`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TCT MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.; HUIZHOU TCL MOBILE
`COMMUNICATION CO. LTD.; AND TCL COMMUNICATION, INC.
`Petitioners
`v.
`FUNDAMENTAL INNOVATION SYSTEMS INTERNATIONAL LLC,
`Patent Owner
`
`
`U.S. Patent No. 7,239,111
`
`
`DECLARATION OF R. JACOB BAKER, PH.D., P.E.,
` REGARDING U.S. PATENT NO. 7,239,111
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`TABLE OF CONTENTS
`I.
`INTRODUCTION .................................................................................................................... 3
`A. Educational and Work Background .................................................................................... 3
`II. UNDERSTANDING OF THE LAW ..................................................................................... 11
`A. Legal Standard for Prior Art ............................................................................................. 11
`B. Legal Standard for Anticipation ........................................................................................ 12
`C. Legal Standard for Obviousness ....................................................................................... 13
`D. Legal Standard for Claim Construction ............................................................................ 18
`E. Legal Standard for Priority Date ....................................................................................... 24
`III. LEVEL OF ORDINARY SKILL IN THE ART .................................................................... 25
`IV. BACKGROUND OF THE TECHNOLOGY ......................................................................... 26
`A. Overview of USB 1.1 ........................................................................................................ 26
`B. Use of the SE1 Abnormal Condition ................................................................................ 36
`C. Overview of the ‘111 Patent ............................................................................................. 39
`V. OVERVIEW OF THE PRIOR ART....................................................................................... 41
`A. Overview of Morita ........................................................................................................... 41
`VI. CLAIM CONSTRUCTION .................................................................................................... 44
`VII. THE CLAIMS OF THE ‘111 PATENT ARE UNPATENTABLE .................................. 48
`A. Claims 1-14, 16-18 of the ‘111 Patent Are Obvious Over Morita in View of the
`Knowledge of a POSITA .................................................................................................. 48
`VIII. CONCLUSION ................................................................................................................. 78
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`I.
`
`INTRODUCTION
`
`1. My name is R. Jacob Baker Ph.D., P.E., and I am a Professor of
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`Electrical and Computer Engineering at the University of Nevada, Las Vegas. I
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`have prepared this declaration as an expert witness on behalf of Petitioners TCT
`
`MOBILE (US), INC.; TCT MOBILE (US) HOLDINGS, INC.; HUIZHOU TCL
`
`MOBILE COMMUNICATION CO. LTD.; and TCL COMMUNICATION, INC.
`
`In this declaration, I will give my opinion as to whether claims 1-14, and 16-18 of
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`U.S. Patent No. 7,239,111 (“the ’111 patent”) (Ex. 1001) are valid. I also provide
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`herein the technical bases for these opinions, as appropriate.
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`2.
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`This declaration contains statements of my opinions formed to date,
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`and the bases and rationale for these opinions. I may offer additional opinions
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`based on further review of materials in this case, including opinions and/or
`
`testimony of other expert witnesses.
`
`3.
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`For my efforts in connection with the preparation of this declaration, I
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`have been compensated at my usual and customary rate for this type of consulting
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`activity. My compensation is in no way contingent on the results of these or any
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`other proceedings related to the ’111 patent.
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`A. Educational and Work Background
`4. My qualifications generally are set forth in my curriculum vitae,
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`which is submitted as Ex. 1004.
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`5.
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`I have been working as an Engineer since 1985 and I have been
`
`teaching Electrical and Computer Engineering courses since 1991. I am currently a
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`Professor of Electrical and Computer Engineering at the University of Nevada, Las
`
`Vegas (“UNLV”). I am also currently an industry consultant for Freedom
`
`Photonics. I am the named inventor on over 150 U.S. patents resulting from my
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`industry work.
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`6.
`
`I received the B.S. and M.S. degrees in Electrical Engineering from
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`UNLV in 1986 and 1988, respectively. I received my Ph.D. in Electrical
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`Engineering from the University of Nevada, Reno, in 1993.
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`7. My doctoral research, culminating in the award of a Ph.D.,
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`investigated the use of power MOSFETs in the design of very high peak power,
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`and high-speed, instrumentation. I developed techniques to reliably stack power
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`MOSFETs to switch higher voltages, that is, greater than 1,000 V and 100 Amps of
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`current with nanosecond switching times. This work was reported in the paper
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`entitled “Transformerless Capacitive Coupling of Gate Signals for Series
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`Operation of Power MOSFET Devices,” published in the IEEE Transactions on
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`Power Electronics. The paper received the Best Paper Award in 2000.
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`Industry Experience
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`8.
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`I have done technical and expert witness consulting for over 120
`
`companies since I started working as an engineer in 1985. From 1985 to 1993 I
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`worked for EG&G Energy Measurements and the Lawrence Livermore National
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`Laboratory designing nuclear diagnostic instrumentation for underground nuclear
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`weapon tests at the Nevada test site. During this time, I designed, and oversaw the
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`fabrication of, over 30 electronic and electro-optic instruments including high-
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`speed cable and fiber-optic receiver/transmitters, PLLs, frame and bit-syncs, data
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`converters, streak-camera sweep circuits, Pockel’s cell drivers, micro-channel plate
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`gating circuits, charging circuits for battery backup of equipment for recording test
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`data, and analog oscilloscope electronics.
`
`9.
`
` My work during this time, as one example, had a direct impact on my
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`doctoral research work using power MOSFETs, subsequent publishing efforts, and
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`industry designs. In addition to the 2000 Best Paper Award from the IEEE Power
`
`Electronics Society, I published several other papers in related areas while working
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`in industry. I hold a patent, Patent No. 5,874,830, in the area of power supply
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`design, titled, “Adaptively biased voltage regulator and operating method,” which
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`was issued on February 23, 1999. I have designed dozens of linear and switching
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`power supplies for commercial products and scientific instrumentation.
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`10.
`
`I am a licensed Professional Engineer and have extensive industry
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`experience in circuit design, fabrication, and manufacture of Dynamic Random
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`Access Memory (DRAM) semiconductor integrated circuit chips, Phase-Change
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`Random Access Memory (PCRAM) chips, and CMOS Image Sensors (CISs) at
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`Micron Technology, Inc. (“Micron”) in Boise, Idaho. I spent considerable time
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`working on the development of Flash memory chips while at Micron. My efforts
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`resulted in more than a dozen patents relating to Flash memory. One of my
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`projects at Micron included the development, design, and testing of circuit design
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`techniques for a multi-level cell (MLC) Flash memory using signal processing.
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`Another project focused on the design of buffers for high-speed double-data rate
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`DRAM which resulted in around 10 US patents in buffer design. Among many
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`other experiences, I led the development of the delay locked loop (DLL) in the late
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`1990s so that Micron DRAM products could transition to the DDR memory
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`protocol, used in mobile and non-mobile (server, desktop, cell phones, tablets, etc.)
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`computing systems as main computer memory, for addressing and controlling
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`accesses to memory via interprocess communications (IPC) with the memory
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`controller (MC). I provided technical assistance with Micron’s acquisition of
`
`Photobit during 2001 and 2002, including transitioning the manufacture of CIS
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`products into Micron’s process technology. Further, I did consulting work at Sun
`
`Microsystems and then Oracle on the design of memory modules during 2009 and
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`2010. This work entailed the design of low-power, high-speed, and wide
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`interconnection methods with the goal of transmitting data to/from the memory
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`module and the MC at higher speeds.
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`11.
`
`I have extensive experience in the development of instrumentation
`
`and commercial products in a multitude of areas including: integrated
`
`electrical/biological circuits and systems, array (memory, imagers, and displays)
`
`circuit design, CMOS analog and digital circuit design, diagnostic electrical and
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`electro-optic instrumentation for scientific research, CAD tool development and
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`online tutorials, low-power interconnect and packaging techniques, design of
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`communication/interface circuits (to meet commercial standards such as USB,
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`firewire, DDR, PCIe, SPI, etc.), circuit design for the use and storage of renewable
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`energy, and power electronics. For example, a part of my research at Boise State,
`
`for many years, focused on the use of Thru-Silicon-Vias (TSVs), aka Thru-Wafer
`
`Vias (TWVs), for high-density packaging. These packaging techniques were
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`utilized in the memory module development work I did with Sun Microsystems
`
`and Oracle. As another example, I’ve designed circuitry for use in implementing
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`Universal Serial Bus (USB) interfaces circuits while I did consulting at Tower
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`Semiconductor. I designed PCI communication circuits for IPC between a
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`Graphics Processor Unit (GPU) and memory while consulting for Rendition, Inc.
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`12. My current research work is focused in part on the design of
`
`integrated circuits for wireless sensing using LIDAR (LIght Detection And
`
`Ranging). I have worked with several companies in the development of these
`
`circuits and systems including Freedom Photonics, Aerius Photonics and FLIR. In
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`the early 1990s I worked on wireless systems for wideband impulse radar while at
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`Lawrence Livermore Laboratory. Further, part of my research for several years
`
`focused on the digitization of IQ channels using delta-sigma modulation. The
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`knowledge and experience gained from this effort are reflected in my textbook
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`CMOS Mixed-Signal Circuit Design and a presentation, which I have presented at
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`several universities and companies,
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`http://cmosedu.com/jbaker/papers/talks/BP_DSM_talk.pdf.
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`Academic Experience
`
`13.
`
`I was an adjunct faculty member in the Electrical Engineering
`
`department of the University of Nevada, Las Vegas in 1991 and 1992. From 1993
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`to 2000, I served on the faculty at the University of Idaho as an Assistant Professor
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`and then as a tenured Associate Professor of Electrical Engineering. In 2000, I
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`joined a new Electrical and Computer Engineering program at Boise State
`
`University (“BSU”) where I served as department chair from 2004 to 2007. At
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`BSU, I helped establish graduate programs in Electrical and Computer Engineering
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`including, in 2006, the university’s second Ph.D. degree. In 2012, I re-joined the
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`faculty at UNLV. Over the course of my career as a professor I have advised over
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`90 masters and doctoral students.
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`14.
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`I have been recognized for my contributions as an educator in the
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`field. While at Boise State University, I received the President’s Research and
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`Scholarship Award (2005), Honored Faculty Member recognition (2003), and
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`Outstanding Department of Electrical Engineering Faculty recognition (2001). In
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`2007, I received the Frederick Emmons Terman Award (the “Father of Silicon
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`Valley”). The Terman Award is bestowed annually upon an outstanding young
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`electrical/computer engineering educator in recognition of the educator’s
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`contributions to the profession. In 2011 I received the IEEE Circuits and Systems
`
`Education Award. I received the Tau Beta Pi Outstanding Electrical and Computer
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`Engineering Professor Award every year it was awarded while I have been back at
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`UNLV.
`
`15.
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`I have authored several books and papers in the electrical and
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`computer engineering area. My published books include CMOS Circuit Design,
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`Layout, and Simulation (Baker, R.J., Wiley-IEEE, ISBN: 9781119481515 (4th ed.,
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`2019)) and CMOS Mixed-Signal Circuit Design (Baker, R.J., Wiley-IEEE, ISBN:
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`9780470290262 (2nded., 2009) and ISBN: 978-0471227540 (1st ed., 2002)). I co-
`
`authored DRAM Circuit Design: Fundamental and High-Speed Topics (Keeth, B.,
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`Baker, R.J., Johnson, B., and Lin, F., Wiley-IEEE, ISBN: 9780470184752 (2008)),
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`DRAM Circuit Design: A Tutorial (Keeth, B. and Baker, R.J., Wiley-IEEE, ISBN:
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`0780360141 (2001)), and CMOS Circuit Design, Layout and Simulation (Baker,
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`R.J., Li, H.W., and Boyce, D.E., Wiley-IEEE, ISBN: 9780780334168 (1998)). I
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`contributed as an editor and co-author on several other electrical and computer
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`engineering books.
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`Other Relevant Experience
`
`16.
`
`I have performed technical and expert witness consulting for over 100
`
`companies and laboratories and given more than 50 invited talks at conferences,
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`companies, and Universities. Further, I am the author and co-author of more than
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`100 papers and presentations in the areas of electrical and computer engineering
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`design, fabrication and packaging.
`
`17.
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`I currently serve, or have served, as a volunteer on: the IEEE Press
`
`Editorial Board (1999-2004); as editor for the Wiley-IEEE Press Book Series on
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`Microelectronic Systems (2010-2018); as the Technical Program Chair of the 2015
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`IEEE 58th International Midwest Symposium on Circuits and Systems (MWSCAS
`
`2015); on the IEEE Solid-State Circuits Society (SSCS) Administrative Committee
`
`(2011-2016); as a Distinguished Lecturer for the SSCS (2012-2015); and as the
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`Technology Editor (2012-2014) and Editor-in-Chief (2015-2020) for the IEEE
`
`Solid-State Circuits Magazine. These meetings, groups, and publications are
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`intended to allow researchers to share and coordinate research. My active
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`participation in these meetings, groups, and publications allowed me to see what
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`other researchers in the field have been doing.
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`18.
`
`In addition to the above, I am an IEEE Fellow for contributions to
`
`memory design and a member of the honor societies Eta Kappa Nu and Tau Beta
`
`Pi.
`
`19. My current research work is focused in part on the design of
`
`integrated circuits for wireless sensing using LIDAR (LIght Detection And
`
`Ranging). I have worked with several companies in the development of these
`
`circuits and systems including Aerius Photonics and FLIR.
`
`20.
`
`I have considered information from various sources in forming my
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`opinions. A list of materials considered is included in the list of exhibits that I
`
`understand Petitioner is filing. I may review additional documents filed in
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`connection with this proceeding as they become available.
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`II. UNDERSTANDING OF THE LAW
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`21.
`
`I have applied the following legal principles provided to me by
`
`counsel in arriving at the opinions set forth in this declaration.
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`A. Legal Standard for Prior Art
`22.
`I understand that a patent or other publication must first qualify as
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`prior art before it can be used to invalidate a patent claim.
`
`23.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent. I further understand that a printed publication, such as a book or
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`an article published in a magazine or trade publication, qualifies as prior art to an
`
`asserted patent if the date of publication is prior to the invention of the asserted
`
`patent.
`
`24.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is more than one year before the
`
`filing date of the asserted patent. I further understand that a printed publication,
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`such as a book or an article published in a magazine or trade publication,
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`constitutes prior art to an asserted patent if the publication occurs more than one
`
`year before the filing date of the asserted patent.
`
`25.
`
`I understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United States before the
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`invention of the asserted patent.
`
`26.
`
`I understand that to qualify as prior art, a reference must contain an
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`enabling disclosure that allows one of ordinary skill to practice the claims without
`
`undue experimentation.
`
`27.
`
`I understand that documents and materials that qualify as prior art can
`
`be used to invalidate a patent claim as anticipated or as obvious.
`
`B.
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`Legal Standard for Anticipation
`28.
`I understand that once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
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`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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`29.
`
`I understand that a prior art reference “anticipates” an asserted claim,
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`and thus renders the claim invalid, if all elements of the claim are disclosed in that
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`prior art reference, either explicitly or inherently (i.e., necessarily present or
`
`implied).
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`30.
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`I understand that a patent is anticipated if before such person’s
`
`invention thereof, the invention was made in this country by another inventor who
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`had not abandoned, suppressed, or concealed it.
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`31.
`
`I have written this declaration with the understanding that in an inter
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`partes review anticipation must be shown by a preponderance of the evidence.
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`C. Legal Standard for Obviousness
`32.
`I have been instructed by counsel on the law regarding obviousness,
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`and understand that even if a patent is not anticipated, it is still invalid if the
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`differences between the claimed subject matter and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
`
`made to a person of ordinary skill in the pertinent art.
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`33.
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`I understand that a person of ordinary skill in the art provides a
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`reference point from which the prior art and claimed invention should be viewed.
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`This reference point prevents a person of ordinary skill from using one’s insight or
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`hindsight in deciding whether a claim is obvious.
`
`34.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the challenged claims, (3) the level of
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`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, long-felt but unresolved needs, failure of others, etc.
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`35.
`
`I am informed that secondary considerations of non-obviousness may
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`include (1) a long felt but unmet need in the prior art that was satisfied by the
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`invention of the patent; (2) commercial success or lack of commercial success of
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`processes covered by the patent; (3) unexpected results achieved by the invention;
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`(4) praise of the invention by others skilled in the art; (5) taking of licenses under
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`the patent by others; and (6) deliberate copying of the invention. I also understand
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`that there must be a relationship between any such secondary indicia and the
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`invention. I further understand that contemporaneous and independent invention
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`by others is a secondary consideration supporting an obviousness determination.
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`36.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand that the prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
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`but other times the link between two or more prior art references is simple
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`common sense. I further understand that obviousness analysis recognizes that
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`market demand, rather than scientific literature, often drives innovation, and that a
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`motivation to combine references may be supplied by the direction of the
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`marketplace.
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`37.
`
`I understand that if a technique has been used to improve one device,
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`and a person of ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique is obvious unless its actual
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`application is beyond his or her skill.
`
`38.
`
`I also understand that practical and common-sense considerations
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`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
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`ordinary skill in the art looking to overcome a problem will often be able to fit the
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`teachings of multiple publications together like pieces of a puzzle, although the
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`prior art need not be like two puzzle pieces that must fit perfectly together. I
`
`understand that obviousness analysis therefore considers the inferences and
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`creative steps that a person of ordinary skill in the art would employ under the
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`circumstances.
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`39.
`
`I understand that a particular combination may be proven obvious by
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`showing that it was obvious to try the combination. For example, when there is a
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`design need or market pressure to solve a problem and there are a finite number of
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`identified, predictable solutions, a person of ordinary skill has good reason to
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`pursue the known options within his or her technical grasp because the result is
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`likely the product not of innovation but of ordinary skill and common sense.
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`40.
`
`I understand that the combination of familiar elements according to
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`known methods may be proven obvious when it does no more than yield
`
`predictable results. When a work is available in one field of endeavor, design
`
`incentives and other market forces can prompt variations of it, either in the same
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`field or a different one. If a person of ordinary skill can implement a predictable
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`variation, obviousness likely bars its patentability.
`
`41.
`
`It is further my understanding that a proper obviousness analysis
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`focuses on what was known or obvious to a person of ordinary skill in the art, not
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`just the patentee. Accordingly, I understand that any need or problem known in
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`the field of endeavor at the time of invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed.
`
`42.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by the common
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`sense of one of skill in the art.
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`43.
`
`I understand that a person of ordinary skill could have combined two
`
`pieces of prior art or substituted one prior art element for another if the substitution
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`can be made with predictable results, even if the swapped-in element is different
`
`from the swapped-out element. In other words, the prior art need not be like two
`
`puzzle pieces that must fit together perfectly. The relevant question is whether
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`prior art techniques are interoperable with respect to one another, such that that a
`
`person of skill would view them as a design choice, or whether a person of skill
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`could apply prior art techniques into a new combined system.
`
`44.
`
`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 having the understanding and
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`knowledge reflected in the prior art and motivated by the general problem facing
`
`the inventor, would have been led to make the combination of elements recited in
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`the claims. Under this analysis, the prior art references themselves, or any need or
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`problem known in the field of endeavor at the time of the invention, can provide a
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`reason for combining the elements of multiple prior art references in the claimed
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`manner.
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`45.
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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
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`a limitation-by-limitation basis.
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`46.
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`I have written this declaration with the understanding that in an inter
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`partes review obviousness must be shown by a preponderance of the evidence.
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`D. Legal Standard for Claim Construction
`47.
`I have been instructed by counsel on the law regarding claim
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`construction and patent claims and understand that a patent may include two types
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`of claims, independent claims and dependent claims. An independent claim stands
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`alone and includes only the limitations it recites. A dependent claim can depend
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`from an independent claim or another dependent claim. I understand that a
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`dependent claim includes all the limitations that it recites in addition to all of the
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`limitations recited in the claim from which it depends.
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`48.
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`It is my understanding that in proceedings before the USPTO, claims
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`are construed similarly as in district court litigation, and that this standard is
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`sometimes referred to as the Phillips standard. Under this standard, it is my
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`understanding that claim terms are given the meaning the term would have to a
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`person of ordinary skill in the art at the time of the invention, in view of the
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`specification and file history. I have applied this standard for all claim terms
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`whether expressly stated or not.
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`49.
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`In comparing the claims of the ’111 patent to the prior art, I have
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`carefully considered the ’111 patent and its file history in light of the
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`understanding of a person of skill at the time of the alleged invention.
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`50.
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`I understand that to determine how a person of ordinary skill would
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`understand a claim term, one should look to those sources available that show what
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`a person of skill in the art would have understood disputed claim language to
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`mean. Such sources include the words of the claims themselves, the remainder of
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`the patent’s specification, the prosecution history of the patent (all considered
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`“intrinsic” evidence), and “extrinsic” evidence concerning relevant scientific
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`principles, the meaning of technical terms, and the state of the art.
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`51.
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`I understand that, in construing a claim term, one looks primarily to
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`the intrinsic patent evidence, including the words of the claims themselves, the
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`remainder of the patent specification, and the prosecution history.
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`52.
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`I understand that extrinsic evidence, which is evidence external to the
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`patent and the prosecution history, may also be useful in interpreting patent claims
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`when the intrinsic evidence itself is insufficient.
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`53.
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`I understand that words or terms should be given their ordinary and
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`accepted meaning unless it appears that the inventors were using them to mean
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`something else. In making this determination, the claims, the patent specification,
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`and the prosecution history are of paramount importance. Additionally, the
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`specification and prosecution history must be consulted to confirm whether the
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`patentee has acted as its own lexicographer (i.e., provided its own special meaning
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`to any disputed terms), or intentionally disclaimed, disavowed, or surrendered any
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`claim scope.
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`IPR USP 7,239,111
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`54.
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`I understand that the claims of a patent define the scope of the rights
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`conferred by the patent. The claims particularly point out and distinctly claim the
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`subject matter which the patentee regards as his invention. Because the patentee is
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`required to define precisely what he claims his invention to be, it is improper to
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`construe claims in a manner different from the plain import of the terms used
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`consistent with the specification. Accordingly, a claim construction analysis must
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`begin and remain centered on the claim language itself. Additionally, the context
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`in which a term is used in the asserted claim can be highly instructive. Likewise,
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`other claims of the patent in question, both asserted and unasserted, can inform the
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`meaning of a claim term. For example, because claim terms are normally used
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`consistently throughout the patent, the usage of a term in one claim can often
`
`illuminate the meaning of the same term in other claims. Differences among
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`claims can also be a useful guide in understanding the meaning of particular claim
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`terms.
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`55.
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`I understand that the claims of a patent define the purported invention.
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`I understand that the purpose of claim construction is to understand how one
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`skilled in the art would have understood the claim terms at the time of the
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`purported invention.
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`56.
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`I understand that a person of ordinary skill in the art is deemed to read
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`a claim term not only in the context of the particular claim in which the disputed
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`Declaration in Support of Petition for IPR of U.S. Patent No. 7,239,111
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`term appears, but in the context of the entire patent, including the specification.
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`For this reason, the words of the claim must be interpreted in view of the
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`specification. The specification is the primary basis for construing the claims and
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`provides a safeguard such that correct interpretations closely align with the
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`specification. Ultimately, the interpretation to be given a term can only be
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`determined and confirmed with a full understanding of what the inventors actually
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`invented and intended to envelop with the claim as set forth