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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC, SAMSUNG ELECTRONICS CO., LTD., SAMSUNG
`ELECTRONICS AMERICA, INC., LG ELECTRONICS, INC., and LG
`ELECTRONICS U.S.A., INC.,
`Petitioners,
`
`v.
`
`PARUS HOLDINGS INC.,
`Patent Owner.
`_____________
`
`Case No. TBD
`Patent No. 7,076,431
`_____________
`
`DECLARATION OF STUART J. LIPOFF
`
`Google Exhibit 1002
`Google v. Parus
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND ............................... 1
`
`II. MATERIALS REVIEWED AND CONSIDERED ........................................ 9
`
`III. MY UNDERSTANDING OF PATENT LAW .............................................11
`
`A. Anticipation .......................................................................................... 12
`
`B. Obviousness .......................................................................................... 13
`
`IV. PERSON OF ORDINARY SKILL IN THE ART (“POSA”) .......................15
`
`V.
`
`THE ’431 PATENT .......................................................................................19
`
`A. Overview of the Described Technology............................................... 19
`
`B. The Challenged Claims ........................................................................ 30
`
`C. Prosecution History of the ’431 Patent ................................................ 30
`
`VI. PRIOR-ART REFERENCES ........................................................................32
`
`A. Kovatch (Ex. 1005): International Patent Application Publication
`No. WO 2001/050453 .......................................................................... 32
`
`B. Neal (Ex. 1007): U.S. Patent No. 6,324,534 ........................................ 33
`
`C. Chakrabarti (Ex. 1008): U.S. Patent No. 6,418,433 ............................. 33
`
`D. DeSimone (Ex. 1009): U.S. Patent No. 5,787,470 ............................... 34
`
`E. Kurganov-262 (Ex. 1004): U.S. Patent Application Publication
`No. 2001/0047262 ................................................................................ 34
`
`VII. THE CHALLENGED CLAIMS WOULD HAVE BEEN OBVIOUS
`OVER THE ART IN THE PETITION .........................................................35
`
`A. Ground 1: Claims 1-2, 4-7, 10, and 13-14 Would Have Been
`Obvious over Kovatch in View of Neal ............................................... 35
`
`1. Kovatch (Ex. 1005) .......................................................................35
`
`a. Kovatch’s Disclosure ........................................................... 37
`
`b. Kovatch’s Claim 1 is supported by Provisional
`Application No. 60/174,371 (“Kovatch-Provisional”) ........ 45
`
`2. The Kovatch/Neal Combination ...................................................52
`
`
`
`– i –
`
`

`

`
`
`
`
`3. Claim 1 ..........................................................................................60
`
`a.
`
`[1pre] .................................................................................... 60
`
`(1) “A system for retrieving information from pre-
`selected web sites” ....................................................... 60
`
`(2) “by uttering speech commands into a voice
`enabled device” ............................................................ 66
`
`(3) “and for providing to users retrieved information
`in an audio form via said voice enabled device” ......... 66
`
`[1.a] “a computer, said computer operatively
`connected to the internet” .................................................... 67
`
`[1.b] “a voice enabled device operatively connected to
`said computer, said voice enabled device configured to
`receive speech commands from users” ................................ 69
`
`[1.c] “at least one speaker-independent speech
`recognition device, said speaker-independent speech
`recognition device operatively connected to said
`computer and to said voice enabled device”........................ 69
`
`[1.d] “at least one speech synthesis device, said speech
`synthesis device operatively connected to said
`computer and to said voice enabled device”........................ 72
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`[1.e] ...................................................................................... 74
`
`(1) “at least one instruction set for identifying said
`information to be retrieved, said instruction set
`being associated with said computer” ......................... 74
`
`(2) “said instruction set comprising: a plurality of
`pre-selected web site addresses, each said web
`site address identifying a web site containing said
`information to be retrieved” ........................................ 79
`
`g.
`
`[1.f] ....................................................................................... 81
`
`(1) “at least one recognition grammar associated with
`said computer” ............................................................. 81
`
`(2) “each said recognition grammar corresponding to
`each said instruction set and corresponding to a
`speech command; said speech command
`
`– ii –
`
`

`

`
`
`
`
`h.
`
`i.
`
`j.
`
`k.
`
`l.
`
`comprising an information request selectable by
`the user” ....................................................................... 82
`
`[1.g] “said speaker-independent speech recognition
`device configured to receive from users via said voice
`enabled device said speech command and to select the
`corresponding recognition grammar upon receiving
`said speech command” ......................................................... 89
`
`[1.h] “said computer configured to retrieve said
`instruction set corresponding to said recognition
`grammar selected by said speaker-independent speech
`recognition device” .............................................................. 91
`
`[1.i] “said computer further configured to access at
`least one of said plurality of web sites identified by
`said instruction set to obtain said information to be
`retrieved” .............................................................................. 93
`
`[1.j] “said computer configured to first access said first
`web site of said plurality of web sites and, if said
`information to be retrieved is not found at said first
`web site, said computer configured to sequentially
`access said plurality of web sites until said information
`to be retrieved is found or until said plurality of web
`sites has been accessed” ....................................................... 93
`
`[1.k] “said speech synthesis device configured to
`produce an audio message containing any retrieved
`information from said pre-selected web sites, and said
`speech synthesis device further configured to transmit
`said audio message to said users via said voice enabled
`device” ................................................................................. 95
`
`4. Claim 2: “The system of claim 1 wherein said internet is
`the Internet” ...................................................................................97
`
`5. Claim 4: “The system of claim 1 wherein said voice
`enabled device is a standard telephone, an IP telephone, a
`cellular phone, a PDA, a personal computer, a DVD player,
`a television or other video display device, a CD player, a
`MP3 player, or any other device capable of transmitting
`said audio message” ......................................................................97
`
`– iii –
`
`

`

`
`
`
`
`6. Claim 5: “The system of claim 1 wherein said speaker-
`independent speech recognition device is configured to
`analyze phonemes to recognize said speech commands ” ............98
`
`7. Claim 6: “The system of claim 1 wherein said speaker-
`independent speech recognition device is configured to
`recognize naturally spoken speech commands ” ........................100
`
`8. Claim 7: “The system of claim 1 wherein said instruction
`set further 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” ........................................................101
`
`9. 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 plurality of pre-selected web sites are accessed.” .................103
`
`10. 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,
`said computer further configured to first access said web
`site having the highest ranking” ..................................................104
`
`11. Claim 14: “The system of claim 1 further comprising a
`database operatively connected to said computer, said
`database configured to store said information gathered from
`said web sites in response to said information requests” ............105
`
`B. Ground 2: All Challenged Claims Would Have Been Obvious
`over Kovatch in View of Neal and Chakrabarti ................................. 107
`
`1. Chakrabarti ..................................................................................107
`
`2. The Kovatch/Neal/Chakrabarti Combination .............................109
`
`3. Claim 9: “The system of claim 1 wherein said computer is
`further configured to periodically search said internet to
`identify new web sites and to add said new web sites to said
`plurality of web sites.” ................................................................114
`
`4. The Kovatch/Neal/Chakrabarti Combination Meets All
`Challenged Claims ......................................................................114
`
`C. Ground 3: Claim 14 Would Have Been Obvious over Kovatch in
`View of Neal and DeSimone .............................................................. 116
`
`– iv –
`
`

`

`
`
`1. DeSimone ....................................................................................116
`
`2. The Kovatch/Neal/DeSimone Combination ...............................119
`
`D. Ground 4: Claim 14 Would Have Been Obvious over Kovatch in
`View of Neal, Chakrabarti, and DeSimone ........................................ 126
`
`E. Ground 5: Claim 9 Would Have Been Obvious Over Kurganov-
`262 in View of Chakrabarti ................................................................ 127
`
`1. Priority Date of Claim 9 ..............................................................127
`
`a. The Specification’s First Embodiment Does Not
`Provide Written Description for Claim 9........................... 128
`
`b. The Specification’s Second Embodiment Does Not
`Provide Written Description for Claim 9........................... 131
`
`c. The Specification Describes No Embodiment That
`Meets Claim 9 .................................................................... 139
`
`d. The Provisional Applications Do Not Provide Written
`Description for Claim 9 ..................................................... 139
`
`e. Claim 9’s Effective Filing Date Is No Earlier Than
`2004 .................................................................................... 140
`
`2. Kurganov-262 Discloses All Limitations of Claim 1 .................141
`
`3. Claim 9 Would Have Been Obvious over Kurganov-262 in
`View of Chakrabarti ....................................................................163
`
`F. Ground 6: Claim 14 Would Have Been Obvious over Kurganov-
`262 in View of DeSimone .................................................................. 166
`
`1. Priority Date of Claim 14 ............................................................166
`
`2. The Kurganov-262/DeSimone Combination Meets
`Claim 14 ......................................................................................171
`
`VIII. CONCLUSION AND SIGNATURE ..........................................................177
`
`CLAIM LISTING ..................................................................................................178
`
`
`
`– v –
`
`

`

`
`
`I, Stuart J. Lipoff, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
`
`Petitioners Google LLC, Samsung Electronics Co., LTD., Samsung Electronics
`
`America, Inc., LG Electronics Inc., and LG Electronics U.S.A., Inc., to assess
`
`claims 1-2, 4-7, 9-10, and 13-14 (the “challenged claims”) of U.S. Patent No.
`
`7,076,431 (“the ’431 patent”). I am being compensated for my time at my standard
`
`rate of $375 per hour, plus actual expenses. My compensation is not dependent in
`
`any way upon the outcome of Petitioners’ petition for inter partes review of the
`
`’431 patent.
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND
`
`2.
`
`I am currently president of IP Action Partners Inc., a consulting
`
`practice that serves the telecommunications, information technology, media,
`
`electronics, and e-business industries.
`
`3.
`
`I earned a Bachelor of Science degree in Electrical Engineering in
`
`1968 and a second Bachelor of Science degree in Engineering Physics in 1969,
`
`both from Lehigh University. I earned a Master of Science degree in Electrical
`
`Engineering from Northeastern University in 1974, and then a Master of Business
`
`Administration degree from Suffolk University in 1983.
`
`4.
`
`I hold a Federal Communications Commission (“FCC”) General
`
`Radiotelephone License. I also hold a Certificate in Data Processing from the
`
`– 1 –
`
`

`

`
`
`Institute for the Certification of Computing Professionals (“ICCP”), which is
`
`supported by the Association for Computing Machinery (“ACM”).
`
`5.
`
`I am also a registered professional engineer (PE) in the
`
`Commonwealth of Massachusetts and in the State of Nevada.
`
`6.
`
`I am a fellow of the Institute of Electrical and Electronics Engineers
`
`(“IEEE”) Consumer Electronics, Communications, Computer, Circuits, and
`
`Vehicular Technology Groups. I have been a member of the IEEE Consumer
`
`Electronics Society National Board of Governors (formerly known as the
`
`Administrative Committee) since 1981, and I was Boston Chapter Chairman of the
`
`IEEE Vehicular Technology Society from 1974 to 1976. I served as the 1996-
`
`1997 President of the IEEE Consumer Electronics Society, and from 1999 to 2018
`
`I served as Chairman of the Society’s Technical Activities and Standards
`
`Committee and as Vice President of Publications for the Society. Since 2018 I
`
`have served as Vice President of Standards and Industry Activities for the Society.
`
`I have also served as an Ibuka Award committee member for the IEEE’s Award in
`
`the field of consumer electronics.
`
`7.
`
`I have prepared and presented numerous papers at the IEEE and at
`
`other professional meetings. For example, in fall 2000, I served as general
`
`program chair for IEEE’s Vehicular Technology Conference on advanced wireless
`
`communication technology. I have organized sessions at The International
`
`– 2 –
`
`

`

`
`
`Conference on Consumer Electronics, and I was the 1984 program chairman. I
`
`conducted an eight-week IEEE-sponsored short course on Fiber Optics System
`
`Design. I received IEEE’s Centennial Medal in 1984, and I received IEEE’s
`
`Millennium Medal in 2000.
`
`8.
`
`As Vice President and Standards Group Chairman for the
`
`Association of Computer Users (“ACU”) from 1980 to 1983, I served as the ACU
`
`representative to the ANSI X3 Standards Group. From 1976 to 1978, I served as
`
`Chairman of the task group on user rule compliance for the FCC’s Citizens
`
`Advisory Committee on Citizen’s Band Radio.
`
`9.
`
`Over the last 25 years, I have been a member of the Society of Cable
`
`Television Engineers, the Association for Computing Machinery, and The Society
`
`of Motion Picture and Television Engineers. From 2001 to 2004, I served as a
`
`member of the USA advisory board to the National Science Museum of Israel. In
`
`1998, I presented a short course on international product development strategies as
`
`a faculty member for Technion Institute of Management in Israel. From 2001 to
`
`2003, I served as a member of the board or directors of The Massachusetts Future
`
`Problem Solving Program.
`
`10.
`
`I am a named inventor on seven United States patents and have
`
`several publications on data communications in publications, including Electronics
`
`– 3 –
`
`

`

`
`
`Design, Microwaves, EDN, the Proceedings of the Frequency Control Symposium,
`
`Optical Spectra, and IEEE publications.
`
`11.
`
`During my professional career dating from 1969 to the present, I
`
`have been heavily engaged in the study, analysis, evaluation, design, and
`
`implementation of products and technology associated with consumer electronics
`
`and electronic appliances. A particular focus of my professional activities has been
`
`improving the man-machine interface including voice, speech, and speaker
`
`recognition for man-machine interactions.
`
`12.
`
`For approximately three years, from 1969 to 1972, I served as
`
`Project Engineer for Motorola’s Communications Division, where I had project
`
`design responsibilities for paging and wireless communication products. Projects
`
`I worked on while employed at Motorola included work on paging systems that
`
`included digital voice storage, voice compression, and voice synthesis. I also
`
`worked on projects that interfaced wireless data communications terminals to
`
`public safety computer systems for mobile data retrieval and data entry.
`
`13.
`
`For approximately four years, from 1972 to 1976, I served as
`
`Section Manager for Bell & Howell Communications Company, where I also had
`
`project design responsibilities for paging and wireless communication products.
`
`The projects I supported included covert audio intelligence systems that recognized
`
`speech and activated digital voice compression recording systems. I also led
`
`– 4 –
`
`

`

`
`
`projects for voice-based radio paging systems that recorded speech input,
`
`processed the speech to remove silence, processed the speech to digitally compress
`
`the speech, and store and forward the speech upon demand from DTMF or
`
`computer keyboard retrieval from the servers.
`
`14.
`
`For 25 years from 1976 to 2001, I worked for Arthur D. Little, Inc.
`
`(ADL), where I became the Vice President and Director of Communications,
`
`Information Technology, and Electronics (CIE) and served in that role for 10
`
`years, from 1991 to 2001. At ADL, I was responsible for the firm’s global CIE
`
`practice in laboratory-based contract engineering, product development, and
`
`technology-based consulting. I was also involved in multiple pioneering efforts to
`
`identify and explore customer-to-business and business-to-business electronic
`
`commerce and transactions information processing opportunities (e-commerce).
`
`These projects involved technology assessment and analysis as well as developing
`
`architectures and systems to support multiple applications, and typically involved
`
`an information retrieval component.
`
`15. While at ADL, I worked on several projects involving the
`
`combination of voice interfaces (including speech recognition and voice audio
`
`output) and information retrieval. For example, over the course of three years in
`
`the early-1990s, I worked on a project for Bolt Beranek and Newman (BB&N),
`
`where I evaluated and benchmarked technology for a voice input/output
`
`– 5 –
`
`

`

`
`
`application that allowed end users (e.g., travel agents) to use speech inputs to
`
`interact with airline reservation databases to retrieve information about travel
`
`reservation options, where the results were returned to the user in an audible
`
`message. This system included a natural language front-end speech-interface
`
`module with speech recognition that used pre-defined recognition grammars to
`
`convert the end user’s speech into structured commands supported by an airline
`
`reservation system. As another example, over the course of three years in the mid-
`
`1990s, I worked on a project for Texas Instruments that applied a speech-
`
`recognition interface for a variety of applications that retrieved information from
`
`database servers.
`
`16.
`
`Other projects that I worked on at various points in my 25 years at
`
`ADL that involved speech recognition technologies included the following.
`
`17.
`
`Over the course of three years in the early 1990s, I worked on a
`
`voice-interface project developing spoken digit telephone number recognition and
`
`voiceprint matching for Sprint’s long distance alternative access telephone
`
`services.
`
`18.
`
`Over the course of a year in the late 1980s, I worked on a voice
`
`interface project evaluating the processing power needed to perform various voice
`
`recognition applications by Rockwell Semiconductor’s signal processing
`
`technology.
`
`– 6 –
`
`

`

`
`
`19.
`
`Other projects that I worked on at various points in my 25 years at
`
`ADL that involved information-retrieval technologies included the following.
`
`20.
`
`Over the course of 15 years starting in the early 1980’s, I worked on
`
`a project for the United States Postal Service (USPS), where we developed a real-
`
`time automated postal teller system that served as an interface between end-users
`
`and the USPS’s information systems. This system included voice prompts for the
`
`vision impaired.
`
`21.
`
`Over the course of two years in the early 1990’s, I worked on a
`
`project for the grocery industry consortium of The Food Marketing Institute and
`
`The Grocery Manufacturers Association, where I developed standards used by the
`
`industry for direct exchange electronic data interchange (DEX/UCS EDI). This
`
`project involved developing a business model for vendors who make direct store
`
`delivery of merchandise to retail stores (e.g., fast-moving goods that do not come
`
`via a warehouse such as soda, meat, bread) so that legacy paper receipts and
`
`signature could be captured on hand-held portable computers and then uploaded to
`
`the vendors’ billing computers at some later time to generate invoices.
`
`22.
`
`Over the course of two years in the early 1990’s, I worked on a
`
`project for MasterCard and Visa, where I supported a project exploring the
`
`applications and security issues associated with the use of smart cards in
`
`eCommerce. This project explored both physical security properties of the card
`
`– 7 –
`
`

`

`
`
`media as well as issues associated with the back-end information processing
`
`servers. For example, I explored electronic watermarks resident on a credit card
`
`where the watermark digital content was captured at point of sale and then
`
`uploaded to the back-end credit card processor so that the card media could be
`
`authenticated as genuine.
`
`23.
`
`Over the course of two years in the late 1970s, I worked on a project
`
`for a multi-client consortium of newspapers and information publishers, where I
`
`participated in a project to understand opportunities for electronic home
`
`information and transaction services using both dedicated videotext terminals as
`
`well as home computers. The project was focused on providing end consumers in
`
`ordinary households with the means to read newspapers, interact with classified
`
`advertising, send messages, access telephone directors, and search for information.
`
`24.
`
`Over the course of two years in the late 1980s, I worked on a project
`
`in support of a multi-client study of new opportunities for financial industry firms,
`
`where I studied the security and encryption requirements to support electronic
`
`banking. This work involved consideration of counterfeit projection for media,
`
`physical security of systems, and the development of security protocols for home
`
`banking videotex terminals. This project focused on providing ordinary end
`
`consumer households with the means to conduct home banking in a secure and
`
`simple interface via a key board and visual display.
`
`– 8 –
`
`

`

`
`
`25.
`
`I also have extensive experience in public and private network wired
`
`and wireless voice telecommunications while employed by Motorola, Bell &
`
`Howell, and Arthur D Little, and while self-employed. In the course of these
`
`telecommunications projects ranging from 1969 to the present, I have encountered
`
`a number of applications where audio input and voice are used to activate devices,
`
`for example for the purpose of saving battery power by entering into low power,
`
`so-called “sleep” modes. These projects have involved the design of cellular
`
`telecommunications systems that implement industry standard means of entering
`
`lower power modes in the absence of voice.
`
`26. My curriculum vitae are provided as Exhibit 1003.
`
`II. MATERIALS REVIEWED AND CONSIDERED
`
`27. My findings, as explained below, are based on my years of
`
`education, research, experience, and background in fields related to voice and
`
`information processing, including voice interfaces and information retrieval, as
`
`well as my investigation and study of relevant materials for this declaration. When
`
`developing the opinions set forth in this declaration, I assumed the perspective of a
`
`person having ordinary skill in the art, as set forth in Section IV below. In forming
`
`my opinions, I have studied and considered the materials identified in the list
`
`below.
`
`
`
`
`
`– 9 –
`
`

`

`
`
`
`
`
`Exhibit Description
`
`1001
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`U.S. Patent 7,076,431 (“the ’431 patent”)
`U.S. Patent Application Publication 2001/0047262 (“Kurganov-262”)
`PCT Publication WO2001/050453 (“Kovatch”)
`U.S. Provisional Application 60/174,371 (“Kovatch-Provisional”)
`U.S. Patent 6,324,534 (“Neal”)
`U.S. Patent 6,418,433 (“Chakrabarti”)
`U.S. Patent 5,787,470 (“DeSimone”)
`U.S. Patent 5,855,020
`U.S. Patent 6,085,160
`U.S. Patent 6,434,524
`McGraw-Hill Electronics Dictionary (6th ed. 1997) (“McGraw-Hill”)
`American Heritage Dictionary of the English Language (3d ed. 1996)
`Dictionary of Computing (4th ed. 2002)
`U.S. Patent 9,451,084 (“the ’084 patent”)
`U.S. Provisional Application 60/180,344
`U.S. Provisional Application 60/233,068
`Prosecution History of U.S. Patent Application 09/776,996
`(U.S. Patent 6,721,705)
`Prosecution History of U.S. Patent Application 10/821,690
`(U.S. Patent 7,076,431)
`Prosecution History of U.S. Patent Application 11/409,703
`(U.S. Patent 7,386,455)
`Prosecution History of U.S. Patent Application 12/030,556
`(U.S. Patent 7,881,941)
`Prosecution History of U.S. Patent Application 12/973,475
`(U.S. Patent 8,185,402)
`Prosecution History of U.S. Patent Application 13/462,819
`(U.S. Patent 9,451,084)
`Prosecution History of U.S. Patent Application 15/269,776
`(U.S. Patent 10,096,320)
`Prosecution History of U.S. Patent Application 16/155,523
`
`
`
`– 10 –
`
`

`

`
`
`III. MY UNDERSTANDING OF PATENT LAW
`
`28.
`
`In developing my opinions, I discussed various relevant legal
`
`principles with Petitioners’ attorneys. I understood these principles when they
`
`were explained to me and have relied upon such legal principles, as explained to
`
`me, in the course of forming the opinions set forth in this declaration. My
`
`understanding in this respect is as follows:
`
`29.
`
`I understand that “inter partes review” (IPR) is a proceeding before
`
`the United States Patent & Trademark Office for evaluating the patentability of an
`
`issued patent’s claims based on prior-art patents and printed publications.
`
`30.
`
`I understand that, in this proceeding, Petitioners have the burden of
`
`proving that the challenged claims of the ’431 patent are unpatentable by a
`
`preponderance of the evidence. I understand that “preponderance of the evidence”
`
`means that a fact or conclusion is more likely true than not true.
`
`31.
`
`I understand that, in IPR proceedings, claim terms in a patent are
`
`given their ordinary and customary meaning as understood by a person of ordinary
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`skill in the art (“POSA”) in the context of the entire patent and the prosecution
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`history pertaining to the patent. If the specification provides a special definition
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`for a claim term that differs from the meaning the term would otherwise possess,
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`the specification’s special definition controls. I have applied this standard in
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`preparing the opinions in this declaration.
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`– 11 –
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`32.
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`I understand that for an invention claimed in a patent to be
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`patentable, it must be, among other things, new (novel) and not obvious from the
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`prior art.
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`33.
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`I understand that determining whether a particular patent or printed
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`publication constitutes prior art to a challenged patent claim can require
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`determining the effective filing date (also known as the priority date) to which the
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`challenged claim is entitled. I understand that for a patent claim to be entitled to
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`the benefit of the filing date of an earlier application to which the patent claims
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`priority, the earlier application must have described the claimed invention in
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`sufficient detail to convey with reasonable clarity to the POSA that the inventor
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`had possession of the claimed invention as of the earlier application’s filing date. I
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`understand that a disclosure that merely renders the claimed invention obvious is
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`not sufficient written description for the claim to be entitled to the benefit of the
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`filing date of the application containing that disclosure.
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`A. Anticipation
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`34.
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`I understand that, for a patent claim to be “anticipated” by the prior
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`art (and therefore not novel), each and every limitation of the claim must be found,
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`expressly or inherently, in a single prior art reference. I understand that a claim
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`limitation is disclosed for the purpose of anticipation if a POSA would have
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`understood the reference to disclose the limitation based on inferences that a POSA
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`– 12 –
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`would reasonably be expected to draw from the express teachings in the reference
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`when read in light of the POSA’s knowledge and experience.
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`35.
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`I understand that a claim limitation is inherent in a prior art
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`reference if that limitation is necessarily present when practicing the teachings of
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`the reference, regardless of whether a person of ordinary skill recognized the
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`presence of that limitation in the prior art.
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`B. Obviousness
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`36.
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`I understand that a patent claim may be unpatentable if it is obvious
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`in view of a single prior-art reference or a combination of prior-art references.
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`37.
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`I understand that a patent claim is obvious if the differences between
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`the subject matter of the claim and the prior art are such that the subject matter as a
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`whole would have been obvious to a person of ordinary skill in the relevant field at
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`the time the invention was made. Specifically, I understand that the obviousness
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`question involves a consideration of:
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` the scope and content of the prior art;
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` the differences between the prior art and the claims at issue;
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` the knowledge of a person of ordinary skill in the pertinent art; and
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` if present, objective factors indicative of non-obviousness,
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`sometimes referred to as “secondary considerations.”
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`– 13 –
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`38.
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`I understand that in order for a claimed invention to be considered
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`obvious, a POSA must have had a reason for combining teachings from multiple
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`prior-art references (or for altering a single prior-art reference, in the case of
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`obviousness in view of a single reference) in the fashion proposed.
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`39.
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`I further understand that in determining whether a prior-art reference
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`would have been combined with other prior art or with other information within
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`the knowledge of a POSA, the following are examples of approaches and
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`rationales that may be considered:
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` combining prior-art elements according to known methods to yield
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`predictable results;
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` simple substitution of one known element for another to obtain
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`predictable results;
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` use of a known technique to improve similar devices in the same
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`way;
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` applying a known technique to a known device ready for
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`improvement to yield predictable results;
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` applying a technique or approach that would have been “obvious to
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`try,” i.e., choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success.
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`– 14 –
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` known work in one field of endeavor may prompt variations of it
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`for use in either the same field or a different one based on design
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`incentives or other market forces if the variations would have been
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`predictable to one of ordinary skill in the art;
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` some teaching, suggestion, or motivation in the prior art that would
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`have led one of ordinary skill to modify the prior-art reference or
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`to combine prior-art reference teachings to arrive at the claimed
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`invention. I understand that this teach