IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`MT THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`NETFLIX, INC.,
`NETFLIX, INC.,
`Petitioner,
`Petitioner,
`
`v.
`v.
`REALTIME ADAPTIVE STREAMING LLC,
`REALTIME ADAPTIVE STREAMING LLC,
`Patent Owner.
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2018-01630
`Case No. IPR2018-01630
`Patent 9,769,477
`Patent 9,769,477
`
`––––––––––
`
`DECLARATION OF JAMES A. STORER, PH.D.
`DECLARATION OF JAMES A. STORER, PH.D.
`
`Comcast - Exhibit 1003, page 1
`
`

`

`TABLE OF CONTENTS
`TABLE OF CONTENTS
`
`I. Background and Qualifications ........................................................................... 1
`1
`I. Background and Qualifications
`A.
`Compensation ............................................................................................... 5
`A. Compensation
`5
`B. Materials and Other Information Considered .............................................. 5
`B. Materials and Other Information Considered
`5
`II. Understanding of the Law ................................................................................... 5
`II. Understanding of the Law
`5
`A.
`Legal Standard for Prior Art ........................................................................ 5
`A.
`Legal Standard for Prior Art
`5
`1. Anticipation and Prior Art ............................................................................ 6
`1. Anticipation and Prior Art
`6
`B.
`Obviousness ................................................................................................. 8
`B. Obviousness
`8
`C.
`Legal Standard for Claim Construction .....................................................13
`C.
`Legal Standard for Claim Construction
`13
`III. Level of Ordinary Skill in the Art .....................................................................18
`III. Level of Ordinary Skill in the Art
`18
`IV. Overview of the Technology .............................................................................19
`IV. Overview of the Technology
`19
`A.
`Overview of the ’477 Patent ......................................................................19
`A. Overview of the '477 Patent
`19
`B.
`Observations on the ’477 Patent ................................................................21
`21
`B. Observations on the '477 Patent
`V. The ’477 Patent .................................................................................................28
`V. The '477 Patent
`28
`A.
`Challenged Claims .....................................................................................28
`A. Challenged Claims
`28
`B.
`Prosecution History ....................................................................................29
`B.
`29
`Prosecution History
`VI. Claim Construction ...........................................................................................30
`VI. Claim Construction
`30
`A.
`“asymmetric data compression encoder[s]” ...............................................31
`A.
`"asymmetric data compression encoder[s]"
`31
`B.
`“data block” ................................................................................................32
`B.
`"data block"
`32
`C.
`“video or image data profile” .....................................................................34
`C.
`"video or image data profile"
`34
`VII.Summary of the Prior Art ..................................................................................35
`VII. Summary of the Prior Art
`35
`A.
`Imai (Exhibit 1004) ....................................................................................36
`A.
`Imai (Exhibit 1004)
`36
`B.
`Pauls (Ex. 1007) .........................................................................................40
`B.
`Pauls (Ex. 1007)
`40
`C.
`Dawson (Ex. 1025) .....................................................................................43
`C. Dawson (Ex. 1025)
`43
`D.
`Lai (Ex. 1016) ............................................................................................44
`D.
`Lai (Ex. 1016)
`44
`VIII.
`Invalidity ....................................................................................................46
`VIII.
`Invalidity
`46
`A.
`Claims 15-19, 28, and 29 of the ’477 Patent are Obvious in View of Imai
`A. Claims 15-19, 28, and 29 of the '477 Patent are Obvious in View of Imai
`and Pauls ...............................................................................................................48
`and Pauls
`48
`1. Motivation to Combine Imai and Pauls .....................................................48
`1. Motivation to Combine Imai and Pauls
`48
`
`Comcast - Exhibit 1003, page 1
`
`

`

`2. Dependent Claims 15, 16, and 28 ..............................................................54
`54
`2. Dependent Claims 15, 16, and 28
`3. Dependent Claim 17 .................................................................................102
`102
`3. Dependent Claim 17
`4. Dependent Claims 18, 19, and 29 ............................................................104
`4. Dependent Claims 18, 19, and 29
`104
`B.
`Claims 7 and 23 of the ’477 Patent are Obvious in View of Imai, Pauls,
`B.
`Claims 7 and 23 of the '477 Patent are Obvious in View of Imai, Pauls,
`and Dawson. .......................................................................................................110
`and Dawson.
`110
`1. Motivation to Combine Imai, Pauls, and Dawson ...................................110
`110
`1. Motivation to Combine Imai, Pauls, and Dawson
`2. Dependent Claims 7 and 23 .....................................................................113
`2. Dependent Claims 7 and 23
`113
`C.
`Ground 3: Claims 8 and 24 of the ’477 Patent are Obvious in view of Imai,
`C. Ground 3: Claims 8 and 24 of the '477 Patent are Obvious in view of Imai,
`Pauls, and Lai .....................................................................................................117
`117
`Pauls, and Lai
`1. Motivation to Combine Imai, Pauls, and Lai ...........................................117
`117
`1. Motivation to Combine Imai, Pauls, and Lai
`2. Dependent Claims 8 and 24 .....................................................................122
`2. Dependent Claims 8 and 24
`122
`IX. Reservation of Rights ......................................................................................127
`IX. Reservation of Rights
`127
`Appendix 1: Curriculum Vitae of James A. Storer ................................................129
`Appendix 1: Curriculum Vitae of James A. Storer
`129
`Appendix 2: Materials Considered in the Preparation of This Declaration ..........147
`147
`Appendix 2: Materials Considered in the Preparation of This Declaration
`Appendix 3: Challenged Claims ............................................................................149
`Appendix 3: Challenged Claims
`149
`Appendix 4: Mapping Between Imai U.S. Patent and Imai (English Translation of
`Appendix 4: Mapping Between Imai U.S. Patent and Imai (English Translation of
`JP Publication) .......................................................................................................155
`JP Publication)
`155
`
`ii ii
`
`Comcast - Exhibit 1003, page 1
`
`

`

`I, James A. Storer, declare as follows:
`I, James A. Storer, declare as follows:
`
`1.
`1.
`
`My name is James A. Storer. I am a Professor of Computer
`My name is James A. Storer. I am a Professor of Computer
`
`Science at Brandeis University and a member of the Brandeis Center for Complex
`Science at Brandeis University and a member of the Brandeis Center for Complex
`
`Systems. I have prepared this report as an expert witness retained by Netflix, Inc.,
`Systems. I have prepared this report as an expert witness retained by Netflix, Inc.,
`
`(hereinafter “Petitioner”). In this report I give my opinions as to whether certain
`(hereinafter "Petitioner"). In this report I give my opinions as to whether certain
`
`claims of U.S. Patent No. 9,769,477 (“the ’477 Patent”) are invalid. I provide
`claims of U.S. Patent No. 9,769,477 ("the '477 Patent") are invalid. I provide
`
`technical bases for these opinions as appropriate.
`technical bases for these opinions as appropriate.
`
`2.
`2.
`
`This report contains statements of my opinions formed to date
`This report contains statements of my opinions formed to date
`
`and the bases and reasons for those opinions. I may offer additional opinions based
`and the bases and reasons for those opinions. I may offer additional opinions based
`
`on further review of materials in this case, including opinions and/or testimony of
`on further review of materials in this case, including opinions and/or testimony of
`
`other expert witnesses. I make this declaration based upon my own personal
`other expert witnesses. I make this declaration based upon my own personal
`
`knowledge and, if called upon to testify, would testify competently to the matters
`knowledge and, if called upon to testify, would testify competently to the matters
`
`contained herein.
`contained herein.
`
`I.
`I.
`
`BACKGROUND AND QUALIFICATIONS
`BACKGROUND AND QUALIFICATIONS
`
`3.
`3.
`
`I have summarized in this section my educational background,
`I have summarized in this section my educational background,
`
`career history, publications, and other relevant qualifications. My full curriculum
`career history, publications, and other relevant qualifications. My full curriculum
`
`vitae is attached as Appendix 1 to this declaration.
`vitae is attached as Appendix 1 to this declaration.
`
`4.
`4.
`
`I am an expert in the field of computer algorithms, including
`I am an expert in the field of computer algorithms, including
`
`data communications and network computing, data compression, data and image
`data communications and network computing, data compression, data and image
`
`retrieval, storage and processing of large data sets, and image / video processing. I
`retrieval, storage and processing of large data sets, and image / video processing. I
`
`1 1
`
`Comcast - Exhibit 1003, page 1
`
`

`

`have studied, taught, practiced, and researched in the field of Computer Science for
`have studied, taught, practiced, and researched in the field of Computer Science for
`
`over thirty years. Currently, I am Professor of Computer Science at Brandeis
`over thirty years. Currently, I am Professor of Computer Science at Brandeis
`
`University in Waltham, Massachusetts, where I have been on the faculty since
`University in Waltham, Massachusetts, where I have been on the faculty since
`
`1981.
`1981.
`
`5.
`5.
`
`I received my Doctor of Philosophy (Ph.D.) degree in the field
`I received my Doctor of Philosophy (Ph.D.) degree in the field
`
`of Computer Science from Princeton University in 1979. I received my Masters of
`of Computer Science from Princeton University in 1979. I received my Masters of
`
`Arts (M.A.) degree in Computer Science from Princeton University and my
`Arts (M.A.) degree in Computer Science from Princeton University and my
`
`Bachelor of Arts (B.A.) degree in Mathematics and Computer Science from
`Bachelor of Arts (B.A.) degree in Mathematics and Computer Science from
`
`Cornell University.
`Cornell University.
`
`6.
`6.
`
`After receiving my Ph.D. degree, I worked in industry as a
`After receiving my Ph.D. degree, I worked in industry as a
`
`researcher at AT&T Bell Laboratories from 1979 to 1981 before joining the faculty
`researcher at AT&T Bell Laboratories from 1979 to 1981 before joining the faculty
`
`of Brandeis University.
`of Brandeis University.
`
`7.
`7.
`
`I have been involved in computer science research since 1976.
`I have been involved in computer science research since 1976.
`
`My research has been funded by a variety of governmental agencies, including the
`My research has been funded by a variety of governmental agencies, including the
`
`National Science Foundation
`National Science Foundation
`
`(NSF), National Aeronautics and Space
`(NSF), National Aeronautics and Space
`
`Administration (NASA), and Defense Advanced Research Projects Agency
`Administration (NASA), and Defense Advanced Research Projects Agency
`
`(DARPA). In addition, I have received government Small Business Innovation
`(DARPA). In addition, I have received government Small Business Innovation
`
`Research (SBIR) funding, as well as numerous industrial grants.
`Research (SBIR) funding, as well as numerous industrial grants.
`
`8.
`8.
`
`I regularly teach courses in software and hardware technology
`I regularly teach courses in software and hardware technology
`
`for data compression and communications (including text, images, video, and
`for data compression and communications (including text, images, video, and
`
`2 2
`
`Comcast - Exhibit 1003, page 1
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`

`

`audio) at both the undergraduate and graduate level, and in my capacity as co-chair
`audio) at both the undergraduate and graduate level, and in my capacity as co-chair
`
`of the Annual Data Compression Conference, I regularly referee academic papers
`of the Annual Data Compression Conference, I regularly referee academic papers
`
`in these areas. In addition, much of my consulting activity has been in the areas of
`in these areas. In addition, much of my consulting activity has been in the areas of
`
`software and hardware for consumer electronic devices,
`software and hardware
`for consumer electronic devices,
`
`including cell
`including cell
`
`phones/PDAs (including cellular technology), smartphones, digital cameras, digital
`phones/PDAs (including cellular technology), smartphones, digital cameras, digital
`
`video and audio recorders, and personal computers (“PCs”), as well as devices for
`video and audio recorders, and personal computers ("PCs"), as well as devices for
`
`communications over the Internet.
`communications over the Internet.
`
`9.
`9.
`
`I am the author of two books: An Introduction to Data
`I am the author of two books: An Introduction to Data
`
`Structures and Algorithms and Data Compression: Methods and Theory. Both
`Structures and Algorithms and Data Compression: Methods and Theory. Both
`
`books have been used as references for undergraduate level computer science
`books have been used as references for undergraduate level computer science
`
`courses in universities. I am the editor or co-editor of four other books, including
`courses in universities. I am the editor or co-editor of four other books, including
`
`Hyperspectral Data Compression and Image and Text Compression.
`Hyperspectral Data Compression and Image and Text Compression.
`
`10.
`10.
`
`I have three issued U.S. patents that relate to computer software
`I have three issued U.S. patents that relate to computer software
`
`and hardware (two for which I am sole inventor and one for which I am co-
`and hardware (two for which I am sole inventor and one for which I am co-
`
`inventor). I am the author or co-author of well over 100 articles and conference
`inventor). I am the author or co-author of well over 100 articles and conference
`
`papers.
`papers.
`
`11.
`11.
`
`In 1991, I founded the Annual Institute of Electrical and
`In 1991, I founded the Annual Institute of Electrical and
`
`Electronics Engineers (IEEE) Data Compression Conference (DCC), the first
`Electronics Engineers (IEEE) Data Compression Conference (DCC), the first
`
`major international conference devoted entirely to data compression, and have
`major international conference devoted entirely to data compression, and have
`
`3 3
`
`Comcast - Exhibit 1003, page 1
`
`

`

`served as the conference chair since then. This conference continues to be the
`served as the conference chair since then. This conference continues to be the
`
`world’s premier venue devoted to data compression research and development.
`world's premier venue devoted to data compression research and development.
`
`12.
`12.
`
`I routinely serve as referee for papers submitted to journals such
`I routinely serve as referee for papers submitted to journals such
`
`as, for example, JACM, SICOMP, Theoretical CS, Computer Journal, J.
`as, for example, JACM, SICOMP, Theoretical CS, Computer Journal, J.
`
`Algorithms, Signal Processing, JPDC, Acta Informatica, Algorithmicia, IPL, IPM,
`Algorithms, Signal Processing, JPDC, Acta Informatica, Algorithmicia, IPL, IPM,
`
`Theoretical CS, J. Algorithms, Networks, IEEE J. Robotics & Automation, IEEE
`Theoretical CS, J. Algorithms, Networks, IEEE J. Robotics & Automation, IEEE
`
`Trans. Information Theory, IEEE Trans. Computers, IEEE Trans. Image
`Trans. Information Theory, IEEE Trans. Computers, IEEE Trans. Image
`
`Processing, Proceedings of the IEEE, IBM J. of R&D, and J. Computer and
`Processing, Proceedings of the IEEE, IBM J. of R&D, and J. Computer and
`
`System Sciences.
`System Sciences.
`
`13.
`13.
`
`I have served as guest editor for a number of professional
`I have served as guest editor for a number of professional
`
`journals, including Proceedings of the IEEE, Journal of Visual Communication and
`journals, including Proceedings of the IEEE, Journal of Visual Communication and
`
`Image Representation, and Information Processing and Management. I have served
`Image Representation, and Information Processing and Management. I have served
`
`as a program committee member for various conferences, including IEEE Data
`as a program committee member for various conferences, including IEEE Data
`
`Compression Conference, IEEE International Symposium on Information Theory,
`Compression Conference, IEEE International Symposium on Information Theory,
`
`Combinatorial Pattern Matching (CPM), International Conference on String
`Combinatorial Pattern Matching (CPM), International Conference on String
`
`Processing and Information Retrieval (SPIRE), Conference on Information and
`Processing and Information Retrieval (SPIRE), Conference on Information and
`
`Knowledge Management (CIKM), Conference on Information Theory and
`Knowledge Management (CIKM), Conference on Information Theory and
`
`Statistical Learning (ITSL), Sequences and Combinatorial Algorithms on Words,
`Statistical Learning (ITSL), Sequences and Combinatorial Algorithms on Words,
`
`Dartmouth Institute for Advanced Graduate Studies Symposium (DAGS),
`Dartmouth Institute for Advanced Graduate Studies Symposium (DAGS),
`
`International Conference on Language and Automata Theory and Applications
`International Conference on Language and Automata Theory and Applications
`
`4 4
`
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`

`(LATA), DIMACS Workshop on Data Compression
`(LATA), DIMACS Workshop on Data Compression
`
`in Networks and
`in Networks and
`
`Applications, and Conference on Combinatorial Algorithms on Words.
`Applications, and Conference on Combinatorial Algorithms on Words.
`
`A.
`Compensation
`A. Compensation
`
`14.
`14.
`
`For my efforts in connection with the preparation of this
`For my efforts in connection with the preparation of this
`
`declaration I have been compensated at my standard rate for this type of consulting
`declaration I have been compensated at my standard rate for this type of consulting
`
`activity. My compensation is in no way contingent on the results of these or any
`activity. My compensation is in no way contingent on the results of these or any
`
`other proceedings relating to the above-captioned patent.
`other proceedings relating to the above-captioned patent.
`
`B. Materials and Other Information Considered
`B. Materials and Other Information Considered
`
`15.
`15.
`
`I have considered information from various sources in forming
`I have considered information from various sources in forming
`
`my opinions. I have reviewed and considered each of the exhibits listed in the
`my opinions. I have reviewed and considered each of the exhibits listed in the
`
`attached Appendix 2 (Appendix of Exhibits) in forming my opinions.
`attached Appendix 2 (Appendix of Exhibits) in forming my opinions.
`
`II.
`UNDERSTANDING OF THE LAW
`II. UNDERSTANDING OF THE LAW
`
`16.
`16.
`
`I have applied the following legal principles provided to me by
`I have applied the following legal principles provided to me by
`
`counsel in arriving at the opinions set forth in this report.
`counsel in arriving at the opinions set forth in this report.
`
`A.
`A.
`
`17.
`17.
`
`Legal Standard for Prior Art
`Legal Standard for Prior Art
`
`I am not an attorney. I have been informed by attorneys of the
`I am not an attorney. I have been informed by attorneys of the
`
`relevant legal principles and have applied them to arrive at the opinions set forth in
`relevant legal principles and have applied them to arrive at the opinions set forth in
`
`this declaration.
`this declaration.
`
`18.
`18.
`
`I understand that the petitioner for inter partes review may
`I understand that the petitioner for inter partes review may
`
`request the cancelation of one or more claims of a patent based on grounds
`request the cancelation of one or more claims of a patent based on grounds
`
`5 5
`
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`

`available under 35 U.S.C. § 102 and 35 U.S.C. § 103 using prior art that consists of
`available under 35 U.S.C. § 102 and 35 U.S.C. § 103 using prior art that consists of
`
`patents and printed publications.
`patents and printed publications.
`
`1.
`Anticipation and Prior Art
`1. Anticipation and Prior Art
`
`19.
`19.
`
`I understand that § 102 specifies when a challenged claim is
`I understand that § 102 specifies when a challenged claim is
`
`invalid for lacking novelty over the prior art, and that this concept is also known as
`invalid for lacking novelty over the prior art, and that this concept is also known as
`
`“anticipation.” I understand that a prior art reference anticipates a challenged
`"anticipation." I understand that a prior art reference anticipates a challenged
`
`claim, and thus renders it invalid by anticipation, if all elements of the challenged
`claim, and thus renders it invalid by anticipation, if all elements of the challenged
`
`claim are disclosed in the prior art reference. I understand the disclosure in the
`claim are disclosed in the prior art reference. I understand the disclosure in the
`
`prior art reference can be either explicit or inherent, meaning it is necessarily
`prior art reference can be either explicit or inherent, meaning it is necessarily
`
`present or implied. I understand that the prior art reference does not have to use
`present or implied. I understand that the prior art reference does not have to use
`
`the same words as the challenged claim, but all of the requirements of the claim
`the same words as the challenged claim, but all of the requirements of the claim
`
`must be disclosed so that a person of ordinary skill in the art could make and use
`must be disclosed so that a person of ordinary skill in the art could make and use
`
`the claimed subject-matter.
`the claimed subject-matter.
`
`20.
`20.
`
`In addition, I understand that § 102 also defines what is
`In addition, I understand that § 102 also defines what is
`
`available for use as a prior art reference to a challenged claim.
`available for use as a prior art reference to a challenged claim.
`
`21.
`21.
`
`Under § 102(a), a challenged claim is anticipated if it was
`Under § 102(a), a challenged claim is anticipated if it was
`
`patented or described in a printed publication in the United States or a foreign
`patented or described in a printed publication in the United States or a foreign
`
`country before the challenged claim’s date of invention.
`country before the challenged claim's date of invention.
`
`6 6
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`

`22.
`22.
`
`Under § 102(b), a challenged claim is anticipated if it was
`Under § 102(b), a challenged claim is anticipated if it was
`
`patented or described in a printed publication in the United States or a foreign
`patented or described in a printed publication in the United States or a foreign
`
`country more than one year prior to the challenged patent’s filing date.
`country more than one year prior to the challenged patent's filing date.
`
`23.
`23.
`
`Under § 102(e), a challenged claim is anticipated if it was
`Under § 102(e), a challenged claim is anticipated if it was
`
`described in published patent application that was filed by another in the United
`described in published patent application that was filed by another in the United
`
`States before the challenge claim’s date of invention, or was described in a patent
`States before the challenge claim's date of invention, or was described in a patent
`
`granted to another that was filed in the United States before the challenged claim’s
`granted to another that was filed in the United States before the challenged claim's
`
`date of invention.
`date of invention.
`
`24.
`24.
`
`I understand that a challenged claim’s date of invention is
`I understand that a challenged claim's date of invention is
`
`presumed to be the challenged patent’s filing date. I also understand that the patent
`presumed to be the challenged patent's filing date. I also understand that the patent
`
`owner may establish an earlier invention date and “swear behind” prior art defined
`owner may establish an earlier invention date and "swear behind" prior art defined
`
`by § 102(a) or § 102(e) by proving (with corroborated evidence) the actual date on
`by § 102(a) or § 102(e) by proving (with corroborated evidence) the actual date on
`
`which the named inventors conceived of the subject matter of the challenged claim
`which the named inventors conceived of the subject matter of the challenged claim
`
`and proving that the inventors were diligent in reducing the subject matter to
`and proving that the inventors were diligent in reducing the subject matter to
`
`practice.
`practice.
`
`25.
`25.
`
`I understand that the filing date of patent is generally the filing
`I understand that the filing date of patent is generally the filing
`
`date of the application filed in the United States that issued as the patent.
`date of the application filed in the United States that issued as the patent.
`
`However, I understand that a patent may be granted an earlier effective filing date
`However, I understand that a patent may be granted an earlier effective filing date
`
`if the patent owner properly claimed priority to an earlier patent application.
`if the patent owner properly claimed priority to an earlier patent application.
`
`7 7
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`

`26.
`26.
`
`I understand that when a challenged claim covers several
`I understand that when a challenged claim covers several
`
`structures, either generically or as alternatives, the claim is deemed anticipated if
`structures, either generically or as alternatives, the claim is deemed anticipated if
`
`any of the structures within the scope of the claim is found in the prior art
`any of the structures within the scope of the claim is found in the prior art
`
`reference.
`reference.
`
`27.
`27.
`
`I understand that when a challenged claim requires selection of
`I understand that when a challenged claim requires selection of
`
`an element from a list of alternatives, the prior art teaches the element if one of the
`an element from a list of alternatives, the prior art teaches the element if one of the
`
`alternatives is taught by the prior art.
`alternatives is taught by the prior art.
`
`B.
`Obviousness
`B. Obviousness
`
`28.
`28.
`
`I understand that even if a challenge claim is not anticipated, it
`I understand that even if a challenge claim is not anticipated, it
`
`is still invalid if the differences between the claimed subject matter and the prior
`is still invalid if the differences between the claimed subject matter and the prior
`
`art are such that the claimed subject matter would have been obvious to a person of
`art are such that the claimed subject matter would have been obvious to a person of
`
`ordinary skill in the pertinent art at the time the alleged invention.
`ordinary skill in the pertinent art at the time the alleged invention.
`
`29.
`29.
`
`I understand that obviousness must be determined with respect
`I understand that obviousness must be determined with respect
`
`to the challenged claim as a whole.
`to the challenged claim as a whole.
`
`30.
`30.
`
`I understand that one cannot rely on hindsight in deciding
`I understand that one cannot rely on hindsight in deciding
`
`whether a claim is obvious.
`whether a claim is obvious.
`
`31.
`31.
`
`I also understand that an obviousness analysis includes the
`I also understand that an obviousness analysis includes the
`
`consideration of factors such as (1) the scope and content of the prior art, (2) the
`consideration of factors such as (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the challenged claim, (3) the level of ordinary
`differences between the prior art and the challenged claim, (3) the level of ordinary
`
`8 8
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`

`skill in the pertinent art, and (4) “secondary” or “objective” evidence of non-
`skill in the pertinent art, and (4) "secondary" or "objective" evidence of non-
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`obviousness.
`obviousness.
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`32.
`32.
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`Secondary or objective evidence of non-obviousness includes
`Secondary or objective evidence of non-obviousness includes
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`evidence of: (1) a long felt but unmet need in the prior art that was satisfied by the
`evidence of: (1) a long felt but unmet need in the prior art that was satisfied by the
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`claimed invention; (2) commercial success or the lack of commercial success of
`claimed invention; (2) commercial success or the lack of commercial success of
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`the claimed invention; (3) unexpected results achieved by the claimed invention;
`the claimed invention; (3) unexpected results achieved by the claimed invention;
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`(4) praise of the claimed invention by others skilled in the art; (5) taking of licenses
`(4) praise of the claimed invention by others skilled in the art; (5) taking of licenses
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`under the patent by others; (6) deliberate copying of the claimed invention; and (7)
`under the patent by others; (6) deliberate copying of the claimed invention; and (7)
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`contemporaneous and independent invention by others. However, I understand
`contemporaneous and independent invention by others. However, I understand
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`that there must be a relationship between any secondary evidence of non-
`that there must be a relationship between any secondary evidence of non-
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`obviousness and the claimed invention.
`obviousness and the claimed invention.
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`33.
`33.
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`I understand that a challenged claim can be invalid for
`I understand that a challenged claim can be invalid for
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`obviousness over a combination of prior art references if a reason existed (at the
`obviousness over a combination of prior art references if a reason existed (at the
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`time of the alleged invention) that would have prompted a person of ordinary skill
`time of the alleged invention) that would have prompted a person of ordinary skill
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`in the art to combine elements of the prior art in the manner required by the
`in the art to combine elements of the prior art in the manner required by the
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`challenged claim. I understand that this requirement is also referred to as a
`challenged claim.
`I understand that this requirement is also referred to as a
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`“motivation to combine,” “suggestion to combine,” or “reason to combine,” and
`"motivation to combine," "suggestion to combine," or "reason to combine," and
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`that there are several rationales that meet this requirement.
`that there are several rationales that meet this requirement.
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`34.
`34.
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`I understand that the prior art references themselves may
`I understand that the prior art references themselves may
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`provide a motivation to combine, but other times simple common sense can link
`provide a motivation to combine, but other times simple common sense can link
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`9 9
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`Comcast - Exhibit 1003, page 1
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`two or more prior art references. I further understand that obviousness analysis
`two or more prior art references. I further understand that obviousness analysis
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`recognizes that market demand, rather than scientific literature, often drives
`recognizes that market demand, rather than scientific literature, often drives
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`innovation, and that a motivation to combine references may come from market
`innovation, and that a motivation to combine references may come from market
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`forces.
`forces.
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`35.
`35.
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`I understand obviousness to include, for instance, scenarios
`I understand obviousness to include, for instance, scenarios
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`where known techniques are simply applied to other devices, systems, or processes
`where known techniques are simply applied to other devices, systems, or processes
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`to improve them in an expected or known way. I also understand that practical and
`to improve them in an expected or known way. I also understand that practical and
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`common-sense considerations should be applied a proper obviousness analysis.
`common-sens