UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________
`QUALCOMM INCORPORATED,
`Petitioner,
`v.
`UNM RAINFOREST INNOVATIONS,
`Patent Owner.
`____________________________
`INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,265,096 B2
`Case IPR2021-00375
`____________________________
`DECLARATION OF DR. SUMIT ROY, Ph.D.
`Ex. 1002
`
`
`
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`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 5
`I.
`BACKGROUND AND QUALIFICATIONS ............................................... 7
`II.
`III. MATERIALS RELIED UPON .................................................................... 10
`IV. SUMMARY OF OPINIONS ....................................................................... 12
`V.
`LEGAL STANDARDS ............................................................................... 13
`A.
`Legal Standards for Prior Art ............................................................ 13
`B.
`Legal Standard for Priority Date ....................................................... 15
`C.
`Legal Standard for Anticipation ........................................................ 15
`D.
`Legal Standard of Obviousness ......................................................... 17
`VI. CLAIM CONSTRUCTION ......................................................................... 22
`VII. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 24
`VIII. BACKGROUND ON THE STATE OF THE ART .................................... 25
`A. Overview of Cellular Communication Systems ................................ 25
`B. Overview of Broadband Wireless Communication Systems ............ 28
`1.
`First-Generation Broadband Systems ..................................... 29
`2.
`Second-Generation Broadband Systems and OFDM .............. 30
`C. Overview of 802.16/WiMAX ............................................................ 31
`1.
`History of 802.16 ..................................................................... 32
`2.
`Frame Structure of 802.16 ....................................................... 35
`3.
`OFDM in 802.16 ..................................................................... 39
`4.
`OFDMA in 802.16 .................................................................. 42
`802.16/WiMAX and Mobility ........................................................... 43
`D.
`IX. THE CHALLENGED ‘096 PATENT ......................................................... 47
`A.
`Background and ‘096 Patent Specification ....................................... 47
`B. Overview of the ‘096 Patent Prosecution History ............................. 48
`X. OVERVIEW OF THE PRIOR ART REFERENCES ................................. 50
`A. Overview of “Talukdar” (Ex. 1012) .................................................. 50
`B. Overview of “Li” (Ex. 1016) ............................................................. 53
`
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`C. Overview of Nystrom (Ex. 1017) ...................................................... 55
`XI. SPECIFIC GROUNDS OF CHALLENGE ................................................. 57
`A. Ground 1: Claims 1-4 and 6-7 were rendered obvious by Talukdar in
`View of Li .......................................................................................... 58
`1.
`Claim 1 .................................................................................... 58
`a) 1[pre]: “A method of constructing a frame structure for
`data transmission, the method comprising” ...................... 58
`b) 1[a]: “generating a first section comprising data configured
`in a first format compatible with a first communication
`system using symbols” ...................................................... 61
`c) 1[b]: “generating a second section following the first
`section, the second section comprising data configured in a
`second format compatible with a second communication
`system using symbols, wherein the first communication
`system’s symbols and the second communication system’s
`symbols co-exist in one transmission scheme” ................. 67
`d) 1[c]: “and wherein: the second format is compatible with
`the second communication system configured to support
`higher mobility than the first communication system,
`wherein each symbol in the second communication system
`has a shorter symbol period than that in the first
`communication system” .................................................... 74
`e) 1[d]: “generating at least one non-data section containing
`information describing an aspect of data in at least one of
`the first section and the second section” ........................... 89
`f) 1[e]: “combining the first section, the second section and
`the at least one non-data section to form the frame
`structure” ........................................................................... 94
`Claim 2 .................................................................................... 94
`2.
`Claim 3 .................................................................................... 97
`3.
`Claim 4 .................................................................................... 99
`4.
`Claim 6 ..................................................................................100
`5.
`Claim 7 ..................................................................................102
`6.
`B. Ground 2: Talukdar and Nystrom Rendered Claim 8 Obvious .......103
`
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`1.
`
`8[c]: “and wherein the second communication system has pilot
`symbols that are denser than those in the first communication
`system” ..................................................................................104
`XII. SECONDARY CONSIDERATIONS .......................................................113
`XIII. CONCLUSION ..........................................................................................113
`
`
`APPENDIX A (Curriculum Vitae)
`
`
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`I.
`
`INTRODUCTION
` My name is Sumit Roy, and I have been retained by counsel for
`
`Petitioner Qualcomm Incorporated (“Qualcomm” or “Petitioner”) as an expert
`
`witness to provide assistance regarding U.S. Patent No. 8,265,096 (“the ‘096
`
`Patent”). Specifically, I have been asked to consider the validity of claims 1-4 and
`
`6-8 of the ‘096 Patent (the “Challenged Claims”) in view of prior art, anticipation
`
`and obviousness considerations, and understanding of a person of ordinary skill in
`
`the art (“POSA”) as it relates to the ‘096 Patent. I have personal knowledge of the
`
`facts and opinions set forth in this declaration, and believe them to be true. If called
`
`upon to do so, I would testify competently thereto.
`
`
`
`I am being compensated for my time at my standard consulting rate of
`
`$650 per hour. I am also being reimbursed for expenses that I incur during the course
`
`of this work. My compensation is not contingent upon the results of my study, the
`
`substance of my opinions, or the outcome of any proceeding involving the
`
`challenged claims. I have no financial interest in the outcome of this matter or on the
`
`pending litigation between Petitioner and Patent Owner.
`
` My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
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`
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`I may rely upon these materials, my knowledge and experience, and/or
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`additional materials to rebut arguments raised by the Patent Owner. Further, I may
`
`also consider additional documents and information in forming any necessary
`
`opinions, including testimony of other expert witnesses or documents that may not
`
`yet have been provided to me.
`
`
`
`I have been informed that Patent Owner UNM Rainforest Innovations
`
`(formerly STC.UNM) has asserted the patent in the following lawsuits: UNM
`
`Rainforest Innovations v. ZyXEL Commc’ns Corp., 6:20-cv-00522 (W.D. Tex.);
`
`UNM Rainforest Innovations v. Dell Techs., Inc., 6:20-cv-00468 (W.D. Tex.); UNM
`
`Rainforest Innovations v. ASUSTek Comput., Inc., 6:20-cv-00142 (W.D. Tex.);
`
`UNM Rainforest Innovations v. D-Link Corp., 6:20-cv-00143 (W.D. Tex.); UNM
`
`Rainforest Innovations v. Apple Inc., 1:20-cv-00351 (W.D. Tex.); UNM Rainforest
`
`Innovations v. TP-Link Techs. Co., Ltd., 6:19-cv-00262 (W.D. Tex.).
`
`
`
`In this declaration, I will discuss my qualifications and background, the
`
`technology background related to the ‘096 Patent and then provide my analyses and
`
`opinions on claims 1-4 and 6-8 of the ‘096 Patent. This overview provides bases for
`
`my opinions with respect to the ‘096 Patent.
`
` My analysis of the materials produced in this proceeding is ongoing and
`
`I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
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`
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`supplement, and/or amend my opinions stated herein based on new information and
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`on my continuing analysis of the materials already provided.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`I am an expert in the field of wireless networks. I have studied, taught,
`
`practiced, and researched this field for over thirty years. I have summarized in this
`
`section my educational background, work experience, and other relevant
`
`qualifications. Attached hereto as Appendix A, is a true and correct copy of my
`
`curriculum vitae describing my background and experience.
`
`
`
`I earned my Bachelor of Technology degree in Electrical Engineering
`
`from Indian Institute of Technology in Kanpur in 1983. In 1985, I earned my Master
`
`of Science degree in Electrical Engineering from University of California in Santa
`
`Barbara. I earned a Doctor of Philosophy in Electrical Engineering and Master of
`
`Arts in Statistics & Applied Probability from University of California in Santa
`
`Barbara in 1988, with my dissertation being on “Estimation Strategies for a Network
`
`of Distributed Sensors.”
`
` While a graduate student, from 1983 through 1988, I worked on various
`
`projects related to networked wireless communication and radar systems using a mix
`
`of analytical modeling and computer simulation.
`
`
`
`In July of 1988, I joined the faculty of the University of Pennsylvania
`
`as an Assistant Professor in the Department of Electrical Engineering. While in this
`
`
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`position, I taught upper level undergraduate course called “Communication
`
`Systems” and graduate level courses “Advanced Digital Signal Processing” and
`
`“Digital Communications”.
`
`
`
`In January of 1995, I became a tenured Associate Professor in the
`
`Division of Engineering at the University of Texas at San Antonio, in San Antonio,
`
`Texas. In April of 1998, I transferred to a tenured Associate Professor in the
`
`Department of Electrical Engineering at the University of Washington in Seattle,
`
`Washington and was promoted to Professor in September of 2002. As a faculty
`
`member at University of Washington, I have taught courses and directed research in
`
`networking and telecommunications, including 802.11 WLAN and Cellular
`
`technologies. From September 2014 to September of 2019, I received Integrated
`
`Systems Term Professorship at the University of Washington in recognition of my
`
`leadership and national stature in this area.
`
`
`
`I took full-time leave from my University of Washington position to
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`serve as a Senior Staff Researcher at Intel Labs, Hillsboro, OR from September 2001
`
`to December 2003. At Intel, I served as Wireless Systems Architect researching
`
`IEEE 802.15.3a Ultra-Wideband PHY layer for Wireless Personal Area Networks
`
`and nascent pre-802.11n (MIMO WiFi) technology, with responsibility for
`
`representing Intel at IEEE Standards meetings and coordination with other industry
`
`
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`partners. My research resulted in several patents relating to the above, including
`
`design implementation of MIMO WiFi transceivers.
`
`
`
`I have knowledge and experience throughout my academic career and
`
`industry experience in technologies used in wireless networks. Since 1988, I have
`
`received over ten million dollars in funding from various national and international
`
`organizations to support my work on wireless networking.
`
`
`
`In addition to advising and mentoring students at UW, I have served as
`
`external dissertation reviewer in McGill Univ., Montreal, National University of
`
`Singapore, University of Victoria, and SIIT in Bangkok. At UW and U. Penn., I
`
`have advised and supervised over 20 Ph.D students and vising scholars.
`
`
`
`In addition to my academic work, I have remained active in the
`
`communication industry through my consulting work. I consulted for Mathworks, a
`
`vendor of WLAN toolbox products for design, on current 802.11 designs including
`
`MIMO systems. I am also the named inventor on U.S. Patent Nos. 7,782,970 and
`
`8,289,836 titled “Apparatus and associated methods to introduce diversity in a
`
`multicarrier communication channel,” among others, which are listed in my
`
`curriculum vitae.
`
`
`
`I have authored and co-authored over 200 journal publications,
`
`conference proceedings, technical papers, book chapters, and technical presentations
`
`in a broad array of communications-related technologies, including networking and
`
`
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`wireless communication. I have also developed and taught over 10 courses related
`
`to communications and computer systems, including several courses on signals and
`
`systems, wireless communication, communications systems. These courses included
`
`introductory courses on communication systems, as well as more advanced courses
`
`on wireless communications. A complete list of my publications and the courses I
`
`have developed and/or taught is also contained in my curriculum vitae.
`
` My professional affiliations include services in various professional
`
`organizations and serving as a reviewer for a number of technical publications,
`
`journals, and conferences. I have also received a number of awards and recognitions,
`
`including IEEE Communications Society’s Distinguished Lecturer award (2014-15,
`
`2017-18), Shanghai JiaoTung University High-end Foreign Expert award (1
`
`month/year, 2014-16), which are listed in my curriculum vitae.
`
`
`
`I have also served as an expert in certain legal proceedings. A list of
`
`cases in which I have testified at trial, hearing, or by deposition (including those
`
`during the past five years) is provided in my curriculum vitae. Over the years, I have
`
`been retained by both patent owners as well as petitioners.
`
`III. MATERIALS RELIED UPON
`
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in this
`
`
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`declaration, including the ‘096 Patent (Ex. 1001)1, the prosecution history of the
`
`‘096 the Exhibits to Patent, the prior art references, and information discussed and
`
`any other references specifically identified in this declaration, including the
`
`materials identified in the chart below.
`
`
`
`I have considered information from various other sources in forming
`
`my opinions. I have also drawn on almost three decades of research and development
`
`in the field of wireless communication systems.
`
`Exhibit
`Ex. 1001
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`Ex. 1009
`Ex. 1010
`Ex. 1011
`
`Ex. 1012
`
`Description
`U.S. Patent No. 8,265,096 (“the ‘096 Patent”)
`Sand Revolution II, LLC v. Continental Intermodal Group-Trucking
`LLC, Paper 24, IPR2019-01393 (PTAB June 16, 2020)
`Seventh Supplemental Order Regarding Court Operations Under
`Exigent Circumstances Created by the Covid 19 Pandemic (W.D.
`Tex. Aug. 6, 2020)
`Excerpts from JEFFREY G. ANDREWS ET AL.,
`FUNDAMENTALS OF WIMAX (2007) (“Fund. of WiMAX”)
`Five Criteria Statement for P802.16m PAR Proposal, IEEE 802.16-
`06/055r3 (Nov. 15, 2006)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Oct. 19, 2007)
`Listing of Challenged ‘096 Patent Claims
`U.S. Provisional App. No. 60/929,
`Excerpts from ‘096 Patent File History
`Claim Construction Order in STC.UNM v. Apple Inc., No. 1-20- cv-
`00351 (W.D. Tex. Apr. 9, 2020), ECF No. 69
`U.S. Pub. No. 2009/0067377 A1 (“Talukdar”)
`
`
`1 The citations in this declaration to an “Exhibit” or “Ex.” Refer to the Petition.
`
`
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`Exhibit
`Ex. 1013
`
`Ex. 1014
`Ex.1015
`
`Ex. 1016
`Ex. 1017
`Ex. 1018
`Ex. 1019
`
`Ex. 1020
`Ex. 1021
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`Ex. 1025
`
`Ex. 1026
`Ex. 1027
`
`Description
`U.S. Provisional Application No. 60/956,031 (“Talukdar
`Provisional”)
`Canadian Patent Application No. 2 581 166 A1 (“Wang”)
`WIPO Handbook on Industrial Property Information and
`Documentation, “Examples and Kinds of Patent Documents” (May
`2016)
`U.S. Pub. No. 2007/0155387 A1 (“Li”)
`U.S. Pub. No. 2007/0104174 A1 (“Nystrom”)
`U.S. Pub. No. 2008/0095195 (“Ahmadi”)
`Excerpts from WILLIAM STALLINGS, WIRELESS
`COMMUNICATIONS AND NETWORKS (2D ED. 2005)
`U.S. Patent No. 7,460,466 B2 (“Lee”)
`U.S. Patent No. 8,462,611 B2 (“Ma”)
`Fixed, nomadic, portable and mobile applications for 802.16-2004
`and 802.16e WiMAX networks (Nov. 2005)
`Mohammad Azizul Hasan, Performance Evaluation of
`WiMAX/IEEE 802.16 OFDM Physical Layer (June 2007)
`U.S. Patent No. 7,710,910 B2 (“Ode”)
`IEEE 802.16m System Requirements, IEEE 802.16m-07/002r4
`(Jan. 12, 2007)
`U.S. Pub. No. 2004/0037215 A1 (“Hwang”)
`Yasamin Mostofi, ICI Mitigation for Pilot-Aided OFDM Mobile
`Systems (Mar. 2005)
`
`
`IV. SUMMARY OF OPINIONS
` Claims 1-4 and 6-7 of the ‘096 Patent are unpatentable as obvious in
`
`light of Talukdar in combination with Li.
`
` Claim 8 of the ‘096 Patent is unpatentable as obvious in light of
`
`Talukdar in combination with Nystrom.
`
`
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`V. LEGAL STANDARDS
`
`I am not a lawyer. My understanding of legal principles comes from
`
`counsel. I have applied the following legal principles in arriving at the opinions set
`
`forth in this declaration.
`
`A. Legal Standards for Prior Art
`
`I understand that a patent or other publication must first qualify as prior
`
`art before it can be used to invalidate a patent claim.
`
`
`
`I understand that a U.S. or foreign patent qualifies as prior art to a patent
`
`if the date of issuance of the U.S. or foreign patent is prior to the invention of the
`
`patent. I further understand that a printed publication, such as an article published in
`
`a magazine or trade publication or a patent application, qualifies as prior art to a
`
`patent if the date of publication is prior to the invention of the patent. My
`
`understanding is that, for such prior art references, a patentee may attempt to show
`
`that the claimed invention was conceived prior to the issuance of the U.S. foreign
`
`patent or publication of the printed materials. To do so, it is my understanding that
`
`patentee must prove with corroborating evidence that the named inventors conceived
`
`of the complete claimed invention before the prior art, and were diligent in reducing
`
`the claimed inventions to practice.
`
`
`
`I understand that, regardless of the date of invention of the patent, a
`
`U.S. or foreign patent qualifies as prior art to a patent if the date of issuance of the
`
`
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`U.S. or foreign patent is more than one year before the earliest effective filing date
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`of the patent. I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication or a patent application, constitutes prior
`
`art to a patent if the publication occurs more than one year before the earliest
`
`effective filing date of the patent, again regardless of the date of invention of the
`
`patent.
`
`
`
`I understand that a U.S. patent or published U.S. application qualifies
`
`as prior art to a patent if the application for that patent was filed in the United States
`
`before the invention of the patent. My understanding is that, for such prior art
`
`references, a patentee may attempt to show that the claimed invention was conceived
`
`prior to the filing in the United States of the purported prior art U.S. patent or
`
`application. To do so, it is my understanding that patentee must prove with
`
`corroborating evidence that the named inventors conceived of the complete claimed
`
`invention before the prior art, and were diligent in reducing the claimed inventions
`
`to practice.
`
`
`
`I understand that to qualify as prior art, a reference must contain an
`
`enabling disclosure that allows one of ordinary skill to practice the claims without
`
`undue experimentation.
`
`
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`
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`B.
`
`
`
`Legal Standard for Priority Date
`I understand that the “priority date” or “earliest effective filing date” of
`
`a patent is the date on which it is filed, or the date on which an earlier-filed U.S. or
`
`international patent application was filed if the patentee claims the benefit of priority
`
`to that earlier-filed U.S. or international patent application. I further understand that
`
`although a foreign priority document may be used to try to overcome certain prior
`
`art references, the effective filing date is not the filing date of a foreign priority
`
`document.
`
`C. Legal Standard for Anticipation
`
`I have been informed that if each and every element or step of a claim
`
`is disclosed within the “four corners” of a prior art reference, that claim is said to be
`
`“anticipated” by that single prior art reference and is invalid under 35 U.S.C. § 102
`
`because the claimed invention is not, in fact, new or novel. I have been informed
`
`that the standard for anticipation in an Inter Partes Review proceeding is by a
`
`preponderance of the evidence.
`
`
`
`I have also been informed that a prior art reference can disclose a claim
`
`feature if that feature is expressly described by that reference or inherent from its
`
`disclosure. I have been informed that something is inherent from a prior art
`
`reference, if the missing descriptive matter must necessarily be present, and it would
`
`be so recognized by a person of ordinary skill in the art (“POSA”). I have also been
`
`
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`informed that inherency cannot be established by probabilities or possibilities, and
`
`that the mere fact that something may result from a given set of circumstances is not
`
`sufficient to show inherency.
`
`
`
`I have further been informed that where a reference discloses multiple
`
`embodiments, the reference should not be limited to a preferred embodiment.
`
`Instead, each disclosed embodiment may anticipate.
`
` Moreover, I have been informed that as part of an anticipation analysis,
`
`it is proper to take into account not only specific teachings of the reference, but also
`
`the inferences that one skilled in the art would reasonably be expected to draw
`
`therefrom. A reference can anticipate a claim even if it does not expressly spell out
`
`all the limitations arranged or combined as in the claim, if a person of skill in the art,
`
`reading the reference, would at once envisage the claimed arrangement or
`
`combination.
`
`
`
`I have been informed that a prior art document can disclose a claimed
`
`feature, and anticipate a claimed invention, if that feature is described in another
`
`document that has been incorporated by reference. I have also been informed that,
`
`to incorporate by reference, the host document must identify with detailed
`
`particularity what specific material it incorporates, and clearly indicate where that
`
`material is found in the incorporated document.
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`
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`I have also been informed that, in making the determination of the
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`extent to which material is incorporated into a host document, the standard of a
`
`POSA should be used to determine whether the host document describes the material
`
`to be incorporated by reference with sufficient particularity.
`
`D. Legal Standard of Obviousness
`
`I have been informed that a claim may be invalid under 35 U.S.C. §
`
`103(a) if the subject matter described by the claim as a whole would have been
`
`obvious to a hypothetical person of ordinary skill in the art in view of a prior art
`
`reference or in view of a combination of references at the time the claimed invention
`
`was made.
`
`
`
`I have been informed that obviousness is determined from the
`
`perspective of a hypothetical POSA and that the asserted claims of the patent should
`
`be read from the point of view of such a person at the time the claimed invention
`
`was made. I have been informed that a hypothetical POSA is assumed to know and
`
`to have all relevant prior art in the field of endeavor covered by the patent in suit.
`
`
`
`I have been informed that there are two criteria for determining whether
`
`prior art is analogous and thus can be considered prior art to a challenged patent: (1)
`
`whether the art is from the same field of endeavor, regardless of the problem
`
`addressed, and (2) if the reference is not within the field of the patentee’s endeavor,
`
`whether the reference still is reasonably pertinent to the particular problem with
`
`
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`which the patentee is involved. I have also been informed that the field of endeavor
`
`of a patent is not limited to the specific point of novelty, the narrowest possible
`
`conception of the field, or the particular focus within a given field. I have also been
`
`informed that a reference is reasonably pertinent if, even though it may be in a
`
`different field from that of the patentee’s endeavor, it is one which, because of the
`
`matter with which it deals, logically would have commended itself to a patentee’s
`
`attention in considering his problem.
`
`
`
`I have also been informed that an analysis of whether a claimed
`
`invention would have been obvious should be considered in light of the scope and
`
`content of the prior art, the differences (if any) between the prior art and the claimed
`
`invention, and the level of ordinary skill in the pertinent art involved. I have been
`
`informed as well that a prior art reference should be viewed as a whole.
`
`
`
`I have also been informed that in considering whether an invention for
`
`a claimed combination would have been obvious, I may assess whether there are
`
`apparent reasons to combine known elements in the prior art in the manner claimed
`
`in view of interrelated teachings of multiple prior art references, the effects of
`
`demands known to the design community or present in the market place, and/or the
`
`background knowledge possessed by a person having ordinary skill in the art. I have
`
`been informed that other principles may be relied on in evaluating whether a claimed
`
`invention would have been obvious, and that these principles include the following:
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`Qualcomm Incorporated Ex. 1002
`Page 18 of 147
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`
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`A combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results;
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` When a device or technology is available in one field of endeavor,
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`design incentives and other market forces can prompt variations of it,
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`either in the same field or in a different one, so that if a person of
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`ordinary skill can implement a predictable variation, the variation is
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`likely obvious;
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`
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`If a technique has been used to improve one device, and a person of
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`ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique is obvious unless its actual
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`application is beyond his or her skill;
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`
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`An explicit or implicit teaching, suggestion, or motivation to combine
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`two prior art references to form the claimed combination may
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`demonstrate obviousness, but proof of obviousness does not depend on
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`or require showing a teaching, suggestion, or motivation to combine;
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`Market demand, rather than scientific literature, can drive design trends
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`and may show obviousness;
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`In determining whether the subject matter of a patent claim would have
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`been obvious, neither the particular motivation nor the avowed purpose
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`of the named inventor controls;
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`
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`
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`Qualcomm Incorporated Ex. 1002
`Page 19 of 147
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`
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`One of the ways in which a patent’s subject can be proved obvious is
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`by noting that there existed at the time of invention a known problem
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`for which there was an obvious solution encompassed by the patent’s
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`claims;
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`
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`Any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed;
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`
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`“Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a person of ordinary
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`skill will be able to fit the teachings of multiple patents together like
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`pieces of a puzzle;
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`
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`
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`A person of ordinary skill in the art is also a person of ordinary
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`creativity, and is not an automaton;
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`A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there
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`is a design need or market pressure to solve a problem and there are a
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`finite number of identified, predictable solutions such that a person of
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`ordinary skill in the art would have had good reason to pursue the
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`known options within his or her technical grasp; and
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`Qualcomm Incorporated Ex. 1002
`Page 20 of 147
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`One should be cautious of using hindsight in evaluating whether a
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`claimed invention would have been obvious.
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`I have further been informed that, in making a determination as to
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`whether or not the claimed invention would have been obvious to a person of
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`ordinary skill, the Board may consider certain objective factors if they are present,
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`such as: commercial success of products practicing the claimed invention; long-felt
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`but unsolved need; teaching away; unexpected results; copying; and praise by others
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`in the field. These factors are generally referred to as “secondary considerations” or
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`“objective indicia” of nonobviousness. I have been informed, however, that for such
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`objective evidence to be relevant to the obviousness of a claim, there must be a
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`causal relationship (called a “nexus”) between the claim and the evidence and that
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`this nexus must be based on what is claimed and novel in the claim rather than
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`something in the prior art. I have also been informed that even when they are present,
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`secondary considerations may be unable to overcome primary evidence of
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`obviousness (e.g., motivation to combine with predictable results) that is sufficiently
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`strong.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a person of ordinary skill in the art at the time of the alleged
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`invention having the understanding and knowledge reflected in the prior art and
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`motivated by the general problem facing the inventor would have been led to make
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`Qualcomm Incorporated Ex. 1002
`Page 21 of 147
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`the combination of elements recited in the claims. Under this analysis, the prior art
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`references themselves, or any need or problem known in the field of endeavor at the
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`time of the invention, can provide a reason for combining the elements of multiple
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`prior art references in the claimed manner.
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`
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`I have been informed and understand that the obviousness analysis
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`requires a comparison of the properly construed claim language to the prior art on a
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`limitation-by-limitation basis.
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`VI. CLAIM CONSTRUCTION
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`I have been informed that for purposes of this Inter Partes Review, the
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`standard for claim construction is the same as the standard used in federal district
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`court litigation: claim terms should generally be given their ordinary and customary
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`meaning as understood by one of ordinary skill in the art at the time of the invention
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`and after reading the patent and its prosecution history.
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`
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`I have been informed that the following terms of the ‘096 Patent were
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`construed in a case between Patent Owner