UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`RINGCENTRAL, INC.
`Petitioners
`v.
`ESTECH SYSTEMS, INC.
`Patent Owner
`____________
`
`Case No.: IPR2021-00574
`U.S. Patent No. 8,391,298
`____________
`DECLARATION OF DR. HENRY H. HOUH
`IN SUPPORT OF THE PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,391,298
`____________
`
`
`
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`RingCentral Ex-1006, p. 1
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`IPR2021-00574
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`TABLE OF CONTENTS
`
`I. 
`QUALIFICATIONS ....................................................................................... 2 
`II.  MATERIALS RELIED UPON IN FORMING MY OPINIONS .................. 6 
`III.  LEVEL OF ORDINARY SKILL IN THE ART ............................................ 7 
`IV.  UNDERSTANDING OF GOVERNING LAW ............................................. 8 
`V.  OVERVIEW OF THE TECHNOLOGY ...................................................... 13 
`A. 
`Local Area Network (LAN) and Wide Area Network (WAN) ......... 13 
`B. 
`VoIP Technology ............................................................................... 14 
`C. 
`Enterprise Directory Systems ............................................................. 16 
`VI.  THE ’298 PATENT ...................................................................................... 17 
`A. 
`Summary of the ’298 Patent and Its Prosecution History .................. 17 
`B. 
`Secondary Considerations of Non-Obviousness ................................ 20 
`VII.  CLAIM CONSTRUCTION ......................................................................... 21 
`A. 
`“IP telephone” .................................................................................... 23 
`B. 
`“touch input” ...................................................................................... 24 
`C. 
`“tacitly selecting” ............................................................................... 25 
`D.  Other Claim Terms ............................................................................. 25 
`VIII.  THE PRIOR ART ......................................................................................... 26 
`A.  WO 99/05990 (“Chang”) ................................................................... 26 
`B. 
`U.S. Patent No. 6,490,619 (“Byrne”) ................................................. 30 
`C. 
`U.S. Patent No. 6,240,448 (“Imielinski”) .......................................... 32 
`IX.  GROUND 1: CLAIMS 1-5, 7-12, AND 17-19 WOULD HAVE
`BEEN OBVIOUS OVER CHANG IN VIEW OF BYRNE ........................ 33 
`A. 
`Claim 1 ............................................................................................... 33 
`1. 
`Element 1[p]: “An information handling system
`comprising:” ............................................................................. 33 
`Element 1[a]: “a first local area network (‘LAN’);” ............... 34 
`Element 1[b]: “a second LAN;” ............................................... 36 
`
`2. 
`3. 
`
`i
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`B. 
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`C. 
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`4. 
`
`5. 
`
`6. 
`
`7. 
`
`8. 
`
`9. 
`
`Element 1[c]: “a wide area network (‘WAN’) coupling
`the first LAN to the second LAN;” .......................................... 36 
`Element 1[d]: “a third LAN coupled to the first and
`second LANs via the WAN;” .................................................. 37 
`Element 1[e]: “a first telecommunications device coupled
`to the first LAN;” ..................................................................... 38 
`Element 1[f]: “a plurality of telecommunications
`extensions coupled to the second LAN;” ................................. 40 
`Element 1[g]: “the first LAN including first circuitry for
`enabling a user of the first telecommunications device to
`observe a list of the plurality of telecommunications
`extensions;” .............................................................................. 42 
`Element 1[h]: “the first LAN including second circuitry
`for automatically calling one of the plurality of
`telecommunications extensions in response to the user
`selecting one of the plurality of telecommunications
`extensions from the observed list, wherein the list of the
`plurality of telecommunications extensions is stored in a
`server in the second LAN, and is accessed by the first
`circuitry across the WAN; and” ............................................... 50 
`10.  Element 1[i]: “a plurality of telecommunications
`extensions coupled to the third LAN, the first LAN
`including circuitry for enabling the user to select between
`observing the list of the plurality of telecommunications
`extensions coupled to the second LAN or observing a list
`of the plurality of telecommunications extensions
`coupled to the third LAN.” ...................................................... 57 
`Claim 2: “The system as recited in claim 1, wherein
`communication among the first LAN, second LAN, and WAN
`uses an IP protocol.” ........................................................................... 59 
`Claim 3: “The system as recited in claim 2, wherein the list of
`the plurality of telecommunications extensions is displayed to
`the user of the first telecommunications device.” .............................. 61 
`
`ii
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`D. 
`
`E. 
`
`F. 
`
`G. 
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`2. 
`
`3. 
`
`Claim 4: “The system as recited in claim 3, wherein the first
`telecommunications device is an IP telephone having a display
`for showing the list of the plurality of telecommunications
`extensions, wherein the second circuitry includes a key for
`enabling the user to tacitly selecting one of the plurality of
`telecommunications extensions from the displayed list.” .................. 62 
`Claim 5: “The system as recited in claim 4, wherein the tactile
`selection of one of the plurality of telecommunications
`extensions from the displayed list by the user results in an
`initiation of a call from the first telecommunications device to
`the selected one of the plurality of telecommunications
`extensions across the WAN.” ............................................................. 66 
`Claim 7: “The system as recited in claim 1, wherein the first
`telecommunications device includes circuitry for enabling the
`user to scroll through the displayed list of the plurality of
`telecommunications extensions.” ....................................................... 67 
`Claim 8 ............................................................................................... 71 
`1. 
`Elements 8[p] and 8[a]: “An information handling system
`comprising: a first local area network (“LAN”) operating
`under an IP protocol;” .............................................................. 71 
`Element 8[b]: “a first IP telephone coupled to the first
`LAN, the first IP telephone having a display and a set of
`keys for enabling a user to enter inputs;” ................................ 74 
`Element 8[c]: “a second LAN operating under the IP
`protocol;” ................................................................................. 75 
`Element 8[d]: “second and third telephone extensions
`coupled to the second LAN;” ................................................... 75 
`Element 8[e]: “a wide area network (“WAN”) operating
`under the IP protocol coupling the first LAN to the
`second LAN;” .......................................................................... 75 
`Element 8[f]: “a third LAN coupled to the first and
`second LANs via the WAN;” .................................................. 76 
`
`4. 
`
`5. 
`
`6. 
`
`iii
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`H. 
`
`I. 
`
`J. 
`
`K. 
`
`L. 
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`7. 
`
`8. 
`
`Element 8[g]: “the first LAN including first circuitry for
`enabling a user of the first IP telephone to view a list
`including the second and third telephone extensions,
`wherein the list is stored in a server in the second LAN,
`and is accessed by the first circuitry across the WAN;
`and” .......................................................................................... 76 
`Element 8[h]: “a plurality of telephone extensions
`coupled to the third LAN, the first LAN including
`circuitry for enabling the user to select between viewing
`the list of the telephone extensions coupled to the second
`LAN or viewing a list of the plurality of telephone
`extensions coupled to the third LAN.” .................................... 77 
`Claim 9: “The system as recited in claim 8, further comprising:
`the first LAN including second circuitry for automatically
`calling the second telephone extension in response to the user
`selecting the second telephone extension from the viewed list.” ....... 77 
`Claim 10: “The system as recited in claim 9, wherein selection
`of the second telephone extension from the viewed list by the
`user is accomplished by selection of one of the set of keys.” ............ 78 
`Claim 11: “The system as recited in claim 10, wherein the
`selection of one of the set of keys results in an initiation of a
`call from the first IP telephone to the second telephone
`extension across the WAN.” .............................................................. 79 
`Claim 12: “The system as recited in claim 8, wherein the first
`IP telephone includes circuitry for enabling the user to scroll
`through the displayed list.” ................................................................. 79 
`Claim 17 ............................................................................................. 80 
`1. 
`Elements 17[a]-[b]: “A method comprising the steps of:
`receiving a first touch input from a user on an IP
`telephone that is networked into a first LAN operating
`under an IP protocol; in response to receipt of the first
`touch input, displaying on a display on the IP telephone a
`first list including second and third LANs coupled to the
`first LAN, wherein the second and third LANs operate
`under the IP protocol, wherein the first, second, and third
`LANs are coupled via a WAN;” .............................................. 80 
`
`iv
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`2. 
`
`3. 
`
`4. 
`
`5. 
`
`Elements 17[c]-[d]: “receiving a second touch input from
`the user on the IP telephone; in response to receipt of the
`second touch input, displaying on the display on the IP
`telephone a second list of telephone destinations
`accessible from the second LAN;” .......................................... 85 
`Elements 17[e]-[f]: “receiving a third touch input from
`the user on the IP telephone; in response to receipt of the
`third touch input, automatically dialing one of the
`telephone destinations accessible from the second LAN
`for a communications connection between the one of the
`telephone destinations and the IP telephone” .......................... 86 
`Elements 17[g]-[h]: “wherein the step of displaying on
`the display on the IP telephone the second list further
`includes the steps of: sending a message from the first
`LAN to the second LAN requesting the second list; and
`receiving the second list from the second LAN to the first
`LAN;” ....................................................................................... 88 
`Elements 17[i]-[j]: “receiving a fourth touch input from
`the user on the IP telephone; and in response to receipt of
`the fourth touch input, displaying on the display on the IP
`telephone a third list of telephone destinations accessible
`from the third LAN, wherein the step of displaying on the
`display on the IP telephone the third list further includes
`the steps of: sending a message from the first LAN to the
`third LAN requesting the third list; and receiving the
`third list from the third LAN to the first LAN.” ...................... 92 
`M.  Claim 18: “The method as recited in claim 17, before the step
`of receiving the second touch input, further comprising the
`steps of: receiving a fifth touch input from the user on the IP
`telephone; and in response to receipt of the fifth touch input,
`scrolling through the first list.” .......................................................... 92 
`Claim 19: “The method as recited in claim 18, before the step
`of receiving the third touch input, further comprising the steps
`of: receiving a sixth touch input from the user on the IP
`telephone; and in response to receipt of the sixth touch input,
`scrolling through the second list.” ...................................................... 93 
`O.  Motivation to Combine Chang with Byrne ........................................ 93 
`
`
`
`
`
`N. 
`
`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`v
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`
`X.  GROUND 2: CLAIM 6 WOULD HAVE BEEN OBVIOUS UNDER
`35 U.S.C. §103 OVER CHANG IN VIEW OF BYRNE IN
`FURTHER VIEW OF IMIELINSKI AND THE KNOWLEDGE OF
`A POSITA .................................................................................................... 98 
`A. 
`Claim 6: “The system as recited in claim 1, wherein the list of
`the plurality of telecommunications extensions is played as
`audio to the user of the first telecommunications device.” ................ 98 
`XI.  DECLARATION ........................................................................................ 104 
`
`
`
`
`
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`vi
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`I, Dr. Henry H. Houh, declare as follows:
`
` My name is Henry H. Houh. I have been retained by Petitioner
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`RingCentral, Inc. (“Petitioner” or “RingCentral”) to assist regarding U.S. Patent
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`No. 8,391,298 (“the ’298 Patent”). Specifically, I have been asked to consider the
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`patentability of Claims 1-12 and 17-19 of the ’298 Patent (“the Challenged
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`Claims”) in view of prior art and the understanding of a person of ordinary skill in
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`the art (“POSITA”) as it relates to the ’298 Patent. I have personal knowledge of
`
`the facts and opinions set forth in this declaration and believe them to be true. If
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`called upon to do so, I would testify competently thereto. I have been warned that
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`willful false statements and the like are punishable by fine or imprisonment, or
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`both.
`
`
`
` I am being compensated for my time at my standard consulting rate.
`
`I am also being reimbursed for expenses that I incur during the course of this work.
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`My compensation is not contingent upon the results of my study, the substance of
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`my opinions, or the outcome of any proceeding involving the Challenged Claims.
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`I have no financial interest in the outcome of this matter or in any litigation
`
`involving the ’298 Patent.
`
` My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
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`those cited herein.
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`
`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`
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`I may rely upon these materials, my knowledge and experience,
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`and/or additional materials to rebut arguments raised by the Patent Owner.
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`Further, I may also consider additional documents and information in forming any
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`necessary opinions, including documents that may not yet have been provided to
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`me.
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` My analysis of the materials produced in this proceeding is ongoing
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`and I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`I.
`
`QUALIFICATIONS
`
`I received a Ph.D. in Electrical Engineering and Computer Science
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`from the Massachusetts Institute of Technology in 1998. I also received a Master
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`of Science degree in Electrical Engineering and Computer Science in 1991, a
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`Bachelor of Science Degree in Physics in 1990, and a Bachelor of Science Degree
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`in Electrical Engineering and Computer Science in 1989.
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`
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`I am currently self-employed as an independent technical consultant.
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`I am also president of Einstein’s Workshop, which provides supplemental science,
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`technology, engineering, and mathematics (“STEM”) education to children of all
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`ages. I am also a member of the board of a spin-off of Einstein’s Workshop,
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`
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`2
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`BlocksCAD, Inc., which provides an education-focused 3D computer-aided design
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`tool with over 275,000 users worldwide.
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`
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`I first worked in the area of telecommunications in 1987 when I
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`worked as a summer intern at AT&T Bell Laboratories as part of a five-year dual
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`degree program at MIT. I continued to work at AT&T Bell Laboratories as part of
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`this MIT program. I enrolled in several internal courses on telephone system
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`architecture and protocols while I was AT&T.
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`
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`I submitted and defended my Ph.D. thesis, titled “Designing Networks
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`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
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`analyzed local-area and wide-area flows to show a more efficient method for
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`routing packets in a network, based on traffic patterns at the time. My thesis also
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`addressed real-time communications of audio and video streams and proposed
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`more efficient methods to route such data within a network.
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` From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
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`Corporation, a start-up that made business telephone systems for streaming
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`packetized audio over data networks instead of using traditional telephone lines.
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`NBX was later acquired by 3Com Corporation, and the phone system was used by
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`numerous businesses for many years. As part of my work at NBX, I designed the
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`core audio reconstruction algorithms for telephones, as well as packet transmission
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`algorithms. I also designed and validated the core packet transport transmission
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`algorithms. The protocol was used for all signaling in the phone system, including
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`for the setup of conference calls. The NBX system also featured a computer
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`interface for initiating phone calls and conference calls. Conference calls in the
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`NBX system utilized conference mixing software which ran on every telephone in
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`the system. Participants in the conference call, which could include telephones in
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`the PSTN participating through a gateway, multicast their audio packets onto the
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`packet network. The desktop telephones utilized a digital signal processor
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`(“DSP”) as its processor, and I designed the voice reconstruction algorithms as
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`well as the network interface and protocol software for the phones, line interfaces,
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`and call controller. The line interfaces were capable of extracting caller ID
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`information sent from the central office. While the NBX system was initially
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`based on the Ethernet, I implemented the prototype IP stack for the system. The
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`NBX system also supported TAPI, the Telephony Application Programming
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`Interface, thus allowing other computer programs to integrate with the system’s
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`telephony features. Our system thus was able to integrate with the Microsoft
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`Outlook program, which provides email and a contact list. A user could select a
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`contact record containing a telephone number, and use the context menu in
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`Outlook to dial the number on the user’s desktop telephone. The NBX system also
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`included a full-featured voicemail system which stored caller ID information with
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`voicemail messages and made them available through email, such as when using
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`
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`4
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`Microsoft Outlook or any other email program, as well as the traditional method of
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`retrieving voicemail from a feature phone and through an external dial-in. We
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`obtained U.S. Patent No. 6,697,963, titled “Telecommunication Method for
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`Ensuring On-Time Delivery of Packets Containing Time-Sensitive Data,” as a
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`result of part of this work.
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`
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` From 1999 to 2004, I was employed by Empirix or its predecessor
`
`company, Teradyne. Empirix was a leader in test tools for telecommunications
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`protocols and systems, providing functional testing tools as well as load testing
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`tools. From 2000-2001, I conceived of and built a test platform for testing Voice-
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`over-IP (VoIP). The first application on this new test platform was a cloud
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`emulator for simulating the effects of transmitting VoIP over a busy network.
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` From 2004 to 2008, I was employed by BBN Technologies Corp., a
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`technology research and development company located in Cambridge, MA. BBN
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`Technologies is a world-renowned company with expertise in acoustics, speech
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`recognition, and communications technology. BBN Technologies staff have
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`pioneered many Internet technologies and Internet applications, and built some of
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`the world’s largest government and commercial data networks.
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` My duties and responsibilities at BBN Technologies generally
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`included commercialization of the technologies developed by BBN Technologies,
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`which included spinning off companies and growing commercial business in-
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`
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`house. More particularly, I was involved in utilizing the award-winning AVOKE
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`STX speech recognition technology to create the public audio/video search engine
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`EveryZing (formerly known as PodZinger) which was spun out into a stand-alone
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`company now known as RAMP, Inc. After managing the creation of the initial
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`prototype system, PodZinger built out a full streaming audio and video search
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`solution when I was the Vice President of Operations and Technology there.
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` Through my education and experience, I am very familiar with
`
`various VoIP systems and devices, including telephone systems and devices used
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`in Public Switched Telephone Networks (PSTN) and Private Branch Exchange
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`(PBX) systems. I am also familiar with voice mail systems and user interfaces
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`within various telephone systems, such as enterprise directory.
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` My qualifications for forming the opinions set forth in this report are
`
`listed in this section and in Exhibit 1035, which is my curriculum vitae.
`
`
`
`I have been awarded five United States patents, including one related
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`to a telecommunication method for ensuring on-time delivery of packets
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`containing time-sensitive data.
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`II. MATERIALS RELIED UPON IN FORMING MY OPINIONS
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`In forming my opinions and reaching the conclusion given in this
`
`declaration, I relied on the documents and materials cited in this declaration as well
`
`as those identified in Appendix A, which is attached to this declaration. These
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`
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`materials consist of patents, patent applications, related documents, and printed
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`publications. This material consists of the type of documents upon which experts
`
`in the field would have relied.
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` My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`In providing my opinions in this declaration, I was asked to consider
`
`the patent claims and the prior art standing in the shoes of a POSITA at the time of
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`the alleged invention, which I understand to be no earlier than February 1, 2001.
`
`
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
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`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems. I also understand that a POSITA
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`is not a specific or real individual. Rather, I understand a POSITA as a
`
`hypothetical individual having the qualities reflected by the factors above. I
`
`understand that a POSITA also would have had knowledge from the teachings of
`
`the prior art, including the art cited below.
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`
`
`In my opinion, a POSITA of the ’298 Patent would have had, by
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`February 1, 2001, at least a four-year degree in electrical engineering,
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`
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`7
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`telecommunication engineering, or a related field and two years of relevant
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
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`experience in developing or implementing VoIP systems. The individual would
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`have had a working understanding of VoIP systems, telephone devices, local area
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`networks (LANs), wide area networks (WANs), graphical user interface (GUI)
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`design, and enterprise directory systems. An individual can substitute additional
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`education in the relevant field for some of the experience.
`
` By February 1, 2001, my level of skill in the art was at least at the
`
`level of a POSITA. Thus, I am qualified to provide opinions regarding what a
`
`POSITA would have known and understood at the time, and my analysis and
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`conclusions herein are from the perspective of a POSITA as of February 1, 2001.
`
`IV. UNDERSTANDING OF GOVERNING LAW
`
`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 POSITA 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
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`POSITA 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 POSITA is assumed to know and to have all relevant
`
`prior art in the field of endeavor covered by the patent in suit.
`
`
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`8
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`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`
`
`I have been informed that there are two criteria for determining
`
`whether prior art is analogous and thus can be considered prior art: (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
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`reference still is reasonably pertinent to the particular problem with which the
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`patentee is involved. I have also been informed that the field of endeavor of a
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`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
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`the matter with which it deals, logically would have commended itself to a
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`patentee’s attention in considering his problem.
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`
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`I have also been informed that an analysis of whether a claimed
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`invention would have been obvious should be performed considering the scope and
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`content of the prior art, the differences (if any) between the prior art and the
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`claimed invention, and the level of ordinary skill in the pertinent art involved. I
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`have been informed as well that a prior art reference should be viewed as a whole.
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`
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`I have also been informed that in considering whether an invention for
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`a claimed combination would have been obvious, I may assess whether there are
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`apparent reasons to combine known elements in the prior art in the manner claimed
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`
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`9
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`RingCentral Ex-1006, p. 16
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`
`in view of interrelated teachings of multiple prior art references, the effects of
`
`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`demands known to the design community or present in the market place, and/or the
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`background knowledge possessed by a POSITA. I have been informed that other
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`principles may be relied on in evaluating whether a claimed invention would have
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`been obvious, and that these principles include the following:
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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
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`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 POSITA can
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`implement a predictable variation, the variation is likely obvious;
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` If a technique has been used to improve one device, and a POSITA
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`would recognize that it would improve similar devices in the same
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`way, using the technique is obvious unless its actual application is
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`beyond his or her skill;
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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
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`
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`10
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`RingCentral Ex-1006, p. 17
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
`on or require showing a teaching, suggestion, or motivation to
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`combine;
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` Market demand, rather than scientific literature, can drive design
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`trends and may show obviousness;
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` In determining whether the subject matter of a patent claim would
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`have been obvious, neither the particular motivation nor the avowed
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`purpose of the named inventor controls;
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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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` 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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` “Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a POSITA will be
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`able to fit the teachings of multiple patents together like pieces of a
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`puzzle;
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` A POSITA is also a person of ordinary creativity, and is not an
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`automaton;
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`11
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`RingCentral Ex-1006, p. 18
`RingCentral v. Estech
`IPR2021-00574
`
`

`

`
`
`Declaration of Dr. Henry H. Houh
`ISO Inter Partes Petition of U.S. Patent 8,391,298
`
` A patent claim can be proved obvious by showing that the claimed
`
`combination of elements was “obvious to try,” particularly when there
`
`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 POSITA
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`would have had good reason to pursue the known options within his
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`or her technical grasp; and
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` One should not use hindsight in evaluating whether a claimed
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`invention would have been obvious.
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`
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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 POSITA, the
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`Board may consider certain objective factors if they are present, such as:
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`commercial success of products practicing the claimed invention; long-felt but
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`unsolved need; teaching away; unexpected results; copying; and praise by others in
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`the field. These factors are generally referred to as “secondary considerations” or
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`“objective indicia” of non-obviousness. I have been informed, however, that for
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`such objective evidence to be relevant to the obviousness of a claim, there must be
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`a causal relationship (called a “nexus”) between the claim and the evidence and
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`that this ne