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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CRADLEPOINT, INC., DELL INC., HONEYWELL INTERNATIONAL, INC.,
`SIERRA WIRELESS, INC., TCL COMMUNICATION TECHNOLOGY
`HOLDINGS LIMITED, TCT MOBILE INTERNATIONAL LIMITED, TCT
`MOBILE, INC., TCT MOBILE (US) INC., TCT MOBILE (US)
`HOLDINGS INC., THALES DIS AIS DEUTSCHLAND GMBH,
`ZTE CORPORATION, AND ZTE (USA) INC.
`Petitioners,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`
`Case No. IPR2021-01141
`
`U.S. Patent No. 7,215,653
`
`
`
`DECLARATION OF JAMES PROCTOR, M.S., IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,215,653
`
`
`
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`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 1 of 163
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`I.
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`TABLE OF CONTENTS
`INTRODUCTION AND ASSIGNMENT ..................................................... 1
`A.
`Compensation ...................................................................................... 1
`B. Materials Reviewed ............................................................................. 2
`QUALIFICATIONS AND EXPERIENCE ................................................... 3
`II.
`III. APPLIED LEGAL PRINCIPLES .................................................................. 9
`A. Disclosure Supporting a Claim of Priority ......................................... 10
`B.
`Anticipation ........................................................................................ 10
`C.
`Obviousness ....................................................................................... 11
`D.
`Claim Construction Principles ........................................................... 16
`IV. PERSON OF ORDINARY SKILL IN THE ART ....................................... 17
`V. MATERIALS CONSIDERED ..................................................................... 18
`VI. STATE OF THE ART ................................................................................. 19
`A.
`Early Generations of Wireless Technologies ..................................... 25
`B.
`3GPP2, CDMA2000, and Third Generation (“3G”) .......................... 27
`VII. BACKGROUND OF THE ’653 PATENT .................................................. 37
`A.
`Summary of the ’653 Patent .............................................................. 37
`1.
`Background and Admitted Prior Art to the ’653 Patent .......... 40
`2.
`Alleged Invention of the ’653 Patent ....................................... 41
`
`
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`B.
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`Korean Application Nos. 10-2001-0006839, 10-2001-0041363,
`and 10-2001-0057600 ........................................................................ 48
`File History of the ’653 Patent ........................................................... 52
`C.
`Claim Construction ............................................................................ 60
`D.
`VIII. OVERVIEW OF CONCLUSIONS ............................................................. 63
`IX. ANALYSIS OF BASES OF INVALIDITY ................................................ 64
`A. Applicable Priority Date .................................................................... 64
`B.
`Grounds of Invalidity Based on Samsung and C.S0002-0 and
`Samsung, Airvana, and C.S0002-0 .................................................... 65
`1.
`Overview of Prior Art References ........................................... 65
`2.
`Specific Grounds of Invalidity ................................................ 89
`Grounds of Invalidity Based on Samsung, Chung, and C.S0002-
`0 ........................................................................................................ 121
`1.
`Overview of Prior Art References ......................................... 121
`2.
`Specific Grounds of Invalidity .............................................. 132
`X. ADDITIONAL REMARKS ....................................................................... 143
`
`
`
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`C.
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`TABLE OF APPENDICES
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`
`Description
`
`Document
`Appendix A Curriculum Vitae
`
`Exhibit
`1001
`
`1002
`
`1003
`
`1004
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`1005
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`1006
`
`1007
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`1008
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`
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`TABLE OF EXHIBITS
`
`Description
`U.S. Patent No. 7,215,653 to Ki Jun Kim et al. (“the ’653 patent”)
`
`Declaration of James Proctor, M.S., in Support of Petition for Inter
`Partes Review of U.S. Patent No. 7,215,653 (“Proctor Dec.”)
`
`3rd Generation Partnership Project 2 (“3GPP2”), Technical
`Specification Group C (“TSG-C”), Working Group 5 (“WG5”);
`Contribution C5020010507-015 “Effective Reverse Link Data Rate
`Control for 1xEV-DV —r2,” dated May 7, 2001 (“Samsung”)
`
`3rd Generation Partnership Project 2 (“3GPP2”), Technical
`Specification Group C (“TSG-C”), Working Group 5 (“WG5”);
`Contribution C5020010212-011 “Per-User Reverse Rate Control for
`Shared Packet Data Channel in 1xEV-DV,” dated February 12, 2001
`(“Airvana”)
`
`U.S. Patent No. 6,741,862 to Sae-Young Chung et al. (“Chung”)
`
`3rd Generation Partnership Project 2 (“3GPP2”), Specification
`C.S0002-0 v1.0 “Physical Layer Standard for cdma2000 Spread
`Spectrum Systems” (July 1999), published October 1999 (“C.S0002-
`0”)
`
`File History of U.S. Patent No. 7,215,653
`
`3rd Generation Partnership Project 2 (“3GPP2”), Technical
`Specification Group C (“TSG-C”), Working Group 5 (“WG5”);
`Contribution C5020010709-009 “LGE’s Reverse Link Proposal,”
`dated July 9, 2001
`
`
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`iii
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`Exhibit
`1009
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`Description
`3rd Generation Partnership Project 2 (“3GPP2”), Technical
`Specification Group C (“TSG-C”), Working Group 5 (“WG5”); LGE
`Contribution C50-20010212-025 “Reverse Link Variable Data Rates
`with Dedicated RA (Reverse Activity) Bits
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
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`1015
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`1016
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`Declaration of Dr. Raziq Yaqub in Support of Petition for Inter Partes
`Review of U.S. Patent No. 7,215,653 (“Yaqub Dec.”)
`
`Certified English Translation of KR Priority Application No. 20001-
`0006839
`
`Certification for English Translation of KR Priority Application No.
`2001-0006839
`
`Certified English Translation of KR Priority Application No. 2001-
`0041363
`
`Certification for English Translation of KR Priority Application No.
`2001-0041363
`
`Certified English Translation of KR Priority Application No. 2001-
`0057600
`
`Certification for English Translation of KR Priority Application No.
`2001-0057600
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`iv
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`I, James Proctor, hereby declare as follows:
`
`I.
`INTRODUCTION AND ASSIGNMENT
`I have been retained on behalf of Dell Inc., Cradlepoint, Inc.,
`
`1.
`
`Honeywell International, Inc., Sierra Wireless, Inc., TCL Communication
`
`Technology Holdings Limited, TCT Mobile International Limited, TCT Mobile,
`
`Inc., TCT Mobile (US) Inc., TCT Mobile (US) Holdings Inc., Thales DIS AIS
`
`Deutschland Gmbh, ZTE Corporation, and ZTE (USA) Inc. (collectively,
`
`“Petitioners”) to offer technical opinions related to U.S. Patent No. 7,215,653 (“the
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`’653 patent”) (Exhibit 1001). I understand that Petitioners are requesting that the
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`Patent Trial and Appeal Board (“PTAB” or “Board”) institute an inter partes review
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`(“IPR”) proceeding of the ’653 patent.
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`2.
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`I have been asked to provide my independent analysis of the ’653 patent
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`in light of the prior art patents and publications cited below.
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`A. Compensation
`3.
`I am not, and never have been, an employee of any of the Petitioners. I
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`received no compensation for this Declaration beyond my normal hourly
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`compensation of $450 per hour based on my time actually spent analyzing the ’653
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`patent, the prior art patents and publications cited below, and issues related thereto,
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`and I will not receive any added compensation based on the outcome of any IPR or
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`other proceeding involving the ’653 patent.
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`
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`1
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`B. Materials Reviewed
`4.
`I am familiar with the content of U.S. Patent No. 7,215,653. In
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`addition, I have considered the various documents referenced in my declaration, as
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`well as additional background materials. For example, I have considered:
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`• U.S. Patent No. 7,215,653 in Exhibit 1001;
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`• the File History for the ’653 patent in Exhibit 1007;
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`• 3rd Generation Partnership Project 2 (“3GPP2”), Technical
`
`Specification Group C (“TSG-C”), Working Group 5 (“WG5”);
`
`Contribution C5020010507-015 “Effective Reverse Link Data Rate
`
`Control for 1xEV-DV‒r2,” dated May 7, 2001 (“Samsung”) in
`
`Exhibit 1003;
`
`• 3GPP2, Technical Specification Group C (“TSG-C”), Working
`
`Group 5 (“WG5”); Contribution C5020010212-011 “Per-User
`
`Reverse Rate Control for Shared Packet Data Channel in 1xEV-DV,”
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`dated February 12, 2001 (“Airvana”) in Exhibit 1004;
`
`• U.S. Patent No. 6,741,862 to Sae-Young Chung et al. (“Chung”) in
`
`Exhibit 1005;
`
`• 3GPP2, Specification C.S0002-0 v1.0 “Physical Layer Standard for
`
`cdma2000 Spread Spectrum Systems” (July 1999), published
`
`October 1999 (“C.S0002-0”) in Exhibit 1006;
`
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`2
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`• Certified English Translation of KR Priority Application No. 20001-
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`0006839 in Exhibit 1011;
`
`• Certification for English Translation of KR Priority Application No.
`
`2001-0006839 in Exhibit 1012;
`
`• Certified English Translation of KR Priority Application No. 2001-
`
`0041363 in Exhibit 1013;
`
`• Certification for English Translation of KR Priority Application No.
`
`2001-0041363 in Exhibit 1014;
`
`• Certified English Translation of KR Priority Application No. 2001-
`
`0057600 in Exhibit 1015;
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`• Certification for English Translation of KR Priority Application No.
`
`2001-0057600 in Exhibit 1016;
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`• Sisvel’s proposed constructions for the ’653 patent in district court
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`litigation(s); and
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`• Additional background materials cited in my declaration below.
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`II. QUALIFICATIONS AND EXPERIENCE
`I am over the age of 18 and am competent to write this Declaration. I
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`5.
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`have personal knowledge, or have developed knowledge of these technologies based
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`upon education, training, or experience, of the matters set forth herein.
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`
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`3
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`6.
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`My CV, which includes my complete education and work experience,
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`is included as Appendix A hereto. I describe several relevant aspects of my
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`experience below.
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`7.
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`I have almost 30 years of experience in electrical engineering and
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`computer science and in fixed and mobile communications networks, much of it
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`involving cellular systems specifically. I attended the University of Florida from
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`1987 to 1991, during which I earned a Bachelor of Science (B.S.) in electrical
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`engineering, and Georgia Institute of Technology from 1991 to 1992, during which
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`I earned a Masters of Science (M.S.) in electrical engineering. My focus during my
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`time at Georgia Tech was in digital signal processing, communications, and optics.
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`I also worked at the Georgia Tech’s Research Institute, which was a prestigious
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`nonprofit applied research institute within Georgia Tech.
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`8.
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`Between 1992 and 1995, I worked for Harris Corporation’s
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`Government Communications System Division (“GCSD”). While at Harris, I
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`specifically worked as a senior engineer in the Modems Group of the GCSD, where
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`my work focused on signal processing. The group I was working in at Harris
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`pioneered modems for wireless internet, also called WiFi.
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`9.
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`Beginning in 1995, my focus shifted to cellular technologies. For
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`instance, between 1995 and 1998, I worked for Spectrian. My work at Spectrian
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`involved advanced technology research and development and systems analysis
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`4
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`related to cellular systems. Sectrian’s primary business was building components
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`for cellular base stations, including RF power amplifiers. Part of my duties involved
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`working with key cellular companies at the time, including Nortel and Qualcomm.
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`10. Then, between 1998 and 2002, I worked as a Director at Tantivy
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`Communications. Tantivy focused its business on broadband (high speed) cellular
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`systems. My responsibilities at Tantivy included representing the company at
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`conferences and in industry standardization groups for 3G technologies.
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`11. Specifically, I represented Tantivy in the 3GPP2 standardization
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`organization—attending meetings, actively participating, and submitting more than
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`fifteen contributions, proposals, and/or papers to 3GPP2 working groups as part of
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`my work for Tantivy.
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`12. Notably, at this time, I participated in the TSG-C (technical
`
`specification group C) WG5 (working group 5) of 3GPP2. I also participated in
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`ANSI T1P1 (American National Standards Institute T1P1 subcommittee, which was
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`a technical subcommittee of the standards committee of T1 telecommunications) on
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`behalf of Tantivy.
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`13. My work at Tantivy further involved cellular system architecture
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`design, including design of power control, random access, and channel allocation
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`schemes.
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`14. My work at Tantivy resulted in over 150 patents related to 3G
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`technologies that name me as an inventor.
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`15. Between 2002 to 2005, I worked as the President and CEO of WiDeFi,
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`leading this company from formation until it recruited an expansion-stage CEO.
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`WiDeFi focused on WLAN (wireless local area network) products, including WiFi
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`repeaters that doubled the range and throughput of WLAN products. WiDeFi’s
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`primary product was placed at the edge of signal coverage in a home network and
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`filled in areas of a home network with little or no signal.
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`16. Then, from 2005 to 2007, I continued on at WiDeFi as the Executive
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`Vice President and Chief Technical Officer. My role shifted to aligning WiDeFi’s
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`technology and roadmaps to customer and marketing needs, as well as focusing on
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`the development of WiDeFi’s IP profile.
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`17. After WiDeFi was acquired by Qualcomm, I joined Qualcomm as a
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`Consulting Principal Engineer from 2007-2009. Qualcomm, as mentioned above,
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`had been a cellular leader in the 1990s and continued to be one during my tenure
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`there (and beyond).
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` My own work at Qualcomm focused on cellular
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`communications.
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`18. At Qualcomm, I led the technical and business development for a 3G
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`wireless repeater based on the WiDeFi technology. In brief, a wireless repeater is a
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`device that is used to extend a signal by receiving an existing signal, amplifying it,
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`
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`and transmitting the amplified signal to cover additional area or to increase signal
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`strength in a given area. While repeaters were known, this technology differed
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`significantly as it utilized novel digital signal processing to “cancel” transmitted
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`repeater signals feedback into the received signal, providing a significantly higher
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`performance. I defined the initial architecture and approach for this cellular wireless
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`repeater product.
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`19.
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`I was a named inventor on more than 45 issued U.S. patents, and
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`additional international or pending patent applications resulting from my work while
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`at Qualcomm, all of them relating in some way to cellular communications.
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`20. From 2009-2010, I was the VP of the Telecommunications Business
`
`Unit at Audigence Incorporated. Audigence’s products included software to improve
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`speech intelligibility of digital hearing devices, although my work focused on
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`telecommunications applications of such products, such as integration into the IMS
`
`system used for VoLTE within the 3GPP Architecture as well as the legacy circuit
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`switch architecture.
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`21. From 2010 to present, I have been the managing director of Genesis
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`Medical Devices, of which I was a co-founder. My work with Genesis has resulted
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`in multiple patents and licensed technologies associated with orthopedic related
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`devices.
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`22. From 2011 to present I have also simultaneously been the managing
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`director of Proxicom wireless, of which I was also a co-founder. Proxicom develops
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`wireless communications technology allowing for the discovery of information
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`relating to objects in proximity to a mobile device by utilizing a centralized trusted
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`third party. My work with Proxicom has resulted in 12+ pending or issued U.S.
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`patents.
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`23. Meanwhile, in 2009, I also formed Proctor Consulting LLC and have
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`served as its Managing Director from that time to the present. My work with Proctor
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`Consulting includes providing early stage market and technology strategy and
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`consulting for wireless communications companies. I have also served as a technical
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`and market consultant for companies, including Fastback Networks, Audigence, and
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`Peregrine Semiconductor. Through Proctor Consulting, I also provide expert
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`witness consulting in cases related to cellular and other wireless technologies,
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`including 2G, 3G/WCDMA, and 4G/LTE, and associated networks.
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`24. Throughout my time in the industry, I have led the development of
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`multiple wireless products. My work has so far resulted in over 310 United States
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`patents. I have particular expertise in cellular technologies and product
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`development, including 3G and 4G/LTE technologies.
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`25. A number of the patents for which I am a named inventor have been
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`declared as essential to WCDMA (3G), LTE (4G), and/or 5G technologies.
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`
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`26. Additionally, a number of the patents for which I am an inventor relate
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`to the subject matter of the ’653 patent, a selection of which includes:
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`U.S. Pat. No. Title
`6,456,835 Arbitration method for high power transmissions
`in a code division multiple access system
`Power control protocol for highly variable data
`rate reverse link of a wireless communication
`system
`Access probe acknowledgment including collision
`detection to avoid oversetting initial power level
`Maximizing data rate by adjusting codes and code
`rates in CDMA system
`Power control protocol for highly variable data
`rate reverse link of a wireless communication
`system
`Coded reverse link messages for closed-loop
`power control of forward link control messages
`System and method for maintaining wireless
`channels over a reverse link of a CDMA wireless
`communication system
`III. APPLIED LEGAL PRINCIPLES
`In forming my analysis and the conclusions expressed in this
`
`Priority Date
`1/19/1999
`
`9/21/1998
`
`2/23/2000
`
`3/5/1999
`
`9/21/1998
`
`5/4/2001
`
`6/1/1998
`
`6,956,840
`
`6,545,994
`
`6,973,140
`
`7,184,417
`
`7,218,623
`
`7,746,830
`
`27.
`
`Declaration, I have applied the legal principles described in the following
`
`paragraphs, which were provided to me by Counsel for Petitioners.1
`
`
`1 I understand that the patent laws were amended by the America Invents Act
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`(AIA), but that the earlier statutory requirements still apply to pre-AIA patents.
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`I have been informed that the ’653 patent is a pre-AIA patent, so the pre-AIA
`
`
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`A. Disclosure Supporting a Claim of Priority
`28.
`I understand that claims are entitled to the benefit of the priority date of
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`a foreign application only if the foreign application contains a written description of
`
`the invention, which in turn requires that the disclosure of the foreign application
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`reasonably conveys to a person of ordinary skill in the art that the inventor had
`
`possession of the claimed subject matter as of the date of the foreign application. I
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`understand that the disclosure must show that the inventor had possession of all the
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`claimed limitations.
`
`B. Anticipation
`29.
`I understand that patents or printed publications that qualify as prior art
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`can be used to invalidate a patent claim as anticipated.
`
`30.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation (or obviousness, as discussed
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`below) of a patent claim requires a comparison of the properly construed claim
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`language to the prior art on a limitation-by-limitation basis.
`
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`requirements control. Unless otherwise stated, my understanding of the law
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`about patent invalidity as set forth in this Declaration relates to the pre-AIA
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`requirements.
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`31.
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`I understand that a prior art reference “anticipates” a claim, and thus
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`renders the claim invalid, if all limitations of the claim are disclosed in that prior art
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`reference, either explicitly or inherently (i.e., they are necessarily present).
`
`32.
`
`I understand that anticipation in an IPR must be proven by a
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`preponderance of the evidence.
`
`C. Obviousness
`33.
`I understand that even if a patent is not anticipated, it is still invalid if
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`the differences between the claimed subject matter and the prior art are such that the
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`subject matter as a whole would have been obvious to a person of ordinary skill in
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`the art (sometimes referred to as a “POSITA”) at the time the invention was made.
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`34.
`
`I understand that a POSITA at the time of the claimed invention
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`provides a reference point from which the prior art and claimed invention should be
`
`viewed. This reference point is applied instead of someone using his or her own
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`insight or hindsight in deciding whether a claim is obvious.
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`35.
`
`I also understand that a determination of whether a claim is obvious
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`includes the consideration of various factors such as: (1) the scope and content of
`
`the prior art, (2) the differences between the prior art and the claim, (3) the level of
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`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, long-felt but unresolved needs, failure of others, and so
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`forth.
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`36.
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`I understand that an obviousness evaluation can be based on a
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`combination of multiple prior art references. I further understand that a first prior
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`art reference can incorporate by reference one or more other prior art references by
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`particularly identifying the other prior art reference or references and indicating the
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`material that is incorporated by the first prior art reference.
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`37.
`
`I understand further that prior art references themselves may provide a
`
`suggestion, motivation, or reason to combine. At other times, the linkage between
`
`two or more prior art references, or the reasons to combine them, can be simple
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`common sense. I further understand that the obviousness analysis recognizes that
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`market demand, rather than scientific literature, often drives innovation, and that a
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`motivation to combine references may be supplied by the direction of the
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`marketplace.
`
`38.
`
`I also understand that practical and common-sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
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`ordinary skill in the art seeking to overcome a problem through invention will often
`
`be able to fit together the teachings of multiple references or publications. I
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`understand that the obviousness analysis therefore considers the inferences and
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`creative steps that a person of ordinary skill in the art would employ under the
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`circumstances.
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`
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`12
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`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 17 of 163
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`39.
`
`I understand that a particular combination of references may be obvious
`
`to combine based on various factors, and that the motivation to combine may be
`
`based on the teachings of references themselves.
`
`40.
`
`I understand that a particular combination may be shown to be obvious
`
`to combine merely by showing that it was obvious to try the combination. For
`
`example, when there is a design need or market pressure to solve a problem and there
`
`are a finite number of identified, predictable solutions, a person of ordinary skill in
`
`the art has good reason to pursue the known options within his or her technical grasp
`
`because the result is likely the product not of innovation but of ordinary skill and
`
`common sense.
`
`41. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. If a person
`
`of ordinary skill in the art can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`42.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art, not
`
`just the patentee. Accordingly, I understand that any need or problem known to those
`
`of ordinary skill in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.
`
`
`
`13
`
`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 18 of 163
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`43.
`
`I understand that a claim can be obvious in light of a single reference
`
`or a combination of references, even if some elements of the claim that are not found
`
`explicitly or inherently in the reference(s) but can be supplied by the knowledge or
`
`common sense of one of ordinary skill in the art.
`
`44.
`
`I further understand that a claim can be found obvious if it unites old
`
`elements with no change to their respective functions or alters prior art by mere
`
`substitution of one element for another known in the field, with that combination
`
`yielding predictable results. While it may be helpful to identify a reason for this
`
`combination, there is no rigid requirement for a teaching, suggestion, or motivation
`
`to combine. When a product is available, design incentives and other market forces
`
`can prompt variations of it, either in the same field or different one. If a person
`
`having ordinary skill in the relevant art can implement a predictable variation,
`
`obviousness likely bars patentability. Similarly, if a technique has been used to
`
`improve one device, and a person having ordinary skill in the art would have
`
`recognized that the technique would improve similar devices in the same way, use
`
`of the technique is obvious.
`
`45.
`
`I also understand that the following rationales may support a finding of
`
`obviousness:
`
`• Combining prior art elements according to known methods to yield
`predictable results;
`
`
`
`14
`
`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 19 of 163
`
`
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`
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`• Simple substitution of one known element for another to obtain
`predictable results;
`
`• Use of known technique to improve a similar method (or device or
`product) in the same way;
`
`• Applying a known technique to a known method (or device or product)
`ready for improvement to yield predictable results;
`
`• “Obvious to try” – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`
`• Known work in one field of endeavor may prompt variations of it for
`use in either the same field or a different one based on design incentives
`or other market forces if the variations are predictable to one of ordinary
`skill in the art; and
`
`• Some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed invention.
`I understand that secondary indicia of non-obviousness may include
`
`46.
`
`(1) a long felt, but unmet, need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent;
`
`(3) unexpected results achieved by the invention; (4) praise of the invention by
`
`others skilled in the art; (5) taking of licenses under the patent by others;
`
`(6) deliberate copying of the invention; (7) failure of others to find a solution to the
`
`long felt need; and (8) skepticism by experts. I understand that evidence of
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`secondary indicia of non-obviousness, if available, should be considered as part of
`
`the obviousness analysis.
`
`
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`15
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`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 20 of 163
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`47.
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`I also understand that there must be a relationship between any such
`
`secondary considerations and
`
`the
`
`invention.
`
` I further understand
`
`that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`48. Overall, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art—i.e., someone having the
`
`understanding and knowledge reflected in the prior art and motivated by the general
`
`problem facing the inventor—would have been led to combine the elements
`
`described in the claims. Under this analysis, the prior art references themselves, or
`
`any need or problem known in the field of endeavor at the time of the invention, can
`
`provide a reason for combining the elements of multiple prior art references in the
`
`claimed manner.
`
`49. Additionally, it is my understanding that obviousness in an IPR
`
`proceeding must be proven by a preponderance of the evidence.
`
`D. Claim Construction Principles
`50.
`I understand that terms appearing in the patent claims are to be
`
`interpreted according to their “ordinary and customary meaning” in an IPR
`
`proceeding. In determining the ordinary and customary meaning, the words of a
`
`claim are first given their plain meaning as they would have been understood by a
`
`person of ordinary skill in the art at the time of the alleged invention, in light of the
`
`
`
`16
`
`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 21 of 163
`
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`
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`specification and file history. I understand that treatises and dictionaries may be
`
`consulted, albeit under limited circumstances, to determine the meaning attributed
`
`by a person of ordinary skill in the art to a claim term at the time of the alleged
`
`invention. I have followed this approach in my analysis and have applied the
`
`ordinary and customary meaning of those terms throughout my analysis in this
`
`declaration.
`
`51.
`
`I further understand that terms that recite a means or structure for
`
`performing a function are presumed to be construed according to 35 U.S.C. § 112 ¶
`
`6. For such terms, I understand that the claims are interpreted as being limited to the
`
`specific structure(s) disclosed in the patent as performing the recited function(s).
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`I have been informed that a person of ordinary skill in the art is a
`
`52.
`
`hypothetical person who is presumed to have the skill and experience of an ordinary
`
`worker in the field at the time of the alleged invention.
`
`53. Based on my knowledge and experience in the field and my review of
`
`the ’653 patent and file history, a person of ordinary skill in the art at the time of the
`
`
`
`17
`
`Ex. 1002 - Sierra Wireless, Inc.
`Sierra Wireless, Inc., et al. v. Sisvel S.P.A., IPR2021-01141
`Page 22 of 163
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`alleged invention (September 2001) 2 would have had a bachelor’s degree in
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`electrical engineering or a similar discipline, with at least three years of relevant
`
`industry or research experience. The relevant experience could include designing or
`
`implementing wireless radio systems for data transmission and retransmission. A
`
`person of ordinary skill would also have been
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