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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`BOSE CORPORATION,
`Petitioner,
`
`v.
`
`KOSS CORPORATION,
`Patent Owner.
`_____________
`
`Case No. TBD
`Patent No. 10,368,155
`_____________
`
`
`
`
`
`
`DECLARATION OF TIM A. WILLIAMS, Ph.D.
`
`
`Bose Exhibit 1003
`Bose v. Koss
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`PERSONAL AND PROFESSIONAL BACKGROUND ................................. 1
`II. MATERIALS REVIEWED AND CONSIDERED .......................................... 4
`III. MY UNDERSTANDING OF PATENT LAW ................................................. 7
`A. Anticipation ................................................................................................. 9
`B. Obviousness ............................................................................................... 10
`IV. PERSON OF ORDINARY SKILL IN THE ART (“POSA”) ......................... 12
`V. THE ’155 PATENT AND RELATED PATENTS ......................................... 18
`A. Described Embodiments ............................................................................ 25
`B. Prosecution History of the ’155 Patent ...................................................... 34
`C. Prosecution History of Earlier, Related Patent Applications .................... 36
`1. The PCT Application to which the ’155 Patent Claims Priority
`Only Claimed and Described the Ability to “Transition
`Automatically” (a) From an Ad Hoc Network to an
`Infrastructure Network (b) When Out of Range of the Ad Hoc
`Network ............................................................................................... 36
`2. The European National Phase: The EPO Found, and Koss
`Conceded, that Rezvani (Ex. 1016) Discloses the “Transition
`Automatically” Limitation .................................................................. 39
`D. Summary of the Challenged Claims .......................................................... 42
`E. Claim Interpretation ................................................................................... 46
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE IN LIGHT
`OF THE PRIOR ART IDENTIFIED IN THE PETITION ............................. 47
`A. Ground 1: Pelland Anticipates All Challenged Claims ............................. 47
`1. Pelland Is Prior Art to the Challenged Claims .................................... 48
`2. The Priority Applications’ Specifications Fail to Support the
`Broadened “Transition Automatically” Limitation ............................. 50
`a. The Specifications Only Disclose Transition Due to Lost
`Connection, Which Is the “Present Invention” ........................... 51
`b. The Specifications Only Disclose Transitions Between Ad
`Hoc and Infrastructure Networks ................................................ 54
`
`– i –
`
`

`

`c. All Challenged Claims Lack Priority Because They Are
`Not Limited to the Transition Disclosed in the
`Specifications of the Priority Applications. ................................ 58
`3. Pelland Anticipates All Challenged Claims ........................................ 59
`B. Grounds 2A-2E: All Challenged Claims Would Have Been
`Obvious Over Rezvani in View of Other Prior Art ................................... 73
`1. Ground 2A: Claims 1-4, 6-8, and 14 Would Have Been
`Obvious Over Rezvani in View of Skulley ......................................... 74
`a. Claim 1: The Independent Claim ................................................ 74
`(1) Rezvani (Ex. 1016): U.S. Patent Application
`Publication No. 2007/0165875 ........................................... 74
`(2) Skulley (Ex. 1017): U.S. Patent No. 6,856,690 .................. 82
`(3) The Rezvani-Skulley Combination .................................... 84
`(4) Claim 1 ................................................................................ 87
`(i)
`[1.a] A wireless headphone assembly
`comprising: ................................................................. 87
`(ii) [1.b] first and second earphones, wherein each
`of the first and second earphones comprises an
`acoustic transducer; .................................................... 88
`(iii) [1.c] an antenna for receiving wireless signals; ......... 90
`(iv) [1.d] a wireless communication circuit
`connected to the antenna, wherein the wireless
`communication circuit is for receiving and
`transmitting wireless signals to and from the
`wireless headphone assembly; .................................... 91
`(v) [1.e] a processor in communication with the
`wireless communication circuit; and .......................... 93
`(vi) [1.f] a rechargeable battery for powering the
`wireless headphone assembly, .................................... 95
`(vii) [1.g] wherein the headphone assembly is
`configured, with the processor, to transition
`automatically from playing digital audio content
`received wirelessly by the headphone assembly
`via a first wireless network to playing digital
`
`– ii –
`
`

`

`audio content received wirelessly by the
`headphone assembly via a second wireless
`network. ...................................................................... 96
`b. Claim 2: The wireless headphone assembly of claim 1,
`wherein the processor is further configured to, upon
`activation of a user-control of the headphone assembly,
`initiate transmission of a request to a remote network
`server. .......................................................................................... 99
`c. Claim 3: ..................................................................................... 102
`(1) [3.a] The wireless headphone assembly of claim 2,
`wherein:............................................................................. 102
`(2) [3.b] the headphone assembly further comprises a
`microphone; and ............................................................... 102
`(3) [3.c] the processor is further configured to: process
`audible utterances by a user of the headphone
`assembly picked up by the microphone in response to
`activation of the microphone by the user; and .................. 103
`(4) [3.d] transmit a communication based on the audible
`utterances via the first or second wireless networks. ....... 104
`d. Claims 4 and 6-8: The Headphone Design Claims ................... 105
`(1) Claim 4: The wireless headphone assembly of claim
`1, wherein: the first earphone comprises a first
`earbud; and the second earphone comprises a second
`earbud. ............................................................................... 108
`(2) Claims 6-8 ......................................................................... 109
`(i) Claim 6: The wireless headphone assembly of
`claim 1, further comprising a headband
`connected between the first and second
`earphones. ................................................................. 109
`(ii) Claim 7: The wireless headphone assembly of
`claim 6, wherein the first and second earphones
`comprise speaker elements housed in on-ear
`headphones. .............................................................. 110
`(iii) Claim 8: The wireless headphone assembly of
`claim 6, wherein the first and second earphones
`
`– iii –
`
`

`

`comprise speaker elements housed in over-ear
`headphones. .............................................................. 111
`e. Claim 14: Claim 14: The wireless headphone assembly of
`claim 1, further comprising a memory unit that stores
`network identifiers for the first and second wireless
`networks. ................................................................................... 112
`2. Ground 2B: Claims 11-12 Would Have Been Obvious Over
`Rezvani-Skulley in View of Feder ....................................................113
`a. Feder (Ex. 1018): U.S. Patent Application Publication No.
`2004/0142693 ............................................................................ 114
`b. The Rezvani-Skulley-Feder combination ................................. 118
`c. Claims 11-12 ............................................................................. 120
`(1) Claim 11: The wireless headphone assembly of claim
`1, wherein the processor is configured to transition
`automatically from playing digital audio content
`received wirelessly by the headphone assembly via
`the first wireless network to playing digital audio
`content received wirelessly by the headphone
`assembly via the second wireless network based on a
`signal strength level for the second wireless network. ..... 121
`(2) Claim 12: The wireless headphone assembly of claim
`11, wherein the processor is configured to transition
`automatically from playing digital audio content
`received wirelessly by the headphone assembly via
`the first wireless network to playing digital audio
`content received wirelessly by the headphone
`assembly via the second wireless network based on
`whether the signal strength level for the second
`wireless network is above a threshold level. .................... 122
`3. Ground 2C: Claim 13 Would Have Been Obvious Over
`Rezvani-Skulley-Hind .......................................................................122
`a. Hind (Ex. 1019): U.S. Patent No. 7,069,452 ............................ 123
`b. The Rezvani-Skulley-Hind combination .................................. 126
`c. Claim 13: The wireless headphone assembly of claim 1,
`wherein the processor is further configured to receive
`firmware updates from a remote computer device. .................. 129
`
`– iv –
`
`

`

`4. Ground 2D: Claims 5 and 9 Would Have Been Obvious Over
`Rezvani-Skulley in Further View of Rosener ...................................130
`a. Rosener (Ex. 1020): U.S. Patent Application Publication
`No. 2008/0076489 ..................................................................... 131
`b. The Rezvani-Skulley-Rosener Combination ............................ 134
`c. Claim 5: The wireless headphone assembly of claim 4,
`wherein each of the first and second earphones comprises:
`an antenna; a wireless communication circuit connected to
`the at least the antenna [sic] a processor in communication
`with the wireless communication circuit; and a
`rechargeable battery for powering the wireless headphone
`assembly. ................................................................................... 138
`d. Claim 9 ...................................................................................... 139
`(1) [9.a] The wireless headphone assembly of claim 1,
`wherein each of the first and second earphones
`comprises: ......................................................................... 139
`(2) [9.b] a hanger bar that sits upon an upper external
`curvature of a user's ear; and ............................................ 140
`(3) [9.c] a body connected to the hanger bar, wherein the
`acoustic transducer is connected to the body. ................... 142
`5. Ground 2E: Claim 10 Would Have Been Obvious Over
`Rezvani-Skulley in Further View of Wilson .....................................142
`a. Wilson (Ex. 1021): U.S. Patent No. 7,457,649 ......................... 142
`b. The Rezvani-Skulley-Wilson Combination .............................. 144
`c. Claim 10: The wireless headphone assembly of claim 1,
`further comprising a docking station to charge the
`rechargeable battery when the first and second earphones
`are connected to the docking station. ........................................ 145
`C. Grounds 3A-3D: Challenged Claims 1-10 and 13-14 Would Have
`Been Obvious over Nakagawa In View of Other Prior Art ....................146
`1. Ground 3A: Claims 1-3, 6-8, 10, 14 ..................................................148
`a. Nakagawa (Ex. 1022): U.S. Patent Application Publication
`No. 2003/0223604 ..................................................................... 148
`b. Wilson (Ex. 1021) ..................................................................... 153
`
`– v –
`
`

`

`c. The Nakagawa-Wilson Combination ........................................ 153
`d. Claim 1 ...................................................................................... 157
`(1) [1.a] 1. A wireless headphone assembly comprising: ...... 157
`(2) [1.b] first and second earphones, wherein each of the
`first and second earphones comprises an acoustic
`transducer; ......................................................................... 158
`(3) [1.c] an antenna for receiving wireless signals; ................ 159
`(4) [1.d] a wireless communication circuit connected to
`the antenna, wherein the wireless communication
`circuit is for receiving and transmitting wireless
`signals to and from the wireless headphone assembly; .... 159
`(5) [1.e] a processor in communication with the wireless
`communication circuit; and .............................................. 161
`(6) [1.f] a rechargeable battery for powering the wireless
`headphone assembly, ........................................................ 161
`(7) [1.g] wherein the headphone assembly is configured,
`with the processor, to transition automatically from
`playing digital audio content received wirelessly by
`the headphone assembly via a first wireless network
`to playing digital audio content received wirelessly
`by the headphone assembly via a second wireless
`network. ............................................................................ 162
`e. Claim 2 ...................................................................................... 165
`f. Claim 3 ...................................................................................... 169
`g. Claims 6-8 ................................................................................. 171
`h. Claim 10: The wireless headphone assembly of claim 1,
`further comprising a docking station to charge the
`rechargeable battery when the first and second earphones
`are connected to the docking station. ........................................ 173
`i. Claim 14: The wireless headphone assembly of claim 1,
`further comprising a memory unit that stores network
`identifiers for the first and second wireless networks. ............. 174
`2. Ground 3B: Claims 1, 4-5 and 9 Would Have Been Obvious
`Over Nakagawa in View of Rosener .................................................176
`
`– vi –
`
`

`

`a. Nakagawa (Ex. 1022). ............................................................... 176
`b. Rosener (Ex. 1020) ................................................................... 176
`c. The Nakagawa-Rosener combination ....................................... 176
`d. Claim 1 ...................................................................................... 178
`(1) [1.a] A wireless headphone assembly comprising: .......... 178
`(2) [1.b] first and second earphones, wherein each of the
`first and second earphones comprises an acoustic
`transducer; ......................................................................... 179
`(3) [1.c]-[1.e] .......................................................................... 180
`(4) [1.f] a rechargeable battery for powering the wireless
`headphone assembly, ........................................................ 180
`(5) [1.g] 180
`e. Claim 4: The wireless headphone assembly of claim 1,
`wherein: the first earphone comprises a first earbud; and
`the second earphone comprises a second earbud. ..................... 181
`f. Claim 5: The wireless headphone assembly of claim 4,
`wherein each of the first and second earphones comprises:
`an antenna; a wireless communication circuit connected to
`the at least the antenna [sic] a processor in communication
`with the wireless communication circuit; and a
`rechargeable battery for powering the wireless headphone
`assembly. ................................................................................... 181
`g. Claim 9: ..................................................................................... 183
`(1) [9.a] The wireless headphone assembly of claim 1,
`wherein each of the first and second earphones
`comprises: ......................................................................... 183
`(2) [9.b] a hanger bar that sits upon an upper external
`curvature of a user's ear; and ............................................ 183
`(3) [9.c] a body connected to the hanger bar, wherein the
`acoustic transducer is connected to the body. ................... 185
`3. Grounds 3C and 3D: Claim 13 Would Have Been Obvious
`Over Nakagawa-Wilson or Nakagawa-Rosener in View of Hind ....186
`a. Claim 13 .................................................................................... 186
`
`– vii –
`
`

`

`CLAIM LISTING ................................................................................................189
`CLAIM LISTING 000i ceecceseceseceseceseeseeeesaeeeaeesaaecsaecsaecsaessaeeseesseeeseeens 189
`
`
`
`– viii –
`— Vili —
`
`

`

`
`
`I, Tim A. Williams, declare:
`
`1.
`
`I have been retained by Wolf, Greenfield & Sacks, P.C., counsel for
`
`Petitioner Bose Corporation, to assess claims 1-14 (the “challenged claims”) of
`
`U.S. Patent No. 10,368,155 (Ex. 1001, “the ’155 patent”). I am being compensated
`
`for my time at my standard rate of $675 per hour, plus actual expenses. My
`
`compensation is not dependent in any way upon the outcome of the inter partes
`
`review of the ’155 patent.
`
`I.
`
`PERSONAL AND PROFESSIONAL BACKGROUND
`
`2.
`
`I earned a Bachelor of Science degree in Electrical Engineering
`
`(BSEE) from Michigan Technological University in 1976. In 1982, I earned a
`
`Master’s degree, also in Electrical Engineering (MSEE), from the University of
`
`Texas at Austin. I earned a Doctor of Philosophy (Ph.D.) in Electrical Engineering
`
`also from the University of Texas at Austin, in 1985. My doctorate dissertation
`
`was “Digital Signal Processing Techniques for Acoustic Log Data.” In 1991, I
`
`earned a Master of Business Administration degree from the University of Texas at
`
`Austin as well.
`
`3.
`
`I have over 40 years of professional experience in wireless
`
`communications and telecom technology, including roles in large corporations as
`
`well as start-ups and consulting work. My career has included the design,
`
`implementation, and sale of many wireless components and systems, including for
`
`– 1 –
`
`

`

`
`
`Institute of Electrical and Electronics Engineers (IEEE) 802.11-based wireless
`
`local area network (WLAN) at 2.4 GHz, 5.0 GHz, and 60 GHz. I have also
`
`designed cellular chipsets for operation in cellular phones. See Ex. 1004. I also
`
`attended Bluetooth standards meetings and have testified in Federal Court several
`
`times regarding Bluetooth standards, equipment and protocols.
`
`4.
`
`For example, from 1979 through 1991, I held the positions of Senior
`
`Engineer, Senior Member of the Technical Staff, and Member of the Technical
`
`Staff at Motorola, Inc. My work at Motorola, Inc. included serving as business
`
`manager, project leader, and senior technical member for projects relating to the
`
`development of various cellular modems, transceivers, and transcoders.
`
`5.
`
`As another example, in 1991, I co-founded Wireless Access, Inc., a
`
`start-up company focused on the Narrow Band PCS equipment market and which
`
`developed the over the air protocols, subscriber equipment, and integrated circuits
`
`to deploy 2-way paging services. I held the positions of Co-Founder, Chief
`
`Technical Officer, Vice President of Engineering, and Vice President of Business
`
`Strategy at Wireless Access, Inc. until it was sold to Glenarye Electronics in 1998.
`
`6.
`
`As another example, between 1998 and 2000, I was the Chief
`
`Technology Officer and Advisory Board Member of Picazo Communications,
`
`which built and sold software PBXs Telephony equipment using VoIP and Circuit
`
`Switched Technologies.
`
`– 2 –
`
`

`

`
`
`7.
`
`As another example, in 2004, I founded DoceoTech Inc., which
`
`provides training for engineers in Wireless, Networking, and Telephony
`
`technologies. Since 2004, I have served as the Chairman of DoceoTech Inc.
`
`8.
`
`From, 1999 to 2000, I was also an Interim CEO and Advisory Board
`
`Member of Atheros Communications, which built ICs for wireless LAN products
`
`including 802.11-based LANs.
`
`9.
`
`I was the founder and CEO of JetQue Inc., which developed
`
`messaging solutions for mobile environments.
`
`10.
`
`I was the founder and CEO of SiBEAM Inc., which developed high
`
`speed networking ICs for 60 GHz wireless LAN networking.
`
`11.
`
`I hold over 25 United States patents in wireless and signal processing
`
`technology, as well as numerous patent applications in the same field.
`
`Additionally, I am a Patent Agent registered with the U.S. Patent and Trademark
`
`Office since January 2002.
`
`12.
`
`I have provided my opinions and/or testimony as an expert witness in
`
`topics relating to, for example, wireless communication technologies in matters
`
`before the International Trade Commission, U.S. district courts, and the U.S.
`
`Patent Trial and Appeals Board.
`
`13. My curriculum vitae is provided as Exhibit 1004.
`
`– 3 –
`
`

`

`
`
`II. MATERIALS REVIEWED AND CONSIDERED
`
`14. My findings, as explained below, are based on my years of education,
`
`research, experience, and background in the field of wireless signal
`
`communications, including WiFi, Bluetooth, and cellular communication
`
`technologies, 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.
`
`– 4 –
`
`

`

`
`
`1011
`
`1012
`
`Exhibit Description
`1001
`U.S. Patent No. 10,368,155
`1002
`Prosecution History of U.S. Patent No. 10,368,155
`1005
`Declaration of John G. Casali
`1006
`Curriculum Vitae of John G. Casali
`1007
`PCT/US2009/039754 (“PCT Application”)
`1008
`U.S. Patent No. 8,190,203
`1009
`European Patent No. 2,272,259 (“EP ’259”)
`1010
`Request for Entry into the European Phase of PCT/US2009/039854
`(European Application No. 093731146.8) (Oct. 19, 2010)
`Communication regarding the transmission of the European search
`report (European Application No. 093731146.8) (June 10, 2011)
`Communication from Applicant (European Application No.
`093731146.8) (Nov. 30, 2011)
`PCT Publication No. WO2009/126614 (“Pelland”)
`Prosecution History of U.S. Patent No. 8,190,203
`PCT/US2008/88656 (PCT Publication No. WO2009/086555A1)
`U.S. Patent Application Publication No. 2007/0165875 (“Rezvani”)
`U.S. Patent No. 6,856,690 (“Skulley”)
`U.S. Patent Application Publication No. 2004/0142693 (“Feder”)
`U.S. Patent No. 7,069,452 (“Hind”)
`U.S. Patent Application Publication No. 2008/0076489 (“Rosener”)
`U.S. Patent No. 7,457,649 (“Wilson”)
`U.S. Patent Application Publication No. 2003/0223604 (“Nakagawa”)
`U.S. Patent Application Publication No. 2007/0253579
`U.S. Patent No. 7,627,289
`U.S. Patent No. 5,889,870
`U.S. Patent Application Publication No. 2008/0031475
`
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`
`– 5 –
`
`

`

`
`
`1027
`
`1028
`1029
`1030
`1031
`1033
`1034
`1035
`1036
`1037
`1038
`1039
`1040
`1041
`1042
`1043
`1044
`1045
`1046
`1047
`1048
`
`1049
`1050
`1051
`1052
`1053
`
`IEEE Std. 315, Graphic Symbols for Electrical and Electronic
`Diagrams (1975) (Reaffirmed 1993)
`U.S. Patent Application Publication No. 2006/0141950
`U.S. Patent Application Publication No. 2006/0083331
`U.S. Patent Application Publication No. 2007/0206776
`U.S. Patent Application Publication No. 2005/0286466
`U.S. Patent No. 5,761,298
`U.S. Patent No. 5,960,094
`U.S. Patent No. 6,295,366
`U.S. Patent Application Publication No. 2007/0110017
`U.S. Patent Application Publication No. 2004/0068653
`U.S. Patent Application Publication No. 2008/0113689
`U.S. Patent Application Publication No. 2005/0037818
`U.S. Patent Application Publication No. 2004/0210752
`U.S. Patent Application Publication No. 2007/0149261
`U.S. Patent No. 8,180,078
`U.S. Patent Application Publication No. 2005/0058313
`U.S. Patent Application Publication No. 2007/0147629
`U.S. Patent Application Publication No. 2004/0078812
`U.S. Patent Application Publication No. 2008/0166005
`U.S. Patent Application Publication No. 2003/0065805
`Internet Archive of
`http://www.bose.com/controller?event=VIEW_PRODUCT_PAGE_E
`VENT&product=headphones_audio_subcategory (Nov. 1, 2007)
`U.S. Patent Application Publication No. 2007/0092098
`U.S. Patent Application Publication No. 2008/0226094
`U.S. Patent Application Publication No. 2003/0018810
`U.S. Patent Application Publication No. 2007/0258613
`U.S. Patent Application Publication No. 2009/0046869
`
`– 6 –
`
`

`

`
`
`1054
`
`1055
`
`1076
`
`1077
`
`1078
`1081
`1083
`1084
`1085
`1086
`1087
`1088
`1089
`1090
`1091
`1092
`1093
`1094
`1095
`1096
`
`Redline comparisons of written description text in alleged priority
`chain of U.S. Patent No. 10,368,155
`Koss Corp. v. Bose Corp., 6:20-cv-00661-ADA (Dkt. 1)
`(Complaint & Exs. A-G) (W.D. Tex. July 22, 2020)
`Skrainer, S. F., Royster, L.H., Berger, E.H., & Pearson, R. G. “Do
`Personal Radio Headsets Provide Hearing Protection,” Sound and
`Vibration, 19(5) (1985), 16-19
`Casali, J. G. & Park, M. Y., “Attenuation performance of four hearing
`protectors under dynamic movement and different user fitting
`conditions,” Human Factors (1990)
`U.S. Patent No. 7,564,989
`U.S. Patent Application Publication No. 2007/0123171
`U.S. Patent No. 8,571,544
`Prosecution History of 8,571,544
`U.S. Patent No. 9,049,502
`Prosecution History of 9,049,502
`U.S. Patent No. 9,438,987
`Prosecution History of 9,438,987
`U.S. Patent No. 9,497,535
`Prosecution History of 9,497,535
`U.S. Patent No. 9,729,959
`Prosecution History of 9,729,959
`U.S. Patent No. 9,986,325
`Prosecution History of 9,986,325
`U.S. Patent No. 10,206,025
`Prosecution History of 10,206,025
`
`
`III. MY UNDERSTANDING OF PATENT LAW
`
`15.
`
`In developing my opinions, I discussed various relevant legal
`
`principles with Petitioner’s attorneys. I understood those legal principles when
`
`– 7 –
`
`

`

`
`
`they were explained to me and have relied upon those 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:
`
`16.
`
`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.
`
`17.
`
`I understand that, in this proceeding, Petitioner has the burden of
`
`proving that the challenged claims of the ’155 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.
`
`18.
`
`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
`
`skill in the art (“POSA”) in the context of the entire patent and the prosecution
`
`history pertaining to the patent. If the specification provides a special definition
`
`for a claim term that differs from the meaning the term would otherwise possess,
`
`the specification’s special definition controls. If a claim element is expressed as a
`
`“means” for performing a specified function, I understand that it covers the
`
`corresponding structure described in the specification and equivalents of the
`
`described structure. I have applied these standards in preparing the opinions in this
`
`declaration.
`
`– 8 –
`
`

`

`
`
`19.
`
`I understand that determining whether a particular patent or printed
`
`publication constitutes prior art to a challenged patent claim can require
`
`determining the effective filing date (also known as the priority date) to which the
`
`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 a POSA that the inventor had
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`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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`20.
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`I understand that for an invention claimed in a patent to be patentable,
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`it must be, among other things, new (novel—i.e., not anticipated) and not obvious
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`from the prior art. My understanding of these two legal standards is set forth
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`below.
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`A. Anticipation
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`21.
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`I understand that, for a patent claim to be “anticipated” by the prior art
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`(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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`– 9 –
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`understood the reference to disclose the limitation based on inferences that a POSA
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`would reasonably be expected to draw from the explicit teachings in the reference
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`when read in light of the POSA’s knowledge and experience.
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`22.
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`I understand that a claim limitation is inherent in a prior art reference
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`if that limitation is necessarily present when practicing the teachings of the
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`reference, regardless of whether a person of ordinary skill recognized the presence
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`of that limitation in the prior art.
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`B. Obviousness
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`23.
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`I understand that a patent claim may be unpatentable if it would have
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`been obvious in view of a single prior art reference or a combination of prior art
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`references.
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`24.
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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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`– 10 –
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`• if present, objective factors indicative of non-obviousness,
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`sometimes referred to as “secondary considerations.” To my
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`knowledge, the Patent Owner has not asserted any secondary
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`considerations with respect to the ’155 patent at the time of my
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`submitting this declaration.
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`25.
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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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`26.
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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 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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`– 11 –
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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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`• 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
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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 to
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`combine prior art reference teachings to arrive at the claimed
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`invention. I understand that this teaching, suggestion or motivation
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`may come from a prior art reference or from the knowledge or
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`common sense of one of ordinary skill in the art.
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`27.
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`I understand that for a single reference or a combination of references
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`to render the claimed invention obvious, a POSA must have been able to arrive at
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`the claimed invention by altering or combinin