`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`MAXELL, LTD.
`Patent Owner
`____________
`
`
`Case No. IPR2020-00597
`U.S. Patent No. 8,339,493
`____________
`
`
`
`DECLARATION OF DR. JEFFREY J. RODRIGUEZ
`
`
`
`
`
`
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`TABLE OF CONTENTS
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`
`
`I.
`
`INTRODUCTION ...................................................................................... 6
`A.
`BACKGROUND AND QUALIFICATIONS ................................................... 7
`B. MATERIALS CONSIDERED ................................................................... 10
`II. LEGAL FRAMEWORK .......................................................................... 11
`A. ANALOGOUS ART .............................................................................. 12
`B. OBVIOUSNESS .................................................................................... 12
`C.
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ....................... 18
`D.
`CLAIM CONSTRUCTION ...................................................................... 19
`III. OPINIONS REGARDING LEVEL OF SKILL OF A PERSON
`HAVING ORDINARY SKILL IN THE ART ......................................... 21
`IV. BACKGROUND OF THE TECHNOLOGY .......................................... 22
`A. DIGITAL CAMERA BASICS .................................................................. 22
`B.
`REPRESENTATIVE EXAMPLES OF DIGITAL CAMERAS ........................... 30
`1.
`Horii ....................................................................................... 30
`2.
`Sato ......................................................................................... 33
`C. MODES OF CAMERA OPERATION .............................................. 35
`1.
`’493 Patent: Monitoring vs. Recording ................................... 36
`2.
`’493 Patent: Still Image vs. Moving Image ............................. 36
`3.
`Prior Art Examples of Multimode Cameras ............................ 37
`4. Matching Resolution Reduction Rates to Operational
`Mode ....................................................................................... 41
`Image Instability Detection & Reduction ................................ 46
`5.
`V. OPINIONS REGARDING THE ’493 PATENT, SUMMARY OF
`THE REFERENCES, AND DISCUSSION OF ANALOGOUS ART.... 48
`A. OVERVIEW OF THE ’493 PATENT ........................................................ 48
`B. OPINIONS REGARDING CASIO ............................................................. 51
`C. OPINIONS REGARDING JUEN ............................................................... 52
`D. OPINIONS REGARDING TAKASE ........................................................... 54
`OPINIONS REGARDING MISAWA........................................................... 56
`E.
`VI. OPINIONS REGARDING GROUND 1: COMBINATION OF
`CASIO AND JUEN FOR CLAIMS 1, 3, 5, AND 10 ................................ 58
`A.
`CLAIM 1 ............................................................................................ 60
`1.
`Claim 1 [Preamble]: An electric camera ................................ 60
`2.
`Claim 1(a) ............................................................................... 62
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`3.
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`4.
`
`5.
`6.
`7.
`8.
`
`B.
`
`C.
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`Claim 1(b): “a signal processing unit, that generates
`image signals by using the output signals of the image
`sensing device” ....................................................................... 73
`Claim 1(c): “a display unit with the display screen, to
`display an image corresponding to the image signals” ........... 78
`Claim 1(d) ............................................................................... 81
`Claim 1(e) ............................................................................... 98
`Claim 1(f) ............................................................................. 103
`The Same “Signal Processing Unit” Performs the
`Functionality of Claims 1(d)-1(f) .......................................... 106
`CLAIM 3 .......................................................................................... 113
`1.
`“An electric camera according to the claim 1” ..................... 113
`2.
`“wherein during the moving video mode, the signal
`processing unit generates the image signals by using the
`signal charges mixed or culled at pixel intervals of K2
`pixels” .................................................................................. 113
`CLAIM 5 .......................................................................................... 114
`1.
`Claim 5 [Preamble]: “An electric camera comprising” ....... 114
`2.
`Claim 5(a): “an image sensing device with a light
`receiving sensor having an array of pixels arranged
`vertically and horizontally in a grid pattern, in an N
`number of vertically arranged pixel lines”............................ 114
`Claim 5(b): “a signal processing unit that generates image
`signals by processing the output signals of the image
`sensing device” ..................................................................... 114
`Claim 5(c): “a display unit with a display screen, that
`displays an image corresponding to the image signals” ....... 115
`Claim 5(d): “wherein when recording an image in a static
`image mode, the signal processing unit generates the
`image signals by using all signal charges accumulated in
`all N number of vertically arranged pixel lines of the
`image sensing device, to provide N pixel lines” .................... 115
`Claim 5(e): “wherein when monitoring the image in the
`static image mode, the signal processing unit generates the
`image signals by using pixel lines that have been mixed or
`culled from the N number of vertically arranged pixel lines
`to only include pixel lines separated from one another by
`intervals of a first distance” .................................................. 115
`Claim 5(f): “wherein when recording the image in a
`moving video mode, the signal processing unit generates
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`3.
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`4.
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`5.
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`6.
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`7.
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`
`
`D.
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`3.
`
`4.
`
`5.
`
`2.
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`the image signals by using a portion of, or the entirety of,
`pixel lines which have been mixed or culled from the N
`number of vertically arranged pixel lines to only include
`pixel lines separated from one another by intervals of a
`second distance” ................................................................... 117
`CLAIM 10 ........................................................................................ 118
`1.
`Claim 10 [Preamble]: “A method for operating an electric
`camera, wherein the electric camera includes the features” . 118
`Claim 10(a): “an image sensing device with a light
`receiving surface having an array of pixels arranged
`vertically and horizontally in a grid pattern with an N
`number of vertically arranged pixel lines”............................ 119
`Claim 10(b): “a signal processing unit that generates
`image signals by processing the output signals of the
`image sensing device” .......................................................... 119
`Claim 10(c): “a display unit with a display screen that
`displays an image corresponding to the image signals” ....... 120
`Claim 10(e): “upon selecting the operation of recording
`the image in the static image mode, using the signal
`processing unit to generate the image signals by using all
`signal charges accumulated in all N number of vertically
`arranged pixel lines of the image sensing device, to
`provide N pixel lines” ........................................................... 120
`Claim 10(f): “upon selecting the operation of monitoring
`the image in the static image mode, using the signal
`processing unit to generate the image signals by using
`pixel lines which have been mixed or culled from the N
`number of vertically arranged pixel lines of the image
`sensing device to provide only pixel lines separated from
`one another by intervals of a first distance” ......................... 120
`Claim 10(g): “upon selecting the operation of recording
`the image in the moving video mode, using the signal
`processing unit to generate the image signals by using a
`portion of, or the entirety of, the N number of vertically
`arranged pixel lines which have been mixed or culled to
`provide only pixel lines separated from one another by
`intervals of a second distance, wherein a value of the
`second distance is different from a value of the first
`distance” .............................................................................. 121
`
`6.
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`7.
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`B.
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`VII. OPINIONS REGARDING GROUND 2: COMBINATION OF
`CASIO AND JUEN AND TAKASE FOR CLAIM 4 .............................. 122
`A.
`CLAIM 4(PRE): “AN ELECTRIC CAMERA ACCORDING TO THE CLAIM
`3” .................................................................................................... 122
`CLAIM 4(A): “COMPRISING: AN IMAGE-INSTABILITY DETECTOR
`WHICH DETECTS AN IMAGE-INSTABILITY OF THE ELECTRIC
`CAMERA” ......................................................................................... 122
`CLAIM 4(B): “WHEREIN THE SIGNAL PROCESSING UNIT GENERATES
`IMAGE SIGNALS BY USING THE PART OF SIGNAL CHARGES MIXED OR
`CULLED AT PIXEL INTERVALS OF K2 PIXELS, THE PART BEING
`CHANGED ACCORDING TO AN AMOUNT OF IMAGE-INSTABILITY
`DETECTED BY THE INSTABILITY DETECTOR TO CORRECT THE IMAGE-
`INSTABILITY, DURING THE MOVING VIDEO MODE” ............................. 125
`VIII. OPINIONS REGARDING GROUND 3: COMBINATION OF
`CASIO AND JUEN AND MISAWA FOR CLAIMS 6 AND 11 ............ 129
`A.
`CLAIM 6 .......................................................................................... 129
`1.
`Claim 6(Pre): “An electric camera according to the claim
`5” ......................................................................................... 129
`Claim 6(a): “further comprising: an image-instability
`detector which detects an image-instability of the electric
`camera” ................................................................................ 129
`Claim 6(b): “wherein when recording in the moving video
`mode, in order to correct the image-instability, the signal
`processing unit generates the image signals by changing
`the pixel lines used, and the portion of the pixel lines used,
`according to an amount of image-instability detected by
`the instability detector” ........................................................ 131
`IX. CONCLUSION ....................................................................................... 136
`
`
`
`2.
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`3.
`
`C.
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`I, Dr. Jeffrey J. Rodriguez, hereby declare the following:
`
`I.
`
`INTRODUCTION
`1. My name is Jeffrey J. Rodriguez, and I am over 21 years of age and
`
`otherwise competent to make this Declaration. I make this Declaration based on facts
`
`and matters within my own knowledge and on information provided to me by others,
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`and, if called as a witness, I could and would competently testify to the matters set
`
`forth herein.
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`2.
`
`I have been retained as a technical expert witness in this matter by
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`Apple Inc. (“Petitioner”) to provide my independent opinions on whether certain
`
`references teach or suggest the limitations recited in certain claims of U.S. Patent
`
`No. 8,339,493 (“the ’493 Patent”). I am being compensated at an hourly rate of
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`$525.00. My compensation in this matter is not based on the substance of my
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`opinions or on the outcome of this matter. I have been informed that the purported
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`owner of the ’493 Patent is Maxell, Ltd. (“Patent Owner”). I note that I have no
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`financial interest in the Patent Owner or Petitioner, and I have no other interest in
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`the outcome of this matter.
`
`3.
`
`I have summarized in this section my educational background, career
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`history, and other qualifications relevant to this matter. I have also included a current
`
`version of my curriculum vitae, attached as Appendix B.
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`
`A. Background and Qualifications
`4.
`I earned my undergraduate degree in Electrical Engineering from the
`
`University of Texas at Austin in 1984. I earned a Master of Science degree in
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`Electrical Engineering from MIT in 1986. I earned a Ph.D. in Electrical Engineering
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`from the University of Texas at Austin in 1990.
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`5.
`
`I am currently a professor at the University of Arizona in the
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`Department of Electrical and Computer Engineering, where I hold or have held the
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`following positions: (a) Tenured Associate Professor of Electrical and Computer
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`Engineering (1997-present), (b) Director of the Signal and Image Laboratory (1990-
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`present), (c) Director of Image Analysis, Cancer Imaging Shared Services, Arizona
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`Cancer Center (2009-2014), (d) Director of Graduate Studies for the Department of
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`Electrical and Computer Engineering (2000-2003, 2005-2016).
`
`6.
`
`I teach courses at both the graduate and undergraduate level through the
`
`Dept. of Electrical and Computer Engineering and the College of Optical Sciences.
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`The courses I have taught include Digital Image Processing (ECE/OPTI 533),
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`Digital Image Analysis (ECE/OPTI 532), Digital Signal Processing (ECE 429/529),
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`Advanced Digital Signal Processing (ECE 528), Signals and Systems (ECE 340),
`
`and Circuit Analysis (ECE 320). I have supervised more than 50 master’s and Ph.D.
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`theses and dissertations in the Electrical and Computer Engineering program.
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`7. My research activity is generally directed to systems for digital
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`signal/image/video processing and analysis. Past projects include super-resolution
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`techniques for image enhancement, a real-time video processing system for
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`detection and tracking of zebrafish, automobile detection and tracking in aerial video
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`of urban traffic scenes, tongue detection and tracking using ultrasound, video
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`segmentation of the right ventricle in cardiac magnetic resonance image sequences,
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`performance evaluation of superpixel algorithms for image segmentation, image
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`inpainting, segmentation and measurement of lesions in magnetic resonance images,
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`content-adaptive improved error concealment methods for H.264/AVC video
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`communication, etc.
`
`8.
`
`I am named as an inventor on one patent in the area of polar dynamic
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`programing for automated image segmentation.
`
`9.
`
`A recent research project of mine involved the design and development
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`of a real-time image and video processing system for automated behavioral analysis
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`of zebrafish for use in ototoxicity assessment of drugs. The system we designed and
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`built includes an array of Raspberry Pi microcomputer systems configured with
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`video cameras for parallel video capture of sixteen zebrafish populations. Each
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`Raspberry Pi features a system on a chip, which includes a CPU, a video graphics
`
`processing unit (GPU), a disk storage system, and a memory system. Our zebrafish
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`analysis system automatically captures and transmits video data to a high-
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`performance cluster to implement customized algorithms for further video
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`processing and analysis, resulting in automated assessment of zebrafish swimming
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`behavior.
`
`10. Another area of my research has been the development of super-
`
`resolution (SR) techniques for computing a high-resolution image from one or more
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`low-resolution images. For example, my research lab developed a new method for
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`single-image SR using dictionary-based local regression to produce a high-
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`resolution image from a single low-resolution image without any external training
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`image sets. We used a dictionary-based regression model using local self-similar
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`example patches within the input image. Our method was inspired by the observation
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`that image patches can be well represented as a sparse linear combination of
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`elements from a chosen over-complete dictionary and that a patch in the high-
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`resolution image has good matches around its corresponding location in the low-
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`resolution image. A first-order approximation of a nonlinear mapping function,
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`learned using the local self-similar example patches, is applied to the low-resolution
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`image patches to obtain the corresponding high-resolution image patches. We
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`extended
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`the
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`technique by developing a graph regularized block sparse
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`representation (GRBSR) for
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`images, which
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`is used for patch-based SR
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`reconstruction of a high-resolution image from a low-resolution image.
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`I am a Senior Member of the Institute of Electrical and Electronics
`
`11.
`
`Engineers (IEEE) and the IEEE Signal Processing Society. I served as General Chair
`
`of the 2016 IEEE Southwest Symposium on Image Analysis and Interpretation
`
`(SSIAI), and General Chair of the 2007 IEEE International Conference on Image
`
`Processing (ICIP). In addition, during 2005-2011, I served on the IEEE Signal
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`Processing Society Technical Committee on Image, Video, and Multidimensional
`
`Signal Processing. I have served on numerous other professional committees, and I
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`have served as a technical reviewer for numerous journals and professional
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`conferences.
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`12.
`
`I have authored or co-authored over 150 published papers in the field
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`of signal/image/video processing. I have served as an expert witness in patent cases
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`since 2005, involving signal/image/video processing, data compression systems,
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`video receivers, document cameras, cellular camera phones, signal/image/video
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`transmission over wireless networks, etc.
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`13. Based on my experiences described above, and as indicated in my
`
`curriculum vitae, I am qualified to provide the opinions set forth in this Declaration.
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`B. Materials Considered
`14. The opinions contained in this Declaration are based on the materials I
`
`have reviewed and my professional judgment, as well as my education, experience,
`
`and/or knowledge regarding technologies relating to the ’493 Patent.
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`15. As part of my investigation and in forming my opinions, I have
`
`reviewed at least the following materials. For any prior art listed below, it is my
`
`opinion persons of ordinary skill in my field would reasonably rely upon such prior
`
`art in forming opinions regarding the subject matter of the ’493 Patent:
`
`• Petition for Inter Partes Review of U.S. Patent No. 8,339,493;
`• U.S. Patent No. 8,339,493 (Ex. 1001);
`• File History for U.S. Patent 8,339,493 (Ex. 1002);
`• LCD Digital Camera QV-8000SX User’s Guide (Ex. 1004);
`• U.S. Patent No. 7,903,162 to Juen (Ex. 1005);
`• U.S. Patent No. 5,502,483 to Takase (Ex. 1006);
`• U.S. Patent No. 5,444,482 to Misawa (Ex. 1008);
`• U.S. Patent No. 4,949,117 to Heyningen (Ex. 1012);
`• U.S. Patent No. 5,150,109 to Berry (Ex. 1013);
`• U.S. Patent No. 6,335,760 to Sato (Ex. 1014);
`• U.S. Patent No. 5,642,171 to Baumgartner (Ex. 1015);
`• CCD Arrays, Cameras, and Displays, 2d. Ed. (JCD Publ. 1998) (“CCD
`Arrays”) (Ex. 1016);
`• U.S. Patent No. 4,740,828 to Kinoshita (Ex. 1017);
`• U.S. Patent No. 6,018,363 to Horii (Ex. 1018);
`• EP 0 802 688 B1 to Inoue (Ex. 1019);
`• U.S. Patent No. 6,512,541 to Dunton (Ex. 1020);
`• U.S. Patent No. 6,563,535 to Anderson (Ex. 1021);
`• U.S. Patent No. 4,612,575 to Ishman (Ex. 1022);
`• U.S. Patent No. 6,067,071 to Kotha (Ex. 1025);
`• VHS Camcoder with Electronic Image Stabilizer, Ohima, et al., IEEE
`Trans, on CE, Vol. 35, No. 4 (Nov. 1989), pp. 749-757 (Ex. 1029); and
`• Any other materials I refer to in this Declaration in support of my opinions.
`
`II. LEGAL FRAMEWORK
`16.
`I am a technical expert and do not offer any legal opinions. However, I
`
`have been informed about certain legal principles regarding patentability and related
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`matters under United States patent law, which I have applied in performing my
`
`analysis and arriving at my technical opinions in this matter.
`
`A. Analogous Art
`17.
`I have been informed by counsel that for prior art to be used to establish
`
`the unpatentability of a patent based on obviousness, the prior art must be “analogous
`
`art” to the claimed invention. I have also been informed by counsel that a prior art
`
`reference is analogous art to the claimed invention if: (1) the reference is from the
`
`same field of endeavor as the claimed invention, even if it addresses a different
`
`problem; or (2) the reference is reasonably pertinent to the problem faced by the
`
`invention, even if it is not in the same field of endeavor as the claimed invention.
`
`B. Obviousness
`18.
`I have been informed that a person cannot obtain a patent on an
`
`invention if the differences between the invention 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 (“POSITA” or skilled person). I
`
`have been informed that a conclusion of obviousness may be founded upon more
`
`than a single item of prior art. I have been further informed that obviousness is
`
`determined by evaluating the following factors: (1) the scope and content of the prior
`
`art, (2) the differences between the prior art and the claim at issue, (3) the level of
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`ordinary skill in the pertinent art, and (4) secondary considerations of non-
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`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`obviousness. In addition, the obviousness inquiry should not be done in hindsight.
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`Instead, the obviousness inquiry should be done through the eyes of a POSITA at
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`the time of the alleged invention.
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`19.
`
`In considering whether certain prior art renders a particular patent claim
`
`obvious, I have been informed that I can consider the scope and content of the prior
`
`art, including the fact that one of skill in the art would regularly look to the
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`disclosures in patents, trade publications, journal articles, conference papers,
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`industry standards, product
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`literature and documentation,
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`texts describing
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`competitive technologies, requests for comment published by standard setting
`
`organizations, and materials from industry conferences, as examples. I have been
`
`informed that for a prior art reference to be proper for use in an obviousness analysis,
`
`the reference must be “analogous art” to the claimed invention. I have been informed
`
`that a reference is analogous art to the claimed invention if: (1) the reference is from
`
`the same field of endeavor as the claimed invention (even if it addresses a different
`
`problem); or (2) the reference is reasonably pertinent to the problem faced by the
`
`inventor (even if it is not in the same field of endeavor as the claimed invention). A
`
`reference is “reasonably pertinent” to the problem if it would have been logically
`
`considered by an inventor in considering his problem. In determining whether a
`
`reference is reasonably pertinent, one should consider the problem faced by the
`
`inventor, as reflected either explicitly or implicitly, in the specification. I believe that
`
`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`all of the references I considered in forming my opinions are well within the range
`
`of references a POSITA would have consulted to address the type of problems
`
`described in the ’493 Patent.
`
`20.
`
`I have been informed that, in order to establish that a claimed invention
`
`was obvious based on a combination of prior art elements, a clear articulation of the
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`reason(s) why a claimed invention would have been obvious must be provided.
`
`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
`
`combination of multiple items of prior art renders a patent claim obvious when there
`
`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
`
`to combine the prior art, which can include, but is not limited to, any of the following
`
`rationales: (A) combining prior art methods according to known methods to yield
`
`predictable results; (B) substituting one known element for another to obtain
`
`predictable results; (C) using a known technique to improve a similar device in the
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`same way; (D) applying a known technique to a known device ready for
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`improvement to yield predictable results; (E) trying a finite number of identified,
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`predictable potential solutions, with a reasonable expectation of success; (F)
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`identifying that known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; or
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`(G) identifying an explicit teaching, suggestion, or motivation in the prior art that
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`would have led one of ordinary skill to modify the prior art reference or to combine
`
`the prior art references to arrive at the claimed invention. I am also informed that
`
`where there is a motivation to combine, claims may be rejected as prima facie
`
`obvious provided a POSITA would have had a reasonable expectation of success
`
`regarding the proposed combination.
`
`21.
`
`I am informed that the existence of an explicit teaching, suggestion, or
`
`motivation to combine known elements of the prior art is a sufficient, but not a
`
`necessary, condition to a finding of obviousness. This so-called “teaching-
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`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
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`in an obviousness analysis. In determining whether the subject matter of a patent
`
`claim is obvious, neither the particular motivation nor the avowed purpose of the
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`patentee controls. Instead, the important consideration is the objective reach of the
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`claim. In other words, if the claim extends to what is obvious, then the claim is
`
`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
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`known to the technological community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art. All of
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`these issues may be considered to determine whether there was an apparent reason
`
`to combine the known elements in the fashion claimed by the patent.
`
`22.
`
`I also am informed that in conducting an obviousness analysis, a precise
`
`
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`teaching directed to the specific subject matter of the challenged claim need not be
`
`sought out because it is appropriate to take account of the inferences and creative
`
`steps that a POSITA would employ. The prior art considered can be directed to any
`
`need or problem known in the field of endeavor at the time of invention and can
`
`provide a reason for combining the elements of the prior art in the manner claimed.
`
`In other words, the prior art need not be directed towards solving the same specific
`
`problem as the problem addressed by the patent. Further, the individual prior art
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`references themselves need not all be directed towards solving the same problem. I
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`am informed that, under the KSR obviousness standard, common sense is important
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`and should be considered. Common sense teaches that familiar items may have
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`obvious uses beyond their primary purposes.
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`23.
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`I also am informed that the fact that a particular combination of prior
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`art elements was “obvious to try” may indicate that the combination was obvious
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`even if no one attempted the combination. If the combination was obvious to try
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`(regardless of whether it was actually tried) or leads to anticipated success, then it is
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`likely the result of ordinary skill and common sense rather than innovation. I am
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`further informed that in many fields it may be that there is little discussion of obvious
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`techniques or combinations, and it often may be the case that market demand, rather
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`than scientific literature or knowledge, will drive the design of an invention. I am
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`informed that an invention that is a combination of prior art must do more than yield
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`IPR2020-00597
`Apple Inc. EX1003 Page 16
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
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`predictable results to be non-obvious.
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`24.
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`I am informed that for a patent claim to be obvious, the claim must be
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`obvious to a POSITA at the time of the alleged invention. I am informed that the
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`factors to consider in determining the level of ordinary skill in the art include (1) the
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`educational level and experience of people working in the field at the time the
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`invention was made, (2) the types of problems faced in the art and the solutions
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`found to those problems, and (3) the sophistication of the technology in the field.
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`25.
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`I am informed that it is improper to combine references where the
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`references teach away from their combination. I am informed that a reference may
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`be said to teach away when a POSITA, upon reading the reference, would have been
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`discouraged from following the path set out in the reference, or would have been led
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`in a direction divergent from the path that was taken by the patent applicant. In
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`general, a reference will teach away if it suggests that the line of development
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`flowing from the reference’s disclosure is unlikely to be productive of the result
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`sought by the patentee. I am informed that a reference teaches away, for example, if
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`(1) the combination would produce a seemingly inoperative device, or (2) the
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`references leave the impression that the product would not have the property sought
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`by the patentee. I also am informed, however, that a reference does not teach away
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`if it merely expresses a general preference for an alternative invention but does not
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`criticize, discredit, or otherwise discourage investigation into the invention claimed.
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`
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`IPR2020-00597
`Apple Inc. EX1003 Page 17
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`Secondary Considerations of Non-Obviousness
`
`I am informed that even if a prima facie case of obviousness is
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`C.
`26.
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) lack of independent simultaneous invention
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`within a comparatively short space of time; (h) teaching away from the invention in
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`the prior art.
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`27.
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` I am further informed that secondary-considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art features.
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`The establishment of a nexus is a question of fact. While I understand that the Patent
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`Owner here has not offered any secondary considerations at this time, I will
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`supplement my opinions in the event that the Patent Owner later raises secondary
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`considerations.
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`
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`IPR2020-00597
`Apple Inc. EX1003 Page 18
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`Declaration of Dr. Jeffrey J. Rodriguez
`U.S. Patent No. 8,339,493
`
`D. Claim Construction
`28.
`I have been informed by counsel that the first step in an unpatentability
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`analysis involves construing the claims, as necessary, to determine their scope.
`
`Se