`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CRADLEPOINT, INC., DELL INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED, TCT
`MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., THALES DIS AIS DEUTSCHLAND GMBH,
`ZTE CORPORATION, AND ZTE (USA) INC.
`Petitioners,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`Case No. IPR2021-00584
`
`U.S. Patent No. 7,551,625
`
`
`
`
`
`
`
`
`DECLARATION OF DR. APOSTOLOS K. KAKAES IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,551,625
`
`
`
`
`
`
`
`Cradlepoint, Inc., et al., Ex. 1003
`
`

`

`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`ASSIGNMENT ................................................................................................ 1
`
`QUALIFICATIONS AND EXPERIENCE ..................................................... 2
`
`III. APPLIED LEGAL PRINCIPLES ................................................................... 7
`
`A. Disclosure Supporting a Claim of Priority ............................................ 8
`
`B.
`
`C.
`
`Anticipation ........................................................................................... 8
`
`Obviousness ........................................................................................... 9
`
`IV. PERSON OF ORDINARY SKILL IN THE ART ........................................15
`
`V. MATERIALS CONSIDERED ......................................................................16
`
`VI. STATE OF THE ART ...................................................................................16
`
`A.
`
`B.
`
`3GPP, UMTS, and “3G” .....................................................................19
`
`FDD Enhanced Uplink ........................................................................25
`
`1.
`
`2.
`
`E-DCH.......................................................................................26
`
`E-AGCH ....................................................................................27
`
`VII. BACKGROUND OF THE ’625 PATENT ...................................................29
`
`A.
`
`Summary of the ’625 Patent ................................................................29
`
`1.
`
`2.
`
`Background and Admitted Prior Art to the ’625 Patent ...........29
`
`Alleged Invention of the ’625 Patent ........................................31
`
`Korean Application No. 10-2004-0022960.........................................32
`
`File History of the ’625 Patent ............................................................33
`
`B.
`
`C.
`
`VIII. OVERVIEW OF CONCLUSIONS ...............................................................36
`
`IX. ANALYSIS OF BASES OF INVALIDITY .................................................38
`
`i
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`A. Applicable Priority Date ......................................................................38
`
`B.
`
`Grounds of Invalidity Based on R2-042730, R1-041512, and
`R2-050136 ...........................................................................................42
`
`1.
`
`Overview of Prior Art References ............................................42
`
`a. Meeting45 (Tdoc R2-042730) ........................................42
`
`b. Meeting39 (Tdoc R1-041512) ........................................43
`
`c. Meeting45bis (Tdoc R2-050136) ...................................43
`
`2.
`
`Specific Grounds of Invalidity ..................................................44
`
`a.
`
`Ground 1: Claims 16-19, 21, 22, and 39 are
`Anticipated by Meeting45 ..............................................44
`
`(i)
`
`(ii)
`
`Claim 16 ............................................................................ 44
`
`Claim 17 ............................................................................ 53
`
`(iii) Claim 18 ............................................................................ 54
`
`(iv)
`
`Claim 19 ............................................................................ 55
`
`(v)
`
`Claim 21 ............................................................................ 55
`
`(vi)
`
`Claim 22 ............................................................................ 56
`
`(vii) Claim 39 ............................................................................ 57
`
`b.
`
`Ground 2: Claims 16-19, 21, 22, and 39 are Obvious
`over Meeting45 in view of Meeting39 ...........................62
`
`(i)
`
`(ii)
`
`Motivations to Combine: Meeting45 and Meeting39 ....... 62
`
`Claims 16 and 39 .............................................................. 64
`
`(iii) Claims 17-19, 21, and 22 .................................................. 66
`
`c.
`
`Ground 3: Claims 40 and 42 are Obvious over
`Meeting45 in view of Meeting45bis ...............................67
`
`(i)
`
`(ii)
`
`Motivations to Combine: Meeting45 and Meeting45bis .. 67
`
`Claim 40 ............................................................................ 69
`
`(iii) Claim 42 ............................................................................ 70
`
`ii
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`C.
`
`Alternative Grounds of Unpatentability ..............................................71
`
`1.
`
`2.
`
`Overview of Prior Art Reference ..............................................71
`
`Specific Grounds of Invalidity ..................................................73
`
`a.
`
`Ground 4: Claims 16-19, 21, 22, 39, 40, and 42 are
`Anticipated by Chen .......................................................73
`
`(i)
`
`(ii)
`
`Claim 16 ............................................................................ 74
`
`Claim 17 ............................................................................ 84
`
`(iii) Claim 18 ............................................................................ 86
`
`(iv)
`
`Claim 19 ............................................................................ 87
`
`(v)
`
`Claim 21 ............................................................................ 88
`
`(vi)
`
`Claim 22 ............................................................................ 89
`
`(vii) Claim 39 ............................................................................ 90
`
`(viii) Claim 40 .......................................................................... 100
`
`(ix)
`
`Claim 42 .......................................................................... 101
`
`b.
`
`Ground 5: Claims 16-19, 21, 22, 39, 40, and 42 are
`Rendered Obvious by Chen ..........................................102
`
`X. ADDITIONAL REMARKS ........................................................................104
`
`
`
`
`
`
`
`iii
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`TABLE OF APPENDICES
`
`
`Description
`
`Exhibit
`1001
`1002
`1004
`
`Document
`Appendix A Curriculum Vitae
`Appendix B Text of Challenged Claims
`
`
`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 7,551,625 (“the ’625 patent”)
`Copy of Prosecution History of the ’625 patent
`R2-042730, Inclusion of e.g. physical layer model, MAC architecture,
`detail Node B scheduler mechanism and QoS Control principles,
`3GPP TSG-RAN2 Meeting #45, Shin-Yokohama, Japan (uploaded
`Dec. 3, 2004) (“Meeting45”)
`R1-041512, Introduction of E-DCH, by Ericsson, 3GPP TSG-RAN
`WG1 Meeting #39, Yokohama, Japan (uploaded Nov. 21, 2004)
`(“Meeting39”)
`U.S. Patent No. 7,155,236 (“Chen”)
`TDoc R2-050136, E-DCH Priority Based Scheduling, 3GPP TSG-
`RAN WG2 Meeting #45bis, Sophia Antipolis, France (uploaded Jan.
`7, 2005) (“Meeting45bis”)
`Certified English Translation of Korean Application No.
`10-2004-0022960
`Harri Holma and Antti Toskala, LTE for UMTS (2d ed. 2011)
`R1-041185, E-DCH Scheduling–UE Grant Procedures, by Ericsson,
`3GPP TSG-RAN WG1 Meeting #38-bis, Seoul, Republic of Korea
`(uploaded Sept. 15, 2004)
`R1-041469, Approved Report of 3GPP TSG RAN WG1 #38, Prague,
`Czech Republic, Aug. 16-20, 2004 (uploaded Nov. 26, 2004)
`R1-041423, Draft CR 25.211 – Introduction of E-DCH, by Ericsson,
`3GPP TSG-RAN WG1 Meeting #39, Yokohama, Japan (uploaded
`Nov. 12, 2004)
`
`1005
`
`1006
`1007
`
`1008
`
`1009
`1010
`
`1011
`
`1012
`
`iv
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`
`
`
`Exhibit
`1013
`
`1014
`
`1015
`1016
`1017
`
`1018
`
`1019
`1020
`1021
`1022
`
`1023
`
`1024
`
`Description
`R1-050180, Approved Report of 3GPP TSG RAN WG1 #39,
`Yokohama, Japan, Nov. 15-19, 2004 (uploaded Feb. 21, 2005)
`RP-040046, TR25.896, Version 2.00, Feasibility Study for Enhanced
`Uplink for UTRA FDD, 3GPP TSG-RAN Meeting #23 (uploaded
`Mar. 4, 2004)
`3GPP/3GPP2 Harmonization Meeting Summary (Nov. 13-14, 2001)
`The 3GPP Vision (May 2002)
`Exhibit 17 to Complaint filed May 15, 2020 in Sisvel Int’l S.A. v. Dell,
`Inc., Civil Action No. 1:20-cv-00651-UNA, D.I. 1-17 (D. Del.)
`R1-050224, DL/UL timing asso[ci]ation of E-DCH operation, by
`Qualcomm Europe, 3GPP TSG-RAN WG1 Meeting #40, Scottsdale,
`AZ, USA, Feb. 14-18, 2005 (uploaded Mar. 2, 2005)
`3GPP TS 25.212 v6.3.0 (uploaded Jan. 5, 2005)
`R1-040392, 3GPP TR 25.896 v2.0.0 (uploaded Mar. 1, 2004)
`Declaration of Craig Bishop
`R1-041292, EUL-AH1: Summary of EUL e-mail discussion, 3GPP
`TSG-RAN WG1 Meeting #39, Yokohama, Japan (uploaded Nov. 12,
`2004)
`RP-020658, Uplink Enhancements for Dedicated Transport Channels,
`TSG-RAN Meeting #18, Biarritz, France, (uploaded Sep. 9, 2002)
`R1-040957, Downlink Control Signaling, TSG-RAN WG1 #38,
`Prague, Czech Republic (uploaded Aug. 12, 2004)
`
`v
`
`Cradlepoint, Inc., et al., Ex. 1003
`
`

`

`
`
`I, Dr. Apostolos K. “Paul” Kakaes, hereby declare as follows:
`
`I. ASSIGNMENT
`
`1.
`
`I have been retained on behalf of Dell Inc., Cradlepoint, Inc.,
`
`Honeywell International, Inc., Sierra Wireless, Inc., TCL Communication
`
`Technology Holdings Limited, TCT Mobile International Limited, TCT Mobile,
`
`Inc., TCT Mobile (US) Inc., TCT Mobile (US) Holdings Inc., Thales DIS AIS
`
`Deutschland Gmbh, ZTE Corporation, And ZTE (USA) Inc. (collectively,
`
`“Petitioners”) to offer technical opinions related to U.S. Patent No. 7,551,625 (“the
`
`’625 patent”) (Ex. 1001). I understand that Petitioners are requesting that the Patent
`
`Trial and Appeal Board (“PTAB” or “Board”) institute an inter partes review
`
`(“IPR”) proceeding of the ’625 patent.
`
`2.
`
`I have been asked to provide my independent analysis of the ’625 patent
`
`in light of the prior art patents and publications cited below.
`
`3.
`
`I am not, and never have been, an employee of any of the Petitioners. I
`
`received no compensation for this Declaration beyond my normal hourly
`
`compensation based on my time actually spent analyzing the ’625 patent, the prior
`
`art patents and publications cited below, and issues related thereto, and I will not
`
`receive any added compensation based on the outcome of any IPR or other
`
`proceeding involving the ’625 patent.
`
`1
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`

`

`
`
`II. QUALIFICATIONS AND EXPERIENCE
`
`4.
`
`I am over the age of 18 and am competent to write this Declaration. I
`
`have personal knowledge, or have developed knowledge of these technologies based
`
`upon education, training, or experience, of the matters set forth herein.
`
`5. My CV, which includes my complete education and work experience,
`
`is included as Appendix A hereto. I describe several relevant aspects of my
`
`experience below.
`
`6.
`
`I have almost forty (40) years of experience in electrical engineering
`
`and computer science and in fixed and mobile communications networks. I attended
`
`the University of Colorado from 1974 to 1980, during which I earned a Bachelor of
`
`Science (B.S.) and a Master of Science (M.S.) in applied mathematics with a minor
`
`in electrical engineering. I attended the Polytechnic Institute of New York between
`
`1982 and 1988, during which I earned a Doctor of Philosophy (Ph.D.) in electrical
`
`engineering, with a thesis titled “Topological Properties and Design of Multihop
`
`Packet Radio Networks.” While pursuing the Ph.D. degree, I held a joint
`
`appointment as Special Research Fellow and Adjunct Instructor at the Polytechnic
`
`Institute of New York between 1985 and 1986.
`
`7.
`
`Between 1982 and 1987, I worked at AT&T Bell Laboratories in
`
`Holmdel, New Jersey. While at AT&T Bell Laboratories, I worked on modeling,
`
`analysis, design, and performance evaluation of voice and data networks. I
`
`2
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`developed algorithms for DNHR (Dynamic, Non-Hierarchical Routing) used in the
`
`telephone network. I also analyzed advanced data services and formulation of long-
`
`term plans for development of enhanced data services and network design tools to
`
`support such services.
`
`8.
`
`I was an Assistant Professor of Electrical Engineering and Computer
`
`Science at The George Washington University (GWU), Washington, D.C., between
`
`1987 and 1994. During my association with GWU, I taught graduate courses in the
`
`area of communication engineering, including communication theory, coding theory,
`
`voice and data networking, and mobile communications.1 I also received several
`
`research awards/grants, including the prestigious NSF Research Initiation Award.
`
`9.
`
`In 1988, I founded Cosmos Communications Consulting Corporation
`
`(“Cosmos”), which is a private communications engineering consulting firm
`
`specializing in mobile communications, and I have been the President of the
`
`company since its founding. Since 1994, I have worked full-time at Cosmos. At
`
`Cosmos, among various activities, I have consulted on high level technology-related
`
`issues and trends to corporate entities, governmental agencies, and international
`
`organizations, such as the United Nations. I have provided technical consultancy to
`
`engineering firms, operators, and equipment vendors on issues related to existing or
`
`
` 1 In the early 1990s I developed and taught the first course on Mobile
`Communications at GWU to Electrical Engineering graduate students.
`
`3
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`

`

`evolving technologies for mobile communications, and to the investment
`
`community on issues related to both fixed and wireless communications
`
`technologies. I have served as consultant on both civil and criminal legal cases,
`
`including several patent infringement cases both at the ITC and in district court. I
`
`also participated as a technical consultant in the analysis of large patent portfolios
`
`for the purposes of due diligence, sales, and merger and acquisition activities for
`
`some of the largest companies in the mobile communications space. These projects
`
`spanned a multidimensional spectrum of technologies in both fixed and mobile
`
`communications as they have evolved over the past more than thirty (30+) years.
`
`10. Over the course of my career, I have authored and co-authored some
`
`thirty (30) publications on various aspects of fixed and mobile communications, as
`
`noted in my curriculum vitae. I am a member of the Institute of Electrical and
`
`Electronics Engineers (IEEE) and actively involved in the Communications Society
`
`and the Information Theory Society of IEEE. Between 1991 and 1992, I served as
`
`the Secretary of IEEE Communications Society National Capital Area Chapter.
`
`Between 1992 and 1993, I was the Vice-Chair of IEEE Communications Society
`
`National Capital Area Chapter. I was the Vice-Chair of the Communication Theory
`
`Technical Committee of the Communications Society of the IEEE for the 1993-1996
`
`term, and Treasurer of the Communication Theory Technical Committee of the
`
`Communications Society of the IEEE for the 1996-1999 term.
`
`4
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`

`

`
`
`11.
`
`I have served as a reviewer for the IEEE, book editors, other technical
`
`publications, and various National Science Foundation (NSF) panels. I have
`
`organized technical sessions in technical conferences, including the IEEE
`
`International Conference on Communications
`
`(ICC) and
`
`IEEE Global
`
`Communications Conference (Globecom). I served as the Technical Program Chair
`
`for the Communication Theory Mini-Conference in 1992.
`
`12.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`publications are listed on my CV (attached as Appendix A).
`
`13. During my work at Cosmos, I have provided expert advice and
`
`conducted extensive training for practicing engineers in the field in diverse
`
`networking technology areas, including Wireless Local Area Networks (LAN),
`
`Metropolitan Area Networks (MAN), and Personal Area Networks (PAN)
`
`technologies, paging networks, ad hoc networks, including IEEE 802.11 (Wi-Fi),
`
`IEEE 802.16 (WiMAX), HIPERLAN, Bluetooth, Near Field Communications, and
`
`IrDA (Infrared Data Association). My experience includes detailed in-depth analysis
`
`of cellular networks operating with any of the available access technologies as
`
`standardized in various standards, broadly known as AMPS, GSM, GPRS, EDGE
`
`(EGPRS); North American TDMA IS-54 and IS-136, iDEN, IS-95, UMTS, HSPA,
`
`LTE, and NR, some of which are also referred to as “1G,” “2G,” “2.5G,” “3G,”
`
`5
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`Cradlepoint, Inc., et al., Ex. 1003
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`

`

`
`
`“4G,” and “5G.” I have experience in the design and implementation of voice and
`
`data-networking (circuit switching, packet switching including the evolving all-IP-
`
`based technologies), traffic engineering, RF design, Quality of Service (QoS) and
`
`resource allocation, MAC protocols, as well as in the design of core networks, both
`
`user plane and control plane.
`
`14. Specifically, during the past approximately 35 years, I have been lucky
`
`enough to be part of the community of engineers that have contributed to the
`
`astounding growth of the mobile communications industry. It started from a niche
`
`industry that was thought of as being something for the “rich and the famous” to
`
`becoming one of the most wide-spread household concepts, providing useful tools
`
`to all segments of the global society.
`
`15. My involvement in this industry included providing consulting services
`
`to company executives who needed to make deployment plans, taking into
`
`consideration the strengths and weaknesses of the technology, economics, user
`
`value, etc. As such, I have developed a deep understanding of all aspects of a given
`
`technology, its features, added value, and the like. In addition, my consulting
`
`services included developing courses for the companies that were at the forefront of
`
`this developing technology. By definition, this new, previously non-existent
`
`technology was not taught in university courses, as it was too new. Having
`
`developed hundreds of courses over the years and taught thousands of engineers (and
`
`6
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`

`
`
`non-engineers alike), I have a solid understanding and knowledge of the technical
`
`developments and how their importance fits in the larger puzzle of a fast-developing
`
`technology.
`
`16. My consulting included providing training to engineers in the field that
`
`were deploying the various networks. For example, I developed courses and provided
`
`training and consulting to the engineers deploying some of the earliest GSM networks
`
`in Germany and France, to be followed by many countries in Europe and around the
`
`world, including the USA when it was decided that GSM would be used in the USA.
`
`Successful deployments of the initial GSM systems were followed by deployments of
`
`GPRS and EDGE, which was then followed by deployments of 3G UMTS systems
`
`world-wide. Of course, the 3G systems were followed by the currently most wide-
`
`spread deployments of 4G systems, also referred to as LTE, world-wide. Thus, my
`
`experience includes a deep understanding of the entirety of each system that we
`
`broadly refer to as “1G,” “2G,” ‘‘3G,” “4G,” and “5G.”
`
`III. APPLIED LEGAL PRINCIPLES
`
`17.
`
`In forming my analysis and conclusions expressed in this Declaration,
`
`I have applied the legal principles described in the following paragraphs, which were
`
`provided to me by Counsel for Petitioners.2
`
`
` 2 I understand that the patent laws were amended by the America Invents Act
`(AIA), but that the earlier statutory requirements still apply to pre-AIA patents.
`
`
`
`7
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`
`
`A. Disclosure Supporting a Claim of Priority
`
`18.
`
`I understand that claims are entitled to the benefit of the priority date of
`
`a foreign application only if the foreign application supports the claims in the manner
`
`required by 35 U.S.C. § 112, ¶ 1. I understand that this requires that the foreign
`
`application contains a written description of the invention, which in turn requires
`
`that the disclosure of the foreign application reasonably conveys to a person of
`
`ordinary skill in the art that the inventor had possession of the claimed subject matter
`
`as of the date of the foreign application. I understand that the disclosure must show
`
`that the inventor had possession of all the claimed limitations.
`
`B. Anticipation
`
`19.
`
`I understand that patents or printed publications that qualify as prior art
`
`can be used to invalidate a patent claim as anticipated.
`
`20.
`
`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
`
`comparison of the properly construed claim language to the prior art on a limitation-
`
`by-limitation basis.
`
`
`I have been informed that the ’625 patent is a pre-AIA patent, so the pre-AIA
`requirements control. Unless otherwise stated, my understanding of the law
`about patent invalidity as set forth in this Declaration relates to the pre-AIA
`requirements.
`
`8
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`

`

`
`
`21.
`
`I understand that a prior art reference “anticipates” a claim, and thus
`
`renders the claim invalid, if all limitations of the claim are disclosed in that prior art
`
`reference, either explicitly or inherently (i.e., necessarily present).
`
`22.
`
`I understand that anticipation in an IPR must be proven by a
`
`preponderance of the evidence.
`
`C. Obviousness
`
`23.
`
`I understand that even if a patent is not anticipated, it is still invalid if
`
`the differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person of ordinary skill in
`
`the art (“POSITA”) at the time the invention was made.
`
`24.
`
`I understand that a person of ordinary skill in the art at the time of the
`
`claimed invention provides a reference point from which the prior art and claimed
`
`invention should be viewed. This reference point is applied instead of someone
`
`using his or her own insight or hindsight in deciding whether a claim is obvious.
`
`25.
`
`I also understand that an obviousness determination of a claim 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 claim, (3) the level of ordinary
`
`skill in the pertinent art, and (4) the existence of secondary considerations such as
`
`commercial success, long-felt but unresolved needs, failure of others, and so forth.
`
`9
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`

`

`
`
`26.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand further that prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but that at other times the linkage between two or more prior art references is simple
`
`common sense.
`
`27.
`
`I further understand that the obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`28.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would have recognized that it would improve
`
`similar devices in the same way, using the technique would have been obvious unless
`
`its actual application is beyond his or her skill.
`
`29.
`
`I also understand that practical and common-sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art seeking to overcome a problem through invention will often
`
`be able to fit together the teachings of multiple publications. I understand that the
`
`obviousness analysis therefore considers the inferences and creative steps that a
`
`person of ordinary skill in the art would employ under the circumstances.
`
`10
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`

`
`
`30.
`
`I understand that a particular combination may be shown to be obvious
`
`to combine merely by showing that it was obvious to try the combination. For
`
`example, when there is a design need or market pressure to solve a problem and there
`
`are a finite number of identified, predictable solutions, a person of ordinary skill in
`
`the art has good reason to pursue the known options within his or her technical grasp
`
`because the result is likely the product not of innovation but of ordinary skill and
`
`common sense.
`
`31. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
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`work is available in one field of endeavor, design incentives and other market forces
`
`can prompt variations of it, either in the same field or a different one. If a person of
`
`ordinary skill in the art can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`32.
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`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 to those
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`of ordinary skill in 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.
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`33.
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`I understand that a claim can be obvious in light of a single reference,
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`without the need to combine references, if the elements of the claim that are not
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`found explicitly or inherently in the reference but can be supplied by the knowledge
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`or common sense of one of ordinary skill in the art.
`
`34.
`
`I further understand that a claim can be found obvious if it unites old
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`elements with no change to their respective functions, or alters prior art by mere
`
`substitution of one element for another known in the field, with that combination
`
`yielding predictable results. While it may be helpful to identify a reason for this
`
`combination, there is no rigid requirement for a teaching, suggestion, or motivation
`
`to combine. When a product is available, design incentives and other market forces
`
`can prompt variations of it, either in the same field or a different one. If a person
`
`having ordinary skill in the relevant art can implement a predictable variation,
`
`obviousness likely bars patentability. Similarly, if a technique has been used to
`
`improve one device, and a person having ordinary skill in the art would have
`
`recognized that the technique would improve similar devices in the same way, use
`
`of the technique is obvious.
`
`35.
`
`I also understand that the following rationales may support a finding of
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`obviousness:
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` Combining prior art elements according to known methods to yield
`
`predictable results;
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` Simple substitution of one known element for another to obtain predictable
`
`results;
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` Use of known technique to improve a similar method (device, or product) in
`
`the same way;
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` Applying a known technique to a known method (device, or product) ready
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`for improvement to yield predictable results;
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` “Obvious to try” – choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success;
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` Known work in one field of endeavor may prompt variations of it for use in
`
`either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to one of ordinary skill in the
`
`art; and
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` Some teaching, suggestion, or motivation in the prior art that would have led
`
`one of ordinary skill to modify the prior art reference or to combine prior art
`
`reference teachings to arrive at the claimed invention.
`
`36.
`
`I understand that secondary indicia of non-obviousness may include
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`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent;
`
`(3) unexpected results achieved by the invention; (4) praise of the invention by
`
`others skilled in the art; (5) taking of licenses under the patent by others;
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`(6) deliberate copying of the invention; (7) failure of others to find a solution to the
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`long felt need; and (8) skepticism by experts. I understand that evidence of
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`secondary indicia of non-obviousness, if available, should be considered as part of
`
`the obviousness analysis.
`
`37.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and
`
`the
`
`invention.
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` I further understand
`
`that
`
`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
`
`38.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`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 described in the
`
`claims. Under this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`39.
`
`I understand that obviousness in an IPR must be proven by a
`
`preponderance of the evidence. I understand that terms appearing in the patent
`
`claims are to be interpreted according to their “ordinary and customary meaning” in
`
`an IPR proceeding. In determining the ordinary and custom meaning, the words of
`
`a claim are first given their plain meaning as they would have been understood by a
`
`person of ordinary skill in the art at the time of the alleged invention, in light of the
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`specification and file history. I understand that even treatises and dictionaries may
`
`be consulted, albeit under limited circumstances, to determine the meaning attributed
`
`by a person of ordinary skill in the art to a claim term at the time of the alleged
`
`invention. I have followed this approach in my analysis and have applied the
`
`ordinary and customary meaning of those terms throughout my analysis in this
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`declaration.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
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`40.
`
`I have been informed that a person of ordinary skill in the art is a
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`hypothetical person who is presumed to have the skill and experience of an ordinary
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`worker in the field at the time of the alleged invention. Based on my knowledge and
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`experience in the field and my review of the ’625 patent and file history, a person of
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`ordinary skill in the art at the time of the alleged invention (March 2005)3 would
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`have had a bachelor’s degree in electrical engineering or a similar discipline, with at
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`least three years of relevant industry or research experience (or additional
`
`education). The relevant experience would include a working understanding of the
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`development of new and then-existing wireless cellular communications standards.
`
`41. Based on my educational and employment background, I am qualified
`
`to provide opinions concerning what a person of ordinary skill in the art would have
`
`
` 3 My opinion regarding the definition of a person of ordinary skill in the art would
`not change if the time of the alleged invention were determined to be April 2004.
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`known and understood around 2004 and 2005. Indeed, as reflected in my
`
`qualifications above, I am more than qualified as a person of ordinary skill in the art
`
`a