`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics America, Inc. and
`Samsung Electronics Co., Ltd.
`Petitioners,
`
`v.
`
`RFCyber Corp.,
`Patent Owner.
`
`Patent No. 9,189,787 to Koh et al.
`
`IPR Case No.: IPR2021-00980
`
`DECLARATION OF GERALD W. SMITH
`
`Samsung Ex. 1003, Page 1 of 128
`Samsung Electronics America, Inc. v. RFCyber Corp.
`IPR2021-00980
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`
`
`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`
`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`Educational Background ...................................................................... 1
`A.
`Professional Experience ....................................................................... 2
`B.
`II. METHODOLOGY; MATERIALS CONSIDERED ...................................... 6
`III. OVERVIEW AND LEGAL STANDARDS .................................................. 8
`Person of Ordinary Skill in the Art ...................................................... 9
`A.
`Anticipation .......................................................................................... 9
`B.
`Obviousness ........................................................................................ 10
`C.
`Claim Construction ............................................................................ 13
`D.
`IV. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 13
`OVERVIEW OF THE ’787 PATENT ......................................................... 15
`V.
`VI. THE PROSECUTION HISTORY OF THE ’787 PATENT AND
`RELATED PATENTS ................................................................................. 20
`Prosecution History of the ’218 Patent .................................... 20
`
`Prosecution History of the ’855 Patent .................................... 24
`Prosecution History of the ’787 Patent .................................... 25
`
`VII. GLOBALPLATFORM CARD SPECIFICATION VERSION 2.1.1 –
`AUTHENTICATION THEREOF AND OVERVIEW ................................ 26
`Overview of GlobalPlatform .............................................................. 28
`A.
`Overview of GlobalPlatform Security Domains ................................ 31
`B.
`Overview of GlobalPlatform Secure Communication Channels ....... 34
`C.
`VIII. CLAIM CONSTRUCTION FOR THE ’787 PATENT ............................... 39
`“Midlet” .............................................................................................. 39
`A.
`“Emulator” .......................................................................................... 40
`B.
`Additional terms ................................................................................. 40
`C.
`PRIOR ART REVIEW ................................................................................. 40
`
`
`
`IX.
`
`ii
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`
`
`A.
`B.
`
`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`Background relating to electronic purses ........................................... 40
`Background relating to smart cards .................................................... 43
`The Smart Card Life Cycle ...................................................... 47
`
`Dua (Ex-1004) .................................................................................... 51
`C.
`Philips (Ex-1012) ............................................................................... 54
`D.
`ANALYSIS ................................................................................................... 56
`GROUND 1: Dua in view of GlobalPlatform further in view of
`A.
`Philips discloses every limitation of claims 1-19 ............................... 56
`The scope and content of the prior art ..................................... 56
`
` Motivation/Rationale for Combining the Prior Art ................. 56
`Challenged Claims ................................................................... 64
`
`XI. DECLARATION IN LIEU OF OATH ...................................................... 111
`
`
`
`X.
`
`iii
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`
`
`Claim 1:
`
`CLAIM LISTING
`
`[Claim 1-PREAMBLE] A portable device for commerce, the portable device
`
`comprising:
`
`[1a] an emulator loaded in a smart card module for storing security values
`
`and updated transaction logs, and
`
`[1b] an e-purse applet to cause the portable device to function as an electronic
`
`purse (e-purse),
`
`[1c] wherein both of the emulator and e-purse applet are already personalized
`
`via a personalization process built on a first security channel so that the emulator is
`
`set to store a set of keys for subsequent data access authentication and the e-purse
`
`applet is configured to conduct a transaction with a network server over a second
`
`security channel;
`
`[1d] a first interface configured to perform field communication (NFC) with
`
`a reader to perform electronic commerce with the e-purse applet against a fund stored
`
`in the emulator;
`
`[1e] a second interface configured to perform mobile commerce with a
`
`payment server via an application against the fund stored in the emulator; and
`
`iv
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`U.S. Patent No. 9,189,787
`[1f] a purse manager midlet being executed in the portable device to act as an
`
`agent to facilitate communications between the e-purse applet and a payment server
`
`to conduct transactions therebetween.
`
`Claim 2:
`
`The portable device as recited in claim 1, further comprising a security module
`
`configured to install and personalize the e-purse applet via either the first interface
`
`or the second interface, wherein the keys are updated when the personalization
`
`process built on the first security channel completes.
`
`Claim 3:
`
`The portable device as recited in claim 1, wherein the e-purse is built on top
`
`of a global platform to be able to access MIFARE data structures with an appropriate
`
`transformed password based on the keys in the emulator, wherein the global platform
`
`is a cross-industry membership organization created to advance standards for smart
`
`card growth.
`
`Claim 4:
`
`The portable device as recited in claim 1, wherein the first interface is based
`
`on a RFID interface that allows the portable device to act as a tag to be read off by
`
`the reader connected to a computing device coupled to the Internet.
`
`v
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`U.S. Patent No. 9,189,787
`Claim 5:
`
`The portable device as recited in claim 4, wherein a web agent on the
`
`computing device is configured to interact with the RFID reader and the network
`
`server, the agent sends commands or receives responses thereto through the RFID
`
`reader to/from the e-purse applet, and on the other hand, the agent composes network
`
`requests and receives responses thereto from the network server.
`
`Claim 6:
`
`[6a] The portable device as recited in claim 1, wherein the first security
`
`channel is an initial security channel between the smart card module and a security
`
`authentication module (SAM) external to the smart card module to install and
`
`personalize the e-purse applet, and
`
`[6b] the second security channel is a security channel on top of the initial
`
`security channel to protect subsequent operations of the smart card module with the
`
`SAM, wherein any subsequent operation is conducted over the security channel via
`
`the e-purse applet.
`
`Claim 7:
`
`The portable device as recited in claim 6, wherein essential data being
`
`personalized include one or more operation keys, default PINs, administration keys
`
`and passwords.
`
`vi
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`Claim 8:
`
`The portable device as recited in claim 1, wherein the smart card module is
`
`part of the portable device.
`
`Claim 9:
`
`The portable device as recited in claim 1, wherein the smart card module is an
`
`external device inserted into the portable device.
`
`Claim 10:
`
`The portable device as recited in claim 1, wherein the purse manager midlet
`
`is configured to access the emulator directly.
`
`Claim 11:
`
`[Claim 11-PREAMBLE] A method for a portable device for commerce, the
`
`method comprising:
`
`[11a] loading a smart card module with an emulator for storing security values
`
`and updated transaction logs, and
`
`[11b] an e-purse applet to cause the portable device to function as an
`
`electronic purse (e-purse);
`
`[11c] personalizing the emulator and the e-purse applet via a personalization
`
`process built on a first security channel so that the emulator is set to store a set of
`
`vii
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`U.S. Patent No. 9,189,787
`keys for subsequent data access authentication and the e-purse applet is configured
`
`to conduct a transaction with a network server over a second security channel;
`
`[11d] performing near field communication (NFC) via a first interface with a
`
`reader to perform electronic commerce with the e-purse applet against a fund stored
`
`in the emulator; and
`
`[11e] performing mobile commerce via a second interface with a payment
`
`server via an application against the fund stored in the emulator,
`
`[11f] wherein the application is executed in the portable device to act as an
`
`agent to facilitate communications between the e-purse applet and a payment server
`
`to conduct transactions therebetween.
`
`Claim 12:
`
`The method as recited in claim 11, wherein a security module in the portable
`
`device is configured to install and personalize the e-purse applet via either the first
`
`interface or the second interface, wherein the keys are updated when the
`
`personalization process built on the first security channel completes.
`
`Claim 13:
`
`The method as recited in claim 11, wherein the e-purse is built on top of a
`
`global platform to be able to access MIFARE data structures with an appropriate
`
`transformed password based on the keys in the emulator, wherein the global platform
`
`viii
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`U.S. Patent No. 9,189,787
`is a cross-industry membership organization created to advance standards for smart
`
`card growth.
`
`Claim 14:
`
`The method as recited in claim 11, wherein the first interface is based on a
`
`RFID interface that allows the portable device to act as a tag to be read off by the
`
`reader connected to a computing device coupled to the Internet.
`
`Claim 15:
`
`The method as recited in claim 14, wherein a web agent on the computing
`
`device is configured to interact with the RFID reader and the network server, the
`
`agent sends commands or receives responses thereto through the RFID reader
`
`to/from the e-purse applet, and on the other hand, the agent composes network
`
`requests and receives responses thereto from the network server.
`
`Claim 16:
`
`[16a] The method as recited in claim 11, wherein said personalizing of the
`
`emulator and the e-purse applet comprises: establishing an initial security channel
`
`between the smart card module and a security authentication module (SAM) external
`
`to the smart card module to install and personalize the e-purse applet in the card
`
`module, and
`
`ix
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`U.S. Patent No. 9,189,787
`[16b] creating a security channel on top of the initial security channel to
`
`protect subsequent operations of the smart card module with the SAM, wherein any
`
`subsequent operation is conducted over the security channel via the e-purse applet.
`
`Claim 17:
`
`The method as recited in claim 16, wherein essential data being personalized
`
`include one or more operation keys, default PINs, administration keys and
`
`passwords.
`
`Claim 18:
`
`The method as recited in claim 11, wherein the smart card module is part of
`
`the portable device.
`
`Claim 19:
`
`The method as recited in claim 11, wherein the smart card module is an
`
`external device inserted into the portable device.
`
`
`
`x
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`I, GERALD SMITH, DECLARE AS FOLLOWS
`
`I.
`1.
`
`INTRODUCTION AND QUALIFICATIONS
`I am over the age of 21 and am competent to make this declaration. I am a
`
`resident of the Commonwealth of Virginia and reside at 10485 Whirlaway Lane,
`
`Ruther Glen, VA 22546.
`
`2.
`
`I have been retained on behalf of Samsung Electronics America, Inc. and
`
`Samsung Electronics Co., Ltd. to provide my opinions regarding the validity of
`
`certain claims of U.S. Patent No. 9,189,787 (“the ’787 patent”). I submit this
`
`declaration based on my personal knowledge and experience, as well as the materials
`
`I reviewed and considered in formulating my opinions.
`
`3.
`
`I am a Subject Matter Expert (SME) specializing in biometrics and smart card
`
`technology and solutions at Identification Technology Partners, Inc. (IDTP). I am
`
`also the founder of Generic Smart Cards LLC. Appendix A to this Declaration is a
`
`true and correct copy of my Curriculum Vitae, which provides further details about
`
`my background and experience.
`
`A.
`Educational Background
`I obtained a Bachelor of Science in Electrical Engineering (cum laude) from
`
`4.
`
`the Rose-Hulman Institute of Technology (Terre Haute, IN) in 1978. I furthered my
`
`education by attending courses for a Masters of Science in Electrical Engineering
`
`from Rutgers University (New Brunswick, NJ) from 1979 to 1983.
`
`
`
`1
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`IPR2021-00980
`U.S. Patent No. 9,189,787
`B.
`Professional Experience
`I have worked extensively with smart cards, terminals, and transaction
`
`5.
`
`solutions since 1983. I have worked in a wide range of technologies relating to smart
`
`cards, including, but not limited to, silicon, operating systems, card applications,
`
`packaging, printing technologies, edge interfaces, terminals, and host system
`
`applications.
`
`6.
`
`For the past 20 years, I have focused on security and identity attributes of
`
`smart cards and smart card enabled solutions. I have served as an International
`
`Standards Organization (ISO) project editor and as a contributor to a number of
`
`major smart card standards, including, and not limited to, ISO/IEC 7816, ISO/IEC
`
`14443, ISO/IEC 24727, FIPS 201, and FIPS 140. I have actively participated in the
`
`Java Card Forum, PC/SC implementations, MULTOS smart card O/S application
`
`development, and Microsoft Windows Smart Card O/S evaluations. In addition, I
`
`have in-depth knowledge and experience with proprietary O/S smart card
`
`implementations, including but not limited to ORGA Micardo, Siemens CardOS,
`
`Schlumberger MultiFlex, Gemplus MPCOS, and G&D StarCOS.
`
`7.
`
` From 1978 to 1983, I was an Officer in the United States Army Signal Corps
`
`attached to the Communications Electronics Command at Fort Monmouth, New
`
`Jersey. The Signal Corps is a division of the U.S. Army that develops, tests, provides,
`
`2
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`U.S. Patent No. 9,189,787
`and manages communications and information systems support for the command
`
`and control of combined armed forces. In the Signal Corps, I actively participated in
`
`the research and development of software intensive terminals and peripherals
`
`encompassing device mechanisms, microprocessor technologies (HW/SW) and
`
`system integration. I was part of a high level research team exploring distributed
`
`processing configurations. I achieved the rank of Captain prior to leaving the U.S.
`
`Army for private industry.
`
`8.
`
`In 1983, I began work as a technologist at Mars Electronics International, a
`
`company directed to unattended payment systems. I was promoted to product line
`
`manager for all of the company’s North American coin mechanisms, the core
`
`product for the business at that time.
`
`9.
`
`From 1989-1990, I was employed at Zenith Data Systems where I assisted in
`
`the development of the initial release of the Microsoft PC/SC interface for smart
`
`card reader technology, which is still used to this day.
`
`10. From 1990-1993, I was employed at VeriFone where I served as the Director
`
`of Engineering in a unit that developed food service and vending industry
`
`applications implemented through computer software and hardware. During this
`
`time at VeriFone, I worked on development of the Valu-CardTM Stored Value card
`
`system to complement the company’s Point of Sales (POS) business.
`
`3
`
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`11. From 1993-1996, I was employed at Schlumberger where I competed for,
`
`obtained, and developed technology business relating to smart card pilot projects for
`
`VISA and smart card applications for MasterCard.
`
`12. From 1996-1999, I served as Director of New Business Development for
`
`ORGA Card Systems Inc., where I was responsible for managing the company’s
`
`Americas region and coordinating with international business units in Germany,
`
`Latin America, and the Far East. In this position, I worked as Project Leader on the
`
`MasterCard Smart Card Access project using the MULTOS platform for secure card
`
`transactions.
`
`13.
`
`In 1999, I joined American Express as a Development Leader for the “Blue
`
`from American Express” Smart Card product development initiative. In that
`
`position, I served as Advanced Card Technology leader on IP Management, chip
`
`card specifications, security models using smart cards, and external standards. I was
`
`promoted to Vice President in 2001. Among other duties at American Express, I
`
`served as Product Manager, Business and Technical Architect of the “Summer
`
`Concerts in Blue” product launch (summer of 2000), served as a Board Member of
`
`the GlobalPlatform governance body from 2000-2002, was a contributing member
`
`to GlobalPlatform Card and Card Management System specifications, was a
`
`JavaCard Forum representative, and a technical representative to ISO/IEC JTC1
`
`4
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`SC17 International Standard body including contact card, contactless card, and test
`
`methods.
`
`14. From 2003-2007, I worked at SHARP Microelectronics of the Americas, a
`
`world leader in LCD, Integrated Circuits, RF, Imaging, and Optoelectronics
`
`technology, where I served as the Senior Smart Card Business Development
`
`Manager / Senior Field Technical Manager. Among other duties, I served as a subject
`
`matter expert in the area of Smart Card technologies working as a development
`
`leader for integration of smart card technology into identity, payment, and
`
`telecommunication solutions.
`
`15. Since 2007, I have been employed with ID Technology Partners as a subject
`
`matter expert for a diverse range of engagements related to smart cards, biometrics
`
`and other high assurance identification verification initiatives and technologies. My
`
`projects have included government and non-government credentialing programs as
`
`well as one-off enterprise solutions.
`
`16.
`
`In 2012, I founded Generic Smart Cards LLC to develop one-off credentialing
`
`solutions for clients with a focus on diagnostic and analysis tools for smart card
`
`issuers, smart card relying parties and cardholders.
`
`17.
`
`I am being compensated at my standard hourly rate and am being reimbursed
`
`for my reasonable expenses. I have not received and do not expect to receive
`
`5
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`additional compensation beyond my hourly rate for my work on this proceeding, and
`
`my compensation does not depend on the contents of this declaration, any other
`
`testimony I may provide, or the outcome of this proceeding.
`
`II. METHODOLOGY; MATERIALS CONSIDERED
`18.
`I have relied upon my education, knowledge and experience with smart cards,
`
`secure smart card transactions and payment systems more generally, as well as the
`
`other materials as discussed in this declaration in forming my opinions.
`
`19. For this work, I have been asked to review the ’787 patent including the
`
`specification and claims, and the ’787 patent’s prosecution history (file history). In
`
`developing my opinions relating to the ’787 patent, I have considered the materials
`
`cited herein, including those itemized in the Exhibit Table below.
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 9,189,787 (“’787 patent”)
`
`1002
`
`1004
`
`1006
`
`1007
`
`1008
`
`1009
`
`File History of U.S. Patent No. 8,118,218 (“’218 FH”)
`
`U.S. Patent Application Publication No. 2006/0165060 (“Dua”)
`
`GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform” or “GP”)
`
`File History of U.S. Patent No. 8,448,855 (“’855 FH”)
`
`Smart Card Handbook Third Edition, by Wolfgang Rankl and
`Wolfgang Effing (2003)
`
`Common Electronic Purse Specifications, Technical Specification
`Version 2.3 (March 2001)
`
`6
`
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`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`SmartMX, P5CD009 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CD036 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.0 – 2004 March 26)
`
`SmartMX, P5CT072 Secure Dual Interface PKI Smart Card
`Controller, Short Form Specification (Rev. 1.3 – 4 October 2004)
`
`Mifare proX, P8RF6016 Secure Dual Interface Smart Card IC,
`Short Form Specification (Revision 1.0 – November 2003)
`
`ETSI TS 102 226 V6.12.0 (2005-09), “Smart cards; Remote APDU
`structure for UICC based applications (Release 6)”
`
`Wenninger et al., “The Electronic Purse,” in Current Issues in
`Economics and Finance, Volume 1, Number 1, Federal Reserve
`Bank of New York (April 1995).
`
`Excerpt from Cambridge Business English Dictionary
`
`U.S. Patent No. 6,983,882
`
`RFID Handbook – Radio-Frequency Identification Fundamentals
`and Applications, Klaus Finkenzeller, John Wiley & Son, Ltd.
`(1999)
`
`Mifare Standard Card IC MF1 IC S50 Functional Specification;
`Product Specification Revision 5.0, Philips Semiconductors
`(November 1999)
`
`ISO/IEC 7816-4:1995 Interindustry commands for interchange
`(May 1995)
`
`U.S. Government General Services Administration (GSA) Smart
`Card Handbook (FEB 2004)
`
`“Here Comes The Wallet Phone,” IEEE Spectrum, November 2005
`
`File History of U.S. Patent No. 9,189,787 (“’787 FH”)
`
`7
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`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`1031
`
`1032
`
`1033
`
`1038
`
`1039
`
`RFC 3261, SIP: Session Initiation Protocol, The Internet Society
`(June 2002).
`
`Hargrave’s Communications Dictionary, IEEE Press, p. 24
`(defining “applet”) (excerpted)
`
`U.S. Patent Application Publication No. 2004/0177045
`
`European Patent No. 1,369,842
`
`PCT Publication No. WO02/241236
`
`U.S. Patent No. 6,792,536
`
`U.S. Patent Application Publication No. 2006/0005050
`
`U.S. Patent No. 7,748,636
`
`U.S. Patent No. 8,498,898
`
`U.S. Patent Application Publication No. 2006/0196931
`
`
`III. OVERVIEW AND LEGAL STANDARDS
`20.
`In formulating my opinions, I have been instructed to apply certain legal
`
`standards. I am not a lawyer. I do not expect to offer any testimony regarding what
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`the law is. Instead, the following sections summarize the law as I have been
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`instructed to apply it in formulating and rendering my opinions found later in this
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`declaration. I understand that, in an inter partes review proceeding, patent claims
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`may be deemed unpatentable if it is shown that they were anticipated or rendered
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`obvious in view of the prior art. I understand that prior art in an inter partes review
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`is limited to patents or printed publications that predate the priority date of the patent
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`at issue. I understand that questions of claim clarity (definiteness) and enablement
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`cannot be considered as a ground for considering the patentability of a claim in these
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`proceedings.
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`A.
`Person of Ordinary Skill in the Art
`I understand that the ’787 patent, the record of proceedings at the Patent Office
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`21.
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`(which I understand is called the “File History” or “Prosecution History”), and the
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`teachings of the prior art are evaluated from the perspective of a person of ordinary
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`skill in the art (“POSITA”). I understand that the factors considered in determining
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`the ordinary level of skill in the art include: (i) the levels of education and experience
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`of persons working in the field; (ii) the types of problems encountered in the field;
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`and (iii) the sophistication of the technology. I may also consider, if available, the
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`education level of the inventor, prior art solutions to the problems encountered in the
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`art, the rapidity with which innovations are made in the relevant art.
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`22.
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`I understand that a person of ordinary skill in the art is not a specific real
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`individual, but rather a hypothetical individual having the qualities reflected by the
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`factors above. This hypothetical person has knowledge of all prior art in the relevant
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`field as if it were arranged on a workshop wall and takes from each reference what
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`it would teach to a person having the skills of a POSITA.
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`B. Anticipation
`23.
`It is my understanding that, under § 102, a patent claim is invalid as
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`“anticipated” if each and every feature of the claim is found, expressly or inherently,
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`in a single item of prior art, such as in a single prior art patent or printed publication.
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`In determining whether the single item of prior art anticipates the claim, one
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`considers not only what is expressly/implicitly disclosed in the particular item of
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`prior art, but also what is inherently present or disclosed in that prior art or what
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`inherently results from its practice.
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`C. Obviousness
`I understand that a claim may be invalid under § 103(a) if the subject matter
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`24.
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`described by the claim as a whole would have been “obvious” to a hypothetical
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`POSITA in view of a single prior art reference or in view of a combination of
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`references at the time the claimed invention was made. Therefore, I understand that
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`obviousness is determined from the perspective of a hypothetical POSITA. I further
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`understand that a hypothetical POSITA is assumed to know and to have all relevant
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`prior art in the field of endeavor covered by the patent in suit and all analogous prior
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`art. I understand that obviousness in an inter partes review proceeding is evaluated
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`using a preponderance of the evidence standard, which means that the claims must
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`be more likely obvious than nonobvious.
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`25.
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`I also understand that an analysis of whether a claimed invention would have
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`been obvious should be considered in light of the scope and content of the prior art,
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`the differences (if any) between the prior art and the claimed invention, and the level
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`of ordinary skill in the pertinent art involved. I understand as well that a prior art
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`reference should be viewed as a whole. I understand that in considering whether an
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`invention for a claimed combination would have been obvious, I may assess whether
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`there are apparent reasons to combine known elements in the prior art in the manner
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`claimed in view of interrelated teachings of multiple prior art references, the effects
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`of demands known to the design community or present in the marketplace, and/or
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`the background knowledge possessed by a POSITA. I also understand that other
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`principles may be relied on in evaluating whether a claimed invention would have
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`been obvious, and that these principles include the following:
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` A combination of familiar elements according to known methods is likely
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`to be obvious when it does no more than yield predictable results;
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` When a device or technology is available in one field of endeavor, design
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`incentives and other market forces can prompt variations of it, either in the
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`same field or in a different one, so that if a POSITA can implement a
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`predictable variation, the variation is likely obvious;
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` If a technique has been used to improve one device, and a POSITA would
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`have recognized that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is beyond his or
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
`her skill;
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` An explicit or implicit teaching, suggestion, or motivation to combine two
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`prior art references to form the claimed combination may demonstrate
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`obviousness, but proof of obviousness does not depend on or require
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`showing a teaching, suggestion, or motivation to combine;
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` Market demand, rather than scientific literature, can drive design trends and
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`may show obviousness;
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` In determining whether the subject matter of a patent claim would have been
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`obvious, neither the particular motivation nor the avowed purpose of the
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`named inventor controls;
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` One of the ways in which a patent’s subject can be proved obvious is by
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`noting that there existed at the time of invention a known problem for which
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`there was an obvious solution encompassed by the patent’s claims;
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` Any need or problem known in the field of endeavor at the time of invention
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`and addressed by the patent can provide a reason for combining the elements
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`in the manner claimed;
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` “Common sense” teaches that familiar items may have obvious uses beyond
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`their primary purposes, and in many cases a POSITA will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle;
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`Declaration of Gerald W. Smith
`IPR2021-00980
`U.S. Patent No. 9,189,787
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` A POSITA is also a person of ordinary creativity, and is not an automaton;
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` A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there is a
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`design need or market pressure to solve a problem and there are a finite
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`number of identified, predictable solutions such that a POSITA would have
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`had good reason to pursue the known options within his or her technical
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`grasp; and
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` One should not use hindsight in evaluating whether a claimed invention
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`would have been obvious.
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`D. Claim Construction
`I understand that the claim terms in this IPR will be construed according to
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`26.
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`their ordinary and customary meaning as understood in light of the claim language,
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`the patent’s descr