received a
`
`Ubiquitous Computing 10 year impact award for my work in activity monitoring.
`
`After receiving my undergraduate degree from University of Rochester, I served as
`
`a Research Assistant at MIT Media Laboratory from September 1997 through
`
`August 2003, where I developed wearable devices for tracking human behavior
`
`and machine sensing and machine learning techniques for modeling a range of
`
`behaviors in real-world settings. I also worked as a summer intern for Compaq
`
`Computer Corporation from June 1999 through August 1999 and at AT&T Bell
`
`Lab in the summer of 1996.
`
`C.
`9.
`
`Publications and Patents
`
`I have authored or co-authored approximately 90 publications over the
`
`course of my career, including journal and magazine papers and workshop papers
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`and abstracts. I have also given numerous talks related to my research and
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`participated in a number of panels and symposiums. I am also named as an
`
`inventor on several issued patents and patent publications, including patents issued
`
`by the United States Patent and Trademark Office (“USPTO”).
`
`II. MATERIALS AND OTHER INFORMATION CONSIDERED
`10. Sources that I specifically used in the course of writing this
`
`declaration and forming the opinions stated herein are listed in the attached
`
`Appendix B (Appendix of Exhibits).
`
`III. UNDERSTANDING OF THE LAW
`11.
`I am not an attorney and will offer no opinions about the law. I have
`
`been provided by counsel with an understanding of legal principles concerning
`
`U.S. patent law, including claim construction, anticipation, and obviousness. I
`
`have applied these legal principles in forming my opinions.
`
`A.
`12.
`
`Prior Art
`
`It is my understanding that there are several different types of prior
`
`art. It is also my understanding that, in a petition for inter partes review, a
`
`petitioner may assert only patents or printed publications. I understand a claim can
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`be found unpatentable only if a patent or printed publication qualifies as prior art
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`under 35 U.S.C § 102.1
`
`13.
`
`I understand that a patent or printed publication can be prior art under
`
`one or more of the following circumstances:
`
`(cid:120)
`
`The reference is a patent that publicly issued or a printed
`
`publication that was publicly available before the date the
`
`applicant allegedly invented the subject matter claimed in the
`
`challenged patent. 35 U.S.C. § 102(a).
`
`(cid:120)
`
`The reference is a patent that publicly issued or a printed
`
`publication that was publicly available more than one year
`
`before the date the applicant allegedly invented the subject
`
`matter claimed in the challenged patent. 35 U.S.C. § 102(b).
`
`(cid:120)
`
`The reference is a patent that issued from an application filed
`
`in the United States by another more than one year before the
`
`
`1 I have been informed that there are what is known as “pre-AIA” and “post-AIA”
`
`versions of 35 U.S.C. § 102, which refers to the America Invents Act (“AIA”). I
`
`have also been informed that, because the ’212 Patent was filed before the
`
`effective date of the AIA, the pre-AIA version of 35 U.S.C. § 102 applies here.
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`date the applicant allegedly invented the subject matter claimed
`
`in the challenged patent. 35 U.S.C. § 102(e)(2).
`
`14.
`
`I understand that patents and publications that qualify as prior art can
`
`be used in an inter partes review proceeding to cancel claims of a challenged
`
`patent as unpatentable.
`
`B. Date of Invention and Priority Date
`15.
`I understand that patents are entitled to a “priority date,” which is the
`
`date on which the applicant allegedly invented the claimed subject matter. I
`
`understand that a patent is entitled a “constructive” priority date, which is the date
`
`on which the (1) application for the patent was filed or (2) the date on which an
`
`earlier-filed patent application was filed if the applicant properly claimed the
`
`benefit of priority to that earlier-filed patent application. I also understand that a
`
`patent applicant is permitted to claim an earlier “actual” priority date based on
`
`conception and diligent reduction to practice.
`
`C. Claim Construction
`16.
`I understanding that a patent may include independent claims and
`
`dependent claims. It is my understanding that an independent claim stands alone
`
`and includes only the elements that it recites. It is my further understanding that a
`
`dependent claim can depend from an independent claim or another dependent
`
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`claim, and includes all limitations that it recites in addition to all of the limitations
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`recited in the claim (or claims) from which it depends.
`
`17.
`
`I understand that a term in the preamble of a claim may be construed
`
`as a claim limitation if the term gives life and meaning to the claim. I further
`
`understand that a term in a preamble may be construed as a claim limitation if, in
`
`light of the specification, construing the term as a limitation is required to limit the
`
`scope of the claim to what the inventors allegedly invented. As with terms in the
`
`claim body, however, I understand that, when an applicant defines a structurally
`
`complete invention in the claim body and uses the preamble only to state the
`
`intended result or use of the invention, the preamble is not a claim limitation. I
`
`further understand that the preamble may limit the claim if the applicant relied on
`
`language in the preamble to overcome a rejection during prosecution.
`
`18.
`
`It is my understanding that, as a general matter, limitations from the
`
`specification should not be imported into the claims. It is my understanding,
`
`however, that a claim term may be given a meaning inconsistent with the ordinary
`
`and customary meaning of the term only if the applicant (1) acts as his or her own
`
`lexicographer, or (2) disavows or disclaims the full scope of the claim term in the
`
`specification or the prosecution history.
`
`19.
`
`It is my understanding that an applicant acts as his or her own
`
`lexicographer by (1) clearly setting forth in the specification a definition for a
`
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`claim term that is different from its ordinary and customary meaning and
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`(2) clearly expressing an intent to redefine the term. It is my understanding that an
`
`applicant’s disavowal or disclaimer of the full scope of a claim term must be clear
`
`and unmistakable.
`
`20.
`
`I have been informed that the Patent Trial and Appeal Board
`
`(“PTAB”) utilizes two different claim constructions standards, depending on the
`
`expiration date of the challenged patents. It is my understanding that, in analyzing
`
`unexpired patents, the PTAB applies what is known as the “broadest reasonable
`
`interpretation” standard. It is my further understanding that, in analyzing expired
`
`patents, the PTAB applies what is known as the Phillips standard, which is the
`
`standard used in district court litigation. It is my understanding that the broadest
`
`reasonable interpretation of a claim term may be the same or broader than the
`
`construction of a term under the Phillips standard, but it cannot be narrower.
`
`21.
`
`I have been informed by counsel that the ’212 Patent has not yet
`
`expired, but that it will likely expire before a final determination is issued in these
`
`proceedings. Accordingly, I have been informed by counsel that the PTAB may
`
`apply either the “broadest reasonable interpretation” standard or the Phillips
`
`standard.
`
`1.
`
`The “Broadest Reasonable Interpretation” Standard
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`22. Under the “broadest reasonable interpretation” standard, it is my
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`
`
`understanding that claims are given their broadest reasonable interpretation from
`
`the perspective of one of ordinary skill in the art. I understand that the broadest
`
`reasonable interpretation does not mean the broadest possible interpretation.
`
`23.
`
`I further understand that the meaning given to a claim term must
`
`generally be consistent with the ordinary and customary meaning of the term, and
`
`must be consistent with the use of the claim term in the specification and drawings.
`
`Further, it is my understanding that the broadest reasonable interpretation of the
`
`claims must be consistent with the interpretation that those skilled in the art would
`
`reach. Therefore, it is my understanding that the focus of the inquiry regarding the
`
`meaning of a claim should focus on what would be reasonable from the perspective
`
`of one of ordinary skill in the art.
`
`2.
`
`The Phillips Standard
`
`24. Under the Phillips standard, it is my understanding that claim terms
`
`are given the meaning they would have had to a person of ordinary skill in the art
`
`at the time of the alleged invention, in view of the specification and file history. In
`
`applying the Phillips standard, it is my understanding that one should look at
`
`(1) the words of the claims themselves, (2) the remainder of the specification,
`
`(3) the prosecution history, and (4) extrinsic evidence concerning relevant
`
`scientific principles, the meaning of technical terms, and the state of the art. I
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`further understand that each of these sources of meaning should be afforded a
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`decreasing amount of weight in the order listed, with extrinsic evidence being
`
`afforded the least amount of weight.
`
`D.
`25.
`
`Patentability of Claims
`
`I understand that a claims may be cancelled as unpatentable in inter
`
`partes review proceedings only if the is anticipated (35 U.S.C. § 102) or obvious
`
`(35 U.S.C. § 103).
`
`1.
`
`Anticipation
`
`26.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the properly construed claim language must be compared to the prior art
`
`on a limitation-by-limitation basis.
`
`27.
`
`I understand that a prior art reference “anticipates” a challenged claim
`
`if all elements of the claim are disclosed in a single embodiment of that prior art
`
`reference, either explicitly or inherently, such that it enables a person of ordinary
`
`skill in the art to make the alleged invention without undue experimentation. I
`
`understand that a claim element is inherently disclosed if a person of ordinary skill
`
`in the art would recognize that the missing limitation is necessarily or implicitly
`
`present in the prior art reference.
`
`28.
`
`It is my understanding that a broader genus anticipates a narrower
`
`species in certain circumstances. For example, it is my understanding that a
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`broader genus anticipates a narrower species if there is nothing critical about the
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`Petition for Inter Partes Review of
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`narrower species or if there is not a considerable difference between the narrower
`
`species and the broader genus.
`
`29.
`
`It is also my understanding that, even if a prior art reference does not
`
`expressly spell out all the limitations arranged or combined as in a claim, that prior
`
`art reference still anticipates if a person of ordinary skill in the art reading the prior
`
`art reference would at once envisage the claimed arrangement or combination.
`
`30.
`
`I understand that, although anticipation cannot be established through
`
`a combination of
`
`references or embodiments, additional
`
`references or
`
`embodiments may be used to interpret an allegedly reference by, for example,
`
`indicating what the anticipating reference would have meant to a person of
`
`ordinary skill in the art at the time of the alleged invention. For a patent claim to
`
`be anticipated, it is my understanding that the other references must make clear
`
`that the missing descriptive matter in the claim is necessarily or implicitly present
`
`in the allegedly anticipating reference. I also understand that a person of ordinary
`
`skill in the art may recognize the inherent features disclosed by an anticipating
`
`reference even if the prior art does not recognize the disclosure of said inherent
`
`features.
`
`31.
`
`It is my understanding that, in inter partes review proceedings,
`
`anticipation must be shown by a preponderance of the evidence.
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`2.
`
`Obviousness
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`32.
`
`It is my understanding that, even if a claim is not anticipated by the
`
`prior art, it is still unpatentable if the differences between the claimed subject
`
`matter and the prior art are such that the subject matter as a whole would have been
`
`obvious to a person of ordinary skill in the art at the time of the alleged invention.
`
`It is my understanding that a reference need not be enabling to render a patent
`
`claim unpatentable as obvious. It is my further understanding that the obviousness
`
`analysis requires a comparison of the properly construed claim language to the
`
`prior art on an element-by-element basis.
`
`33.
`
`I understand that a person of ordinary skill in the art provides a
`
`reference point from which the prior art and claimed invention should be viewed.
`
`This reference point prevents a person of ordinary skill in the art from using one’s
`
`insight or hindsight in deciding whether a claim is obvious.
`
`34.
`
`I also understand that analyzing whether a claim is obvious involves
`
`considering various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the claim, (3) the level of ordinary
`
`skill in the art, and (4) secondary considerations, to the extent they exist.
`
`35.
`
`It is my understanding that secondary indicia of non-obviousness may
`
`include (1) a long felt but unmet need in the prior art that was satisfied by the
`
`alleged invention; (2) commercial success of processes covered by the claim as a
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`result of the merits of the alleged invention, rather than the result of design needs,
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`Petition for Inter Partes Review of
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`market pressure, advertising, or similar activities; (3) unexpected results achieved
`
`by the alleged invention; (4) praise of the invention by others skilled in the art;
`
`(5) the taking of licenses under the patent by others; (6) whether others had tried
`
`and failed to make the invention; (7) whether persons of ordinary skill in the art
`
`expressed surprise or disbelief regarding the alleged invention; (8) whether the
`
`alleged inventor proceeded contrary to accepted wisdom; and (9) deliberate
`
`copying of the invention. I also understand that there must be a relationship
`
`between any such secondary indicia and the alleged invention. I further understand
`
`that
`
`independent contemporaneous
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`invention by others
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`is a secondary
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`consideration supporting an obvious determination.
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`36.
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`It is my understanding that an obviousness determination can be based
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`on a combination of multiple prior art references, or a combination of different
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`embodiments within the same prior art reference. It is also my understanding that
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`a claim can be obvious in light of a single prior art reference or single embodiment,
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`without the need to combine references or embodiments, if the elements of the
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`claim that are not found in the reference can be supplied by the knowledge or
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`common sense of one of ordinary skill in the art.
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`37.
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`I understand that the prior art references or embodiments may
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`themselves provide a suggestion, motivation, or reason to combine, but that at
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`other times the nexus linking two or more prior art references or embodiments is
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`Petition for Inter Partes Review of
`U.S. Patent No. 6,434,212
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`simple common sense. I further understand that the obviousness analysis
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`recognizes that market demand, rather than scientific literature, often drives
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`innovation, and that a motivation to combine references may be supplied by the
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`direction of the marketplace.
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`38.
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`I understand that if a technique has been used to improve one device,
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`and a person of ordinary skill in the art would have recognized that it would
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`improve similar devices in the same way, using the technique was obvious unless
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`its actual application was beyond his or her skill.
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`39.
`
`I also understand that practical and common sense considerations
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`should guide a proper obviousness analysis, because familiar items may have
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`obvious uses beyond their primary purposes. I further understand that a person of
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`ordinary skill in the art looking to overcome a problem would often have been able
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`to fit the teachings of one or more publications together like pieces of a puzzle,
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`although the teachings need not be like puzzle pieces that must fit perfectly
`
`together. I understand that the obviousness analysis therefore takes into account
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`the differences and creative steps that a person of ordinary skill in the art would
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`employ under the circumstances. I understand that the relevant question to
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`consider is whether prior art techniques are interoperable with respect to one
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`another, such that a person of ordinary skill in the art would view them as a design
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`choice, or whether a person of ordinary skill in the art could apply prior art
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`U.S. Patent No. 6,434,212
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`techniques into a new combined system.
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`40.
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`I understand that a particular combination may be proven obvious by
`
`showing that it was obvious to try the combination. For example, when there is a
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`design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill has good reason to
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`pursue the known options within his or her technical grasp because the result is
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`likely the product not of innovation but of ordinary skill and common sense.
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`41.
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`I understand that the combination of familiar elements according to
`
`known methods may be proven obvious when it does no more than yield
`
`predictable results. When a work is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of it, either in the same
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`field or a different one. If a person of ordinary skill in the art can implement a
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`predictable variation, obviousness likely bars its patentability.
`
`42.
`
`It is also my understanding that there are additional considerations
`
`that may be used as further guidance as to when a claim is obvious, including the
`
`following:
`
`(cid:120)
`
`the alleged invention is a simple combination of prior art
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`elements according to known methods to yield predictable
`
`results;
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`(cid:120)
`
`(cid:120)
`
`(cid:120)
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`the alleged invention is a simple substitution of one element for
`
`another to obtain predictable results;
`
`the alleged invention uses known techniques to improve similar
`
`devices or methods in the same way;
`
`the alleged invention applies a known technique to a known
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`device or method that is ready for improvement to yield
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`predictable results;
`
`(cid:120)
`
`the alleged invention would have been ‘obvious to try,’
`
`choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success;
`
`(cid:120)
`
`there is known work in one field of endeavor that may prompt
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`variations of it for use in either the same field or a different one
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`based on design incentives or other market forces if the
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`variation would have been predictable to one of ordinary skill
`
`in the art;
`
`(cid:120)
`
`there existed at the time of invention a known problem for
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`which there was an obvious solution encompassed by the
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`alleged claim; and
`
`(cid:120)
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`there is some teaching, suggestion, or motivation in the prior art
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`that would have led one of ordinary skill in the art to modify the
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`prior art reference or to combine prior art reference teachings to
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`arrive at the alleged invention.
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`43.
`
`It is my further understanding that a proper obviousness analysis