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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`Playtika Ltd. and Playtika Holding Corp.,
`
`Petitioners,
`
`v.
`
`NEXRF Corp.,
`
`Patent Owner.
`
`U.S. Patent No. 9,646,454
`Filing Date: Feb. 25, 2014
`Issue Date: May 9, 2017
`
`____________________
`
`Case No. IPR2021-00953
`
`
`
`DECLARATION OF STACY A. FRIEDMAN
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`
`Declaration of Stacy Friedman
`U.S. Patent No. 9,646,454
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`TABLE OF CONTENTS
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`Introduction ...................................................................................................... 1
`I.
`Background and Qualifications ....................................................................... 1
`II.
`III. Summary of Opinions ...................................................................................... 6
`IV. Background and Technology of the ’454 Patent ............................................. 6
`V.
`Challenged Claims ......................................................................................... 12
`VI. Legal Standards ............................................................................................. 15
`VII. Level of Person of Ordinary Skill in the Art ................................................. 19
`VIII. Claim Construction ........................................................................................ 21
`IX. The Challenged Claims are Unpatentable Over the Prior Art ....................... 22
`X. Grounds 1-2: The Joshi Grounds Render Obvious Claims 1, 4, 6, 7,
`17, and 26 ....................................................................................................... 23
`A. Overview of Prior Art ......................................................................... 24
`1.
`Joshi........................................................................................... 24
`2. Walker ....................................................................................... 28
`A. Motivation to Combine ....................................................................... 29
`B.
`Independent Claim 1 ........................................................................... 30
`1.
`[1p] “A networked gaming system, comprising:” .................... 30
`2.
`[1a] “a user identification received by at least one
`network access device that is compared with registration
`data in a registration database, wherein a player is
`provided access to a game when the user identification
`matches the registered player data” .......................................... 33
`[1b] “a transactional component that charges the
`registered player at least one credit for a game outcome;” ....... 36
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`3.
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`ii
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`C.
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`D.
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`E.
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`F.
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`4.
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`5.
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`6.
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`3.
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`4.
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`5.
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`Declaration of Stacy Friedman
`U.S. Patent No. 9,646,454
`[1c] “a centralized networked gaming module that
`performs game operations and generates at least one
`random game output by random generation at the
`networked gaming module;” ..................................................... 39
`[1d] “the networked gaming module associates the at
`least one random game output with an image ID;” .................. 41
`[1e] “the networked gaming module communicates one
`or more images corresponding to the image ID to the
`network access device.” ............................................................ 43
`[Claim 4] “The networked gaming system of claim 1, wherein
`the images communicated to the network access device are
`viewable on a browser.” ...................................................................... 45
`[Claim 6] “The networked gaming system of claim 1, wherein
`the network access device includes a wireless device.” ...................... 45
`[Claim 7] “The networked gaming system of claim 1, wherein
`the one or more images communicated to the network access
`device game include a slot machine game outcome.” ........................ 46
`Independent Claim 17 ......................................................................... 46
`1.
`[17p] “A networked gaming method, comprising:” ................. 46
`2.
`[17a] “receiving a user identification from at least one
`network access device, wherein the user identification is
`compared with registration data in a registration
`database;” .................................................................................. 47
`[17b] “providing a player access to a game when the user
`identification matches the registered player data;” ................... 47
`[17c] “charging the registered player at least one credit
`for a game outcome;” ................................................................ 47
`[17d] “enabling a centralized networked gaming module
`to perform the game operations and generate at least one
`random game output by random generation at the
`networked gaming module” ...................................................... 47
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`6.
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`7.
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`G.
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`U.S. Patent No. 9,646,454
`[17e] “enabling the networked gaming module to
`associate the at east [sic] one random game output with
`an image ID;” ............................................................................ 48
`[17f] “enabling the networked gaming module to
`communicate one or more Images corresponding to the
`image ID to the network access device.” .................................. 48
`[Claim 26] “The networked gaming system of claim 1, the
`networked gaming module communicating a plurality of images
`corresponding to the image ID to the network access device.” .......... 48
`XI. Grounds 3-4: The Joshi Menashe Grounds Render Obvious Claims 1,
`3-7, 17, AND 26 ............................................................................................ 48
`A. Overview of Prior Art: Menashe ......................................................... 49
`B. Motivation to Combine ....................................................................... 51
`C.
`Independent Claim 1 ........................................................................... 52
`1.
`[1p] “A networked gaming system, comprising:” .................... 52
`2.
`[1a]-[1e] .................................................................................... 55
`[Claim 3] “The networked gaming system of claim 1 further
`comprising an encryption module, the encryption module
`configured to encrypt the plurality of images communicated to
`each network access device.” .............................................................. 55
`[Claim 4] “The networked gaming system of claim 1, wherein
`the images communicated to the network access device are
`viewable on a browser.” ...................................................................... 56
`[Claim 5] “The networked gaming system of claim 1, wherein
`the network access device includes a gaming terminal.” .................... 56
`[Claim 6] “The networked gaming system of claim 1, wherein
`the network access device includes a wireless device.” ...................... 56
`[Claim 7] “The networked gaming system of claim 1, wherein
`the one or more images communicated to the network access
`device game include a slot machine game outcome.” ........................ 56
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`D.
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`E.
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`F.
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`G.
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`H.
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`iv
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`I.
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`J.
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`Declaration of Stacy Friedman
`U.S. Patent No. 9,646,454
`Independent Claim 17 ......................................................................... 57
`1.
`[17p] “A networked gaming method, comprising:” ................. 57
`2.
`[17a]-[17f] ................................................................................. 57
`[Claim 26] “The networked gaming system of claim 1, the
`networked gaming module communicating a plurality of images
`corresponding to the image ID to the network access device.” .......... 57
`XII. Grounds 5-6: The Joshi Muir Grounds Render Obvious Claims 1, 4-7,
`17 and 26 ........................................................................................................ 57
`A. Overview of Prior Art: Muir ............................................................... 57
`B. Motivation to Combine ....................................................................... 58
`C.
`Independent Claim 1 ........................................................................... 59
`1.
`[1p] “A networked gaming system, comprising:” .................... 59
`1.
`[1a]-[1e] .................................................................................... 59
`[Claim 4] “The networked gaming system of claim 1, wherein
`the images communicated to the network access device are
`viewable on a browser.” ...................................................................... 60
`[Claim 5] “The networked gaming system of claim 1, wherein
`the network access device includes a gaming terminal.” .................... 60
`[Claim 6] “The networked gaming system of claim 1, wherein
`the network access device includes a wireless device.” ...................... 60
`[Claim 7] “The networked gaming system of claim 1, wherein
`the one or more images communicated to the network access
`device game include a slot machine game outcome.” ........................ 60
`Independent Claim 17 ......................................................................... 61
`1.
`[17p] “A networked gaming method, comprising:” ................. 61
`2.
`[17a]-[17f] ................................................................................. 61
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`G.
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`D.
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`E.
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`F.
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`H.
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`I.
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`Declaration of Stacy Friedman
`U.S. Patent No. 9,646,454
`[Claim 26] “The networked gaming system of claim 1, the
`networked gaming module communicating a plurality of images
`corresponding to the image ID to the network access device.” .......... 61
`XIII. Grounds 7-8: The Joshi Dobner Grounds Render Claim 3 Obvious ............. 61
`A. Overview of Additional Prior Art: Dobner ......................................... 61
`B. Motivation to Combine ....................................................................... 63
`C.
`[Claim 3] “The networked gaming system of claim 1 further
`comprising an encryption module, the encryption module
`configured to encrypt the plurality of images communicated to
`each network access device.” .............................................................. 66
`XIV. Conclusion ..................................................................................................... 67
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`I.
`
`Introduction
`I, Stacy A. Friedman, submit this declaration to state my opinions on
`1.
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
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`the matters described below.
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`2.
`
`I have been retained by Playtika Ltd. and Playtika Holding Corp., as
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`an independent expert in this proceeding before the United States Patent and
`
`Trademark Office.
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`3.
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`I understand that this proceeding involves U.S. Patent No. 9,646,454
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`(“the ’454 patent”), and that I have been asked to provide my opinions as to the
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`patentability or unpatentability of certain claims of the ’454 patent.
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`4.
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`This declaration sets forth my opinions, which I have formed in this
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`proceeding based on my education, training, research, knowledge, and personal
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`and professional experience; my understanding as an expert in the field; and my
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`study of the evidence.
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`5.
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`I am being compensated for my time at the rate of $600 per hour. This
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`compensation is not contingent upon the nature of my findings, the presentation of
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`my findings in testimony, or the outcome of this proceeding.
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`II. Background and Qualifications
`I am a professional game designer and casino gaming mathematician, and
`6.
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`I am intimately familiar with the issues and technology relating to both digital and
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`physical games. As shown below, I have personally designed, implemented, tested,
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`and analyzed many games, including dozens of single- and multi-player games for both
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`Internet and land-based gaming operators.
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`7.
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`I am the President of Olympian Gaming, LLC in Lake Oswego, Oregon,
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`a position that I have held since 2001. In that capacity, I have advised clients regarding,
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`among other things, game design and development, casino slot machine and table
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`game mathematics, game software development, network gaming system architecture,
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`and gaming patent infringement and validity. I have over twenty years of professional
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`experience in developing regulated casino games, gaming mathematics, and
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`professional software design expertise. Although I discuss my expert qualifications in
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`more detail below, a recent curriculum vitae which details my educational and
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`professional background is attached as Exhibit 1004.
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`8.
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`I have been a game player for most of my life, long before my
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`professional entry into the gaming industry, and that continues to this day. I was an
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`avid game player growing up: gin rummy with my father; panguingue, casino, and
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`Rummikub with my grandmother; chess with my grandfather; and various home poker
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`games in high school and college. My earliest recollection of computer games was
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`playing “The Oregon Trail” in grade school on an Apple II computer. During the 1980s
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`I frequented coin-operated video game arcades, and in the mid-to-late 1980s first
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`became familiar with multiplayer online gaming via dial-up modems and text-based
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`adventure games. During middle school and high school, I taught myself software
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`programming on a Commodore VIC-20 and an Apple IIgs, the majority of which was
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`for game programs.
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`9.
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`In 1996, I earned my Bachelor of Arts degree in Computer Science,
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`magna cum laude, from Harvard College, Harvard University, Cambridge,
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`Massachusetts. During college I became familiar with a wider variety of game genres,
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`including RTS or “real time strategy” computer games (specifically Warcraft: Orcs vs.
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`Humans), CCG or “collectible card games” (specifically Magic: The Gathering), and
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`expanded my knowledge of wagering card games to blackjack, baccarat, and casino
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`poker. After college, I became interested in the mathematics of casino games. I taught
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`myself probability theory—the origins of which are based in wagering games—and
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`began a self-directed study of gaming mathematics, including “advantage play”
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`techniques such as blackjack card counting.
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`10. My professional experience in the casino gaming industry started in 1998,
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`when I joined Silicon Gaming in Palo Alto, California as a game model engineer before
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`it was acquired by International Game Technology (“IGT”). Silicon Gaming designed
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`and developed interactive video slot machines. As a game model engineer
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`(mathematician), I worked on the designs of video slot games, video keno games, and
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`video card games including video poker and blackjack; helped produce dozens of
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`innovative new games for the Odyssey™ platform; and engaged regulatory agencies
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`to achieve regulatory approval for the mathematics used in the games. In addition, I
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`designed and developed game flow and storyboards for new games and game features
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`(behaviors) and developed and shipped over 50 mathematical game models. I also
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`served as a liaison to state regulatory agencies and corrected prior errors in gaming lab
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`submissions, which led to savings of over $50,000 in regulatory fees. I was also
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`responsible for managing the statistical verification and mathematical gameplay
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`testing for Silicon Gaming’s products. In 1999 I invented and analyzed a novel card
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`game for Silicon Gaming’s digital card game portfolio. This game is described in U.S.
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`Patent 6,457,715 and can best be described as “acey-deucy with a discard/draw
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`option.”
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`11.
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`In 2001, I started an independent casino game design and analysis
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`consultancy, Olympian Gaming LLC. Based on my experience designing, developing,
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`and placing dozens of games in Las Vegas, Reno, and Atlantic City casinos, I advise
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`Internet casino software vendors, new game inventors, and casino game manufacturers
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`in the fields of wagering gameplay design, mathematical analysis, and statistical
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`verification. Most of my earliest clients were online gaming software providers,
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`including WagerWorks, a company that spun out of Silicon Gaming to develop a real-
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`money remote gambling system called WagerWare. WagerWorks was acquired by
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`IGT in 2005. In 2011, I was engaged by DoubleDown Interactive, a social gaming
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`website offering free-to-play slot machine games on its Facebook app, DoubleDown
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`Casino. I designed the mathematics, payouts, and game features for all of
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`DoubleDown's virtual slot machine games. In 2012, IGT bought DoubleDown for
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`$500,000,000. Social gaming applications such as DoubleDown Casino do not earn
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`revenue from wagering. Instead, they follow monetization practices such as
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`microtransactions, in-app purchasing, ad-impression revenue, and subscription-based
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`payments. In the past few years I have been engaged as a game design consultant by
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`several video game studios using similar business models. I have also served as a
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`subject matter expert in many matters related to gaming machines or gaming
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`technology, including over 20 cases involving gaming-related intellectual property.
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`Many of these cases have involved distributed software systems running on networked
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`computers, and in several of these cases I have performed source code reviews. Some
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`of these cases have involved technology related to networked gaming systems,
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`including International Gamco v MGAM (networked lottery systems), Lottotron v
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`Allgames Casinos (remote wagering systems), and Agincourt v. Zynga (social
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`gaming).
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`12. Also through Olympian Gaming, I have invented and applied for patents
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`on over two dozen gaming methods and systems and, together with my patent attorney
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`and frequent co-inventor, control a patent portfolio of approximately forty issued
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`and/or pending patents across several categories of the gaming industry. These
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`innovations include novel table games, electronic wagering games such as slot
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`machine and video poker games, and networked casino management or promotional
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`systems. Several of these patents describe novel card or tile games in both physical and
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`electronic embodiments, including U.S. Patents 7,651,096 and 8,074,992 (“Bad Beat
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`Blackjack”), 7,335,099 (“Method for playing wagering games”), 7,708,208 (“Poker
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`game with variable payouts based on probabilities of winning”), and 8,403,737 and
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`8,998,693 (“Royal re-draw video poker side bet”). I performed the game design and
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`mathematical analysis on the games described therein. Olympian Gaming has received
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`regulatory approval for operation of Bad Beat Blackjack in Nevada, Mississippi, and
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`Washington State.
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`13. Based on my experience, training and qualifications, I consider myself to
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`be an expert in the gaming field, with particular expertise in the areas of networked
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`gaming systems as well as in the analysis and implementation of game features in both
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`physical and electronic/computerized embodiments.
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`III. Summary of Opinions
`I have been asked to provide my opinion on whether certain claims of
`14.
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`the ’454 patent are unpatentable over certain prior art references. It is my opinion
`
`that claims 1, 3-7, 17, and 26 of ’454 patent are unpatentable because they would
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`have been obvious to a person of ordinary skill in the art in view of the prior art.
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`IV. Background and Technology of the ’454 Patent
`15. The ’454 patent is directed to a networked gaming system. Ex-1001,
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`Claim 1. More specifically, the networked gaming system of the ’454 patent allows
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`a player to access a game running on a “centralized networked gaming module”
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`using a network access device, after the user inputs user identification and that
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`information is compared to a registration database. The system will then charge a
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`player to play the game, generate a random game outcome, associate that outcome
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`with images, and transmit those images back to the network access device.
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`16. The specification states that the network access device may be a
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`computer (FIG. 1a), set-top box (FIG. 1b), PDA or a mobile phone (FIG. 1c), or
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`slot machine (FIG. 1d), as shown in annotated FIG. 2 below. Ex-1001, Claim 1,
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`4:18-19, 5:61-6:12.
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`Ex-1001, FIGS 1a-1d.
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`
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`17. As shown in FIG. 2 below, the network access devices will interact
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`with the gaming system over a network. See also Ex-1001, 6:59-7:1.
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
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`Ex-1001, FIG. 2 (annotated).
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`
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`18. As shown in FIG. 2 above, the gaming system includes a verification
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`system with a verification server and a registration database. The verification
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`system receives user identification information and security information from a
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`network access device to “verif[y] that a user desiring to play the game is a
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`registered player.” Ex-1001, 7:7-8. The user identification information includes
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`“player name, address, user name, password, credit card information, and the date
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`and time of the registration.” Ex-1001, 8:29-31. The security information includes
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`“the MAC ID for biometric input module, the IP address for the server
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`communicating with the registration terminal, and the cryptographic keys
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`associated with the registration terminal.” Ex-1001, 11:62-66. The ’454 patent
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`specification also discloses that the user identification information may be “housed
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`in a smart card (not shown) that is in communication with the verification system
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`34.” Ex-1001, 7:23-25.
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`19. After a player enters a user ID and a password using a network access
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`device, the server compares the entered data with the data stored in a player
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`registration database. See Ex-1001, 8:25-31. The registration database stores player
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`registration information in fields, as shown in FIGS. 5 and 6 below.
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`
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`Ex-1001, FIG 5.
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`If the data entered by the player matches the data stored in the
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`20.
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`registration database, the player is given authorization to access the user account
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`play a game, as shown in FIG. 9 below. See Ex-1001, 7:18-22, 12:52-55.
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`Ex-1001, FIG. 9 (annotated).
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`
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`21. After the verification is complete, the gaming module of the server
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`generates a random number using a random number generator. See Ex-1001, 9:57-
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`63, 13:18-21. A paytable module then compares the random number to a paytable
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`to determine a corresponding prize. See Ex-1001, 13:21-25. The server also
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`retrieves images corresponding to the random game outcome from a memory
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`module using image IDs and transmits them to a network access device. See Ex-
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`1001, 10:25-29, 14:1.
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`Ex-1001, FIG. 7.
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`
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`22. The dependent claims of the ’454 patent further limit the transmitted
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`images as being encrypted or displayed on a web browser of a network access
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`device. See Ex-1001, Claims 3, 4. Other dependent claims of the ’454 patent
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`further limit the type of the network access device as a wireless device or gaming
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`terminal, or specify that the game type is a slot machine. See Ex-1001, Claims 5, 6,
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`7.
`
`23. The “Description of Related Art” section of the specification admits
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`that most, if not all, of these elements were well known in the art at the time of the
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`invention. For example, it states that “[n]etworked interactive gaming in an open
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`networked environment such as the Internet is well-known” and that “[n]etworked
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`interactive gaming using LANs and WANs for progressive slot machines having
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`large jackpots are also well-known.” Ex-1001, 2:46-47, 2:61-63.
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`24.
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`It also admits that “[t]o prevent underage gambling[,] prior art
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`systems and methods use passwords, use IDs, credit cards and ‘click-through’
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`agreements that ask the player to agree to being of legal gambling age by clicking
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`on a button.” Ex-1001, 2:6-9. Furthermore, the specification states “[w]ith respect
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`to ensuring that on-line gaming is secure and reliable, prior art systems and
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`methods use various cryptographic techniques such as RSA encryption, digital
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`certificates, or other similar well-known cryptographic methods.” Ex-1001, 2:11-
`
`15.
`
`V. Challenged Claims
`25. The following claims of the ’454 patent are addressed in this petition.
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`Element numbers have been added:
`
`
`
`Claim 1:
`[1p] A networked gaming system comprising:
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`[1a] a user identification received by at least one network
`access device that is compared with registration data in a
`registration database, wherein a player is provided access
`to a game when the user identification matches the
`registered player data;
`[1b] a transactional component that charges the registered
`player at least one credit for a game outcome;
`[1c] a centralized networked gaming module that
`performs game operations and generates at least one
`random game output by random generation at the
`networked gaming module;
`[1d] the networked gaming module associates the at least
`one random game output with an image ID; and
`[1e] the networked gaming module communicates one or
`more images corresponding to the image ID to the
`network access device.
`Claim 3:
`[3] The networked gaming system of claim 1 further
`comprising an encryption module, the encryption module
`configured to encrypt the plurality of images
`communicated to each network access device.
`Claim 4:
`[4] The networked gaming system of claim 1, wherein
`the images communicated to the network access device
`are viewable on a browser.
`Claim 5:
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`[5] The networked gaming system of claim 1, wherein
`the network access device includes a gaming terminal.
`Claim 6:
`[6] The networked gaming system of claim 1, wherein
`the network access device includes a wireless device.
`Claim 7:
`[7] The networked gaming system of claim 1, wherein
`the one or more images communicated to the network
`access device game include a slot machine game
`outcome.
`Claim 17:
`[17p] A networked gaming method comprising:
`[17a] receiving a user identification from at least one
`network access device, wherein the user identification is
`compared with registration data in a registration
`database;
`[17b] providing a player with access to a game when the
`user identification matches the registered player data;
`[17c] charging the registered player at least one credit for
`a game outcome;
`[17d] enabling a centralized networked gaming module
`to perform the game operations and generate at least one
`random game output by random generation at the
`networked gaming module;
`[17e] enabling the networked gaming module to associate
`the at east one random game output with an image ID;
`and
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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`[17f] enabling the networked gaming module to
`communicate one or more Images corresponding to the
`image ID to the network access device.
`Claim 26:
`[26] The networked gaming system of claim 1, the
`networked gaming module communicating a plurality of
`images corresponding to the image ID to the network
`access device.
`VI. Legal Standards
`26. For purposes of this declaration, I have been asked to opine on
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`whether one of ordinary skill in the art would have believed that the subject matter
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`of 1, 3-7, 17, and 26 of ’454 patent are disclosed or anticipated by several prior art
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`references under 35 U.S.C. § 102 or rendered obvious by those references under 35
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`U.S.C. §103. I have been informed of the following legal standards, which I have
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`applied in forming my opinions.
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`27.
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`I have been asked to provide my opinions as to whether the cited prior
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`art anticipates or renders obvious claims 1, 3-7, 17, and 26 of ’454 patent from the
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`perspective of a person of ordinary skill in the art at the ’454 patent’s priority date,
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`as described in more detail below.
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`28. For purposes of this declaration, I have been informed and understand
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`certain aspects of the law as it relates to my opinions.
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`15
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`

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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`I have been advised and understand that there are two ways in which
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`29.
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`prior art may render a patent claim unpatentable. First, I have been advised that the
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`prior art can “anticipate” a claim. Second, I have been advised that the prior art can
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`make a claim “obvious” to a person of ordinary skill in the art. I understand that for
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`an invention claimed in a patent to be patentable, it must not be anticipated and
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`must not be obvious based on what was known before the invention was made.
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`30.
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`I have been advised and understand the information used to evaluate
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`whether an invention was new and not obvious when made is generally referred to
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`as “prior art.” I understand that prior art includes patents and printed publications
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`that existed before the earliest priority date of the patent (which I have been
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`informed is called the “effective filing date”). I have been informed and understand
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`that a patent or published patent application is prior art if it was filed before the
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`effective filing date of the claimed invention and that a printed publication is prior
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`art if it was publicly available before the effective filing date.
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`31.
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`I have been advised and understand that a dependent claim is a patent
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`claim that refers back to another patent claim. I have been informed and
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`understand that a dependent claim includes all of the limitations of the claim to
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`which it refers.
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`16
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`

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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`I have been advised and understand that a patent claim may be invalid
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`32.
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`as anticipated under 35 U.S.C. § 102 if all of the subject matter of the claim is
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`disclosed in a single prior art reference.
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`33.
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`I have been advised and understand that a patent claim may be invalid
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`as obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`claimed and the prior art are such that the claimed subject matter as a whole would
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`have been obvious to a person of ordinary skill in the art at the time the invention
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`was made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art, (2) the level of ordinary skill in the field of the invention, (3) the
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`differences between the claimed invention and the prior art, and (4) any objective
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`evidence of non-obviousness (which I have been informed may also be called
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`“secondary considerations”).
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`34.
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`I have also been advised and understand that, where a party alleges
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`obviousness based on a combination of references, that party must explain why a
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`person skilled in the art would have been motivated to combine the asserted
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`references in the manner recited in the claims and to explain why one skilled in the
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`art would have had a reasonable expectation of success in making such
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`combinations.
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`17
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`

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`Declaration of Stacy Friedman
`U.S. Patent No 9,646,454
`I have been advised and understand that the law permits the
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`35.
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`application of “common sense” in examining whether a claimed invention would
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`have been obvious to a person skilled in the art. For example, I understand that the
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`following rationales may support a conclusion of obviousness (1) combining prior
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`art elements according to known methods to yield predictable results; (2) simple
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`substitution of one known element for another to obtain predictable results; (3)
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`applying a known technique to a known device (method, or product) ready for
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`improvement to yield predictable results; (4) “obvious to try,” i.e., choosing from a
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`finite number of identified, predictable solutions, with a reasonable expectation of
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`success; (5) known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; and
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`(6) some teaching, suggestion, or motivation in the prior art that would have led
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`one of ordinary skill to modify the prior art reference or to combin