IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`MAXELL, LTD.,
`
`Plaintiff,
`
`
`
`vs.
`
`APPLE INC.,
`
`Defendant.
`
` Civil Action No. 5:19-cv-00036-RWS
`
`OPENING EXPERT REPORT OF DR. ALAN C. BOVIK
`REGARDING INVALIDITY OF U.S. PATENT NO. 8,339,493
`
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`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`II.
`III.
`IV.
`
`V.
`
`INTRODUCTION ............................................................................................................. 1
`QUALIFICATIONS .......................................................................................................... 2
`SUMMARY OF OPINIONS ............................................................................................. 7
`LEGAL STANDARDS ..................................................................................................... 7
`A.
`Invalidity ................................................................................................................ 7
`B.
`Priority Date and Expiration Date.......................................................................... 8
`C.
`Anticipation............................................................................................................ 9
`D.
`Obviousness ......................................................................................................... 10
`E.
`Claim Construction .............................................................................................. 13
`THE ’493 PATENT ......................................................................................................... 13
`A.
`Overview of the Patent ......................................................................................... 13
`B.
`Prosecution History of the ’493 Patent ................................................................ 17
`C.
`Inter Partes Review of the ’493 Patent................................................................ 19
`D.
`Asserted Claims ................................................................................................... 20
`E.
`Claim Construction .............................................................................................. 21
`1.
`Agreed Terms ........................................................................................... 21
`2.
`The Court’s Construction ......................................................................... 22
`Level of Ordinary Skill in the Art ........................................................................ 22
`F.
`BACKGROUND OF TECHNOLOGY ........................................................................... 23
`A.
`Image Sensors ...................................................................................................... 24
`B.
`Image Processing and Scaling ............................................................................. 26
`C.
`Image Display and Preview ................................................................................. 28
`D.
`Image Stabilization .............................................................................................. 30
`E.
`The Digital Cameras Market ................................................................................ 33
`VII. ANTICIPATION AND OBVIOUSNESS ....................................................................... 37
`A.
`Sony MVC-FD83 and MVC-FD88 ..................................................................... 37
`1.
`Overview MVC-FD83 and MVC-FD88 .................................................. 37
`2.
`U.S. Patent Nos. 5,444,482 (“Misawa”) .................................................. 49
`3.
`Motivations to Combine Misawa with Sony MVD-FD83/FD88 ............ 51
`
`VI.
`
`
`
`
`
`-i-
`
`
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`TABLE OF CONTENTS
`(continued)
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`Page
`
`
`
`B.
`
`Claim 5 ..................................................................................................... 53
`4.
`Claim 6 ..................................................................................................... 82
`5.
`U.S. Patent Nos. 7,903,162 (“Juen”) and 6,563,535 (“Anderson”) ..................... 88
`1.
`U.S. Patent Nos. 7,903,162 (“Juen”) ....................................................... 88
`2.
`U.S. Patent No. 6,563,535 (“Anderson”) ................................................. 90
`3.
`Motivations to Combine Juen and Anderson: .......................................... 92
`4.
`Motivations to Combine Misawa with Juen/Anderson ............................ 95
`5.
`Claim 5 ..................................................................................................... 97
`6.
`Claim 6 ................................................................................................... 110
`VIII. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS ............................... 115
`A.
`Commercial Success .......................................................................................... 116
`B.
`Copying .............................................................................................................. 120
`C.
`Simultaneous Invention ..................................................................................... 122
`D.
`Long-Standing Problem Or Need ...................................................................... 122
`E.
`Prior Failures ...................................................................................................... 123
`F.
`Skepticism .......................................................................................................... 124
`G.
`Unexpected results ............................................................................................. 124
`H.
`Industry praise .................................................................................................... 124
`OTHER TOPICS ........................................................................................................... 125
`
`IX.
`
`
`
`
`
`-ii-
`
`
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`I.
`
`INTRODUCTION
`1.
`My name is Dr. Alan C. Bovik. I am the Ernest J. Cockrell Endowed Chair in
`
`Engineering at The University of Texas at Austin, Professor in the Department of Electrical and
`
`Computer Engineering and The Institute for Neurosciences, and Director of the Laboratory for
`
`Image and Video Engineering (LIVE). I have been retained by defendant Apple Inc. (“Apple” or
`
`“Defendant”) in connection with civil action Maxell, Ltd. v. Apple Inc., Case No. 5:19-cv-00036-
`
`RWS (E.D. Texas), which I understand to be related to alleged infringement of various patents
`
`asserted by Maxell, Ltd. (“Maxell” or “Plaintiff”), including certain claims of U.S. Patent No.
`
`8,339,493 (the “’493 patent”).
`
`2.
`
`In this report I will set forth my opinions regarding the validity of claims 5 and 6
`
`of the ’493 patent. This report contains a statement of my opinions formed in this case and
`
`provides the bases and reasons for those opinions. I make the following statements based on my
`
`own personal knowledge and, if called as a witness, I could and would testify to the following.
`
`3.
`
`I have considered the ’493 patent, its prosecution history, the cited references, the
`
`Court’s claim construction order, the materials listed in Appendix A, and other materials as
`
`referenced in this report. I have also analyzed portions of Maxell’s Second Supplemental
`
`Infringement Contentions, served on March 13, 2020, relating to the ’493 patent, including
`
`Appendices 3 and 3A. Appendix 3A includes only a chart of source code paths/filenames
`
`without any explanation of what those files are alleged to contain. I have not been able to review
`
`all the cited source code files due to travel restrictions caused by COVID-19. If Maxell’s expert
`
`relies on the cited source code files to present an infringement theory against Apple’s products, I
`
`reserve the right to revise, supplement, and amend the opinions stated herein upon my review of
`
`the cited source code.
`
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`My analysis of the materials produced in this case is ongoing. As new material is
`
`4.
`
`presented to me I will continue my review of such material. Therefore, this report represents
`
`only those opinions I have formed to date, and I reserve the right to revise, supplement, and
`
`amend the opinions stated herein based on new information and on my continuing analysis of the
`
`materials already produced.
`
`5.
`
`I am prepared to use any or all of the above-referenced materials, other materials
`
`that may be produced during the course of this proceeding, and supplemental charts, models,
`
`schematics, computer graphics/animation, and other demonstratives and representations based on
`
`those materials to support my testimony at trial.
`
`II.
`
`QUALIFICATIONS
`6.
`I hold a Ph.D. in Electrical and Computer Engineering from the University of
`
`Illinois, Urbana-Champaign (awarded in 1984). I also have a Master’s degree in Electrical and
`
`Computer Engineering (awarded in 1982) and a B.S. in Computer Engineering from the
`
`University of Illinois, Urbana-Champaign (awarded in 1980).
`
`7.
`
`I am a tenured full Professor and I hold the Cockrell Family Regents Endowed
`
`Chair at the University of Texas at Austin. My appointments are in the Department of Electrical
`
`and Computer Engineering, the Department of Computer Sciences, and the Department of
`
`Biomedical Engineering. I am also the Director of the Laboratory for Image and Video
`
`Engineering (“LIVE”).
`
`8.
`
`My research is in the general areas of digital television, digital cameras, image
`
`and video processing, computational neuroscience, and modeling of biological visual perception.
`
`I have published over 900 technical articles in these areas and hold nine U.S. patents. I am also
`
`the author of The Handbook of Image and Video Processing, Second Edition (Elsevier Academic
`
`Press, 2005); Modern Image Quality Assessment (Morgan & Claypool, 2006); The Essential
`
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`Guide to Image Processing (Elsevier Academic Press, 2009); and The Essential Guide to Video
`
`Processing (Elsevier Academic Press, 2009); and numerous other publications.
`
`9.
`
`I received the Progress Medal for 2019 from The Royal Photographic Society.
`
`The Progress Medal is awarded in recognition of any invention, research, publication or other
`
`contribution which has resulted in an important advance in the scientific or technological
`
`development of photography or imaging in the widest sense and is regarded as the oldest and
`
`most prestigious honor given in the technical field of photography. This award has been given
`
`continuously since 1878. I was also named an Honorary Fellow of The Royal Photographic
`
`Society (HonFRPS).
`
`10.
`
`I also received the 2019 IEEE Fourier Award with citation: “For seminal
`
`contributions and high-impact innovations to the theory and application of perception-based
`
`image and video processing.” This Technical Field Award and medal is one of the highest
`
`honors accorded by the 423,000-member IEEE.
`
`11.
`
`I received the 2017 Edwin H. Land Medal from the Optical Society of America in
`
`September 2017 with citation: “For substantially shaping the direction and advancement of
`
`modern perceptual picture quality computation, and for energetically engaging industry to
`
`transform his ideas into global practice.”
`
`12.
`
`I received a Primetime Emmy Award for Outstanding Achievement in
`
`Engineering Development, for the Academy of Television Arts and Sciences, in October 2015,
`
`for the widespread use of my video quality prediction and monitoring models and algorithms that
`
`are widely used throughout the global broadcast, cable, satellite and internet Television
`
`industries.
`
`13.
`
`Among other awards and honors, I have received the 2013 IEEE Signal
`
`Processing Society’s “Society Award,” which is the highest honor accorded by that technical
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`society (“for fundamental contributions to digital image processing theory, technology,
`
`leadership and education”). In 2005, I received the Technical Achievement Award of the IEEE
`
`Signal Processing Society, which is the highest technical honor given by the Society, for “broad
`
`and lasting contributions to the field of digital image processing”; and in 2008 I received the
`
`Education Award of the IEEE Signal Processing Society, which is the highest education honor
`
`given by the Society, for “broad and lasting contributions to image processing, including popular
`
`and important image processing books, innovative on-line courseware, and for the creation of the
`
`leading research and educational journal and conference in the image processing field.”
`
`14. My technical articles have been widely recognized as well, including the 2009
`
`IEEE Signal Processing Society Best Journal Paper Award for the paper “Image quality
`
`assessment: From error visibility to structural similarity,” published in IEEE Transactions on
`
`Image Processing, vol. 13, no. 4, April 2004; this same paper received the 2017 IEEE Signal
`
`Processing Society Sustained Impact Paper Award as the most impactful paper published over a
`
`period of at least ten years; the 2013 Best Magazine Paper Award for the paper “Mean squared
`
`error: Love it or leave it?? A new look at signal fidelity measures,” published in IEEE
`
`Transactions on Image Processing, vol. 26, no. 1, January 2009; the IEEE Circuits and Systems
`
`Society Best Journal Paper Prize for the paper “Video quality assessment by reduced reference
`
`spatio-temporal entropic differencing,” published in the IEEE Transactions on Circuits and
`
`Systems for Video Technology, vol. 23, no. 4, pp. 684-694, April 2013; the 2017 IEEE Signal
`
`Processing Letters Best Paper Award for the paper A. Mittal, R. Soundararajan and A.C. Bovik,
`
`“Making a ‘completely blind’ image quality analyzer,” published in the IEEE Signal Processing
`
`Letters, vol. 21, no. 3, pp. 209-212, March 2013. This paper describes a unique “blind” (no-
`
`reference) video quality tool called NIQE that is being used to control the quality of cloud-based
`
`streaming videos globally. Also, the 2018 EURASIP Best Paper Award of the European
`
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`Association for Signal Processing for 2018, for the paper “Full-Reference Quality Assessment of
`
`Stereopairs Accounting for Rivalry,” Signal Processing: Image Communication, vol. 28, no. 10,
`
`pp. 1143-1155, October 2013, and the Best Paper Award of the 2018 Picture Coding Symposium
`
`for the paper, “Detecting Source Video Artifacts with Supervised Sparse Filters.”
`
`15.
`
`I received the Google Scholar Classic Paper citation twice in 2017, for the paper
`
`“Image information and visual quality,” published in the IEEE Transactions on Image
`
`Processing, vol. 15, no. 2, pp. 430-444, February 2006 (the main algorithm developed in the
`
`paper, called the Visual Information Fidelity (VIF) Index, is a core picture quality prediction
`
`engine used to quality-assess all encodes streamed globally by Netflix), and for “An evaluation
`
`of recent full reference image quality assessment algorithms,” published in the IEEE
`
`Transactions on Image Processing, vol. 15, no. 11, pp. 3440-3451, November 2006 (the picture
`
`quality database and human study described in the paper, the LIVE Image Quality Database, has
`
`been the standard development tool for picture quality research since its first introduction in
`
`2003). Google Scholar Classic Papers are very highly-cited papers that have stood the test of
`
`time, and are among the ten most-cited articles in their area of research over the ten years since
`
`their publication.
`
`16.
`
`I have also been honored by other technical organizations, including the Society
`
`for Photo-optical and Instrumentation Engineers (SPIE), from which I received the Technology
`
`Achievement Award (2013) “for Broad and Lasting Contributions to the Field of Perception-
`
`Based Image Processing,” and the Society for Imaging Science and Technology, which accorded
`
`me Honorary Membership, which is the highest recognition by that Society given to a single
`
`individual, “for his impact in shaping the direction and advancement of the field of perceptual
`
`image processing.” I was also elected as a Fellow of the Institute of Electrical and Electronics
`
`Engineers (IEEE) “for contributions to nonlinear image processing” in 1995, a Fellow of the
`
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`Optical Society of America (OSA) for “fundamental research contributions to and technical
`
`leadership in digital image and video processing” in 2006, and as a Fellow of SPIE for
`
`“pioneering technical, leadership, and educational contributions to the field of image processing”
`
`in 2007.
`
`17.
`
`Among other relevant research, I have worked with the National Aeronautics and
`
`Space Administration (“NASA”) to develop high compression image sequence coding and
`
`animated vision technology, on various military projects for the Air Force Office of Scientific
`
`Research, Phillips Air Force Base, the Army Research Office, and the Department of Defense.
`
`These projects have focused on developing local spatio-temporal analysis in vision systems,
`
`scalable processing of multi-sensor and multi-spectral imagery, image processing and data
`
`compression tools for satellite imaging, AM-FM analysis of images and video, the scientific
`
`foundations of image representation and analysis, computer vision systems for automatic target
`
`recognition and automatic recognition of human activities, vehicle structure recovery from a
`
`moving air platform, passive optical modeling, and detection of speculated masses and
`
`architectural distortions in digitized mammograms. My research has also recently been funded
`
`by Amazon Prime Video, Netflix, Qualcomm, Facebook, Texas Instruments, Intel, Cisco, and
`
`the National Institute of Standards and Technology (NIST) for research on image and video
`
`quality assessment. I have also received numerous grants from the National Science Foundation
`
`for research on image and video processing and on computational vision.
`
`18.
`
`Additional details about my employment history, fields of expertise, and
`
`publications are further described in my curriculum vitae, which is attached as Appendix B to
`
`this report. The list of litigation matters in which I have been engaged can be found in my CV.
`
`6
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`I am being compensated at my usual rate of $500 per hour, plus reimbursement
`
`19.
`
`for expenses, for my analysis. My compensation does not depend on the content of my opinions
`
`or the outcome of this proceeding.
`
`III.
`
`SUMMARY OF OPINIONS
`20.
`As explained in detail below, it is my opinion that:
`
`• Claim 5 of the ’493 patent is anticipated by or rendered obvious by the Sony MVC-
`
`FD83/FD88 camera;
`
`• Claim 6 of the ’493 patent is rendered obvious by the Sony MVC-FD83/FD88 camera
`
`alone or in combination with U.S. Patent Nos. 5,444,482 (“Misawa”);
`
`• Claim 5 of the ’493 patent is rendered obvious by the combination of U.S. Patent
`
`Nos. 7,903,162 (“Juen”) and 6,563,535 (“Anderson”); and,
`
`• Claim 6 of the ’493 patent is rendered obvious by the combination of Juen, Anderson,
`
`and Misawa.
`
`IV.
`
`LEGAL STANDARDS
`21.
`I am not a legal expert and therefore I offer no opinions on the law. However, I
`
`have been instructed on the legal standards that apply with respect to patent invalidity. The law
`
`that I apply in considering the issue of invalidity of the ’493 patent is described briefly as
`
`follows.
`
`A.
`22.
`
`Invalidity
`I understand that an issued patent claim is presumed valid. I understand that a
`
`patent claim may be declared invalid if it is anticipated by, or rendered obvious in view of, prior
`
`art.
`
`23.
`
`I understand that a patent claim may be declared invalid if it is not sufficiently
`
`supported by the specification. Claims must be sufficiently enabled by the specification such
`
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`that a person of ordinary skill in the art can make and use the claimed invention without undue
`
`experimentation. I also understand that the specification must provide sufficient written
`
`description such that a person of ordinary skill in the art understands that the inventor was in
`
`possession of the claimed invention as of the priority date of the application.
`
`B.
`24.
`
`Priority Date and Expiration Date
`I understand that the inventor bears the burden of proving his or her date of
`
`invention by showing either a date of actual reduction to practice or an earlier conception and
`
`diligent reduction to practice. Where the inventor cannot prove his or her date of invention
`
`through such evidence, the date when an application adequately disclosing the subject matter is
`
`filed is presumed to be the date of invention.
`
`25.
`
`I understand that a patent may claim the benefit of the filing date of an earlier
`
`application, but only if the earlier application provides adequate disclosure of the patent’s claims
`
`and also has a common inventor. I further understand that to satisfy the disclosure
`
`requirement—also referred to as the written description requirement—the disclosure of the
`
`earlier filed application must describe the later claimed invention in sufficient detail that one
`
`skilled in the art, as of the filing date sought, could clearly conclude that the inventor had
`
`invented the claimed subject matter. I understand that while the earlier application need not
`
`describe the claimed subject matter in precisely the same terms as found in the claims at issue,
`
`the prior application must convey with reasonable clarity to those skilled in the art that, as of the
`
`priority date sought, the inventor was in possession of the invention. I also understand that if
`
`claims of a later-filed patent contain new matter that was not disclosed by an earlier-filed
`
`application, those claims of the later-filed patent are not entitled to the filing date of the earlier
`
`filed application.
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`I understand that an issued U.S. patent expires 20 years after its application date
`
`26.
`
`in the U.S. or the earliest U.S. application date of any application to which it claims priority.
`
`Specifically, 35 U.S.C. § 154(a)(2) states:
`
`Term. Subject to the payment of fees under this title, such grant shall be for
`a term beginning on the date on which the patent issues and ending 20 years
`from the date on which the application for the patent was filed in the United
`States or, if the application contains a specific reference to an earlier filed
`application or applications under section 120, 121, 365(c), or 386(c), from
`the date on which the earliest such application was filed.
`
`27.
`
`I also understand that while the expiration term of a patent may be adjusted by a
`
`“patent term extension” (which is typically printed on the face of the patent), such extension is
`
`overcome by an explicit disclaimer of patent term in the prosecution history. See 35 U.S.C. §
`
`154(b)(2)(B) (“No patent the term of which has been disclaimed beyond a specified date may be
`
`adjusted under this section beyond the expiration date specified in the disclaimer.”).
`
`C.
`28.
`
`Anticipation
`It is my understanding that a patent claim is “anticipated” if each and every
`
`element of the claim has been disclosed in a single prior art reference. I have been informed that
`
`this standard, as it applies to the Asserted Patents, is set forth in pre-AIA 35 U.S.C. §§ 102(a),
`
`(b), (e)(2), and (g)(2), which are reproduced in pertinent part below:
`
`35 U.S.C. § 102 - A person shall be entitled to a patent unless -
`(a) the invention was known or used by others in this country, or patented or
`described in a printed publication in this or a foreign country, before the
`invention thereof by the applicant for patent, or
`(b) the invention was patented or described in a printed publication in this
`or a foreign country or in public use or on sale in this country, more than
`one year prior to the date of the application for patent in the United States,
`or
`(e) the invention was described in . . . (2) a patent granted on an application
`for patent by another filed in the United States before the invention by the
`applicant for patent . . . or
`(g) . . . (2) before such person’s invention thereof, the invention was made
`in this country by another inventor who had not abandoned, suppressed, or
`concealed it. In determining priority of invention under this subsection,
`there shall be considered not only the respective dates of conception and
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`reduction to practice of the invention, but also the reasonable diligence of
`one who was first to conceive and last to reduce to practice, from a time
`prior to conception by the other.
`
`29.
`
`I understand that each element of a patent claim may be disclosed by a prior art
`
`reference either expressly or inherently. I understand that an element of a patent claim is
`
`inherent in a prior art reference if the element must necessarily be present. Furthermore, I
`
`understand that inherency cannot be established by mere probabilities or possibilities.
`
`30.
`
`I understand that for anticipation to apply, the description in a written prior art
`
`reference does not need to be in the same words as in the claim, but all of the requirements of the
`
`claim must be present, either stated or necessarily implied, so that the hypothetical person having
`
`ordinary skill in the art, looking at that reference at the time of the claimed invention, would be
`
`able to make and use the claimed invention.
`
`D.
`31.
`
`Obviousness
`I understand a patent claim is invalid if 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 of ordinary skill in the art. I have been
`
`informed that this standard, as it applies to the applications that led to the Asserted Patents, is set
`
`forth in pre-AIA 35 U.S.C. § 103(a), which has been reproduced in pertinent part below:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented 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
`to which the subject matter pertains.
`
`32.
`
`I have also been informed that “a disclosure that anticipates under 35 U.S.C. §
`
`102 also may render the claim unpatentable under 35 U.S.C. § 103, because anticipation is the
`
`epitome of obviousness.”
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`33. When considering the issue of obviousness, I understand that I am to do the
`
`following: (i) determine the scope and content of the prior art; (ii) ascertain the differences
`
`between the prior art and the claims at issue; (iii) determine the level of ordinary skill in the
`
`pertinent art; and (iv) consider objective evidence of non-obviousness.
`
`34. With respect to objective evidence of non-obviousness, I have been informed that
`
`such evidence may include the following:
`
`• Commercial success: I understand that a strong showing of commercial
`success that is attributable to the merits of the invention should be
`considered an indication of non-obviousness.
`• Copying: I understand that evidence that an accused party copied the
`patented invention, as opposed to a prior art device, is an indication of non-
`obviousness.
`• Simultaneous invention: I understand that evidence that others
`independently developed the claimed invention at about the same time is an
`indication of obviousness.
`• Long-felt need that was recognized, persistent, and not solved by others: I
`understand that evidence of a persistent problem or need in the art that was
`resolved by the patented invention is an indication of non-obviousness.
`• Prior failure: I understand that evidence that others have tried and failed to
`solve the problem or to provide the need later resolved by the claimed
`invention is an indication of non-obviousness.
`• Skepticism: I understand that evidence that those of ordinary skill in the art
`were skeptical as to the merits of the invention, or even taught away from
`the invention, are indications of non-obviousness.
`• Unexpected results: I understand that evidence that those of ordinary skill
`in the art were surprised by the capabilities of the claimed invention is an
`indication of non-obviousness.
`
`•
`
`Industry praise: I understand that evidence that the claimed technology was
`praised by those in the industry could be an indication of non-obviousness.
`
`35.
`
`I understand that any assertion of the above indicia must be accompanied by a
`
`nexus between the merits of the invention and the evidence offered; otherwise, the evidence does
`
`not actually tend to show that the invention was non-obvious. Further, I understand that, even
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`where evidence of non-obviousness exists, the evidence may not be compelling enough to
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`overcome a strong showing of obviousness in light of the prior art.
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`36.
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`In determining whether the subject matter as a whole would have been obvious at
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`the time that the invention was made to a person having ordinary skill in the art, I have been
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`informed of several principles regarding the combination of prior art elements that are relevant.
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`First, a combination of familiar elements according to known methods is likely to be obvious
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`when it yields predictable results. Second, if a person of ordinary skill in the art can implement a
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`“predictable variation” in a prior art device, and would have seen the benefit of doing so, such a
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`variation would be obvious. In particular, when there is pressure to solve a problem and there
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`are a finite number of identifiable, predictable solutions, it would be reasonable for a person of
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`ordinary skill in the art to pursue those options that fall within his or her technical grasp. If such
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`a process leads to the claimed invention, then the claimed invention is not an innovation, but is
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`rather the result of ordinary skill and common sense.
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`37.
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`I understand that the “teaching, suggestion, or motivation” test may be a useful
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`guide in establishing a rationale for combining elements of the prior art. This test poses the
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`question as to whether there is an explicit teaching, suggestion, or motivation in the prior art to
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`combine prior art elements in a way that realizes the claimed invention. Although helpful to the
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`obviousness inquiry, I understand that this test is not required.
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`38. Moreover, I understand that the motivation to combine the teachings of the prior
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`art references may be found in the references themselves and also in: (1) the nature of the
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`problem being solved; (2) the express, implied, and inherent teachings of the prior art; (3) the
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`knowledge of persons of ordinary skill in the art; (4) the predictable results obtained in
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`combining the different elements of the prior art; (5) the predictable results obtained by simple
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`substitution of one known element for another; (6) the use of a known technique to improve
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`similar devices, methods, or products in the same way; (7) the predictable results obtained in
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`applying a known technique to a known device, method, or product ready for improvement; (8)
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`the finite number of identified, predictable solutions that had a reasonable expectation of success;
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`and (9) known work in various technological fields that could be applied to the same or different
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`technological fields based on design incentives or other market forces.
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`E.
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`39.
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`Claim Construction
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`I have been informed that claim terms are interpreted as one of ordinary sk