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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`APPLE INC.
`Petitioner
`
`v.
`
`PARUS HOLDINGS, INC.
`Patent Owner
`____________
`
`IPR2020-00686
`Patent No. 7,076,431
`
`and
`
`IPR2020-00687
`Patent No. 9,451,084
` ____________
`
`
`
`DECLARATION OF DR. LOREN TERVEEN
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`TABLE OF CONTENTS
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`INTRODUCTION ..........................................................................................5
`I.
`A. Background and Qualifications ........................................................................................ 6
`B. Materials Considered ....................................................................................................... 9
`II. LEGAL FRAMEWORK ............................................................................. 11
`A. Analogous Art ............................................................................................................... 11
`B. Obviousness .................................................................................................................. 11
`C. Secondary Considerations of Non-Obviousness ............................................................. 17
`D. Claim Construction ....................................................................................................... 18
`III. OPINIONS REGARDING LEVEL OF SKILL OF A PERSON HAVING
`ORDINARY SKILL IN THE ART.................................................................... 19
`IV. BACKGROUND OF THE TECHNOLOGY FOR THE ’431 AND ’084
`PATENTS............................................................................................................ 21
`V. OPINIONS REGARDING THE ’431 AND ’084 PATENTS AND CITED
`PRIOR ART ........................................................................................................ 34
`A. Description of the Alleged Invention of the ’431 and ’084 Patents ................................. 34
`B. Opinions Regarding Ladd .............................................................................................. 38
`C. Opinions Regarding Kurosawa ...................................................................................... 40
`D. Opinions Regarding Goedken ........................................................................................ 41
`E. Opinions Regarding Madnick ........................................................................................ 43
`F. Opinions Regarding Houser .......................................................................................... 44
`G. Opinions Regarding Rutledge ........................................................................................ 45
`H. Brief Overview of the Opinions on the ’431 and ’084 Patents ........................................ 46
`VI. ’431 PATENT, GROUND 1: OPINIONS REGARDING THE
`COMBINATION OF LADD, KUROSAWA, AND GOEDKEN ........................ 49
`A. Claim 1 of the ’431 Patent ............................................................................................. 49
`B. Claim 5 of the ’431 Patent: “The system of claim 1 wherein said speaker-independent
`commands.” ........................................................................................................................ 106
`C. Claim 6 of the ’431 Patent: “The system of claim 1 wherein said speaker-independent
`speech recognition device is configured to recognize naturally spoken speech commands.” 109
`
`speech recognition device is configured to analyze phonemes to recognize said speech
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`configured to periodically search said internet to identify new web sites and to add said new
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`Claim 10: “The system of claim 1 wherein said instruction set further comprises a ranking
`associated with each said web site address, said ranking indicating the order in which the
`
`Claim 13: “The system in claim 10 wherein said computer is configured to access said
`plurality of web sites in order of ranking to retrieve said information requested by said user,
`
`operatively connected to said computer, said database configured to store said information
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`’431 PATENT, GROUND 2: OPINIONS REGARDING THE
`
`D. Claim 9 of the ’431 Patent: “The system of claim 1 wherein said computer is further
`web sites to said plurality of web sites.” .............................................................................. 111
`E. Claims 10 and 13 of the ’431 Patent ............................................................................ 114
`plurality of pre-selected web sites are accessed.” ................................................................. 114
`said computer further configured to first access said web site having the highest ranking.” . 114
`F. Claim 14 of the ’431 Patent: “The system of claim 1 further comprising a database
`gathered from said web sites in response to said information requests.” ............................... 117
`G. Claim 18 of the ’431 Patent ......................................................................................... 119
`VII.
`COMBINATION OF LADD, KUROSAWA, GOEDKEN, AND MADNICK .. 122
`A. Claim 7 of the ’431 Patent: “The system of claim 1 wherein said instruction set further
`122
`B. Claim 26(m) of the ’431 Patent: “said computer further configured to establish or adjust
`information to be retrieved are assigned lower rankings”..................................................... 128
`VIII.
`KUROSAWA, GOEDKEN, AND HOUSER...................................................... 129
`A. Claim 5 of the ’431 Patent: “The system of claim 1 wherein said speaker-independent
`commands.” ........................................................................................................................ 129
`B. Claim 6 of the ’431 Patent: “The system of claim 1 wherein said speaker-independent
`speech recognition device is configured to recognize naturally spoken speech commands.” 131
`IX. ’431 PATENT, GROUND 4: OPINIONS REGARDING THE
`COMBINATION OF LADD, KUROSAWA, GOEDKEN, AND RUTLEDGE 132
`A. Claim 9 of the ’431 Patent: “The system of claim 1 wherein said computer is further
`web sites to said plurality of web sites.” .............................................................................. 132
`X. ’084 PATENT, GROUND 1: OPINIONS REGARDING THE
`COMBINATION OF LADD, KUROSAWA, AND GOEDKEN ...................... 134
`
`comprises a content descriptor associated with each said web site address, said content
`descriptor pre-defining a portion of said web site containing said information to be retrieved.”
`
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`said rankings associated with said plurality of web sites such that said web site having said
`information to be retrieved is assigned the highest ranking and any web sites not having said
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`’431 PATENT, GROUND 3: THE COMBINATION OF LADD,
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`speech recognition device is configured to analyze phonemes to recognize said speech
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`configured to periodically search said internet to identify new web sites and to add said new
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`speech recognition device is configured to analyze phonemes to recognize the speech
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`comprises a pre-defined order of access associated with each web site address, the pre-defined
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`operatively connected to the computing device, the database configured to store the
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`A. Claim 1 of the ’084 Patent ........................................................................................... 134
`B. Claim 5 of the ’084 Patent “The system of claim 1, wherein the speaker-independent
`commands.” ........................................................................................................................ 142
`C. Claim 6 of the ’084 Patent: “The system of claim 1, wherein the speaker-independent
`speech-recognition device is configured to recognize naturally spoken speech commands.” 143
`D. Claim 10 of the ’084 Patent: “The system of claim 1, wherein the instruction set further
`order of access indicating the order in which the plurality of web sites are accessed.” ......... 143
`E. Claim 14 of the ’084 Patent: “The system of claim 1, further comprising: a database
`information gathered from the web sites in response to the information requests.” .............. 144
`XI. ’084 PATENT, GROUND 2: OPINIONS REGARDING THE
`COMBINATION OF LADD, KUROSAWA, GOEDKEN, AND MADNICK .. 144
`A. Claim 7 of the ’084 Patent: “The system of claim 1, wherein the instruction set further
`pre-defining a portion of the web site containing the information to be retrieved.” .............. 144
`XII.
`COMBINATION OF LADD, KUROSAWA, GOEDKEN, AND HOUSER..... 145
`A. Claim 5 of the ’084 Patent: “The system of claim 1, wherein the speaker-independent
`commands.” ........................................................................................................................ 145
`B. Claim 6 of the ’084 Patent: “The system of claim 1, wherein the speaker-independent
`speech-recognition device is configured to recognize naturally spoken speech commands.” 145
`XIII.
`COMBINATION OF LADD, KUROSAWA, GOEDKEN, AND RUTLEDGE 146
`XIV. Conclusion............................................................................................ 147
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`comprises: a content descriptor associated with each web site address, the content descriptor
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`’084 PATENT, GROUND 3: OPINIONS REGARDING THE
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`speech recognition device is configured to analyze phonemes to recognize the speech
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`’084 PATENT, GROUND 4: OPINIONS REGARDING THE
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
`
`
`I, Dr. Loren Terveen, hereby declare the following:
`
`I.
`
`INTRODUCTION
`1. My name is Loren Terveen, and I am over 21 years of age and otherwise
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`competent to make this Declaration. I make this Declaration based on facts and
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`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
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`forth herein.
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`2.
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`I have been retained as a technical expert witness in this matter by
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`Counsel for the Petitioner, Apple Inc. (“Petitioner”) to provide my independent
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`opinions on certain issues requested by Counsel for Petitioner relating to the
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`accompanying Petitions for Inter Partes Review of U.S. Patent No. 7,076,431 (“the
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`’431 Patent”) and U.S. Patent No. 9,451,084 (“the ’084 Patent”). I am being
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`compensated at an hourly rate of $500.00. My compensation in this matter is not
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`based on the substance of my opinions or on the outcome of this matter.
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`3.
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`I am providing this Declaration that addresses opinions for both the
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`’431 and ’084 Patents given the patents have substantially the same specification,
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`which counsel has informed me is due to the ’084 Patent being a continuation of the
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`’431 Patent. Counsel has also informed me that both the ’431 and ’084 Patents claim
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`the same priority date—specifically, February 4, 2000—due to both patents claiming
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
`
`priority to the same priority document. I note that many of the claimed limitations
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`of the ’084 Patent are substantially similar to the ’431 Patent and vice-versa. Many
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`of my citations to the patents are made with respect to the ’431 Patent for ease of
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`reference. However, because the specifications of the ’431 and ’084 Patents are
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`substantially similar, any citation to the specification of the ’431 Patent applies
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`equally to the ’084 Patent, unless otherwise indicated.
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`4.
`
`I have been informed by counsel that the claims being challenged in the
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`accompanying Petition for the ’431 Patent is Claims 1-7, 9-10, 13-14, 18-21, and
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`26-30 (“the Challenged Claims of the ’431 Patent”); and of the ’084 Patent is Claims
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`1-7, 10, and 14 (“the Challenged Claims of the ’084 Patent”).
`
`A. Background and Qualifications
`5.
`I have summarized in this section my educational background, career
`
`history, and other qualifications relevant to this matter. I have also included a current
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`version of my curriculum vitae as Exhibit 1029.
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`6.
`
`I received a B.A. degree in Computer Science, Mathematics, and
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`History from the University of South Dakota in 1984, followed by a M.S. in
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`Computer Science from the University of Texas in 1988. In 1991, I received a Ph.D.,
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`also in Computer Science, from the University of Texas.
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`
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
`
`I am a Distinguished McKnight University Professor at the University
`
`7.
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`of Minnesota in the Department of Computer Science and Engineering, and I have
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`substantial experience with human computer interaction and user interfaces,
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`including well before February 4, 2000, the date I have been informed is the priority
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`date for the ’431 and ’084 Patents at issue in this matter, as I discussed above. I spent
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`time as part of the Technical Staff of AT&T Labs in the Research division starting
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`in 1991, including acting as a Principal Member starting in 1996. I was honored by
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`the Association for Computing Machinery (ACM) as a Distinguished Scientist in
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`2009 and served as the president of ACM’s Special Interest Group on Computer-
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`Human Interaction (ACM SIGCHI) from 2015-2018.
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`8.
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`I have taught numerous courses at the University of Minnesota related
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`to human-computer interaction and user interface design. Additionally, I have
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`published over 100 peer-reviewed articles, a book, contributed chapters in six
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`additional books, and have given over 50 presentations all across the United States
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`and internationally. My published works revolve around the fields of human-
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`computer interaction, user interface design, and social computing. I am also a named
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`inventor on nine U.S. Patents related to user interfaces, interactive data analysis, and
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`methods for selecting and displaying information to users. My published and patents
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`have addressed searching for information on the World Wide Web and the design of
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`interactive voice response systems for information retrieval. I have served as a
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`conference chair more than 15 times, have served on four different editorial boards,
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`and have sat on almost 20 program committees, including the ACM Conference on
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`Recommender Systems five separate times (2007, 2008, 2009, 2010, and 2013).
`
`9.
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`Selected relevant patents and papers include: US Patent 5,953,393
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`Personal Telephone Agent; US Patent 6,029,192 System and Method for Locating
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`Resources on a Network Using Resource Evaluations Derived from Electronic
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`Messages; US Patent 6,256,648 System and Method for Selecting and Displaying
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`Hyperlinked Information Resources; DynaDesigner: a tool for rapid creation of
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`device-independent interactive services, Human—Computer Interaction, Springer,
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`Boston, MA, 1995; PHOAKS: A system
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`for sharing recommendations,
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`Communications of
`
`the ACM 40.3 (1997); Constructing, organizing, and
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`visualizing collections of topically related web resources, ACM Transactions on
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`Computer-Human Interaction (TOCHI) 6.1 (1999).
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`10. My work described in US Patent 5,953,393 Personal Telephone
`
`Agent describes a “personal agent” implemented via an Interactive Voice Response
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`system interface that (1) accepted information retrieval requests from a user, (2)
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`accessed a database of information sources over a network and search the
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`information sources for answers to the requests, and (3) returned those answers to
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`the user. The database of information sources was indexed by the types of
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`information they contained. The system used speech recognition grammars to
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`recognize user input and speech synthesis to speak results to users. Example
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`applications included obtaining the price of an item and obtaining information about
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`a flight.
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`11. Based on my experiences described above, and as indicated in my
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`Curriculum Vitae, I am qualified to provide the following opinions with respect to
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`the patents in this case. Additionally, I was at least a person having ordinary skill in
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`the art as of the priority date of the ’431 and ’084 Patents.
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`B. Materials Considered
`12. As part of my work and in forming my opinions in connection with
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`these proceedings, I have reviewed the following materials. For any prior art listed
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`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 this
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`proceeding:
`
`• Petition for Inter Partes Review of U.S. Patent No. 7,076,431;
`• U.S. Patent No. 7,076,431 (Ex. 1001);
`• File History for U.S. Patent 7,076,431 (Ex. 1002);
`• U.S. Patent No. 6,269,336 to Ladd et. al (Ex. 1004);
`• Unexamined Japanese Patent Application No. JP H9-311869 to Kurosawa
`(Ex. 1005);
`• U.S. Patent No. 6,393,423 to Goedken (Ex. 1006);
`
`
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
`
`
`• U.S. Patent No. 5,913,214 to Madnick et. al (Ex. 1007);
`• U.S. Patent No. 5,774,859 to Houser et. al (Ex. 1008);
`• U.S. Patent No. 7,203,656 to Bennett (Ex. 1009);
`• U.S. Patent No. 6,650,998 to Rutledge et al. (Ex. 1010);
`• MURAX: A Robust Linguistic Approach for Question Answering Using an
`Online Encyclopedia SIGIR ’93, July 1993 Kupiec, Julian (Ex. 1011);
`• U.S. Patent No. 6,606,611 to Khan (Ex. 1012);
`• U.S. Patent No. 6,428,941 to Ho et al. (Ex. 1013);
`• U.S. Patent No. 6,427,165 to Anderson (Ex. 1014);
`• U.S. Patent No. 6,460,060 to Maddalozzo, Jr. et al. (Ex. 1015);
`• U.S. Patent No. 5,642,502 to Driscoll (Ex. 1016);
`• U.S. Patent No. 5,850,442 to Muftic (Ex. 1017);
`• U.S. Patent No. 5,956,716 to Kenner et al. (Ex. 1018);
`• U.S. Patent No. 6,131,085 to Rossides (Ex. 1019);
`• Just Say No: How Are Visual Searches Terminated When There Is No
`Target Present? Cognitive Psychology, 1996 Chun et al. (Ex. 1020);
`• PCT Application WO 98/03923 to Kraftsow et al. (Ex. 1021);
`• US Patent No. 6,397,212 to Biffar (Ex. 1022);
`• U.S. Patent No. 6,587,466 to Battacharya et al. (Ex. 1023);
`• Web Hunting: Design of a Simple Intelligent Web Search Agent
`Crossroads, June 1999 Youngblood (Ex. 1024);
`• Collective Intelligence and Its Implementation on the Web Computational
`and Mathematical Organization Theory, October 1999 Heylighen, Francis
`(Ex. 1025);
`• U.S. Patent No. 6,704,722 to Wang Baldonado (Ex. 1026);
`• University of Sheffield TREC-8 Q&A System Computer Science, June 1999
`Humphries et al. (Ex. 1027);
`• U.S. Patent No. 7,149,359 to Omoigui (Ex. 1028);
`• CV of Dr. Loren Terveen (Ex. 1029);
`• U.S. Patent No.9,451,084 (Ex. 1030); and
`• File History for U.S. Patent 9,451,084 (Ex. 1031).
`
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
`
`
`II. LEGAL FRAMEWORK
`13.
`
`I am a technical expert and do not offer any legal opinions. However, I
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`have been informed about certain legal principles regarding patentability and related
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`matters under United States patent law, which I have applied in performing my
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`analysis and arriving at my technical opinions in this matter.
`
`A. Analogous Art
`14.
`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
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`art” to the claimed invention. I have also been informed by counsel that a prior art
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`reference is analogous art to the claimed invention if: (1) the reference is from the
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`same field of endeavor as the claimed invention, even if it addresses a different
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`problem; or (2) the reference is reasonably pertinent to the problem faced by the
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`invention, even if it is not in the same field of endeavor as the claimed invention.
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`B. Obviousness
`15.
`I have been informed that a person cannot obtain a patent on an
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`invention if the differences between the invention and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art (“PHOSITA”). I have been informed
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`that a conclusion of obviousness may be founded upon more than a single item of
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`prior art. I have been further informed that obviousness is determined by evaluating
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`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 ordinary skill in the
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`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
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`obviousness inquiry should not be done in hindsight. Instead, the obviousness
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`inquiry should be done through the eyes of a PHOSITA at the time of the alleged
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`invention.
`
`16.
`
`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
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`organizations, and materials from industry conferences, as examples. I have been
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`informed that for a prior art reference to be proper for use in an obviousness analysis,
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`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
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`inventor (even if it is not in the same field of endeavor as the claimed invention). In
`
`order for a reference to be “reasonably pertinent” to the problem, it must logically
`
`have commended itself to an inventor’s attention in considering his problem. In
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`determining whether a reference is reasonably pertinent, one should consider the
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`problem faced by the inventor, as reflected either explicitly or implicitly, in the
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`specification. I believe that all of the references I considered in forming my opinions
`
`in this IPR are well within the range of references a PHOSITA would have consulted
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`to address the type of problems described in the ’431 and ’084 Patents.
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`17.
`
`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
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`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
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`to combine the prior art, which can include, but is not limited to, any of the following
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`rationales: (A) combining prior art methods according to known methods to yield
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`predictable results; (B) substituting one known element for another to obtain
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`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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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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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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`would have led one of ordinary skill to modify the prior art reference or to combine
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`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
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`obvious provided a PHOSITA would have had a reasonable expectation of success
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`regarding the proposed combination.
`
`18.
`
`I am informed that the existence of an explicit teaching, suggestion, or
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`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
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`invalid. I am further informed that the obviousness analysis often necessitates
`
`consideration of the interrelated teachings of multiple patents, the effects of demands
`
`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.
`
`19.
`
`I also am informed that in conducting an obviousness analysis, a precise
`
`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 PHOSITA 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.
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`In other words, the prior art need not be directed towards solving the same specific
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`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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`20.
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`I also am informed that the fact that a particular combination of prior
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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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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`predictable results to be non-obvious.
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`21.
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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 PHOSITA 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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`22.
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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 PHOSITA, upon reading the reference, would be
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`discouraged from following the path set out in the reference, or would be led in a
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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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`direction divergent from the path that was taken by the patent applicant. In general,
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`a reference will teach away if it suggests that the line of development flowing from
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`the reference’s disclosure is unlikely to be productive of the result sought by the
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`patentee. I am informed that a reference teaches away, for example, if (1) the
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`combination would produce a seemingly inoperative device, or (2) the references
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`leave the impression that the product would not have the property sought by the
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`patentee. I also am informed, however, that a reference does not teach away if it
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`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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`C.
`23.
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`Secondary Considerations of Non-Obviousness
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`I am informed that even if a prima facie case of obviousness is
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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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`Declaration of Dr. Loren Terveen
`U.S. Patent No. 7,076,431
`U.S. Patent No. 9,451,084
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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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`24.
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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 raises secondary
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`considerations during the course of this proceeding.
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`D. Claim Construction
`25.
`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.
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`Second, the construed claim language is then compared to the disclosures of the prior
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`art. I am informed that claims are generally given their ordinary and custom meaning
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`as understood by one of ordinary skill in the art at the time of the invention, in light
`
`of the patent specification.
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`26. For purposes of this proceeding, I have applied the claim constructions
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`set forth in