`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`SIRIUS XM RADIO INC.,
`Petitioner,
`
`v.
`
`FRAUNHOFER-GESELLSCHAFT ZUR
`FÖRDERUNG DER ANGEWANDTEN
`FORSCHUNG E.V.,
`Patent Owner.
`
`____________________
`
`Case No. _____________
`Patent No. 6,993,084
`__________________________________________________________
`
`DECLARATION OF DR. DAVID LYON IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 6,993,084
`
`
`
`
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I. Background, Qualifications and Experience ....................................................... 1
`
`II. Applicable Standards and Controlling Principles ............................................... 8
`
`A. Anticipation ........................................................................................... 8
`
`B. Obviousness ........................................................................................... 9
`
`C.
`
`Person of Ordinary Skill In the Art ..................................................... 13
`
`III. Secondary Considerations ............................................................................. 14
`
`IV. Background Technology to the ‘3084 Patent ................................................ 15
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`The Basic Fundamentals of Communication Systems ........................ 15
`
`Transmission Using Frequencies, Carriers, Signals and
`Symbols ............................................................................................... 17
`
`Phase Modulation ................................................................................ 19
`
`Phase Modulation in Satellite and Multi Carrier Modulation
`Transmissions ...................................................................................... 24
`
`Frame Synchronization ....................................................................... 29
`
`The Fourier Transform ........................................................................ 39
`
`V. General Overview of the ‘3084 Patent .............................................................. 39
`
`‘3084 Patent 3:5-9. .............................................................................. 46
`
`VI. Prosecution History ....................................................................................... 47
`
`VII. Claim Construction ........................................................................................ 48
`
`VIII. Overview of the Prior Art .............................................................................. 49
`
`A. Overview of Cimini (Exhibit 1003) .................................................... 49
`
`B. Overview of ADSL (Exhibit 1004) ..................................................... 51
`
`
`
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`- i -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 2
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`

`

`C. Overview of Palacherla (Exhibit 1005) ............................................... 53
`
`D. Overview of Schmidl (Exhibit 1006) .................................................. 54
`
`E.
`
`F.
`
`Overview of Spilker (Exhibit 1007) .................................................... 54
`
`Overview of Turin (Exhibit 1008) ...................................................... 55
`
`IX. Ground 1 of Unpatentability: Cimini Anticipates Claims 1, 2, 6, 7, 9
`and 18 ............................................................................................................. 56
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`Claim 1 – Preamble ............................................................................. 56
`
`Claim 1 – Element 1.A1 ...................................................................... 59
`
`Claim 1 – Element 1.A2 ...................................................................... 60
`
`Claim 1 – Element 1.B ........................................................................ 61
`
`Claim 1 – Element 1.C ........................................................................ 63
`
`Claim 2 ................................................................................................ 64
`
`Claim 6 – Preamble ............................................................................. 66
`
`Claim 6 – Element 6.A ........................................................................ 67
`
`Claim 6 – Element 6.B ........................................................................ 68
`
`Claim 6 – Element 6.C ........................................................................ 70
`
`Claim 6 – Element 6.D ........................................................................ 71
`
`Claim 6 – Element 6.E ........................................................................ 72
`
`M. Claim 6 – Element 6.F ......................................................................... 73
`
`N.
`
`O.
`
`P.
`
`Q.
`
`Claim 6 – Element 6.G ........................................................................ 73
`
`Claim 7 ................................................................................................ 74
`
`Claim 9 – Preamble ............................................................................. 75
`
`Claim 9 – Element 9.A ........................................................................ 76
`
`
`
`- ii -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 3
`
`

`

`R.
`
`S.
`
`T.
`
`U.
`
`V.
`
`Claim 9 – Element 9.B ........................................................................ 77
`
`Claim 9 – Element 9.C ........................................................................ 78
`
`Claim 9 – Element 9.D ........................................................................ 79
`
`Claim 9 – Element 9.E ........................................................................ 80
`
`Claim 18 – Preamble through Element 18.E ....................................... 80
`
`W. Claim 18 – Element 18.F ..................................................................... 83
`
`X.
`
`Y.
`
`Claim 18 – Element 18.G .................................................................... 84
`
`Claim 18 – Element 18.H .................................................................... 85
`
`X. Ground 2 of Unpatentability: Cimini in View of ADSL and/or the
`Knowledge of a POSA Render Claims 1, 2, 6, 7, 9 and 18 Obvious ............ 85
`
`XI. Ground 3 of Unpatentability: Cimini in View of Palacherla (Patent
`Owner Admitted Prior Art) Render Dependent Claims 11 and 20
`Obvious .......................................................................................................... 89
`
`XII. Ground 4 of Unpatentability: Cimini in View of Schmidl Render
`Dependent Claims 3, 8, 10, 14, 19 and 23 Obvious ...................................... 90
`
`A. Dependent Claims 3 and 8 .................................................................. 90
`
`B. Dependent Claims 10 and 19 .............................................................. 93
`
`C. Dependent Claims 14 and 23 .............................................................. 96
`
`XIII. Ground 5 of Unpatentability: Cimini in View of the Teachings of
`Spilker Render Dependent Claims 12, 15 and 21 Obvious ........................... 99
`
`A. Dependent Claims 12 and 21 .............................................................. 99
`
`B. Dependent Claim 15 ..........................................................................102
`
`XIV. Ground 6 of Unpatentability: Cimini in View of Spilker and Further in
`View of Turin Render Claim 16 Obvious ...................................................104
`
`A.
`
`Claim 16 ............................................................................................104
`
`
`
`- iii -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 4
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`

`

`XV. Ground 7 of Unpatentability: Cimini in View of Spilker and Turin
`and Further in view of Schmidl Render Claim 17 Obvious ........................107
`
`A.
`
`Claim 17 ............................................................................................107
`
`XVI. Concluding Statements ................................................................................108
`
`
`
`
`
`
`
`
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`- iv -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 5
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`

`

`PETITIONER’S EXHIBIT LIST
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`Exhibit-1001 U.S. Patent No. 6,993,084 (the “’3084 Patent”) titled, Coarse
`Frequency Synchronisation in Multicarrier Systems, issued on
`January 31, 2006
`
`Exhibit-1002 Declaration of David Lyon, Ph.D., in support of Petition for Inter
`Partes Review of U.S. Patent 6,993,084, dated February 22, 2018
`(“Lyon Dec.”)
`
`Exhibit-1003 U.S. Patent No. 5,914,933 (“Cimini”) titled, Clustered OFDM
`Communication System, issued on June 22, 1999
`
`Exhibit-1004 American National Standard for Telecommunications, Network
`and Consumer Installation Interfaces, Asymmetric Digital
`Subscriber Line (ADSL) Metallic Interface, approved for
`publication August 18, 1995 (“ADSL”)
`
`Exhibit-1005 A. Palacherla, DSP-µP Routine Computes Magnitude, Electrical
`Design News, Vol. 34, No. 22, Oct. 26, 1989 (“Palacherla”)
`
`Exhibit-1006 U.S. Patent No. 5,732,113 (“Schmidl”) titled, Timing and
`Frequency Synchronization of OFDM Signals, issued on March
`24, 1998
`
`Exhibit-1007 Spilker, Digital Communications by Satellite, 1977 (“Spilker”)
`
`Exhibit-1008 G. Turin, Introduction to Spread-Spectrum Antimultipath
`Techniques and Their Application to Urban Digital Radio,
`Proceedings of the IEEE, Vol. 68, No. 3, March 1980 (“Turin”)
`
`Exhibit-1009 RESERVED
`
`Exhibit-1010 Prosecution History of U.S. Patent No. 6,993,084 (excerpts)
`
`Exhibit-1011 U.S. Patent No. 5,353,352 (the “‘352 Patent”) titled, Multiple
`Access Coding for Radio Communications, issued on October 4,
`1994
`
`
`
`- v -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 6
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`

`

`EXHIBIT NO.
`
`DESCRIPTION
`
`Exhibit-1012 IEEE Xplore web archive denoting, G. Turin, Introduction to
`Spread-Spectrum Antimultipath Techniques and Their
`Application to Urban Digital Radio, Proceedings of the IEEE,
`Vol. 68, No. 3, March 1980 (“Turin”), available at
`http://ieeexplore.ieee.org/document/1455914/
`
`Exhibit-1021 J. G. Proakis, Digital Communications, McGraw Hill, Inc., 2nd
`Ed. 1989, (“Proakis”) (excerpts)
`
`Exhibit-1022 B. P. Lathi, Modern Digital and Analog Communication
`Systems,The Dryden Press, Saunders College Publishing, 2nd Ed.,
`1989 (“Lathi”) (excerpts)
`
`Exhibit-1023 W. Zou and Y. Wu, COFDM: An Overview, IEEE Transactions
`on Broadcasting, Vol. 41, No. 1, March 1995 (“Zou”)
`
`Exhibit-1024 M. Abramowitz and I. A. Stegun, Handbook of Mathematical
`Functions with Formulas, Graphs, and Mathematical Tables,
`Dover Publications, Inc., (1968) (“Abramowitz”)
`
`
`
`
`
`
`
`
`
`
`- vi -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 7
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`

`

`I, David Lyon, Ph.D., declare and state as follows:
`
`1.
`
`I have been retained as an expert on behalf of Petitioner, Sirius XM
`
`Radio Inc. (“Sirius XM”), to provide information and opinions, as set forth in this
`
`Declaration, to assist the Board in the determination of whether or not the Board
`
`should invalidate one or more claims of Fraunhofer-Gesellschft zur Förderung der
`
`angewandten Forschung e.V.’s (“Fraunhofer” or “Patent Owner”) U.S. Patent No.
`
`6,993,084 (Ex. 1001, the “‘3084 Patent”). Specifically, counsel for Sirius XM
`
`asked me to provide opinions regarding background technology of the ‘3084 Patent
`
`and (in)validity, novelty, prior art, obviousness considerations, and the
`
`understanding of a person of ordinary skill in the art (“POSITA” or “POSA”) in
`
`the industry as it relates to the ‘3084 Patent.
`
`2.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`Declaration, and, if called upon to do so, I am prepared to testify competently
`
`thereto.
`
`I. Background, Qualifications and Experience
`3.
`I hold three degrees in Electrical Engineering from the Massachusetts
`
`Institute of Technology (“MIT”): a Bachelor of Science and Master of Science,
`
`both earned in June of 1970, and a Doctor of Philosophy (Ph.D.) earned in
`
`September of 1972.
`
`4.
`
`At MIT, I was awarded a Hertz Foundation fellowship based on merit.
`
`
`
`- 1 -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 8
`
`

`

`In 1974, while employed full time in industry, I accepted an invitation from MIT’s
`
`Department of Electrical Engineering to teach a graduate level course in
`
`mathematical communication theory. My original notes and exercises on practical
`
`methods in digital telecommunications were used by subsequent teachers of that
`
`subject at MIT.
`
`5.
`
`From 1972 through 1981, I worked in dual roles as both Director of
`
`Research and Development and Director of Product Management for Intertel, Inc.,
`
`a pioneering company in the field of telephone line communications, which was
`
`headquartered in Massachusetts. The Intertel products based on my design work
`
`set new worldwide benchmarks in the field, including the first adaptively-equalized
`
`telephone line modems capable of operating on unconditioned leased telephone
`
`lines as well as real-time network control systems capable of monitoring and
`
`correcting faults in complex interactive data networks.
`
`6.
`
`After my work at Intertel, Inc., I managed all product engineering and
`
`research and development activities as Director of Engineering in 1981-82, for
`
`Novation, Inc., a southern California company that produced some of the first
`
`telephone line modems for personal computers. Our customers during that period
`
`included both Apple Computer and IBM’s PC Division, which purchased from
`
`Novation internally integrated modems.
`
`
`
`- 2 -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 9
`
`

`

`7.
`
`Starting in 1982, with my appointment as a Director of Engineering at
`
`Linkabit, a wholly owned division of M/A-Com, Inc., located in San Diego,
`
`California, I became intensely focused on radio-linked (also called “wireless” or
`
`“RF” for radio frequency) digital communications. From 1982 to 1987, the groups
`
`that I led designed and introduced to the industry the first full-duplex, satellite-
`
`based, digital communication systems capable of fully replacing alternative land-
`
`based transmission media. Since we were inventing a new type of wide area
`
`networking system we had to reimagine and create an entire protocol stack along
`
`with the related hardware technologies. At the physical, media access control
`
`(MAC), and transport layers of the stack we successfully innovated the routing,
`
`addressing, security, multiplexing, and media conversion and compression
`
`techniques that were required. Our first customer for these systems, which were
`
`comprised of so-called “Very Small Aperture Satellite Systems (“VSATs”), was
`
`the world market leader in oil exploration services, Schlumberger Limited. Later,
`
`with further refinements that we made to the networking technologies and the
`
`deliverable products, we captured many Fortune 100 companies as customers,
`
`including Wal-Mart, Exxon, and Southland Corporation (7-Eleven Stores).
`
`8.
`
`In 1987, along with four co-founders, I started Pacific Communication
`
`Sciences, Inc. (“PCSI”). I served as the CEO from our inception until 1996 and
`
`stayed very active in both technical and product management. During that period,
`
`
`
`- 3 -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 10
`
`

`

`PCSI became well known for its innovative and pioneering work in digital
`
`telecommunications. In 1993, we merged with a public company, Cirrus Logic
`
`Incorporated, and continued to operate PCSI as a wholly owned subsidiary of
`
`Cirrus Logic.
`
`9. While at PCSI we were retained and funded by McCaw Cellular
`
`Communications, Inc. to help create the world’s first operational digital packet
`
`data system to operate over cellular communication channels. This system was
`
`named Cellular Digital Packet Data (CDPD), and PCSI became a leading provider
`
`of the base station equipment used by cellular carriers to provide CDPD data
`
`services to their subscribers. Two of our customers were AT&T Wireless (which
`
`had acquired McCaw Cellular in 1994) and Bell Atlantic Mobile Network (later
`
`merged into Verizon Wireless in 2004).
`
`10. PCSI also was retained by DDI Corporation and Kyocera, both of
`
`Japan, to help create their innovative Personal Handyphone Service (PHS) in
`
`Japan, a micro-cellular personal communication system. Starting in 1991, PCSI
`
`devised and perfected the system design and subsystem specifications for this
`
`mobile system, and later became a leading supplier of chipsets for PHS handsets
`
`and software for DDI’s base stations. Starting in 1995, we shipped millions of
`
`handset chipsets and supplied software to tens of thousands of PHS base stations.
`
`
`
`- 4 -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 11
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`

`

`11. During the period 1987 to 1990, PCSI collaborated with Inmarsat and
`
`Honeywell Aerospace as we developed designs for digital mobile satellite
`
`terminals. The result of the work with Inmarsat led to the reference design for the
`
`Standard M mobile satellite system. The work for Honeywell led to our
`
`developing and manufacturing an RF modem which enabled digital satellite
`
`communications for high speed aircraft.
`
`12.
`
`In 1996, I began my consulting company, Sage Strategies, which I
`
`continue to operate today. My assignments have included both technical and
`
`management work. From 1998 to 2008, I served first as CEO of Silicon Wave,
`
`and then subsequently as a Vice President of RF MicroDevices (“RFMD”), which
`
`acquired Silicon Wave in 2004.
`
`13. Silicon Wave was a pioneer in short range radio linked data
`
`communications. The company became a leader in the development of the
`
`Bluetooth standards and conforming products. Additionally, in the 1999-2004
`
`time period Silicon Wave developed designs for IEEE 802.11a (WLAN in the
`
`5GHz unlicensed RF band) compliant transceivers and also partnered with Intel
`
`Corporation on the design of systems supporting simultaneous operation of
`
`Bluetooth and Wi-Fi in the 2.4 GHz unlicensed RF band.
`
`14. RFMD (now called Qorvo after its merger with Tri-Quint
`
`Semiconductor in January of 2015) was an industry leader in the supply of radio
`
`
`
`- 5 -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 12
`
`

`

`frequency components for cellular subscriber devices and base stations. My work
`
`at RFMD included technical and marketing management of business units engaged
`
`in various RF related products including Wi-Fi, Bluetooth, and GPS solutions.
`
`15. My other work from 1996 to the present has been focused largely on
`
`broadband communication technologies with emphasis on wireless and cable based
`
`systems. Such systems have included different types of digital cellular networks
`
`and devices, as well as short range systems including Bluetooth, WLAN, and near
`
`field communication (“NFC”). For example, from 2003 to 2012, I served as a
`
`consulting advisor for Amimon, Inc., an Israeli company that invented and
`
`commercialized a proprietary 5GHz WLAN technology for HD video
`
`transmission, which utilized MIMO (multiple input multiple output) and OFDM
`
`(orthogonal frequency division multiplex) techniques. In addition, from 2008 to
`
`2010 I served as the CEO of Ozmo Devices, Inc., a company which pioneered the
`
`WLAN technology now branded as “Wi-Fi Direct” by the Wi-Fi Alliance. Ozmo
`
`received financial support from Intel Corporation and also collaborated with Intel
`
`in developing the details of the Wi-Fi Direct specifications within the Wi-Fi
`
`Alliance working group. In 2012, Ozmo was acquired by Atmel Corporation.
`
`16.
`
`I am also a Life Member of the Institute of Electrical and Electronics
`
`Engineers (IEEE) and have been an active member of the IEEE’s Communication
`
`Society for over thirty years. My participation in IEEE and Communications
`
`
`
`- 6 -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 13
`
`

`

`Society activities continues today.
`
`17. Professionally I have stayed heavily focused on applications of my
`
`engineering skills in industry, but I have occasionally found time to teach and
`
`lecture at universities around the United States. As referenced above, I developed
`
`and taught a course on “Principles of Communication” at MIT in 1974 and later I
`
`co-wrote and co-taught a course in “Digital Communications and Satellite
`
`Systems” in 1983 in the Department of Electrical Engineering at the University of
`
`California San Diego. From 1995 to 1997, I was a lecturer on the topic of wireless
`
`communication technologies for the “Executive Short Course for CNOs: Managing
`
`the IT Infrastructure for Global Competitiveness” at MIT’s Sloan School of
`
`Management. My other university-level teaching experience is listed in my CV.
`
`18.
`
`I am a named inventor on seven United States Patents, which are
`
`listed in my CV. These seven patents cover inventions in the field of
`
`telecommunications and have been referenced more than two hundred and fifty
`
`times in subsequently issued United States patents. In particular, four of my
`
`patents cover innovations in physical and media access control layer technology,
`
`including novel modem designs for various, challenging transmission media.
`
`19.
`
`I have authored or co-authored over fifty professional papers and
`
`technical conference contributions, which are listed in my CV. Additional
`
`information concerning my background and qualifications is set forth in my
`
`
`
`- 7 -
`
`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 14
`
`

`

`Curriculum Vitae, which is attached as Exhibit 1 to this Declaration.
`
`II. Applicable Standards and Controlling Principles
`20. My opinions are also informed by my understanding of the relevant
`
`law. I understand that the patentability analysis is conducted on a claim-by-claim
`
`basis and that there are several possible reasons and grounds upon which a patent
`
`claim may be found to be unpatentable. I have applied the following principles in
`
`my analysis throughout this Declaration.
`
`21. Counsel has informed me, and I understand, that in order for a
`
`reference to considered a prior art publication it must be publicly accessible,
`
`meaning that the reference has been disseminated or otherwise made available to
`
`the extent that persons interested and ordinarily skilled in the subject matter or art
`
`exercising reasonable diligence can locate it. I understand that a reference need
`
`only be accessible to interested members of the relevant public.
`
`A. Anticipation
`22. Counsel has informed me, and I understand, that an issued patent
`
`claim is invalid as anticipated (under 35 U.S.C. § 102) if each and every element of
`
`that claim is disclosed in a single prior art reference that enables a person of
`
`ordinary skill in the art to make the allegedly anticipating subject matter. I
`
`understand that to be anticipatory, a reference must enable one of skill in the art to
`
`practice an embodiment of the claimed invention without undue experimentation.
`
`
`
`- 8 -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 15
`
`

`

`23. Counsel has informed me, and I understand, that if a prior art
`
`reference does not disclose a given element expressly, it may do so inherently. I
`
`have been informed by counsel, and I further understand, that a prior art reference
`
`will inherently anticipate a claimed invention if any claim elements or other
`
`information missing from the reference would nonetheless be known by the person
`
`of ordinary skill in the art to be necessarily present in the subject matter of the
`
`reference.
`
`B. Obviousness
`24. Counsel has informed me, and I understand, that an issued patent is
`
`invalid as obvious (under 35 U.S.C. § 103) if it can be shown that the differences
`
`between the patented subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious, at the time the invention was made, to
`
`a person having ordinary skill in the art. Relevant considerations include the level
`
`of ordinary skill in the art; the scope and content of the prior art; differences
`
`between the prior art and the claims at issue; and the so-called objective secondary
`
`factors of non-obviousness to the extent they exist.
`
`25.
`
`I understand that a claim may be deemed invalid for obviousness in
`
`light of a single prior art reference, without the need to combine references, if the
`
`elements of the claim that are not found in the reference can be supplied by the
`
`knowledge or common sense of one of ordinary skill in the relevant art.
`
`
`
`- 9 -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 16
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`

`

`26.
`
`I further understand that two or more prior art references that each
`
`disclose fewer than all elements of a patent claim may nevertheless be combined to
`
`render a patent claim obvious if the combination of the prior art collectively
`
`discloses all elements of the claim and one of ordinary skill in the art at the time
`
`would have been motivated to combine the prior art. I understand that this
`
`motivation to combine need not be explicit in any of the prior art, but may be
`
`inferred from the knowledge of one of ordinary skill in the art at the time the patent
`
`was filed. I also understand that one of ordinary skill in the art is not an
`
`automaton, but is a person having ordinary creativity. I further understand that one
`
`or more prior art references that disclose fewer than all of the elements of a patent
`
`claim may render a patent claim obvious if including the missing element would
`
`have been obvious to one of skill in the art (e.g., the missing element represents
`
`only an insubstantial difference over the prior art or a reconfiguration of a known
`
`system).
`
`27. Counsel has informed me, and I understand, that that in determining
`
`whether a piece of prior art would have been combined with other prior art or with
`
`other information within the knowledge of one of ordinary skill in the art, several
`
`different factors may be considered. The following are examples of approaches
`
`and rationales that may be considered:
`
`a. the claimed invention is simply a combination of prior art elements
`
`
`
`- 10 -
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 17
`
`

`

`according to known methods to yield predictable results;
`
`b. the claimed invention is a simple substitution of one known element
`
`for another to obtain predictable results;
`
`c. the claimed invention uses a known technique to improve similar
`
`devices (methods, or products) in the same way;
`
`d. the claimed invention applies a known technique to a known device
`
`(method, or product) ready for improvement to yield predictable
`
`results;
`
`e. the claimed invention applies a technique or approach that would have
`
`been “obvious to try” choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`f. there is known work in one field of endeavor that may prompt
`
`variations of it for use in either the same field or a different one based
`
`on design incentives or other market forces if the variations would
`
`have been predictable to one of ordinary skill in the art;
`
`g. there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims;
`
`h. there is some teaching, suggestion, or motivation in the prior art that
`
`would have led one of ordinary skill to modify the prior art reference
`
`or to combine prior art reference teachings to arrive at the claimed
`
`
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 18
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`invention.
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`28. Counsel has informed me, and I understand, that that obviousness may
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`also be shown by demonstrating that it would have been obvious to modify what is
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`taught in a single piece of prior art to create the patented invention.
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`29. Counsel has informed me, and I understand, that among the
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`background knowledge possessed by a person of ordinary skill in the art, the
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`person of ordinary skill in the art is presumed to be aware of the pertinent art.
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`30. Counsel has informed me, and I understand, that secondary indicia of
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`both obviousness and non-obviousness should be considered when evaluating
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`whether a claimed invention would have been obvious to one of ordinary skill in
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`the art at the time of invention. These secondary indicia may include, for example:
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`a. a long felt but unmet need in the prior art that was satisfied by the
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`claimed invention;
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`b. commercial success of processes claimed by the patent;
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`c. unexpected results achieved by the invention;
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`d. praise of the invention by others skilled in the art;
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`e. the taking of licenses under the patent by others; and
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`f. deliberate copying of the invention.
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`31.
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`I also understand that there are second indicia of obviousness of an
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`alleged invention such as the combination of known elements to produce an
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 19
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`obvious or expected results. I further understand that an additional secondary
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`consideration supporting an obviousness determination is if the claimed invention
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`produced expected results.
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`C.
`Person of Ordinary Skill In the Art
`32. Counsel has informed me, and I understand, that the person of
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`ordinary skill in the art (“POSITA” or “POSA”) is a hypothetical person who is
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`presumed to be familiar with the relevant scientific field and its literature at the
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`time of the invention. This hypothetical person is also a person of ordinary
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`creativity capable of understanding the scientific principles applicable to the
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`pertinent field.
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`33. Counsel has informed me, and I understand, that the level of ordinary
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`skill in the art may be determined by reference to certain factors, including (1) the
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`type of problems encountered in the art; (2) prior art solutions to those problems;
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`(3) the rapidity with which innovations are made; (4) the sophistication of the
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`technology; and (5) the educational level of active workers in the field. I further
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`understand that the face of the ‘3084 Patent claims a priority date of April 14,
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`1998.
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`34.
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`It is my opinion that a person of ordinary skill in the art in the field of
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`the ‘3084 Patent would have been someone with a bachelor’s degree in Electrical
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`Engineering and three or more years of industry experience relating to design,
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 20
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`installation, and/or operation of digital, wireless communication networks
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`operating over satellite and terrestrial channels and utilizing various modulation
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`methods including multi-carrier modulated systems.
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`35. Based on my training and experience, I believe that I am (and was as
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`of April 1998) a person of greater than ordinary skill in the relevant art, which
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`permits me to give an opinion about the qualifications of one of ordinary skill at
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`the time of the invention.
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`III. Secondary Considerations
`36. As I explained above, counsel has informed me, and I understand, that
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`relevant considerations in a determination of invalidity based on obviousness may
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`include secondary factors of non-obviousness to the extent they exist. I am
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`presently not aware of any objective evidence that might indicate that the patent
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`claims discussed in this Petition are non-obvious nor am I aware of any objective
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`evidence, if it existed, that would undermine the strong grounds of obviousness set
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`forth in my Declaration and the accompanying Petition, nor have I formed an
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`opinion otherwise. I understand that if Patent Owner presents evidence of
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`objective factors that it argues support a finding of non-obviousness, I may be
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`asked to review such evidence and to formulate an opinion. I therefore reserve the
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`right to rebut any alleged evidence of non-obviousness identified by the Patent
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`Owner.
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`Petitioner Sirius XM Radio Inc. - Ex. 1002, p. 21
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`IV. Background Technology to the ‘3084 Patent
`37. The ‘3084 Patent generally relates to transmitting signals from
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`transmitters to receivers in specific formats with certain payload information
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`contained in the transmitted signal, and then processing the information received
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`from the transmission. Because the transmitted signals can be corrupted during the
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`course of their transmission communication engineers employ techniques to
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`combat these impairments in order to more reliably retrieve the information from
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`the received signal.
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`38.
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`I have outlined below a tutorial that will assist the Board to better
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`understand the technical subject matter contained in the ‘3084 Patent. This tutorial
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`discusses (a) the basic fundamentals of communication systems; (b) the basics of
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`transmissions using frequencies, car