UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION AND MICROSOFT MOBILE INC.,
`Petitioner,
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`v.
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`KONINKLIJKE PHILIPS N.V.,
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`Patent Owner.
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`DECLARATION OF LOREN TERVEEN IN SUPPORT OF
`PETITIONS FOR INTER PARTES REVIEW
`OF U.S. PATENT NOS. 6,690,387 B2 AND 7,184,064 B2
`
`
`
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`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`QUALIFICATIONS AND EXPERIENCE .................................................... 2
`A.
`Education and Experience .................................................................... 2
`INFORMATION CONSIDERED .................................................................. 4
`III.
`IV. STATEMENT OF LEGAL PRINCIPLES ..................................................... 7
`A.
`Claim Construction............................................................................... 7
`B.
`Priority Date ......................................................................................... 7
`C.
`Invalidity Based on Prior Art ............................................................... 8
`1.
`Anticipation ................................................................................ 8
`2.
`Obviousness ............................................................................. 10
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 17
`V.
`VI. GENERAL BACKGROUND OF THE RELEVANT
`TECHNOLOGY ........................................................................................... 18
`A.
`The Challenged Patents’ Priority Date ............................................... 18
`B.
`State of the Art from the Perspective of Ordinary Skill ..................... 19
`VII. THE CHALLENGED PATENTS ................................................................ 23
`A.
`Background and General Description of the Challenged Patents ...... 23
`B.
`The Prosecution History ..................................................................... 28
`C.
`Claim Construction............................................................................. 28
`1.
`“Stopping Motion Program Instructions” ................................ 31
`2.
`“Timer Means” ......................................................................... 32
`VIII. OVERVIEW OF THE PRIOR ART ............................................................ 34
`A.
`Identification and Summary of the Prior Art ..................................... 34
`1.
`Korhonen .................................................................................. 34
`2.
`Anwar ....................................................................................... 36
`3.
`Narutaka ................................................................................... 37
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`4. Westerman ............................................................................... 38
`5.
`Astala........................................................................................ 39
`IX. UNPATENTABILITY OF THE ’387 PATENT CLAIMS ......................... 40
`A.
`Claims 1, 5, 6, 7, and 9 are Obvious Over the Combinations of
`Anwar and Narutaka and Anwar, Narutaka, and Westerman. ........... 41
`1.
`Independent Claim 1 ................................................................ 45
`2.
`Dependent Claim 5................................................................... 74
`3.
`Dependent Claim 6................................................................... 75
`4.
`Independent Claim 7 ................................................................ 76
`5.
`Independent Claim 9 ................................................................ 80
`Claims 2, 3, 8, 11, and 12 are Obvious Over the Combinations
`of Anwar, Narutaka, and Astala and Anwar, Narutaka,
`Westerman, and Astala. ...................................................................... 84
`1.
`Dependent Claim 2................................................................... 84
`2.
`Dependent Claim 3................................................................... 92
`3.
`Independent Claim 8 ................................................................ 94
`4.
`Dependent Claim 11 ................................................................ 99
`5.
`Dependent Claim 12 ................................................................ 99
`Claims 4 and 10 are Obvious Over Anwar and Narutaka and
`Anwar, Narutaka, and Westerman in Further Combination with
`Korhonen. ......................................................................................... 100
`1.
`Dependent Claim 4................................................................. 100
`2.
`Dependent Claim 10 .............................................................. 102
`Claims 1, 4, 5, 6, 7, 9, and 10 Are Obvious Over Korhonen,
`Korhonen and Narutaka, Korhonen and Westerman, and
`Korhonen, Narutaka, and Westerman. ............................................. 103
`1.
`Independent Claim 1 .............................................................. 107
`2.
`Dependent Claim 4................................................................. 127
`
`D.
`
`B.
`
`C.
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`E.
`
`Dependent Claim 5................................................................. 128
`3.
`Dependent Claim 6................................................................. 128
`4.
`Independent Claim 7 .............................................................. 129
`5.
`Independent Claim 9 .............................................................. 132
`6.
`Dependent Claim 10 .............................................................. 134
`7.
`Claims 2, 3, 8, 11 and 12 are Obvious Over Korhonen,
`Korhonen and Narutaka, Korhonen and Westerman, and
`Korhonen, Narutaka, and Westerman in Further Combination
`with Astala. ....................................................................................... 135
`1.
`Dependent Claim 2................................................................. 135
`2.
`Dependent Claim 3................................................................. 147
`3.
`Independent Claim 8 .............................................................. 151
`4.
`Dependent Claim 11 .............................................................. 154
`5.
`Dependent Claim 12 .............................................................. 154
`X. UNPATENTABILITY OF THE ’064 PATENT CLAIMS ....................... 154
`A.
`Claims 1, 5, 6, and 7 are Obvious Over the Combinations of
`Anwar and Narutaka and Anwar, Narutaka, and Westerman. ......... 157
`1.
`Independent Claim 1 .............................................................. 158
`2.
`Dependent Claim 5................................................................. 162
`3.
`Dependent Claim 6................................................................. 163
`4.
`Independent Claim 7 .............................................................. 163
`Claims 2, 3, and 8 are Obvious Over the Combinations of
`Anwar, Narutaka, and Astala and Anwar, Narutaka,
`Westerman, and Astala. .................................................................... 167
`1.
`Dependent Claim 2................................................................. 168
`2.
`Dependent Claim 3................................................................. 168
`3.
`Independent Claim 8 .............................................................. 169
`
`B.
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`C.
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`E.
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`D.
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`Claims 4 and 9 are Obvious Over Anwar and Narutaka and
`Anwar, Narutaka, and Westerman in Further Combination with
`Korhonen. ......................................................................................... 175
`1.
`Dependent Claim 4................................................................. 175
`2.
`Dependent Claim 9................................................................. 176
`Claims 1, 4, 5, 6, 7, and 9 Are Obvious Over Korhonen,
`Korhonen and Narutaka, Korhonen and Westerman, and
`Korhonen, Narutaka, and Westerman .............................................. 176
`1.
`Independent Claim 1 .............................................................. 177
`2.
`Dependent Claim 4................................................................. 180
`3.
`Dependent Claim 5................................................................. 180
`4.
`Dependent Claim 6................................................................. 180
`5.
`Independent Claim 7 .............................................................. 181
`6.
`Dependent Claim 9................................................................. 184
`Claims 2, 3, and 8 are Obvious Over Korhonen, Korhonen and
`Narutaka, Korhonen and Westerman, and Korhonen, Narutaka,
`and Westerman in Further Combination with Astala. ...................... 184
`1.
`Dependent Claim 2................................................................. 185
`2.
`Dependent Claim 3................................................................. 185
`3.
`Independent Claim 8 .............................................................. 186
`XI. CONCLUSION ........................................................................................... 190
`
`
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`Appendix
`A
`B
`C
`D
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`E
`
`F
`
`G
`
`H
`
`I
`J
`K
`
`L
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`
`LIST OF APPENDICES
`
`Description
`Listing of ’387 Patent Claims
`Listing of ’064 Patent Claims
`Curriculum Vitae of Loren Terveen, Ph.D.
`B. Shneiderman, “Direct Manipulation: A Step Beyond Pro-
`gramming Languages,” IEEE, Computer vol.16, iss. 8 at 57-
`69 (August 1983).
`E. Hutchins, J. Hollan, and D. Norman, “Direct Manipulation
`Interfaces,” Human-Computer Interaction vol. 1.4, 311-338
`(1985).
`Excerpt from J. Nielsen, USABILITY ENGINEERING, Academic
`Press, 1993.
`J. Foley, V. Wallace, and P. Chan, “The human factors of
`computer graphics interaction techniques,” IEEE computer
`Graphics and Applications vol.4.11, pp. 13-48 (1984).
`Excerpt from B. Shneiderman and C. Plaisant, DESIGNING THE
`USER INTERFACE, Addison Wesley (5th ed. 2010).
`U.S. Patent No. 6,724,403 (“Santoro”)
`U.S. Patent No. 5,241,303 (“Register”)
`Excerpt from The Authoritative Dictionary of IEEE Standards
`Terms, Seventh Edition, 2000
`Excerpt from Webster’s New World Computer Dictionary,
`Ninth Edition, 2001
`
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`I.
`
`INTRODUCTION
`
`1.
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`I, Loren Terveen, have been retained by Petitioners Microsoft Corpo-
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`ration and Microsoft Mobile Inc. (“Microsoft”) to investigate and opine on certain
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`issues relating to United States Patent Nos. 6,690,387 (“the ’387 patent”) and
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`5
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`7,184,064 (“the ’064 patent”) (collectively, the “Challenged Patents”) in Mi-
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`crosoft’s Petitions for Inter Partes Review of those patents. Each Petition requests
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`that the Patent Trial and Appeal Board (“PTAB” or “Board”) review and cancel all
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`claims of the underlying challenged patent.1
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`2.
`
`I am being compensated for my work on this matter by Microsoft for
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`10
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`consulting services including time spent testifying at any hearing that may be held.
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`I am also reimbursed for reasonable and customary expenses associated with my
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`work in this case. I receive no other forms of compensation related to this case.
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`My compensation does not depend on the outcome of this inter partes review or
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`the co-pending district court litigation, and I have no other financial interest in this
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`15
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`inter partes review.
`
`1 Charts listing the claims of the ’387 patent and the ’064 patent, numbered
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`with the conventions used in this Declaration and the accompanying Petitions, are
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`attached to this Declaration as Appendices A and B, respectively.
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`3.
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`I understand that the ’387 and ’064 patents have been assigned to
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`Koninklijke Philips Electronics N.V.
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`4.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`5
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`have not yet been taken.
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`II. QUALIFICATIONS AND EXPERIENCE
`I have summarized in this section my educational background, career
`5.
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`10
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`history, publications, and other relevant qualifications. My full curriculum vitae is
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`attached as Appendix C to this report.
`
`A. Education and Experience
`I received a B.A. in Computer Science, Mathematics, and History
`6.
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`from the University of South Dakota in 1984, a M.S. in Computer Science from the
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`15
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`University of Texas in 1988, and a Ph.D. from the University of Texas in Comput-
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`er Science in 1991.
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`7.
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`I am a member of the Association for Computing Machinery (ACM),
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`the oldest, largest, and most prestigious computing society in the world. I am the
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`President of ACM’s Special Interest Group on Computer-Human Interaction, one
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`20
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`of its largest and most active special interest groups. I also am a member of the
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`ACM Council, the highest governing body of the ACM. I received the ACM Dis-
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`tinguished Scientist Award in 2009.
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`8. My research and teaching focus on human-computer interaction, user
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`interface design, and social computing. I have several decades of experience in
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`5
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`these specialties of computer science in both industry and academia. I worked for
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`AT&T Laboratories from 1991 through 2002, during which time I conducted re-
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`search and developed systems that solved problems in software engineering, web
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`information seeking and organization, and recommender systems. In all my re-
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`search, I designed, implemented, and tested graphical user interfaces, including on
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`10
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`mobile devices.
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`9.
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`I have been employed full-time as a professor at the University of
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`Minnesota since 2002; my current title is Distinguished McKnight University Pro-
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`fessor. I teach classes in computer science, human-computer interaction and social
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`computing, and have conducted, supervised, and published research in the field.
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`15
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`My research has been published in numerous journal and conference papers, as
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`well as in a book I co-authored entitled “Foundational Issues in Artificial Intelli-
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`gence and Cognitive Science: Impasse and Solution.” I have served on the editorial
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`board of ACM’s Transactions on Human-Computer Interaction and the Communi-
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`cations of the ACM, and have served as a reviewer for numerous journals, includ-
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`20
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`ing ACM Computing Surveys, IEEE Transactions on Data and Knowledge Engi-
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`neering, the International Journal of Human-Computer Studies, and the Journal of
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`Computer-Supported Cooperative Work.
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`10.
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`I am a listed inventor on nine patents, including those related to the
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`computer graphical environment (e.g., U.S. Patent Numbers 5,680,530, 5,806,060,
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`5
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`5,809,492, and 6,256,648).
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`11.
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`I have consulted on over 10 intellectual property cases that have dealt
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`with topics in user interface design, recommender systems, web information sys-
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`tems, and set top boxes. During these cases, I have testified before judges, been
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`deposed, and written multiple expert reports.
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`10
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`III.
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`INFORMATION CONSIDERED
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`12.
`
`In formulating my opinions in this matter, I have reviewed the follow-
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`ing materials:
`
`Exhibit
`1001
`1002
`1003
`1005
`1006
`
`1007
`
`1008
`1009
`
`Description
`U.S. Patent No. 6,690,387 (“the ’387 patent”)
`U.S. Patent No. 7,184,064 (“the ’064 patent”)
`Claims of ’387 and ’064 Patents
`U.S. Patent No. 7,450,114 (“Anwar”)
`Japanese Patent Application Publication No. H06-309138
`(“Narutaka”)
`Japanese Patent Application Publication No. S63-206827
`(“Westerman”)
`U.S. Patent No. 6,943,778 (“Astala”)
`European Patent Application No. 880,091A2 (“Korhonen”)
`
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`Exhibit
`1010
`
`1011
`
`1012
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`1013
`
`1014
`
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`1023
`
`1024
`1025
`
`Description
`Ivan E. Sutherland, “Sketchpad, a Man–Machine Graphical
`Communication System,” Ph.D. Thesis, Massachusetts Insti-
`tute of Technology, January 1963, reprinted in Technical Re-
`port No. 574 (Univ. of Cambridge Computer Laboratory
`2003)
`E.A. Johnson, “Touch Displays: A programmed Man-Machine
`Interface, Ergonomics,” 10:2 pp.271-77 (1967)
`Andrew Sears and Ben Schneiderman, “High Precision
`Touchscreens: Design Strategies and Comparisons with a
`Mouse,” Int. J. Man-Machine Studies vol. 34, pp.593-613
`(Academic Press Ltd. 1991)
`Margaret Minsky, “Manipulating Simulated Objects with Re-
`al-world Gestures using a Force and Position Sensitive
`Screen,” Computer Graphics Vol. 18, No. 3, July 1984 (“Min-
`sky”)
`Japanese Patent Application Publication No. S63-206827
`(“Asami”)
`U.S. Patent No. 6,459,424 (“Resman”)
`U.S. Patent No. 6,278,443 (“Amro”)
`U.S. Patent No. 6,707,449 (“Hinckley”)
`U.S. Patent No. 5,880,411 (“Gillespie”)
`U.S. Patent No. 6,587,093 (“Shaw”)
`Excerpts from File History of ’387 Patent
`Excerpts from File History of ’064 Patent
`Excerpts from Patent Owner’s Opening Claim Construction
`Brief, Koninklijke Philips N.V. v. Acer Inc., No. 1:15-cv-1170-
`GMS (D. Del. Mar. 3, 2017), Dkt. 140
`Excerpts from Claim Construction Order, Koninklijke Philips
`N.V. v. Acer Inc., No. 1:15-cv-1170-GMS (D. Del. July 11,
`2017), Dkt. 241
`U.S. Pat. No. 6,310,610 (“Beaton”)
`U.S. Pat. No. 6,073,036 (“Heikkenen”)
`
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`Exhibit
`1026
`
`Description
`Excerpts from Infringement Contentions, Koninklijke Philips
`N.V. v. Acer Inc., No. 1:15-cv-1170-GMS (D.Del. Dec. 9,
`2016)
`
`
`
`13.
`
`I have reviewed the Petitions and the prior art, documents, patents,
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`and publications listed in the Appendices and the body of this Declaration. I have
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`also reviewed the Petitions and expert declaration filed in Cases IPR2017-00409
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`5
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`and IPR2017-00408.
`
`14.
`
`I also refer to my own expertise and experience as reflected in my cur-
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`riculum vitae, which is attached as Appendix C to this Declaration.
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`15.
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`In connection with live testimony in this proceeding, should I be
`
`asked to provide it, I may use as exhibits various documents that refer to or relate
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`10
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`to the matters contained within this Declaration, or which are derived from the re-
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`sults and analyses discussed in this Declaration. Additionally, I may create or su-
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`pervise the creation of certain demonstrative exhibits to assist me in testifying.
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`16.
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`I am prepared to use any or all of the above-referenced documents,
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`and supplemental charts, models, and other representations based on those docu-
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`15
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`ments, to support my live testimony in this proceeding regarding my opinions cov-
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`ering the Challenged Patents. If called upon to do so, I will offer live testimony
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`regarding the opinions in this Declaration.
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`IV. STATEMENT OF LEGAL PRINCIPLES
`I am not an attorney and offer no legal opinions. For purposes of this
`17.
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`report, I have been informed about certain aspects of the law for my analyses and
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`opinions. I set forth my understanding of the law regarding patent invalidity below.
`
`A. Claim Construction
`18. Microsoft’s counsel has advised me that, when construing claim terms
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`of an unexpired patent, a claim subject to inter partes review receives the “broad-
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`est reasonable interpretation (BRI) in light of the specification of the patent in
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`which it appears.”
`
`B.
`19.
`
`Priority Date
`
`I have been informed and understand that a U.S. patent application
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`5
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`10
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`may claim the benefit of the filing date of an earlier foreign patent application only
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`if two requirements are met. First, the U.S. patent application must have been filed
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`within one year of the foreign parent application to which it claims priority. Sec-
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`15
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`ond, the foreign patent application must disclose each limitation of the claimed in-
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`vention of the U.S. patent application. If one or both requirements are not met, the
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`U.S. patent application may not properly claim priority back to the filing date of
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`the earlier filed foreign patent application.
`
`20.
`
`I have been informed and understand that priority is determined on a
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`20
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`claim-by-claim basis. In other words, certain claims of a U.S. patent may be enti-
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`tled to claim priority to a foreign patent application, while other claims of the same
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`U.S. patent may not be entitled to claim priority to the foreign patent application.
`
`21.
`
`I have been further informed that (for pre-AIA patent applications
`
`filed prior to March 16, 2013) a patent is invalid if it is described in a printed pub-
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`5
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`lication in any country more than one year before the date of the actual filing of the
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`application in the United States, regardless of the date the applicant conceived of
`
`the claimed invention. I also understand that the patent laws were recently amend-
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`ed by the America Invents Act (AIA), but that earlier statutory requirements still
`
`apply for “pre-AIA” patents. I am informed that the patents asserted in this case
`
`10
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`are “pre-AIA,” and that the “pre-AIA” requirements are controlling. Therefore,
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`unless otherwise stated, my understanding of the law regarding patent invalidity as
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`set forth in this Declaration relates to the pre-AIA requirements.
`
`C.
`
`22.
`
`Invalidity Based on Prior Art
`1.
`It is my understanding that a claim directed to subject matter that is
`
`Anticipation
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`15
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`not new or novel based on a single prior art reference is said to be “anticipated by
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`the prior art” under 35 U.S.C. § 102.
`
`23.
`
`It is my understanding that in order for a claim to be invalid as antici-
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`pated by the prior art, every element of that claim must be found in a single prior
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`20
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`art reference or system arranged as in the claim. It is my further understanding that
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`for anticipation, each element of a claim must be found explicitly or inherently in
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`that single prior art reference. In other words, it is my understanding that in deter-
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`mining whether a single prior art reference anticipates a patent claim, one should
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`take into consideration not only what is expressly disclosed in that item, but also
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`5
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`what inherently occurred as a natural result of the practice of the system or method
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`disclosed in that item.
`
`24.
`
`It is my understanding that to establish such “inherency,” the evidence
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`must make clear that the missing descriptive matter is necessarily present in the
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`prior art and that it would be so recognized by persons of ordinary skill in the art.
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`10
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`25.
`
`I have been informed and understand that there are several ways that a
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`patent claim may be anticipated. The ones that are relevant to this declaration are
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`summarized below.
`
`• One way to anticipate a patent claim requires a prior art reference that was ei-
`
`ther known or used by someone other than the patent applicant in the U.S., or
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`15
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`patented or described in a printed publication in the U.S. or a foreign country,
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`before the alleged invention by the patent applicant of the subject matter recited
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`in the claim.
`
`• Another way to anticipate a patent claim requires a prior art reference that was
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`either patented or described in a printed publication in the U.S. or a foreign
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`country, or was in public use or on sale in the U.S., more than one year prior to
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`the U.S. patent application filing date.
`
`• Another way to anticipate a patent claim requires a prior art reference that was
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`application for a patent in the U.S., which has since been published, where the
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`5
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`application was filed before the priority date of the relevant patent claim; or a
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`prior art reference that is a patent granted on an application which was filed in
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`the U.S. before the priority date of the relevant patent claim.
`
`2. Obviousness
`I am informed and understand that a patent cannot be properly granted
`
`26.
`
`10
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`for subject matter that would have been obvious to a person of ordinary skill in the
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`art at the time of the alleged invention, and that a patent claim directed to such ob-
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`vious subject matter is invalid under 35 U.S.C. § 103. It is also my understanding
`
`that in assessing the obviousness of claimed subject matter, one should evaluate
`
`obviousness in light of the prior art from the perspective of a person having ordi-
`
`15
`
`nary skill in the art at the time the alleged invention was made (and not from the
`
`perspective of either a layman or a genius in that art). It is my further understand-
`
`ing that the question of obviousness is to be determined based on:
`
`• The scope and content of the prior art;
`
`• The difference or differences between the subject matter of the claim and the
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`20
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`prior art (whereby in assessing the possibility of obviousness one should con-
`
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`sider the manner in which a patentee and/or a Court has construed the scope of
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`a claim);
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`• The level of ordinary skill in the art at the time of the alleged invention of the
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`subject matter of the claim; and
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`5
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`• Any relevant objective factors (the “secondary indicia”)2 indicating nonobvi-
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`ousness, including evidence of any of the following: commercial success of the
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`products or methods covered by the patent claims; a long-felt need for the al-
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`leged invention; failed attempts by others to make the alleged invention; copy-
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`ing of the alleged invention by others in the field; unexpected results achieved
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`10
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`by the alleged invention; praise of the alleged invention by the alleged infringer
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`or others in the field; the taking of licenses under the patent by others and the
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`nature of those licenses; expressions of surprise by experts and those skilled in
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`the art at the subject matter of the claim; and whether the patentee proceeded
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`contrary to accepted wisdom of the prior art.
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`2 I am not currently aware of any evidence regarding secondary indicia of
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`non-obviousness related to the claims of the Challenged Patents. Should Patent
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`Owner attempt to present any alleged evidence of secondary indicia of nonobvi-
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`ousness, however, I reserve the right to opine on any such alleged evidence.
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`• Any relevant objective factors (the “secondary indicia”) indicating obviousness:
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`independent invention of the claimed invention by others before or at about the
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`same time as the named inventor thought of it; and other evidence tending to
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`show obviousness.
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`5
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`• I understand that for objective evidence of secondary indicia to be accorded
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`substantial weight, its proponent must establish a nexus between the evidence
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`and the merits of the claimed invention. I also understand that, where the of-
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`fered secondary indicia actually results from something other than what is both
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`claimed and novel in the patent claim, there is no nexus to the merits of the
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`10
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`claimed invention.
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`27.
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`It is my understanding that to determine whether it would have been
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`obvious to combine known elements in a manner claimed in a patent, one may
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`consider such things as the interrelated teachings of multiple patents, the effects of
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`demands known to the design community or present in the marketplace, and the
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`15
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`background knowledge of one of ordinary skill in the art.
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`28.
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`It is further my understanding that determining obviousness is expan-
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`sive and flexible. That is, granting patent prosecution to advances that would oc-
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`cur in the ordinary course without real innovation impedes progress and may, in
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`the case of patents combining previously known elements, deprive prior inventions
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`20
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`of their value or utility. I also understand that there is no requirement for an obvi-
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`ousness analysis to find precise teachings that are directed to specific subject mat-
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`ter of a claim; rather, the common sense, inferences, and creative steps that a per-
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`son of ordinary skill in the art would employ should be taken into account. An ob-
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`viousness analysis therefore does not require rigid rules that ignore common sense.
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`29.
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`It is my understanding that a need or problem known in the field at the
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`time of an alleged invention can provide an obvious reason to combine elements in
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`the manner claimed. A patent’s subject matter would have been obvious if at the
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`time of the invention, there was a known problem for which the patent claims en-
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`compassed an obvious solution. Further, if a patent claims a structure known in
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`10
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`the prior art that only substitutes one element for another that is known in the field,
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`I understand that the combination would have been obvious unless the result is un-
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`expected and fruitful. Therefore, a predictable variation of prior art is obvious.
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`30.
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`It is also my understanding that if a technique was used to improve a
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`device or method, and if a person of ordinary skill in the art would recognize that
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`15
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`the technique would improve similar devices or methods in the same way, using
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`the technique is obvious unless applying it is beyond the person’s skill.
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`31.
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`It is my further understanding that an alleged improvement claimed in
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`a particular patent must do more than use prior art elements according to their es-
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`tablished functions. That is, when a patent simply arranges old elements with each
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`performing the same function it had been known to perform and yields no more
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`than one would expect from such an arrangement, the combination is obvious.
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`32.
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`It is my additional understanding that items may have obvious uses
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`beyond their primary purposes. Common sense teaches that familiar items may
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`5
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`have obvious uses beyond their primary purposes, and in many cases a person of
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`ordinary skill will be able to fit the teachings of multiple pieces of prior art togeth-
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`er like pieces of a puzzle. I understand that neither a particular motivation nor an
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`avowed purpose of a patentee controls how a piece of prior art may be used.
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`33.
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`I also understand that if a combination was obvious to try, it may be
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`10
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`obvious. I understand that obviousness is therefore not confined to a formalistic
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`conception of teaching, suggestion, and motivation or by overemphasizing pub-
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`lished publications and the explicit content of issued patents.
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`34.
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`It is also my understanding that in developing opinions as to whether
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`or not certain claimed subject matter would have been obvious, each claim of a
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`15
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`given patent should be considered in its entirety and separately from any other
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`claims. In so doing, it is my further understanding that while I should consider any
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`differences between the claimed invention and the prior art, I should also assess the
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`obviousness or non-obviousness of the entirety of a claim covering an alleged in-
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`vention, not merely some portion of it.
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`35. Also, when there is a design need or market pressure to solve a prob-
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`lem and there are a finite number of identified, predictable solutions, a person of
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`ordinary skill in the art would have good reason to pursue the known options with-
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`in his or her technical grasp. If that pursuit likely leads to the anticipated success,
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`5
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`it is likely the alleged invention is a product not of innovation, but of ordinary skill
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`and common sense. In that instance, the fact that a combination was obvious to try
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`might show that it was obvious.
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`36.
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`I have also been informed that, when a work is available in one field
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`of endeavor, design incentives and other market forces can prompt variations of it,
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`10
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`