IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`In re Patent of: Michael J. Koss
`U.S. Patent No.:
`10,298,451 Attorney Docket No.: 50095-0020IP1
`Issue Date:
`August 7, 2018
`
`Appl. Serial No.: 16/057,360
`
`Filing Date:
`August 1, 2019
`
`Title:
`CONFIGURING WIRELESS DEVICES FOR A WIRELESS
`INFRASTRUCTURE NETWORK
`
`
`SUPPLEMENTAL DECLARATION OF DR. JEREMY COOPERSTOCK
`
`
`
`
`
`
`APPLE 1023
`Apple v. Koss
`IPR2021-00255
`
`1
`
`
`
`
`
`In re Patent of: Michael J. Koss
`U.S. Patent No.:
`10,298,451 Attorney Docket No.: 50095-0020IP1
`Issue Date:
`August 7, 2018
`
`Appl. Serial No.: 16/057,360
`
`Filing Date:
`August 1, 2019
`
`Title:
`CONFIGURING WIRELESS DEVICES FOR A WIRELESS
`INFRASTRUCTURE NETWORK
`
`
`SUPPLEMENTAL DECLARATION OF DR. JEREMY COOPERSTOCK
`
`
`
`
`
`
`APPLE 1023
`Apple v. Koss
`IPR2021-00255
`
`1
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 3
`
`BACKGROUND AND QUALIFICATIONS ................................................. 4
`
`III.
`
`INFORMATION CONSIDERED ................................................................... 4
`
`IV. RELEVANT LEGAL STANDARDS ............................................................. 5
`
`V.
`
`SUMMARY OF MY OPINIONS ................................................................... 5
`
`VI.
`
`THE ’451 PATENT ......................................................................................... 6
`
`A.
`
`B.
`
`Priority Date .......................................................................................... 6
`
`Level of Ordinary Skill in the Art ......................................................... 6
`
`VII. ANALYSIS ...................................................................................................... 6
`
`A.
`
`The Brown-Scherzer Combination Makes Claims 1, 6, 11-13,
`and 15-20 Obvious ................................................................................ 6
`
`B. Motivation to Combine Brown and Scherzer........................................ 6
`
`1.
`
`2.
`
`3.
`
`Scherzer’s Disclosure .................................................................. 7
`
`The Combination Of Brown And Scherzer ................................ 9
`
`Koss’s Analysis Of The Brown-Scherzer Combination ...........10
`
`C.
`
`The Brown-Scherzer Combination Is Not Based On Hindsight .........18
`
`1. Well-Known Concepts By the Critical Date ............................18
`
`2.
`
`Two Examples of the Scherzer-Brown Combination ...............21
`
`VIII. ADDITIONAL REMARKS .........................................................................32
`
`2
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`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`1.
`
`I, Dr. Jeremy Cooperstock, declare as follows:
`
`I.
`
`INTRODUCTION
`
`2.
`
`I have been retained by Fish & Richardson, P.C., on behalf of
`
`Petitioner, Apple Inc. (“Apple”), as an independent expert consultant in this inter
`
`partes review (“IPR”) proceeding before the United States Patent and Trademark
`
`Office (“PTO”).
`
`3.
`
`I have been asked by Apple’s counsel (“Counsel”) to consider
`
`whether certain references teach or suggest the features recited in Claims 1-21 of
`
`U.S. Patent No. 10,298,451 (“the ’451 patent”) (APPLE-1001). My opinions and
`
`the bases for my opinions are set forth below. My opinions are based on my
`
`education and experience.
`
`4.
`
`I previously submitted a Declaration in this proceeding that I signed
`
`on November 25, 2020, and I understand that Declaration was marked as APPLE-
`
`1003. That Declaration contained my opinions and the bases for them. Since
`
`submitting my Declaration (APPLE-1003) I have considered the Board’s
`
`institution decision (Paper 22), Patent Owner’s Response (Paper 28), and the
`
`Declaration of Mr. Joseph C. McAlexander III (KOSS-2022) in support of the
`
`Response filed by Patent Owner, Koss Corporation (“Koss”). My opinions from
`
`my previous declaration have not changed.
`
`3
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`II. BACKGROUND AND QUALIFICATIONS
`
`5. My background and qualifications are set forth in my November 25,
`
`2020 declaration. I incorporate that section of my previous declaration here by
`
`reference.
`
`III.
`
`INFORMATION CONSIDERED
`
`6.
`
`In preparing this declaration, I have considered the materials
`
`discussed in this declaration, including, for example, the ’451 patent, the references
`
`cited by the ’451 patent, the prosecution histories of the ’451 patent and the
`
`application from which it derives (including the references cited therein), various
`
`background articles and materials referenced in this declaration, and the prior art
`
`references identified in this declaration. In addition, my opinions are further based
`
`on my education, training, experience, and knowledge in the relevant field.
`
`Exhibit No.
`
`Description
`
`APPLE-1001 U.S. Patent No. 10,298,451 to Koss, et al. (“the ’451 patent”)
`
`APPLE-1002 Excerpts from the Prosecution History of the ’451 patent (“the
`Prosecution History”)
`
`APPLE-1003 Declaration of Dr. Jeremy Cooperstock
`
`APPLE-1004 U.S. Pat. No. 9,021,108 (“Brown”)
`
`APPLE-1005 U.S. Pat. App. Pub. No. 2007/0033197 (“Scherzer”)
`
`APPLE-1006 U.S. Provisional Pat. App. No. 60/687,463 (“’463 Provisional”)
`
`APPLE-1007 U.S. Provisional Pat. App. No. 60/728,918 (“’918 Provisional”)
`
`APPLE-1008 U.S. Pat. App. Pub. No. 2007/0245028 (“Baxter”)
`
`APPLE-1009 U.S. Pat. App. Pub. No. 2011/0025879 (“Drader”)
`
`4
`
`
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`APPLE-1010 U.S. Pat. App. Pub. No. 2010/0307916 (“Ramey”)
`
`APPLE-1011 U.S. Pat. App. Pub. No. 2010/0165879 (“Gupta”)
`
`APPLE-1012 U.S. Provisional Pat. No. 61/386,716 (“’716 Provisional”)
`
`APPLE-1024 Joseph C. McAlexander III Deposition Transcript, Dec. 15, 2021
`APPLE-1025 IPR2021-00600, Ex. No. KOSS-2025, Jeremy
`Cooperstock Deposition Transcript
`
`APPLE-1026 U.S. Pat. No. 8,868,639 to Raleigh (“Raleigh”)
`
`KOSS-2022 Declaration of Joseph C. McAlexander III
`
`Paper 22
`
`Institution Decision
`
`Paper 28
`
`Patent Owner Response (“Resp.”)
`
`IV. RELEVANT LEGAL STANDARDS
`
`7.
`
`I set forth the relevant legal standards in my previous declaration, and
`
`I incorporate those legal standards here by reference.
`
`V.
`
`SUMMARY OF MY OPINIONS
`
`8.
`
`I have been asked to consider whether the claims of the ’451 patent
`
`are anticipated or obvious over certain prior art references. As explained in my
`
`previous declaration and in further detail in this declaration, it is my opinion that:
`
`• Claims 1, 6, 11-13, and 15-20 are obvious over Brown and
`
`Scherzer;
`
`• Claims 2, 7-10, and 21 are obvious over Brown, Scherzer, and
`
`Baxter;
`
`• Claims 3 and 4 are obvious over Brown, Scherzer, and Drader;
`
`• Claim 5 is obvious over Brown, Scherzer, and Ramey; and
`
`• Claim 14 is obvious over Brown, Scherzer, and Gupta
`
`5
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`VI. THE ’451 PATENT
`
`A.
`
`9.
`
`Priority Date
`
`For purposes of my analysis, I apply May 14, 2012 (“Critical Date”)
`
`as the earliest purported priority date of the ’451 patent. All of the prior art relied
`
`on in this declaration were published and/or filed before the Critical Date.
`
`B.
`
`Level of Ordinary Skill in the Art
`
`10.
`
`I provided my opinion about a person of ordinary skill in the art
`
`(POSITA) in my previous declaration, and I incorporate that opinion here by
`
`reference.
`
`VII. ANALYSIS
`
`A. The Brown-Scherzer Combination Makes Claims 1, 6, 11-13, and
`15-20 Obvious
`
`11. My previous declaration analyzed how the combination of Brown and
`
`Scherzer makes claims 1, 6, 11-13, and 15-20 obvious. I incorporate that analysis
`
`here by reference. In this declaration, I further address Koss’s analysis of topics
`
`relating to the combination of Brown and Scherzer. I first address Koss’s
`
`statements that a POSITA would not have been motivated to combine Brown and
`
`Scherzer. I then address Koss’s statements that the combination is based on
`
`hindsight.
`
`B. Motivation to Combine Brown and Scherzer
`
`12. Koss’s position is that a POSITA would not have combined Scherzer
`
`6
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`and Brown since the proposed combination contradicts Scherzer. Koss provides
`
`three reasons that a POSITA would not attempt to use Scherzer’s access
`
`credentials with an unregistered device. First, Koss states that transmission and use
`
`of Scherzer’s access credentials by an unregistered device ignores the account
`
`acceptability requirement and associated tracking in Scherzer. Second, Koss states
`
`that Scherzer, as a whole, discourages unfettered dissemination of access
`
`credentials to unregistered devices. Third, Koss states that a simpler approach to
`
`network connectivity exists.
`
`1.
`
`Scherzer’s Disclosure
`
`13.
`
`I provided an overview of Scherzer in my previous declaration, and I
`
`incorporate that overview here by reference. Below I explain some of my opinions
`
`and provide my analysis of Koss’s characterizations of Scherzer’s disclosure.
`
`14. Scherzer’s disclosure is best understood through its overall motivation
`
`to provide a system that provides the ability to “wirelessly connect to the Internet
`
`from any location.” APPLE-1005, [0005]. This motivation is the foundation for
`
`Scherzer’s disclosure of a system that allows users to mutually share network
`
`access credentials of their wireless access points and create a community of users.
`
`A user “allows access to the user’s access point in exchange for being allowed to
`
`access other user’s access points.” Id., [0020]. This enables “a user to be able to
`
`access the Internet, its services and information, from a large number of locations.”
`
`7
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`Id. This access is the main benefit to being part of Scherzer’s service as it provides
`
`a way to connect to a nearby wireless access point even though network credential
`
`information for that nearby wireless access point may be unknown. Based on this,
`
`a POSITA would understand that the broadest conception of the invention
`
`disclosed in Scherzer is a community of users who exchange network credential
`
`information of their wireless access points so that members of the community as a
`
`whole have greater accessibility to the Internet in different locations using the
`
`shared network credential information. This facilitates different users to quickly
`
`obtain network access credentials so that they can access the Internet via wireless
`
`access points located in different locations.
`
`15. Scherzer also includes specific teachings that are narrower than the
`
`broadest conception of its invention. For example, Scherzer describes certain
`
`embodiments in which a “user contribution account” is established for a user to
`
`“monitor and control access allowed to [a] user’s access point.” APPLE-1005,
`
`[0016]. The user contribution account can also “track[] the balance of bandwidth
`
`provided by a user via the user’s access point to other users and the bandwidth
`
`used by the user via other’s access points.” Id., [0017]. However, Scherzer makes
`
`very clear that these teachings are limited to specific embodiments that are
`
`narrower than its overall invention. Scherzer repeats this clarification in several
`
`locations of its disclosure. See, e.g., Scherzer, ¶[0015] (“In some embodiments, a
`
`8
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`collaborative community of users allows a percentage of bandwidth of the user’s
`
`access point to be accessed by one or more other users…”); id. (“In some
`
`embodiments, some access or limited access is provided to use other users’ access
`
`points without allowing use of an access point to other users”); [0016] (“In some
`
`embodiments, a user contribution account is established when a user registers…”);
`
`id., “In some embodiments, a user is provided with the ability to monitor and
`
`control access allowed to the user’s access point - …” id. (emphasis added).
`
`16. Scherzer’s use of “in some embodiments” in relation to its
`
`descriptions of the user contribution account would have led a POSITA to
`
`conclude that the user contribution account feature is an optional element of the
`
`invention. Imposing bandwidth constraints through use of a user contribution
`
`account and associated tracking does the opposite, because it restricts access to
`
`certain wireless access points once a user has used their bandwidth allocation.
`
`While usage monitoring and tracking using the user contribution account has
`
`certain advantages, such as ensuring that usage of network resources is fair and
`
`equitable amongst users that are part of Scherzer’s community, improving overall
`
`Internet access (which is Scherzer’s overall motivation) is not one of these
`
`advantages.
`
`2.
`
`The Combination Of Brown And Scherzer
`
`17.
`
`I provided an overview of the combination of Brown and Scherzer in
`
`9
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`my previous declaration, and I incorporate that overview here by reference. Below
`
`I explain some of my opinions and provide my analysis of Koss’s arguments
`
`against the combination of Brown and Scherzer.
`
`18. As explained in my earlier declaration, the Brown-Scherzer
`
`combination involves complementary disclosures in each reference that a POSITA
`
`would have understood to improve network access by allowing users to access the
`
`Internet on multiple devices and in multiple locations. APPLE-1003, ¶¶42-49. By
`
`allowing a secondary device of a registered user to obtain Internet access using
`
`network credential information stored on a Scherzer-like server, the user is able to
`
`access the Internet on multiple devices. This configuration is consistent with, and
`
`supported by, Scherzer’s overall motivation to provide increased Internet
`
`connectivity through a collaborative community of users as I have discussed above
`
`in Section VII.B.1. APPLE-1003, ¶¶42-49; APPLE-1005, ¶[0005].
`
`3.
`
`Koss’s Analysis Of The Brown-Scherzer Combination
`
`19. Koss points to three reasons to support its position that the Brown-
`
`Scherzer combination deviates from Scherzer’s disclosure. First, Koss states that
`
`transmission and use of Scherzer’s access credentials by an unregistered device
`
`ignores the account acceptability requirement and associated tracking in Scherzer.
`
`Resp., 24-29. Second, Koss then states that Scherzer, as a whole, discourages
`
`unfettered dissemination of access credentials to unregistered devices. Id., 29-30.
`
`10
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`Finally, Koss states that a simpler approach to network connectivity already exists
`
`and therefore the Brown-Scherzer combination is unnecessary. Id., 30.
`
`a)
`
`Scherzer’s Account Acceptability Requirement And
`Associated Tracking Are Limited to Specific
`Embodiments
`
`20.
`
`I disagree with Koss’s first argument for several reasons discussed
`
`below. First, Koss assumes a narrow interpretation of Scherzer’s disclosure that a
`
`POSITA would understand does not represent the broadest conception of the
`
`invention identified in Section VII.B.1. This narrow interpretation disregards that
`
`Scherzer itself describes that teachings relating user account acceptability
`
`requirements and associated tracking are limited to specific embodiments. Second,
`
`Koss does not support its narrow interpretation through specific citations to
`
`Scherzer’s disclosure.
`
`21. Koss argues that teachings within Scherzer relating to user
`
`contribution accounts and tracking bandwidth usage demonstrate that the Scherzer
`
`disclosure is incompatible with the Brown-Scherzer combination. See Resp., 20-
`
`22, 24-30. I disagree with this because Scherzer clearly describes in various
`
`locations that these teachings are limited to specific embodiments. See, e.g.,
`
`APPLE-1005, ¶[0015] (“In some embodiments, a collaborative community of
`
`users allows a percentage of bandwidth of the user’s access point to be accessed by
`
`one or more other users…”); id. (“In some embodiments, some access or limited
`
`11
`
`
`
`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`access is provided to use other users’ access points without allowing use of an
`
`access point to other users”); [0016] (“In some embodiments, a user contribution
`
`account is established when a user registers…”); id., “In some embodiments, a
`
`user is provided with the ability to monitor and control access allowed to the user’s
`
`access point - …” id. (emphasis added). Scherzer is also clear that the broadest
`
`conception of its invention facilitates different users to quickly download access
`
`credentials onto their device so that they can access the Internet via wireless access
`
`points located in different locations. A POSITA would have therefore understood
`
`that Scherzer’s disclosure makes it clear that strict accounting and tracking of
`
`subsequent access by the users to the wireless access points are added features
`
`limited to only certain embodiments of this broader invention.
`
`22. Koss also characterizes Scherzer’s system as “control[ling] the
`
`dissemination of access credentials such that only registered users can obtain the
`
`benefit of other registered user’s access credentials.” Resp., 20. Scherzer does not
`
`describe any restrictions imposed on a registered user with what they can do with
`
`downloaded network credential information. In particular, there is no express
`
`teaching clearly disparaging the notion of providing the network credential
`
`information to another device or providing the network credential information to
`
`other users. Scherzer provides no teaching that would be understood as prohibiting
`
`how credential information, once downloaded using Scherzer’s service, can be
`
`12
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`used to connect to a wireless access point. For example, Scherzer does not teach
`
`that the network credential information downloaded from Scherzer’s server is
`
`encrypted. Scherzer also does not address security mechanisms for protecting or
`
`obfuscating the downloaded credential information. It also does not suggest
`
`concern about the user that receives the credential information subsequently
`
`accessing and providing the downloaded credential information to other devices or
`
`users.
`
`23. Koss also cites to MAC addresses in Scherzer in arguing that “if the
`
`MAC address was not identified by Scherzer’s server, the device would be unable
`
`to connect with the wireless access point.” Resp., 28 (citing KOSS-2022, ¶¶50-
`
`52). This confuses the process by which Scherzer’s server determines whether it
`
`will enable downloading of credential information to a requesting user and the
`
`process by which a wireless access point determines whether it will allow a device
`
`that provides credential information (regardless of how that information was
`
`originally obtained by the device) to connect to the Internet. While it is true that
`
`the MAC address can be used by the Scherzer server to determine whether to
`
`provide credential information to a certain device, there is no disclosure of a
`
`wireless access point using the MAC address of a device to authenticate the device
`
`prior to permitting a connection. Scherzer, [0016], [0021], [0024]). Scherzer
`
`teaches that registration information can include a device MAC address, but does
`
`13
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`not disclose or suggest that a wireless access point verifies the MAC address prior
`
`to allowing a device to connect to the wireless access point.
`
`24. Additionally, Koss’s statement that “Scherzer only provides access
`
`credentials to registered users having an acceptable user account” is not relevant to
`
`the Brown-Scherzer combination because the two examples discussed in the
`
`Petition involve a registered user with a user account accessing credential
`
`information on a secondary device (Brown’s device 101, or a tablet). Resp., 25.
`
`b)
`
`Scherzer Does Not Address Dissemination of Access
`Credentials
`
`25. Koss argues that the Brown-Scherzer combination “permit[s] the
`
`widespread and unfettered dissemination of network/access point access
`
`credentials of registered user to unregistered devices for use by the unregistered
`
`devices.” Resp., 21-22. I disagree because the argument mischaracterizes the two
`
`examples of the Brown-Scherzer combination discussed in my earlier declaration.
`
`Resp., 21-22. In each example, the unregistered device that is provided with access
`
`credentials is specifically associated with a registered user (i.e., a user that has
`
`previously registered with Scherzer’s service on a registered device). Neither Koss
`
`nor Mr. McAlexander cite to information indicating why a POSITA would have
`
`understood combining Brown and Scherzer to provide “unfettered access” to
`
`credential information. Id., 29-30; KOSS-2022, ¶63. Scherzer also lacks a teaching
`
`or suggestion that this type of configuration (e.g., a user sending network
`
`14
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`credential information obtained from a first device to a second device) is
`
`prohibited or undesirable. Scherzer does not recognize or describe any
`
`disadvantages of a registered user accessing and/or using network credential
`
`information on a secondary device.
`
`26. Scherzer also does not discourage or disparage dissemination of
`
`access credentials once a registered user has obtained them. Scherzer’s teachings
`
`describe that device registration is required for a user to obtain access credentials
`
`through Scherzer’s service in the first instance. However, Scherzer does not
`
`disclose any protection mechanisms that prevents dissemination of the access
`
`credentials once the registered user has obtained them. Scherzer does not disclose
`
`that the access credentials are encrypted or that the registered user is restricted in
`
`some fashion as to how he/she uses the obtained access credentials.
`
`27. Scherzer also does not disclose any mechanism for limiting further
`
`dissemination of credential information after the credential information is provided
`
`to a registered user’s device. Koss’s statement that “Scherzer teaches tracking of
`
`devices, such as with MAC address identifiers associated with a registered user’s
`
`account, such that unregistered devices could be detected when they seek to
`
`connect to the wireless network/access point of a registered device and accordingly
`
`denied connection” is not supported by Scherzer. Resp., 25. Scherzer does not
`
`teach or suggest that the MAC address is used to determine whether any device
`
`15
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`should be able to access a wireless access point that is part of Scherzer’s service.
`
`Scherzer references MAC address three times within its disclosure, two of which
`
`describe that registration information includes the MAC address (APPLE-1005,
`
`¶¶[0016], [0021]) and one of which describes that the MAC address can be used to
`
`generate credential information (id., ¶[0024]). Scherzer also does not address
`
`unregistered devices using credential information to access wireless access points
`
`that are part of its service, and thus, does not specifically describe that these
`
`devices would be “denied connection” as Koss alleges. Resp., 25.
`
`c)
`
`Advantages of the Brown-Scherzer Combination
`
`28. Koss argues that “a more straightforward and legitimate approach to
`
`improving network connectivity is available.” Resp., 22-23. But as I explained in
`
`my earlier declaration, the Brown-Scherzer combination provides certain
`
`advantages over the individual disclosures of Brown and Scherzer.
`
`29. The second example of the Brown-Scherzer combination discussed in
`
`my earlier declaration shows these advantages. In this example, the user is located
`
`in an area where neither the smartphone nor tablet have the access information
`
`necessary to establish a connection with any WiFi access points in their vicinity
`
`because the devices are out of range of the user’s work WiFi access point. APPLE-
`
`1003, ¶55. The Brown-Scherzer combination is advantageous in this example
`
`because the disclosures of either reference alone would not provide a better
`
`16
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`solution. Id., ¶¶55-61. Brown assumes that a first device already has network
`
`credential information, so its techniques do not help the user obtain network
`
`credential information on either the smartphone or the tablet. Additionally, though
`
`a Scherzer-like software client installed on the first device would allow a user to
`
`access network credential information, the user would still need to manually input
`
`the network credential information onto the tablet to allow the tablet to connect to
`
`the Internet. In contrast, a user could use the Brown-Scherzer combination to not
`
`only obtain network credential information from a Scherzer-like server (using
`
`Scherzer’s teachings) on the smartphone, but then also use Brown’s automated
`
`configuration technique to allow the tablet to access the Internet without requiring
`
`any manual entry.
`
`30. Koss’s statement that a “user of Brown mobile device 101 could
`
`simply download the Scherzer-like software to the mobile device 101 to gain
`
`access to Scherzer’s community of wireless networks/access points” also ignores
`
`the second example. Resp., 22. In this scenario, neither device (devices 105, 101)
`
`has access to credential information since the user is located in an area where the
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`only nearby wireless access points are those of other users. See APPLE-1003,
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`¶¶55-61. Device 101 (which is a tablet) would not be able to access the Internet to
`
`download the Scherzer-like software since it (a) is unable to connect to the nearby
`
`wireless access points and (b) lacks cellular connectivity. Id.
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`17
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`C. The Brown-Scherzer Combination Is Not Based On Hindsight
`
`31. Koss argues that “[o]nly hindsight reconstruction of the claimed
`
`invention justifies the Petition’s combination.” Resp., 23. This conclusion ignores
`
`several points addressed in my previous declaration.
`
`32. To restate, the previous declaration explained that “a POSITA would
`
`have been motivated to combine Brown and Scherzer given advantages to network
`
`connectivity by the combination to the types of devices described in Brown.”
`
`APPLE-1003, ¶47. That declaration then explained that the two examples
`
`demonstrate these advantages. Id.
`
`33. The two examples are scenarios that would have been both common-
`
`sensical and predictable in view of the knowledge of a POSITA, the teachings of
`
`Brown and Scherzer, and recognition of advantages provided by the Brown-
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`Scherzer combination.
`
`1. Well-Known Concepts By the Critical Date
`
`a)
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`Overview
`
`34. The Brown-Scherzer combination would have been predictable to a
`
`POSITA based on three concepts that were well-known by the Critical Date. First,
`
`a POSITA would have understood that some devices, such as smartphones, would
`
`have been able to connect to the Internet using both cellular and Wi-Fi
`
`connectivity. Second, the POSITA would have understood that other computing
`
`devices, such as tablets, were limited to connecting to the Internet using Wi-Fi
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`18
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`connectivity since they lacked cellular connectivity. Third, a POSITA would have
`
`also understood that a user could carry multiple devices, including a smartphone
`
`and a tablet while traveling. Each concept is discussed below.
`
`b)
`
`Smartphones with Cellular and WiFi Connectivity
`
`35. A POSITA would have understood that some devices, such as
`
`smartphones, would have been able to connect to the Internet using both cellular
`
`and Wi-Fi connectivity by the Critical Date. Brown supports this understanding
`
`because it describes that device 105 (which can be a smartphone) can communicate
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`with various wireless protocols. APPLE-1004, 6:34-52. Scherzer also supports this
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`understanding because it describes cellular phone networks to provide coverage in
`
`different locations and allow users to connect to the Internet. APPLE-1005,
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`¶[0005]. Scherzer describes transmitting information to a user device over a
`
`cellular phone network or a Wi-Fi network in the alternative. APPLE-1005,
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`¶[0020] (“Access point information …can be provided to a user via a wired
`
`network by preloading the user's device, a cell phone network, a Wi-Fi network, or
`
`any other appropriate network”). Scherzer also describes a personal digital
`
`assistant (PDA), which a POSITA would have also understood as an example of a
`
`user device with cellular and Wi-Fi connectivity. Id. These disclosures of Brown
`
`and Scherzer demonstrate that a POSITA would have understood that smartphones
`
`are one type of device that could connect to the Internet using a cellular phone
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`19
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`network.
`
`c)
`
`Devices With WiFi-Only Connectivity
`
`36. A POSITA would have understood other devices, such as tablets,
`
`were limited to connecting to the Internet using Wi-Fi connectivity because they
`
`lacked cellular connectivity. This understanding is supported by U.S. Pat. No.
`
`8,868,639 to Raleigh (“Raleigh;” APPLE-1026), which describes that “a user
`
`device may have no communication network available at a given time,” e.g., “a
`
`mobile user device with WiFi-only connectivity away from a home network or a
`
`WiFi hotspot, or a mobile user device in an airplane without WiFi may have no
`
`communication network available.” APPLE-1026, 12:3-7. A POSITA, who would
`
`be aware of this as corroborated by this disclosure, would understand that one
`
`example of a mobile user device with WiFi-only connectivity is a tablet. Brown
`
`reinforces this understanding because it describes that device 101 (which can be a
`
`tablet) is less likely to be configured to connect to wireless access points compared
`
`to a smaller device, such as smartphone. APPLE-1004, 5:18-39. These disclosures
`
`of Brown and Raleigh demonstrate that a POSITA would have understood that
`
`tablets are one type of device that are limited to connecting to the Internet using
`
`Wi-Fi connectivity.
`
`d)
`
`Users Travelling With Multiple Devices
`
`37. A POSITA would have also understood that a user could carry
`
`20
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
`
`multiple devices, including a smartphone and a tablet while traveling. Brown
`
`supports this understanding because it describes scenarios in which a user carries
`
`multiple devices (devices 101, 105) and uses these devices in different
`
`circumstances. APPLE-1004, 5:18-39. Brown describes that it is “desirable to
`
`enable device [101] to access the same network(s) accessible by device 105 as
`
`device 101 can be brought (e.g. at a later time) to the same geographic locations as
`
`access points accessible by device 105.” Id. This demonstrates that a POSITA
`
`would have understood that users would have preferred to carry smartphones and
`
`tablets to the same location. For example, as discussed in my previous declaration,
`
`a user would have preferred to use the tablet over the smartphone for viewing
`
`media since the tablet provides a larger screen and better viewing experience for
`
`media. APPLE-1003, ¶56.
`
`2.
`
`Predictability Of The Brown-Scherzer Combination
`
`38. Koss argues that “[o]nly hindsight reconstruction of the claimed
`
`invention justifies the Petition’s combination.” I disagree with this argument
`
`because the Brown-Scherzer combination is predictable based on a POSITA’s
`
`knowledge and the teachings of the prior art. See APPLE-1003, ¶¶42-61.
`
`39.
`
`I disagree with Koss that the Brown-Scherzer combination is based on
`
`hindsight. The combination provides a predictable solution to well-known
`
`problems of network connectivity, as explained in my previous declaration. A
`
`21
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`Supplemental Declaration of Dr. Jeremy Cooperstock
`U.S. Pat. No. 10,298,451
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`POSITA would have combined Brown and Scherzer since it provided “advantages
`
`to network connectivity,” and specifically, WiFi connectivity. Id., ¶47.
`
`40. These advantages would have been predictable because problems of
`
`WiFi connectivity were well-known by the Critical Date. Scherzer demonstrates
`
`this by recognizing that “to provide wireless coverage for many locations, as, for
`
`example, cell phone networks do, requires a large infrastructure that is ex
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