Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MICROCHIP TECHNOLOGY INC.,
`Petitioner,
`
`v.
`
`HD SILICON SOLUTIONS LLC
`Patent Owner
`
`
`
`Case No. IPR2021-01420
`Case No. IPR2021-01421
`U.S. Patent No. 7,260,731
`Issue Date: August 21, 2007
`
`Title: SAVING POWER WHEN IN OR TRANSITIONING TO
`A STATIC MODE OF A PROCESSOR
`
`
`
`DECLARATION OF DONALD ALPERT, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,260,731
`
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 1 of 343
`
`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS ............................................... 1
`
`A.
`
`B.
`
`Introduction ........................................................................................... 1
`
`Qualifications and Experience .............................................................. 2
`
`C. Materials Considered ............................................................................. 5
`
`II.
`
`LEGAL PRINCIPLES ...................................................................................10
`
`A.
`
`B.
`
`Prior Art ...............................................................................................10
`
`Claim Construction..............................................................................11
`
`C. Anticipation .........................................................................................14
`
`D. Obviousness .........................................................................................15
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ...........................................21
`
`IV. TECHNOLOGY BACKGROUND ...............................................................22
`
`A.
`
`Power and Energy Consumption of Computer Systems .....................24
`
`1.
`
`2.
`
`3.
`
`4.
`
`CMOS and Power .....................................................................24
`
`Slowing the Clock .....................................................................26
`
`Stopping the Clock ....................................................................27
`
`Dynamic Voltage-Frequency Scaling (DVFS) .........................28
`
`B.
`
`Registers and Static Random Access Memory (SRAM) ....................31
`
`C. Voltage Regulation ..............................................................................36
`
`V.
`
`THE ’731 PATENT .......................................................................................49
`
`A. Overview of the ’731 patent ................................................................49
`
`
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 2 of 343
`
`

`

`B.
`
`C.
`
`D.
`
`Prosecution History .............................................................................59
`
`Rebuttal of Applicants’ Remarks During Prosecution ........................68
`
`The Challenged Claims .......................................................................71
`
`VI. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ............80
`
`A.
`
`Brief Summary of Prior Art ................................................................81
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`NEC-Databook (Ex.1005) .........................................................83
`
`Burd (Ex.1006) ..........................................................................90
`
`Nguyen (Ex.1007) .....................................................................93
`
`TI-TPS5210-Datasheet (Ex. TI-TPS5210-Datasheet) ..............96
`
`Kikinis (Ex.1009) ....................................................................101
`
`Helms (Ex.1010) .....................................................................104
`
`7. Maxim-165X-Datasheet (Ex.1011) ........................................107
`
`8. MAX1711-Kit (Ex.1012) ........................................................110
`
`9.
`
`Nilsson (Ex.1013) ...................................................................112
`
`B.
`
`GROUND 1: Claims 1, 3, 6, and 7 Are Unpatentable as Obvious
`Over NEC-Databook in View of Burd, further in View of the
`Knowledge of POSITA .....................................................................113
`
`1. Motivation to Combine NEC-Databook and Burd .................113
`
`2.
`
`3.
`
`4.
`
`5.
`
`Independent Claim 1 ...............................................................128
`
`Claim 3 ....................................................................................160
`
`Independent Claim 6 ...............................................................166
`
`Claim 7 ....................................................................................172
`
`C. GROUND 2: Claim 2 Is Unpatentable as Obvious Over NEC-
`Databook in View of Burd, Further in View of Nguyen ..................175
`
`
`
`ii
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 3 of 343
`
`

`

`1. Motivation to Combine NEC-Databook, Burd, and Nguyen .175
`
`2.
`
`Claim 2 ....................................................................................178
`
`D. GROUND 3: Claim 4 Is Unpatentable as Obvious Over NEC-
`Databook in View of TI-TPS5210-Datasheet, Further in View of
`Kikinis ...............................................................................................184
`
`1. Motivation to Combine NEC-Databook, TI-TPS5210-
`Datasheet, and Kikinis ............................................................184
`
`2.
`
`3.
`
`Independent Claim 4 ...............................................................189
`
`Claim 5 ....................................................................................207
`
`E.
`
`GROUND 4: Claims 8-10 and 14 Are Unpatentable as Obvious
`Over Helms in View of Maxim-165X-Datasheet, Further in View
`of MAX1711-Kit ...............................................................................211
`
`1. Motivation to Combine Helms, Maxim-165X-Datasheet,
`and MAX1711-Kit ..................................................................211
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Independent Claim 8 ...............................................................216
`
`Claim 9 ....................................................................................256
`
`Claim 10 ..................................................................................264
`
`Claim 11 ..................................................................................278
`
`Independent Claim 14 .............................................................280
`
`F.
`
`GROUND 5: Claim 12, 13, and 15-18 Are Unpatentable as
`Obvious Over Helms in View of TI-TPS5210-Datasheet, Further in
`View of Nilsson .................................................................................287
`
`1. Motivation to Combine Helms, TI-TPS5210-Datasheet, and
`Nilsson ....................................................................................287
`
`2.
`
`3.
`
`4.
`
`Independent Claim 12 .............................................................292
`
`Independent Claim 13 .............................................................315
`
`Independent Claim 15 .............................................................325
`
`
`
`iii
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 4 of 343
`
`

`

`5.
`
`6.
`
`Claim 16 ..................................................................................332
`
`Claims 17 and 18.....................................................................333
`
`VII. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .....333
`
`VIII. CONCLUSION ............................................................................................336
`
`
`
`iv
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 5 of 343
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`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`I, Donald Alpert, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`A.
`
`1.
`
`Introduction
`
`I am an independent consultant with Camelback Computer
`
`Architecture, LLC. My residence and place of business is at 2020 21st Street,
`
`Sacramento, CA 95818. I am over the age of eighteen, and I am a citizen of the
`
`United States.
`
`2.
`
`I have been retained by Microchip Technology, Inc. (“Microchip” or
`
`“Petitioner”) as a technical expert witness in connection with the petition for inter
`
`partes review of U.S. Patent No. 7,260,731 (“’731 patent”) (“Ex.1001.”) I
`
`understand that the ’731 patent claims priority to October 23, 2000. For purposes
`
`of my analysis herein, I have used this date as the relevant time period.
`
`3.
`
`I have been asked by Petitioner to offer opinions regarding the ’731
`
`patent, including the interpretation of certain claim terms and the patentability of
`
`the claims in view of certain prior art references and the knowledge of a person of
`
`ordinary skill in the art (“POSITA”). This declaration sets forth the opinions I
`
`have reached to date regarding these matters.
`
`4.
`
`In preparing this Declaration, I have reviewed the ’731 patent, its
`
`prosecution history, and each of the documents I reference herein. In reaching my
`
`
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 6 of 343
`
`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`opinions, I have relied upon my experience in the field and have also considered
`
`the viewpoint of a POSITA at the time of the ’731 patent’s priority date. As
`
`explained below, I am familiar with the level of skill of a POSITA regarding the
`
`technology at issue as of that time frame.
`
`5.
`
`Camelback Computer Architecture is being compensated for my time
`
`working on this matter at my standard hourly rate of $600 per hour, plus expenses.
`
`Neither Camelback Computer Architecture nor I have any personal or financial
`
`stake or interest in the outcome of the present proceeding, and the compensation is
`
`not dependent on the outcome of this IPR and in no way affects the substance of
`
`my statements in this declaration.
`
`B. Qualifications and Experience
`
`6. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae, which is attached as Exhibit 1003.
`
`7.
`
`I have 45 years of academic and industrial experience in applying,
`
`designing, studying, teaching, and writing about microprocessors and computer
`
`systems. I received an Electrical Engineering Ph.D. degree in 1984 from Stanford
`
`University. I earlier received an Electrical Engineering B.S. degree from MIT in
`
`1973 and an Electrical Engineering M.S. degree from Stanford University in 1978.
`
`
`
`
`2
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 7 of 343
`
`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`I have taught classes in computer architecture at Stanford, Tel Aviv, and Arizona
`
`State Universities.
`
`8.
`
`From 1976 to 1977, I worked at Burroughs Corporation, where I
`
`designed peripheral interface controllers, including those for serial data
`
`communications based on Intel 8080 microprocessor components. From 1980 to
`
`1989, I was the lead architect for the design of three high-performance
`
`microprocessors at Zilog and National Semiconductor. Later, at Intel, I was the
`
`lead architect of the Pentium® Processor from 1989 to 1992 and of the 815 chipset
`
`from 1999 to 2000, both of which became the most widely used PC components of
`
`their time. The 815 chipset comprised two components: (1) a memory controller
`
`hub (MCH) that included a graphics controller and memory controller with
`
`interfaces to the CPU, 133 MHz SDRAM system memory modules, an optional,
`
`external graphics controller and (2) an I/O controller hub (ICH) that included
`
`various I/O controllers (e.g., network, hard drive, USB) for system peripheral
`
`devices and power management control registers. Additionally, I served as co-
`
`manager for the Itanium processor design from 1993-1997.
`
`9.
`
`I am a Senior Member of the Institute of Electrical and Electronics
`
`Engineers (IEEE), and served as the chair of the IEEE Technical Committee on
`
`Microprocessors and Microcomputers from 1999 to 2000. I was the keynote
`
`
`
`
`3
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 8 of 343
`
`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`speaker at the first Cool Chips conference, dedicated to the study of low-power
`
`microprocessors and systems. I have given invited lectures at several universities,
`
`and published ten papers in various professional journals and conference
`
`proceedings. My paper entitled “Architecture of the Pentium Processor,” was
`
`selected as best paper in IEEE Micro for 1993. I am a named inventor on over 30
`
`U.S. patents that pertain to microprocessors, computer systems, and related
`
`technology.
`
`10.
`
`I have reviewed the ’731 Patent, and I am familiar with the patent’s
`
`subject matter, which is within the scope of my education and professional
`
`experience. Based at least on my background in academia, industry, and
`
`consulting, I am familiar with the issues and technology relating to processors,
`
`chipsets, memory, peripheral devices, and power management for computer
`
`systems. I have personally analyzed, developed, and tested such computer
`
`components and systems. More specifically, the Pentium® Processor and 815
`
`chipset for which I was the lead architect at Intel implemented various features for
`
`supporting power management, including those related to Advanced Power
`
`Management (APM) and Advanced Configuration and Power Interface
`
`Specification (ACPI) industry standards.
`
`
`
`
`4
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
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`

`

`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`
`C. Materials Considered
`
`11. The analysis that I provide in this Declaration is based on my
`
`education and experience in the field of computer systems, as well as the
`
`documents I have considered, including the ’731 patent (Ex.1001) and its
`
`prosecution history (Ex.1004). The ’731 patent states on its face that it issued from
`
`Application No. 09/694,433, filed on October 23, 2000. For the purposes of this
`
`Declaration, I have been instructed to assume October 23, 2000 as the effective
`
`filing date for the ’731 patent. I have cited to the following documents in my
`
`analysis below:
`
`
`
`
`
`
`
`
`5
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 10 of 343
`
`

`

`Declaration of Donald
`
`Ph.D. in Support of
`Alpert,
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`LIsT OF EXHIBITS
`
`EXHIBIT No.
`
`DESCRIPTION
`
`1001
`
`U.S. Patent No. 7,260,731 issued to Andrew Read,et al., (filed
`Oct. 23, 2000, issued
`
`Aug. 21, 2007)
`
`1003
`
`Curriculum Vitae of Donald
`
`Alpert,
`
`Ph.D.
`
`Prosecution
`
`for U.S. Patent
`
`History
`Application
`09/694,433, which issued as U.S. Patent No. 7,260,731
`Excerpts from Single-Chip Microcomputer Databook, NEC
`Electronics Inc. (May 1990)
`
`No.
`
`Thomas Burdet al., “A
`Microprocessor System,” in Digest of Technical Papers,
`
`Dynamic Voltage
`
`Scaled
`
`2000 IEEEInt. Solid-State Circuits Conf.
`
`(Feb. 2000)
`
`(“Burd”)
`
`U.S. Patent No. 5,955,871 to
`
`Nguyen (“Nguyen”)
`
`TPS5210
`
`Programmable Synchronous-Buck Regulator
`
`Controller (as evidenced by Texas Instruments,Inc.,
`
`1004
`
`1005
`.
`
`1006
`
`1007
`
`108
`
`1009
`
`1010
`
`
`
`DC-DC Controllers (as evidenced by Maxim MICROCHIP TECHNOLOGYINC. EXHIBIT 1002
`
`“TPS5210
`
`Programmable Synchronous-Buck Regulator
`
`Controller,” (May 1999) (“TI-TPS5210-Datasheet’))
`
`US. Patent No. 5,919,262 to Kikiniset al.
`
`(“Kikinis”)
`
`U:S. Patent No. 6,748,545 to Helmset al.
`
`(“Helms”)
`
`Maxim MAX1652—MAX1655
`
`High-Efficiency, PWM,
`
`Step-Down
`
`Page
`
`11 of 343
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
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`

`

`Declaration of Donald
`
`Ph.D. in Support of
`Alpert,
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`EXHIBIT No.
`
`DESCRIPTION
`
`Integrated Inc., “High-Efficiency, PWM, Step-Down
`DC Controllers in 16-Pin QSOP, MAX1652—MAX1655,”
`Rev. 1
`
`(July 1998) (“Maxim-165X-Datasheet’))
`
`DC-
`
`1012
`
`1013
`
`Maxim
`
`Integrated, Inc., “MAX1711
`Evaluation Kit,” Rev. 1
`
`(June 2000) (“MAX1711-Kit’))
`
`Voltage Positioning
`
`James W.Nilsson, “Electronic Circuits,” (Addison Wesley,
`4th
`
`ed.) (1993) (“Nilsson”)
`
`1014
`
`Not Used
`
`1015
`
`U.S. Patent No. 3,941,989
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`
`
`Systems
`
`Voltage Processors,”
`of the 19th IEEE Real-Time
`
`in
`
`Proceedings
`
`Symposium (Dec. 1998)
`
`U.S. Patent No. 5,021,679
`
`Systems
`
`“Terms, Definitions, and Letter
`
`for
`
`Symbols
`and Memory Integrated
`Microcomputers, Microprocessors,
`Circuits,” JEDEC Standard JESD-100A
`
`(Aug. 1993)
`
`U.S. Patent No. 5,898,235
`
`US. Patent No. 6,347,379
`
`MICROCHIP TECHNOLOGYINC. EXHIBIT 1002
`12 of 343
`
`Page
`
`U.S. Patent No. 4,293,927
`
`CMOS,the Ideal
`
`Logic Family
`
`Inki
`
`for Low-Power
`
`Hong,ef a/., “Synthesis Techniques
`on Variable
`Hard Real-Time
`
`
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 12 of 343
`
`

`

`Declaration of Donald
`
`Ph.D. in Support of
`Alpert,
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`EXHIBIT No.
`
`DESCRIPTION
`
`L. L. Vadasz,et al., “Silicon-Gate
`vol. 6 no. 10 at 35
`
`Technology,”
`
`IEEE
`
`(October 1969)
`
`1023 Spectrum,
`
`1024
`
`Not Used
`
`1025
`
`Not Used
`
`1026
`
`U.S. Patent No. 5,677,558
`
`
`
`Low
`
`of
`
`Dropout Voltage
`
`1027
`
`Performance,”
`
`Texas Instruments
`
`S. Lee, “Technical ReviewBang
`Regulator Operation and
`SLVA072
`
`(Aug. 1999) 1028
`1029 1030
`
`Application Report
`
`Bob Wolbert, “Micrel’s Guide to Designing With Low-
`
`Dropout Voltage Regulators,” (Dec. 1998)
`
`Jim Williams, “Step-Down Switching Regulators,”
`Note 35
`
`Technology Application
`
`(Aug. 1989)
`
`Linear
`
`U.S. Patent No. 5,731,731
`
`1031
`
`Not Used
`
`1032
`
`Mobile Power Guidelines “99, Rev. 1.00, Intel Corporation
`(December1, 1997 1033
`
`U.S. Patent No. 6,212,094
`
`1034
`
`U:S. Patent No. 5,568,044 to Bittner
`
`(“Bittner”)
`
`Maxim
`
`Integrated, Inc., “High-Speed, Digitally Adjusted
`1035
`Controllers for Notebook CPUs,
`
`Step-Down
`
`MICROCHIP TECHNOLOGYINC. EXHIBIT 1002
`Page 13 of 343
`
`
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 13 of 343
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`

`

`Declaration of Donald
`
`Ph.D. in Support of
`Alpert,
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`EXHIBIT No.
`
`DESCRIPTION
`
`MAX1710/MAX1711,” Rev. 0 (Nov. 1998) (““MAX171X-
`
`1998-Datasheet’”’)
`
`1036
`
`Advanced Micro Devices, Inc., “AMD Athlon Processor
`
`Datasheet,” Rev. G
`
`(1999) (“Athlon-99-Datasheet’”’)
`
`Advanced Micro Devices, Inc., “AMD Athlon Processor
`
`1037
`
`Module Datasheet, Rev. M
`
`(June 2000) (“Athlon-00-
`
`Datasheet’)
`
`Advanced Micro Devices, Inc., “AMD 756
`Control Datasheet,” Rev. B
`
`(August 1999) (“AMD-756-
`
`Peripheral
`
`Bus
`
`1038
`
`Datasheet’)
`
` p
`
`1039
`
`1040
`
`1041
`
`1042
`
`1043
`
`104d
`
`U.S. Patent No. 5,627,460 to Bazinetef al.
`
`Advanced
`
`Configuration
`
`and PowerInterface
`
`Specification,
`
`Rev. 1.0
`
`(Dec. 22, 1996) (the
`
`“ACPI standard”or the
`
`“ACPT’)
`
`Bang Sup Lee, “Extended output voltage adjustment
`
`V to 3.5
`
`(0
`
`V) using
`
`the TI TPS5210
`
`(SLYT195),” Analog
`
`Applications (Aug. 1999)
`
`US. Patent No. 5,457,421 to Tanabe
`
`(“Tanabe”)
`
`High Speed Synchronous
`
`SC1405
`
`(“SC1405”)
`
`Power MOSFET Smart Driver
`
`US. Patent No. 5,565,761 to
`
`Hwang
`
`MICROCHIP TECHNOLOGYINC. EXHIBIT 1002
`14 of 343
`
`Page
`
`MICROCHIP TECHNOLOGY INC. EXHIBIT 1002
`Page 14 of 343
`
`

`

`Step-Down
`MAX1710/MAX1711,” Rev. 1
`
`(Jul. 2000) (““MAX171X-
`
`2000-Datasheet”’) If.
`
`Declaration of Donald
`
`Ph.D. in Support of
`Alpert,
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`EXHIBIT No.
`
`DESCRIPTION
`
`Maxim
`
`Integrated, Inc., “High-Speed, Digitally Adjusted
`Controllers for Notebook CPUs,
`
`LEGAL PRINCIPLES
`
`12.
`
`Tamnotan attorney. For purposes
`
`ofthis declaration, I have been
`
`informed aboutcertain aspects of the law that are relevant to my analysis
`
`and
`
`opinions,
`
`as set forth below.
`
`A.
`
`Prior Art
`
`13.
`
`J understandthat the
`
`prior
`
`art to the ’731 patent includes patents and
`
`printed publications
`
`in the relevantart that
`
`predate
`
`the ’731
`
`patent’s priority
`
`date.
`
`AsI
`
`explainedpreviously,
`
`I have been instructed to assume for purposes of my
`
`analysis
`
`that October 23, 2000 is the relevant date for
`
`determining
`
`whatis
`
`“prior
`
`art.” In other words, I should consideras
`
`art”
`
`“prior
`
`anything publicly
`
`available
`
`to October 23, 2000. I further understandthat, for purposes
`
`ofthis
`
`prior
`
`proceeding
`
`in the United States Patent Trial and
`
`Appeal Board, only patents and
`
`documentsthat have the
`
`legal
`
`status of a
`
`“printed publication” may berelied on as
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`art.
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`prior
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
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`B. Claim Construction
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`14.
`
`I understand that under the legal principles, claim terms are generally
`
`given their ordinary and customary meaning, which is the meaning that the term in
`
`question would have to a POSITA at the time of the invention, i.e., as of the
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`effective filing date of the patent application. I further understand that a POSITA
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`is deemed to read the claim term not only in the context of the particular claim in
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`which a claim term appears, but in the context of the entire patent, including the
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`specification.
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`15.
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`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
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`term, and is thus highly relevant to the interpretation of claim terms. I understand
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`for terms that do not have a customary meaning within the art, the specification
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`usually supplies the best context of understanding the meaning of those terms.
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`16.
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`I am further informed by counsel that other claims of the patent in
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`question, both asserted and unasserted, can be valuable sources of information as
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`to the meaning of a claim term. Because the claim terms are normally used
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`consistently throughout the patent, the usage of a term in one claim can often
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`illuminate the meaning of the same term in other claims. Differences among
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`claims can also be a useful guide in understanding the meaning of particular claim
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
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`terms.
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`17.
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`I understand that the prosecution history can further inform the
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`meaning of the claim language by demonstrating how the inventors understood the
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`invention and whether the inventors limited the invention in the course of
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`prosecution, making the claim scope narrower than it otherwise would be.
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`Extrinsic evidence may also be consulted in construing the claim terms, such as my
`
`expert testimony.
`
`18.
`
`I have been informed by counsel that, in IPR proceedings, a claim of a
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`patent shall be construed using the same claim construction standard that would be
`
`used to construe the claim in a civil action filed in a U.S. district court (which I
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`understand is called the “Phillips” claim construction standard), including
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`construing the claim in accordance with the ordinary and customary meaning of
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`such claim as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent.
`
`19.
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`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips”
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`standard as provided to me by counsel.
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`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`
`20.
`
`I understand that some claims are independent, and that these claims
`
`are complete by themselves. Other claims refer to these independent claims and
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`are “dependent” from those independent claims. The dependent claims include all
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`the limitations of the claims on which they depend.
`
`21.
`
`I am further informed and understand that certain claim elements
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`recite “means for” or “means to,” and may therefore be understood as reciting
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`means-plus-function limitations. I am also informed and understand that,
`
`accordingly, the analysis of each of these claim elements may require the
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`identification of a respective function recited in each of these claim elements, and
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`the identification of a respective structure that is disclosed in the specification or
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`file history of the ’731 patent, where the respective identified structure is linked to
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`and performs the respective recited function.
`
`22.
`
`I am additionally informed and understand that to show that the prior
`
`art teaches any particular one of these claim elements, the prior art should disclose
`
`a structure that performs the function recited in the particular claim element, where
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`the structure disclosed in the prior art is the same as or equivalent to the structure
`
`disclosed in the ’731 patent that performs the recited function.
`
`23.
`
`I am also informed and understand that the determination of
`
`equivalence under 35 U.S.C. §112 does not involve the function-way-result test
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`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`that is generally applied under the doctrine of equivalents in determining
`
`infringement of a claim. Rather, I am informed and understand, that equivalence is
`
`determined by comparing the prior art structure that performs the claimed function
`
`with the structure disclosed in the specification.
`
`C. Anticipation
`
`24.
`
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
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`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly, implicitly, or inherently, to a POSITA. There
`
`must be no difference between the claimed invention and the disclosure of the
`
`alleged prior art reference as viewed from the perspective of a POSITA. Also, I
`
`understand that in order for a reference to be an anticipating reference, it must
`
`describe the claimed subject matter with sufficient clarity to establish that the
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`subject matter existed and that its existence was recognized by persons of ordinary
`
`skill in the field of the invention. In addition, I understand that in order to establish
`
`that an element of a claim is “inherent” in the disclosure of an asserted prior art
`
`reference, extrinsic evidence (or the evidence outside the four corners of the
`
`asserted prior art reference) must make clear that the missing element is
`
`necessarily found in the prior art, and that it would be recognized as necessarily
`
`present by persons of ordinary skill in the relevant field.
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`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`
`25.
`
`In my opinions below, when I say that a POSITA would have
`
`understood, readily understood, or recognized that an element or aspect of a claim
`
`is disclosed by a reference, I mean that the element or aspect of the claim is
`
`disclosed to a POSITA.
`
`D. Obviousness
`
`26.
`
`I understand that obviousness is a determination of law based on
`
`various underlying determinations of fact. In particular, these underlying factual
`
`determinations include (1) the scope and content of the prior art; (2) the level of
`
`ordinary skill in the art at the time the claimed invention was made; (3) the
`
`differences between the claimed invention and the prior art; and (4) the extent of
`
`any proffered objective indicia of nonobviousness. I understand that the objective
`
`indicia which may be considered in such an analysis include commercial success
`
`of the patented invention (including evidence of industry recognition or awards),
`
`whether the invention fills a long-felt but unsolved need in the field, the failure of
`
`others to arrive at the invention, industry acquiescence and recognition, initial
`
`skepticism of others in the field, whether the inventors proceeded in a direction
`
`contrary to the accepted wisdom of those of ordinary skill in the art, and the taking
`
`of licenses under the patent by others, among other factors.
`
`27. To ascertain the scope and content of the prior art, it is necessary to
`
`
`
`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
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`first examine the field of the inventor’s endeavor and the particular problem for
`
`which the invention was made. The relevant prior art includes prior art in the field
`
`of the invention, and also prior art from other fields that a POSITA would look to
`
`when attempting to solve the problem.
`
`28.
`
`I understand that a determination of obviousness cannot be based on
`
`the hindsight combination of components selectively culled from the prior art to fit
`
`the parameters of the patented invention. Instead, it is my understanding that in
`
`order to render a patent claim invalid as being obvious from a combination of
`
`references, there must be some evidence within the prior art as a whole to suggest
`
`the desirability, and thus the obviousness, of making the combination in a way that
`
`would produce the patented invention.
`
`29.
`
`I further understand that in an obviousness analysis, neither the
`
`motivation nor the purpose of the patentee dictates. What is important is whether
`
`there existed at the time of the invention a known problem for which there was an
`
`obvious solution encompassed by the patent’s claims.
`
`30.
`
`I also understand that the combination of familiar elements according
`
`to known methods is likely to be obvious when it yields predictable results. I also
`
`understand that an example of a solution in one field of endeavor may make that
`
`solution obvious in another related field, as well. I am informed that market
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`
`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`demands or design considerations may prompt variations of a prior art system or
`
`process, in the same field or a different one, where such variations may ordinarily
`
`be considered obvious, straightforward changes to what has been explicitly
`
`disclosed in the prior art.
`
`31.
`
`I also understand that if a POSITA could have implemented a
`
`predictable variation without excessive experimentation, that variation would have
`
`been considered obvious. I understand that for similar reasons, if a technique has
`
`been used to improve one device or processor, and a POSITA would have
`
`recognized that that technique can improve a similar devices or process in the same
`
`way, implementing such an improvement would have been obvious, unless the
`
`implementation yields unexpected results or challenges in implementation.
`
`32.
`
`I understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim. Rather, I
`
`understand, that the analysis can take into account ordinary innovation and
`
`experimentation, e.g., inferences and creative steps that a POSITA would employ,
`
`that yields predictable, benefits. In this regard, I understand that a POSITA is also
`
`a person of ordinary creativity.
`
`33.
`
`I understand that sometimes it will be necessary to consider
`
`interrelated teachings of several prior art references, the demands or current
`
`
`
`
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`Declaration of Donald Alpert, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 7,260,731
`
`problems known in the design community or present in the marketplace, and/or the
`
`background knowledge of a POSITA. I understand that any of these factors may
`
`be considered to assess whether there was a reason to combine the teachings of the
`
`prior art references, where the combination would reveal the sys