Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`RUBRIK, INC.,
`Petitioner,
`
`v.
`
`COMMVAULT SYSTEMS, INC.,
`Patent Owner.
`
`
`Case No. IPR2021-00609
`
`U.S. Patent No. 10,210,048 B2
`Issue Date: February 19, 2019
`
`Title: SELECTIVE SNAPSHOT AND BACKUP COPY OPERATIONS
`FOR INDIVIDUAL VIRTUAL MACHINES IN A SHARED STORAGE
`
`DECLARATION OF SANDEEP CHATTERJEE, PH.D.
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`Petitioner's Exhibit 1002
`Page 1
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`

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`Table of Contents
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`Page
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`INTRODUCTION AND QUALIFICATIONS .............................................. 1 
`A.  Qualifications and Experience ............................................................. 1 
`B.  Materials Considered ............................................................................ 3 
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 6 
`STATEMENT OF LEGAL PRINCIPLES ..................................................... 8 
`A. 
`Claim Construction .............................................................................. 8 
`B. 
`Obviousness ........................................................................................ 10 
`  TECHNOLOGY BACKGROUND AND ’048 PATENT ........................... 15 
`A.  Virtualization ...................................................................................... 16 
`B. 
`Snapshotting, Backup, and “Virtual Volumes”.................................. 19 
`C. 
`Overview of the ’048 Specification ................................................... 22 
`D. 
`The Challenged Claims ...................................................................... 26 
`  APPLICATION OF THE PRIOR ART TO THE CHALLENGED
`CLAIMS ....................................................................................................... 28 
`A. 
`Brief Summary of Prior Art ............................................................... 29 
`1. 
`Hiltgen [EX1003] ..................................................................... 29 
`2. 
`Vaghani [EX1004] ................................................................... 29 
`3. 
`Boda [EX1005] ........................................................................ 30 
`4. 
`Pawar [EX1006] ....................................................................... 30 
`5. 
`Bayapuneni [EX1007] ............................................................. 30 
`Ground 1: Obviousness of Claims 1, 2, 4-6, 8, 10-12, 14, 16, 18
`and 19 over Hiltgen, Vaghani, and Boda ........................................... 31 
`1. 
`Claim 1 ..................................................................................... 31 
`(a) 
`“a memory for storing instructions to carry out a
`method comprising” (Claim 1[a]) ................................. 37 
`
`B. 
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`-i-
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`Petitioner's Exhibit 1002
`Page 2
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`Table of Contents
`(continued)
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`Page
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`“issuing a command to a hypervisor to perform a
`snapshot copy operation for a selected one of a
`plurality of virtual machines operated by the
`hypervisor, the hypervisor being
`communicatively coupled to one or more shared
`physical computer storage devices which store
`the plurality of virtual machines,” (Claim 1[b]) ........ 39 
`“wherein a plurality of storage volumes are
`provided in the one or more shared physical
`computer storage devices, and” (Claim 1[b][i]) ............ 57 
`“wherein each storage volume uniquely
`corresponds to one of the virtual machines in the
`plurality of virtual machines,” (Claim 1[b][ii]) ......... 61 
`“receiving metadata corresponding to the
`completed snapshot copy operation from the
`hypervisor,” (Claim 1[c]) ............................................ 72 
`“wherein the snapshot copy operation is
`performed by one of the one or more shared
`physical computer storage devices,” (Claim
`1[c][i]) ........................................................................... 77 
`“resulting in a snapshot of a given storage
`volume that uniquely corresponds to the selected
`one of the plurality of virtual machines,” (Claim
`1[c][ii]) .......................................................................... 81 
`“wherein the metadata identifies the snapshot,
`and” (Claim 1[c][iii]) ................................................... 83 
`“storing the metadata in a database,” (Claim
`1[d]) ............................................................................... 86 
`“wherein the metadata that identifies the
`snapshot is associated with the selected one of
`the plurality of virtual machines;” (Claim
`1[d][i]) ........................................................................... 91 
`
`(b) 
`
`(c) 
`
`(d) 
`
`(e) 
`
`(a) 
`
`(b) 
`
`(c) 
`
`(d) 
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`(e) 
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`-ii-
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`Petitioner's Exhibit 1002
`Page 3
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`Table of Contents
`(continued)
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`Page
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`(f) 
`
`(g) 
`
`(b) 
`
`“a processor to execute the instructions; and”
`(Claim 1[e]) .................................................................. 94 
`“wherein, based on the command issued by the
`processor of the virtual server agent, the
`snapshot copy operation is performed for the
`selected one of the plurality of virtual machines
`without performing the snapshot copy operation
`for any unselected virtual machine having a
`storage volume in the one or more shared
`physical computer storage devices.” (Claim 1[f]) ..... 96 
`Claim 2 ................................................................................... 100 
`Claim 4 ................................................................................... 102 
`Claim 5 ................................................................................... 102 
`Claim 6 ................................................................................... 110 
`Claim 8 ................................................................................... 113 
`(a) 
`“by the virtual server agent, issuing a command to
`a hypervisor to perform a snapshot copy
`operation for a selected one of a plurality of
`virtual machines operated by the hypervisor, the
`hypervisor being communicatively coupled to
`one or more shared physical computer storage
`devices which store the plurality of virtual
`machines,” (Claim 8[a])............................................. 115 
`“wherein a plurality of storage volumes are
`provided in the one or more shared physical
`computer storage devices, and” (Claim 8[a][i]) .......... 115 
`“wherein each storage volume uniquely
`corresponds to one of the virtual machines in the
`plurality of virtual machines,” (Claim 8[a][ii]) ....... 115 
`“by the virtual server agent, receiving metadata
`corresponding to the completed snapshot copy
`operation from the hypervisor,” (Claim 8[b]) .......... 116 
`
`(c) 
`
`(d) 
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`-iii-
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`
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`2. 
`3. 
`4. 
`5. 
`6. 
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`Petitioner's Exhibit 1002
`Page 4
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`

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`Table of Contents
`(continued)
`
`Page
`
`(e) 
`
`(f) 
`
`(g) 
`
`(h) 
`
`(i) 
`
`(j) 
`
`“wherein the snapshot copy operation is
`performed by one of the one or more shared
`physical computer storage devices,” (Claim
`8[b][i]) ......................................................................... 116 
`“resulting in a snapshot of a given storage
`volume that uniquely corresponds to the selected
`one of the plurality of virtual machines,” (Claim
`8[b][ii]) ........................................................................ 116 
`“wherein the metadata identifies the snapshot,
`and” (Claim 8[b][iii]) ................................................. 116 
`“by the virtual server agent, storing the metadata
`in a database,” (Claim 8[c]) ....................................... 117 
`“wherein the metadata that identifies the
`snapshot is associated with the selected one of
`the plurality of virtual machines;” (Claim
`8[c][i]) ......................................................................... 117 
`“wherein, based on the command issued by the
`processor of the virtual server agent, the
`snapshot copy operation is performed for the
`selected one of the plurality of virtual machines
`without performing the snapshot copy operation
`for any unselected virtual machine having a
`storage volume in the one or more shared
`physical computer storage devices.” (Claim
`8[d]) ............................................................................. 117 
`Claim 10 ................................................................................. 118 
`7. 
`Claim 11 ................................................................................. 118 
`8. 
`Claim 12 ................................................................................. 119 
`9. 
`10.  Claim 14 ................................................................................. 120 
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`-iv-
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`Petitioner's Exhibit 1002
`Page 5
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`(a) 
`
`(b) 
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`(c) 
`
`(d) 
`
`(e) 
`
`(f) 
`
`(g) 
`
`(h) 
`
`(i) 
`
`Table of Contents
`(continued)
`
`Page
`
`“by the virtual server agent, issuing a command to
`a hypervisor to perform a snapshot copy
`operation for a selected one of a plurality of
`virtual machines operated by the hypervisor, the
`hypervisor being communicatively coupled to
`one or more shared physical computer storage
`devices which store the plurality of virtual
`machines,” (Claim 14[a]) .......................................... 122 
`“wherein a plurality of storage volumes are
`provided in the one or more shared physical
`computer storage devices, and” (Claim 14[a][i]) ........ 123 
`“wherein each storage volume uniquely
`corresponds to one of the virtual machines in the
`plurality of virtual machines,” (Claim 14[a][ii]) ..... 123 
`“by the virtual server agent, receiving metadata
`corresponding to the completed snapshot copy
`operation from the hypervisor,” (Claim 14[b]) ........ 123 
`“wherein the snapshot copy operation is
`performed by one of the one or more shared
`physical computer storage devices,” (Claim
`14[b][i]) ....................................................................... 123 
`“resulting in a snapshot of a given storage
`volume that uniquely corresponds to the selected
`one of the plurality of virtual machines,” (Claim
`14[b][ii]) ...................................................................... 124 
`“wherein the metadata identifies the snapshot,
`and” (Claim 14[b][iii]) ............................................... 124 
`“by the virtual server agent, storing the metadata
`in a database,” (Claim 14[c]) ..................................... 124 
`“wherein the metadata that identifies the
`snapshot is associated with the selected one of
`the plurality of virtual machines;” (Claim
`14[c][i]) ....................................................................... 125 
`
`-v-
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`Petitioner's Exhibit 1002
`Page 6
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`Table of Contents
`(continued)
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`Page
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`C. 
`
`(j) 
`
`“wherein, based on the command issued by the
`processor of the virtual server agent, the
`snapshot copy operation is performed for the
`selected one of the plurality of virtual machines
`without performing the snapshot copy operation
`for any unselected virtual machine having a
`storage volume in the one or more shared
`physical computer storage devices.” (Claim
`14[d]) ........................................................................... 125 
`11.  Claim 16 ................................................................................. 125 
`12.  Claim 18 ................................................................................. 126 
`13.  Claim 19 ................................................................................. 127 
`Ground 2: Obviousness of Claims 3, 7, 9, 13, 15, and 20 over
`Hiltgen, Vaghani, Boda, and Pawar ................................................. 128 
`1. 
`Claim 3 ................................................................................... 128 
`2. 
`Claim 7 ................................................................................... 134 
`3. 
`Claim 9 ................................................................................... 135 
`4. 
`Claim 13 ................................................................................. 136 
`5. 
`Claim 15 ................................................................................. 136 
`6. 
`Claim 20 ................................................................................. 137 
`D.  Ground 3: Obviousness of Claim 17 over Hiltgen, Vaghani,
`Boda, and Bayapuneni ...................................................................... 138 
`  NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .... 146 
`  CONCLUSION ........................................................................................... 149 
`
`-vi-
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`Petitioner's Exhibit 1002
`Page 7
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`I, Sandeep Chatterjee, declare as follows:
`
`
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I am the Chief Executive Officer of Experantis LLC, a technology
`
`consulting company. Previously, I was the Executive Vice President and Chief
`
`Technology Officer of SourceTrace Systems, Inc., a technology and services
`
`company enabling the delivery of secure remote electronic services over landline
`
`and wireless telecommunications networks.
`
`2.
`
`I received my bachelor’s degree in Electrical Engineering and
`
`Computer Science from the University of California, Berkeley in 1995. I received
`
`my master’s degree in Computer Science from the Massachusetts Institute of
`
`Technology (MIT) in 1997, and my doctorate in Computer Science from MIT in
`
`2001. I received a certificate of completion for an executive education program on
`
`global leadership from Harvard University in 2011. My doctoral dissertation at MIT,
`
`entitled “Composable System Resources for Networked Systems,” which involved
`
`networked client architectures and systems, was selected as one of the top inventions
`
`in the history of MIT’s Laboratory for Computer Science. This invention is
`
`showcased in a time capsule at the Museum of Science in Boston, Massachusetts.
`
`3.
`
`In 2011, I was named a Young Global Leader. This honor, bestowed
`
`each year by the World Economic Forum, recognizes and acknowledges the top
`1
`
`
`
`Petitioner's Exhibit 1002
`Page 8
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`leaders—all below the age of 40—from around the world for their professional
`
`accomplishments, commitment to society, and potential to contribute to shaping the
`
`future of the world. In 2016, I was appointed to the World Economic Forum’s expert
`
`network as an expert in technology and innovation, and I advise world leaders on
`
`issues related to technology and innovation.
`
`4.
`
`From 1997, I was the Entrepreneur-in-Residence at FidelityCAPITAL,
`
`the venture capital arm of Fidelity Investments. In 1999, I founded and served as
`
`President and Chief Technology Officer (CTO) of Satora Networks, which
`
`developed tools and technologies for building appliances and services for the
`
`Internet using wireless and other technologies to extend it beyond the desktop.
`
`5.
`
`In 2001, I joined Bluestone Software’s Mobile Middleware Labs as a
`
`Senior Engineer developing applications and systems infrastructure for enterprise
`
`Java/J2EE, Web services, and enterprise mobile solutions. After the completion of
`
`Hewlett-Packard’s (“HP”) acquisition of Bluestone, I became a Senior Member of
`
`the Technical Staff at HP’s Middleware Division. I was responsible for architecting
`
`and developing the company’s next-generation Web services platform for enterprise
`
`as well as mobile environments, known as the Web Services Mediator.
`
`6.
`
`I was part of the Expert Group that developed the JSR-00172 J2ME
`
`(Java 2 Platform, Micro Edition) Web Services Specification, the worldwide
`
`
`
`2
`
`Petitioner's Exhibit 1002
`Page 9
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`standard for mobile Web services. I am the co-author, with James Webber, of the
`
`book “Developing Enterprise Web Services: An Architect’s Guide” (published by
`
`Prentice-Hall in 2004). This book has been adopted by over 100 universities and
`
`colleges around the world and has been translated or reprinted in numerous countries
`
`around the world.
`
`7.
`
`I have extensive experience in architecting, developing, optimizing,
`
`deploying and managing complex computing systems, including data storage
`
`systems, throughout the world. I have architected and developed data storage and
`
`distributed computing systems, including hardware and software for these systems.
`
`8.
`
`9.
`
`I have attached a more detailed list of my qualifications as Exhibit A.
`
`Experantis is being compensated for my time working on this matter at
`
`my standard hourly rate plus expenses. Neither Experantis nor I have any personal
`
`or financial stake or interest in the outcome of the present proceeding, and the
`
`compensation is not dependent on the outcome of this IPR and in no way affects the
`
`substance of my statements in this Declaration.
`
`B. Materials Considered
`10. The analysis that I provide in this Declaration is based on my education,
`
`research, and experience in the areas of computer science and data management, as
`
`well as my investigation and study of relevant materials, including the ’048 patent
`
`
`
`3
`
`Petitioner's Exhibit 1002
`Page 10
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`and its prosecution history. The ’048 patent states on its face that it issued from a
`
`nonprovisional application filed on October 25, 2016. For purposes of this
`
`Declaration, I have assumed October 25, 2016 as the effective filing date for the ’048
`
`patent. I have cited to the following documents in my analysis below:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 10,210,048 B2 issued to Ashwin Gautamchand
`Sancheti (filed October 25, 2016, issued February 19, 2019) (“’048”)
`1003 U.S. Patent No. 9,354,927 to Daniel K. Hiltgen and Rene W. Schmidt
`(filed December 19, 2007, issued May 31, 2016) (“Hiltgen”)
`1004 U.S. Patent No. 8,677,085 B2 to Satyam B. Vaghani, et al. (filed
`August 29, 2011, published March 18, 2014) (“Vaghani”)
`1005 U.S. Patent No. 9,639,428 to Koteswara R. Boda, et al. (filed March
`28, 2014, issued May 2, 2017) (“Boda”)
`1006 US Patent App. No. 2015/0212895 A1 to Rahul S. Pawar, et al. (filed
`Jan. 24, 2014, published July 30, 2015) (“Pawar”)
`1007 U.S. Patent No. 9,665,386 B2 to Chaitanya Bayapuneni, et al. (filed
`June 14, 2013, issued May 30, 2017) (“Bayapuneni”)
`1008 Gerald J. Popek & Robert P. Goldberg, “Formal Requirements for
`Virtualizable Third Generation Architectures,” Commc’ns of the ACM,
`Vol. 17, No. 7, 412-421 (July 1974)
`1009 Excerpts from Matthew Portnoy, Virtualization Essentials (1st ed.
`2012)
`1010 Mendel Rosenblum & Tal Garfinkel, “Virtual Machine Monitors:
`Current Technology and Future Trends,” Computer, 38(5):39–47, May
`2005. (“Virtual Machine Monitors” Article)
`
`
`
`4
`
`Petitioner's Exhibit 1002
`Page 11
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`

`

`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`
`Exhibit
`No.
`1011
`
`Description of Document
`“Virtualization Overview,” VMware whitepaper, Copyright 2005,
`VMware, Inc., available at:
`https://web.archive.org/web/20060209022128/http://www.vmware.co
`m/pdf/virtualization.pdf (“Virtualization Overview”)
`1012 C. Wolf, “Let's Get Virtual: A Look at Today's Server Virtualization
`Architectures,” Data Center Strategies, Burton Group, Version 1.0,
`May 14, 2007 (“Let’s Get Virtual” Article)
`
`1013
`
`“Virtual Volumes,” VMware, available on Internet Archives (July 22,
`2016), www.vmware.com/products/vsphere/virtual-volumes.html
`1014 Ken Werneburg, “Virtual Volumes and the SDCC,” VMware (Apr. 13,
`2015), available on Internet Archives (Sept. 29, 2015),
`blogs.vmware.com/virtualblocks/2015/04/13/virtual-volumes-and-the-
`sddc/
`
`1015
`
`“VMware vSphere Virtual Volumes Changes the Virtualization
`Environment: New Forms of Interaction between Virtual Machines
`and Storages,” NEC, available on Internet Archives (Dec. 04, 2015),
`www.nec.com/en/global/prod/storage/file/pdf/WP_VVOL.pdf (with
`appended screenshot)
`1016 Ken Werneburg, “EMC Storage and Virtual Volumes,” VMware (Sept.
`16, 2015), available on Internet Archives (April 24, 2015),
`blogs.vmware.com/virtualblocks/2015/09/16/emc-storage-and-vvols/
`1017 U.S. Patent No. 8,621,460 B2 to James B. Evans, et al. (filed
`November 1, 2010, issued December 31, 2013) (“Evans”)
`1018 U.S. Patent No. 7,725,671 B2 to Anand Prahlad, et al. (filed
`November 28, 2006, issued May 25, 2010) (“Prahlad”)
`
`1019
`
`Patent Assignment of Vaghani, et al. to VMware, Inc., executed
`January 2012
`
`
`
`5
`
`Petitioner's Exhibit 1002
`Page 12
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`
`Exhibit
`Description of Document
`No.
`1020 U.S.P.T.O. Assignment Database Docket Sheet for Vaghani (App. No.
`13/219,919)
`1021 Bhanu P. Tholeti, “Dive into the VMware ESX Server Hypervisor,”
`IBM (Sept. 23, 2011), available at
`https://developer.ibm.com/depmodels/cloud/articles/cl-
`hypervisorcompare-vmwareesx/#
`1022 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1023 VMware vSphere Blog Webpage Available at:
`https://web.archive.org/web/20140707053409/https://blogs.vmware.co
`m/vsphere/2014/06/virtual-volumes-beta.html
`
`
`
`PERSON OF ORDINARY SKILL IN THE ART
`11.
`I understand that an assessment of claims of the ’048 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I have assumed is October 25, 2016. I have also
`
`been advised that to determine the appropriate level of one of ordinary skill in the
`
`art, I may consider the following factors: (1) the types of problems encountered by
`
`those working in the field and prior art solutions thereto; (2) the sophistication of the
`
`technology in question, and the rapidity with which innovations occur in the field;
`
`(3) the educational level of active workers in the field; and (4) the educational level
`
`of the inventor.
`
`12. The relevant technical field for the ’048 patent relates to selective
`
`
`
`6
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`Petitioner's Exhibit 1002
`Page 13
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
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`snapshotting and backup operations of virtual machines. (’048, Abstract.) Based on
`
`this, and the four factors above, in my opinion a person of ordinary skill in the art as
`
`of October 2016 would have possessed at least a Bachelor of Science in software
`
`engineering, computer science or computer engineering with at least two years of
`
`experience in developing software and systems for storing, backing up, and restoring
`
`information within a computer network (or equivalent degree or experience).
`
`Acquiring as part of the person’s basic computer education and/or experience, as the
`
`’048 patent makes clear, a person of ordinary skill in the art would have had a
`
`working knowledge about virtualization techniques and data backup, archival, and
`
`recovery. A person could also be qualified as a person of ordinary skill in the art
`
`with some combination of (1) more formal education (such as a Master of Science
`
`degree) and less technical experience or (2) less formal education and more technical
`
`or professional experience in the fields listed above.
`
`13. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 20 years of experience in computer science; my
`
`understanding of the basic qualifications that would be relevant to an engineer or
`
`scientist tasked with investigating methods and systems in the relevant area; and my
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`familiarity with the backgrounds of colleagues, co-workers, and employees, both
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`past and present.
`
`
`
`7
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`Petitioner's Exhibit 1002
`Page 14
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`
`14. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’048 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of 2016.
`
`15. My opinions herein regarding the understanding of a person of ordinary
`
`skill in the art and my other opinions set forth herein would remain the same if the
`
`person of ordinary skill in the art were determined to have somewhat more or less
`
`education and/or experience than I have identified above.
`
`
`
`STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`16. The following sets forth my understanding of the legal principles of
`
`claim construction from counsel. I understand that under the legal principles, claim
`
`terms are generally given their ordinary and customary meaning, which is the
`
`meaning that the term would have to a person of ordinary skill in the art in question
`
`at the time of the invention, i.e., as of the effective filing date of the patent
`
`application. I further understand that the person of ordinary skill in the art is deemed
`
`to read the claim term not only in the context of the particular claim in which a claim
`
`term appears, but in the context of the entire patent, including the specification.
`
`17.
`
`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`8
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`Petitioner's Exhibit 1002
`Page 15
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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of those
`
`terms.
`
`18.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the claim terms are normally used 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 claims can also be a
`
`useful guide in understanding the meaning of particular claim terms.
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`19.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
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`be consulted in construing the claim terms, such as my expert testimony.
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`20.
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`I have been informed by counsel that, in Inter Partes Review (IPR)
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`proceedings, a claim of a patent shall be construed using the same claim construction
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`standard that would be used to construe the claim in a civil action filed in a U.S.
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`district court (which I understand may be referred to as the “Phillips” claim
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`
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`9
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`Petitioner's Exhibit 1002
`Page 16
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`construction standard), including construing the claim in accordance with the
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`ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.
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`21.
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`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips” standard
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`as provided to me by counsel.
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`B. Obviousness
`22. The following sets forth my understanding of the legal principles of
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`obviousness from counsel. I understand that a patent claim is obvious if, as of the
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`critical date (i.e., either the earliest claimed priority date (pre-AIA) or the effective
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`filing date (AIA)), it would have been obvious to a person having ordinary skill in
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`the field of the technology (the “art”) to which the claimed subject matter belongs.
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`23.
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`I understand that the following factors should be considered in
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`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
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`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
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`art. I also understand that certain other facts known as “secondary considerations”
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`such as commercial success, unexplained results, long felt but unsolved need,
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`
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`10
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`Petitioner's Exhibit 1002
`Page 17
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`industry acclaim, simultaneous invention, copying by others, skepticism by experts
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`in the field, and failure of others may be utilized as indicia of nonobviousness. I
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`understand, however, that secondary considerations should be connected, or have a
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`“nexus,” with the invention claimed in the patent at issue.
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`24.
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`I understand that a reference qualifies as prior art for obviousness
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`purposes when it is analogous to the claimed invention. The test for determining
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`what art is analogous is: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addressed, and (2) if the reference is not within the field
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.
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`25.
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`I understand that a person of ordinary skill in the art is assumed to have
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`knowledge of all prior art. I understand that one skilled in the art can combine
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`various prior art references based on the teachings of those prior art references, the
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`general knowledge present in the art, or common sense. I understand that a
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`motivation to combine references may be implicit in the prior art, and there is no
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`requirement that there be an actual or explicit teaching to combine two references.
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`Thus, one may take into account the inferences and creative steps that a person of
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`ordinary skill in the art would employ to combine the known elements in the prior
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`art in the manner claimed by the patent at issue. I understand that one should avoid
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`
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`11
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`Petitioner's Exhibit 1002
`Page 18
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 10,210,048 B2
`
`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
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`this does not mean that a person of ordinary skill in the art for purposes of the
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`obviousness inquiry does not have recourse to common sense.
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`26.
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`I understand that when determining whether a patent claim is obvious
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`in light of the prior art, neither the particular motivation for the patent nor the stated
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`purpose of the patentee is controlling. The primary inquiry has to do with the
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`objective reach of the claims, and that if those claims extend to something that is
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`obvious, then the entire patent claim is invalid.
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`27.
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`I understand one way that a patent can be found obvious is if there
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`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`understand that a person of ordinary skill in the art is also a person of at least ordinary
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`
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`12
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`Petitioner's Exhibit 1002
`Page 19
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`

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`Declaration of Sandeep Chatterjee, Ph.D. in Support of
`Petition for Inter Partes R