IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patentof:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Title:
`
`Attorney Docket No.: 00035-0024IP1
`
`XiaodongLi et al.
`8,467,366
`June 18, 2013
`13/205,579
`August 8, 2011
`METHODS AND APPARATUS FOR RANDOM ACCESS
`IN MULTI-CARRIER COMMUNICATION SYSTEMS
`
`Patent Board
`Mail
`Stop
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATIONOF DR. VALENTI
`
`I declare that all statements made herein on my own
`
`knowledge
`
`are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are
`
`punishable by fine or
`
`imprisonment,
`
`or
`
`both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`Luk
`
`By: Matterspy
`Matthew Valenti, Ph.D.
`
`Date:
`
`ABR
`
`DELL 1003
`
`DELL 1003
`
`

`

`V.
`
`I.
`II.
`III.
`IV.
`
`Contents
`QUALIFICATIONS AND BACKGROUND INFORMATION .................... 7
`OVERVIEW OF CONCLUSIONS FORMED ............................................. 14
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 15
`LEGAL STANDARDS ................................................................................. 16
`Terminology ............................................................................................ 16
`Legal Standards ....................................................................................... 16
`Anticipation ................................................................................... 17
`1.
`2. Obviousness ........................................................................................ 17
`THE ’366 PATENT ....................................................................................... 22
`Overview of the ’366 Patent ................................................................... 22
`Prosecution History of the ’366 Patent ................................................... 27
`VI. OVERVIEW AND COMBINATIONS OF PRIOR ART REFERENCES .. 28
`Ma (EX1005) .......................................................................................... 28
`TR (EX1006) .......................................................................................... 31
`Combination of Ma and TR (“Ma-TR”) ................................................. 34
`Soliman (EX1007) .................................................................................. 35
`Combination of Ma, TR and Soliman (“Ma-TR-Soliman”) ................... 36
`Li (EX1009) ............................................................................................ 40
`Combination of Ma, TR, and Li (“Ma-TR-Li”) ..................................... 40
`Jung (EX1010) ........................................................................................ 42
`Combination of Ma and Jung (“Ma-Jung”) ............................................ 43
`Combination of Ma, Jung and Soliman (“Ma-Jung-Soliman”) .............. 45
`Combination of Ma, Jung and Li (“Ma-Jung-Li”) ................................. 46
`VII. MANNER IN WHICH THE PRIOR ART REFERENCES RENDER THE
`’366 CLAIMS UNPATENTABLE ............................................................... 47
`Ground-A1 - Claims 1-4, 6-12, 14-20, 22-24 are Obvious in view of
`Ma-TR ..................................................................................................... 48
`[1Pre/9Pre/17Pre/22Pre] In a [multi-cell] orthogonal frequency
`division multiple access (OFDMA) wireless communication
`system comprising a plurality of base stations and mobile
`stations, ......................................................................................... 48
`[1Pre] a mobile station configured to communicate with a serving base
`station in a cell via a communication channel, the mobile station
`comprising: ................................................................................... 50
`
`2
`
`

`

`[17Pre] a method for signal transmission by a mobile station to a
`serving base station via a communication channel, the method
`comprising: ................................................................................... 50 
`[9Pre] a base station configured to communicate with mobile stations
`in a cell via a communication channel, the base station
`comprising: ................................................................................... 51 
`[22Pre] a method for receiving signals by a base station from a
`plurality of mobile stations via a communication channel, the
`method comprising: ...................................................................... 51 
`[1a/17a] [an apparatus configured to transmit]/[transmitting] a data
`signal [over a data subchannel] to the serving base station [in
`the cell over a data subchannel], wherein the data subchannel
`comprises a plurality of adjacent or non-adjacent subcarriers
`within the communication channel; and..................................... 52 
`[9a/22a] [an apparatus configured to receive]/[receiving] a data signal
`[over a data subchannel] from a first mobile station [in the cell
`over a data subchannel], wherein the data subchannel comprises
`a plurality of adjacent or non-adjacent subcarriers within the
`communication channel; and ...................................................... 52 
`[1b/17b] [an apparatus configured to transmit]/[transmitting] a
`ranging signal [over a ranging subchannel] to the serving base
`station [in the cell over a ranging subchannel] for random
`access, wherein: ............................................................................ 61 
`[9b/22b] [an apparatus configured to receive]/[receiving] a ranging
`signal [from a second mobile station in the cell] over a ranging
`subchannel for random access [by a second mobile station],
`wherein: ........................................................................................ 61 
`[1c/9c/17c/22c] the ranging signal is formed from a ranging sequence
`selected from a set of ranging sequences associated with the cell
`for identifying the mobile station; ............................................... 67 
`[1d/9d/17d/22d] the ranging signal lasts over a period of one or
`multiple orthogonal frequency division multiplexing (OFDM)
`symbols and the ranging signal exhibits a low peak-to-average
`power ratio in the time domain; and ........................................... 68 
`[1e/9e/17e/22e] the ranging subchannel comprises at least one block
`of subcarriers within the communication channel and power
`levels of subcarriers at both ends of a block are set to zero. ...... 69 
`[2/10] wherein the subcarrier configuration of the ranging
`subchannel for the cell is different from subcarrier
`configurations of ranging subchannels for other cells, ............. 73 
`
`3
`
`

`

`[3/11] wherein the set of ranging sequences for the cell is different
`from sets of ranging sequences for other cells. ........................... 74 
`[4/20] wherein subcarriers in a block are contiguous in frequency. ... 75 
`[6/18] wherein a power level of subcarriers towards the high-end and
`low-end frequency boundaries of a block of subcarriers is lower
`than a power level of subcarriers towards the center of the block.
` ....................................................................................................... 78 
`[7/19] wherein boundary subcarriers of a block of subcarriers in the
`ranging subchannel are attenuated to reduce interference with
`other uplink signals when signal time misalignment occurs at
`the base station. ............................................................................ 80 
`[8] wherein the ranging sequence is a binary or non-binary sequence.
` ....................................................................................................... 81 
`[12] further comprising an apparatus configured to detect the ranging
`sequence in the received ranging signal in the time domain,
`frequency domain, or both time and frequency domain. ............ 82 
`[14] wherein the apparatus correlates the received ranging signal with
`a ranging sequence stored at the base station to detect the
`ranging sequence. ......................................................................... 84 
`[15/23] [further comprising an apparatus configured to
`detect]/[detecting] a time delay of the received ranging signal
`and to inform the second mobile station to adjust transmission
`time based on the detected time delay. ......................................... 85 
`[16/24] [further comprising an apparatus configured to
`detect]/[detecting] a power level of the received ranging signal
`and to inform the second mobile station to adjust a transmission
`power based on the detected power level. .................................... 86 
`  Ground-A2 - Claims 5 and 21 are Obvious in view of Ma-TR-Soliman
`
`87 
`[5Pre/21Pre] further comprising [an apparatus configured to
`control]/[controlling] a transmission power of the ranging signal
`using an open-loop power control method by: ............................ 87 
`[5a/21a] estimating a path loss between the serving base station and
`the mobile station based on a received downlink signal; ........... 88 
`[5c/21c] increasing the transmission power of the ranging signal for
`retransmission. .............................................................................. 89 
`  Ground-A3 - Claim 13 is Obvious in view of Ma-TR-Li ..................... 90 
`[13] wherein the apparatus applies matched filtering to the received
`ranging signal to detect the ranging sequence. ........................... 90 
`
`4
`
`

`

`  Ground-B1 - Claims 1-4, 6-12, 14-20, 22-24 are Obvious in view of
`Ma-Jung .................................................................................................. 92 
`[1Pre/9Pre/17Pre/22Pre] In a [multi-cell] orthogonal frequency
`division multiple access (OFDMA) wireless communication
`system comprising a plurality of base stations and mobile
`stations, ......................................................................................... 92 
`[1Pre] a mobile station configured to communicate with a serving base
`station] in a cell via a communication channel, the mobile
`station comprising: ....................................................................... 92 
`[17Pre] a method for signal transmission by a mobile station to a
`serving base station via a communication channel, the method
`comprising: ................................................................................... 92 
`[22Pre] a method for receiving signals by a base station from a
`plurality of mobile stations via a communication channel, the
`method comprising: ...................................................................... 93 
`[1a/17a] [an apparatus configured to transmit]/[transmitting] a data
`signal [over a data subchannel] to the serving base station [in
`the cell over a data subchannel], wherein the data subchannel
`comprises a plurality of adjacent or non-adjacent subcarriers
`within the communication channel; and..................................... 93 
`[9a/22a] [an apparatus configured to receive]/[receiving] a data signal
`[over a data subchannel] from a first mobile station [in the cell
`over a data subchannel], wherein the data subchannel comprises
`a plurality of adjacent or non-adjacent subcarriers within the
`communication channel; and ...................................................... 93 
`[1b/17b] [an apparatus configured to transmit]/[transmitting] a
`ranging signal [over a ranging subchannel] to the serving base
`station [in the cell over a ranging subchannel] for random
`access, wherein: ............................................................................ 93 
`[9b/22b] [an apparatus configured to receive]/[receiving] a ranging
`signal [from a second mobile station in the cell] over a ranging
`subchannel for random access [by a second mobile station],
`wherein: ........................................................................................ 93 
`[1c/9c/17c/22c] the ranging signal is formed from a ranging sequence
`selected from a set of ranging sequences associated with the cell
`for identifying the mobile station; ............................................... 94 
`[1d/9d/17d/22d] the ranging signal lasts over a period of one or
`multiple orthogonal frequency division multiplexing (OFDM)
`symbols and the ranging signal exhibits a low peak-to-average
`power ratio in the time domain; and ........................................... 94 
`
`5
`
`

`

`[1e/9e/17e/22e] the ranging subchannel comprises at least one block
`of subcarriers within the communication channel and power
`levels of subcarriers at both ends of a block are set to zero. ...... 95 
`[2/10] wherein the subcarrier configuration of the ranging
`subchannel for the cell is different from subcarrier
`configurations of ranging subchannels for other cells, ............. 97 
`[3/11] wherein the set of ranging sequences for the cell is different
`from sets of ranging sequences for other cells. ........................... 97 
`[4/20] wherein subcarriers in a block are contiguous in frequency. ... 97 
`[6/18] wherein a power level of subcarriers towards the high-end and
`low-end frequency boundaries of a block of subcarriers is lower
`than a power level of subcarriers towards the center of the block.
` ....................................................................................................... 98 
`[7/19] wherein boundary subcarriers of a block of subcarriers in the
`ranging subchannel are attenuated to reduce interference with
`other uplink signals when signal time misalignment occurs at
`the base station. ..........................................................................100 
`[8] wherein the ranging sequence is a binary or non-binary sequence.
` .....................................................................................................101 
`[12] further comprising an apparatus configured to detect the ranging
`sequence in the received ranging signal in the time domain,
`frequency domain, or both time and frequency domain. ..........102 
`[14] wherein the apparatus correlates the received ranging signal with
`a ranging sequence stored at the base station to detect the
`ranging sequence. .......................................................................102 
`[15/23] further comprising an apparatus configured to detect a time
`delay of the received ranging signal and to inform the second
`mobile station to adjust transmission time based on the detected
`time delay. ...................................................................................103 
`[16/24] further comprising an apparatus configured to detect a power
`level of the received ranging signal and to inform the second
`mobile station to adjust a transmission power based on the
`detected power level. ...................................................................103 
`  Ground-B2 - Claims 5 and 21 are Obvious in view of Ma-Jung-Soliman
`
`103 
`  Ground-B3 - Claim 13 is Obvious in view of Ma- Jung -Li ...............103 
`[13] wherein the apparatus applies matched filtering to the received
`ranging signal to detect the ranging sequence. .........................103 
`VIII.  CONCLUSION ............................................................................................104 
`
`
`6
`
`

`

`I.
`1.
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`I am currently a Professor of Computer Science and Electrical Engineering
`
`at West Virginia University in Morgantown, West Virginia. I have over 25 years’
`
`experience in telecommunications and communication technology, with an
`
`emphasis on wireless and cellular networks. In particular, this experience includes
`
`physical-layer technology and issues related to cellular network call processing,
`
`along with current cellular standards including the 3GPP family of specifications
`
`related to LTE and UMTS. I have particular research and teaching interests in
`
`communication theory and statistical signal processing. My full qualifications and
`
`experience are set out in my Curriculum Vitae (“CV”), as EX1004.
`
`2.
`
`I received a Bachelor of Science in Electrical Engineering from Virginia
`
`Polytechnic Institute and State University (Virginia Tech) in 1992 and a Master of
`
`Science in Electrical Engineering at Johns Hopkins University in 1995. I
`
`subsequently completed a Ph.D. in Electrical Engineering from Virginia Tech in
`
`1999.
`
`3.
`
`In 1992, I started as a full-time Electronics Engineer at the U.S Naval
`
`Research Laboratory (NRL) in Washington D.C after having served as an intern
`
`there during the summer of 1991. I subsequently was awarded a Bradley
`
`Fellowship by Virginia Tech’s Bradley Department of Electrical and Computer
`
`Engineering from August, 1995 to July, 1999. The Fellowship allowed me to go
`
`7
`
`

`

`on leave from my position at NRL and pursue my Ph.D. full time. In addition to
`
`being supported by the Bradley Fellowship, I served as a Research Assistant and as
`
`an Instructor at Virginia Tech.
`
`4.
`
`Upon receiving my Ph.D., in August, 1999, I joined the Lane Department of
`
`Computer Science and Electrical Engineering at West Virginia University initially
`
`as an Assistant Professor. I was promoted to Associate Professor with Tenure in
`
`August, 2005 and to Professor in August, 2010; a position I still hold today.
`
`5.
`
`From July 1, 2019 through June 30, 2021, I served as the Department Chair,
`
`first as an Interim Chair (2019-2020) and then as the Raymond Lane Chair of the
`
`Lane Department (2020-2021).
`
`6.
`
`Through my work in the engineering field, I have been recognized as a
`
`registered Professional Engineer since 2011.
`
`7.
`
`In 2018, I was elevated by the IEEE to the rank of Fellow in recognition of
`
`my contributions to wireless communications technology. In 2000, 2001, and
`
`2008, I won awards for Outstanding Researcher in the Statler College of
`
`Engineering and Mineral Resources at West Virginia University.
`
`8.
`
`I have published 38 journal papers and technical magazine articles and over
`
`100 conference papers in the telecommunications field, focusing on wireless
`
`technologies, including ten papers in the journal IEEE Transactions on Wireless
`
`8
`
`

`

`Communications. Many of these papers are on technologies used by 3G, 4G, and
`
`5G wireless systems. My CV (EX1004) also contains a list of my publications.
`
`9.
`
`I am active in the editorship of journal publications in the field of wireless
`
`communications. I have served in several roles for the journal IEEE Transactions
`
`on Wireless Communications, a premier journal on wireless communication
`
`technology, including as Associate Editor (2007-2011), Member of the Executive
`
`Editorial Committee (2014-2017), Chair of the Executive Editorial Committee
`
`(2016-2017), and member of the Steering Committee (2021-present). I have also
`
`acted as an Editor for several other journals, including IEEE Transactions on
`
`Communications, IEEE Transactions on Vehicular Technology, and IEEE Wireless
`
`Communications Letters. Since 2015, I have acted as Editor-in-Chief of IEEE
`
`Communications Society Best Readings, which is an online resource containing
`
`curated collections of papers on specific state-of-the-art technologies including
`
`Network Localization and Navigation, Non-Orthogonal Multiple Access, and
`
`Device-to-Device Communications.
`
`10.
`
`I am active in the organization of the Technical Program for major
`
`conferences sponsored by the IEEE’s Communication Society. I was Co-Chair of
`
`the Technical Program Committee (TPC) for the 2021 IEEE International
`
`Conference on Communications (ICC), a flagship conference on communication
`
`technology that typically receives over 2,000 paper submissions. I currently serve
`
`9
`
`

`

`as the Chair of the IEEE GLOBECOM/ICC Technical Content (GITC) committee,
`
`which is the technical steering committee for both ICC and GLOBECOM, the
`
`Communication Society’s other flagship conference. I was the TPC Chair for the
`
`2017 IEEE Military Communications Conference (MILCOM), which is the premier
`
`conference on military communications, and I have served on the steering
`
`committee for MILCOM as well. In addition to these high-level positions, I have
`
`served as the TPC chair for tracks or symposia within many other conferences,
`
`including other installments of ICC, GLOBECOM, and MILCOM.
`
`11.
`
`I am responsible for the design and delivery of academic courses in
`
`communication technologies at the undergraduate and graduate level. I have
`
`taught courses on Digital Signal Processing, Communication Theory, and Wireless
`
`Networks at West Virginia University, and have been instrumental in developing
`
`and creating student study guides (workbooks) on the topics of Wireless
`
`Networking, Coding Theory, and Digital Signal Processing.
`
`12.
`
`I run an active research program focused on the development and evaluation
`
`of advanced communication transmission technology, including physical-layer
`
`technologies such as error control coding, hybrid ARQ, frequency hopping, multi-
`
`antenna transmission, and modulation. I have secured external competitive
`
`funding from agencies including the National Science Foundation (NSF) and the
`
`Office of Naval Research (ONR) to support my work. My duties include the
`
`10
`
`

`

`mentoring of graduate students, many of whom have supported my research
`
`activities as research assistants. To date, I have supervised the research of 49
`
`students successfully graduating with advanced degrees, 9 at the Ph.D. level and 40
`
`at the M.S. level.
`
`13.
`
`I have extensive experience in developing software for the simulation and
`
`implementation of various aspects of wireless communication systems, such as
`
`Turbo Codes and hybrid ARQ. My software is available to the public in a package
`
`called the Coded Modulation Library (CML).1 The software contains simulations
`
`of error-control codes such as Turbo Codes and technologies such as hybrid ARQ.
`
`Various aspects of the LTE, UMTS, HSDPA, cdma2000, and DVB-S2 standards
`
`are implemented in this software. The code has been incorporated into several
`
`commercial products.
`
`14.
`
`I previously have been retained as an expert witness in US Proceedings in
`
`the United States District Courts, the United States Patent and Trademark Office,
`
`and the ITC. This has included acting as an expert for major technology
`
`companies and wireless carriers in patent disputes and investigations involving
`
`telephone modems, mobile phone handsets, LTE, WCDMA/UMTS and other core
`
`wireless technologies.
`
`
`
`1
`
`https://github.com/wvu-wcrl/CML
`
`11
`
`

`

`15. Based on my above-described near three decades of experience in
`
`communications technologies, and the acceptance of my publications and
`
`professional recognition by societies in my field, I believe that I am qualified to be
`
`an expert in wireless communication systems, communication networks, and signal
`
`processing.
`
`16.
`
`I have been retained on behalf of Petitioner to offer technical opinions
`
`relating to U.S. Patent No. 8,467,366 (“the ’366 Patent”) and prior art references
`
`relating to its subject matter. I have reviewed the ’366 Patent, and relevant
`
`excerpts of the prosecution history of the ’366 Patent. Among various textbooks,
`
`documents, and publications, I have also reviewed the following prior art
`
`references:
`
`EX1005
`
`EX1006
`
`EX1007
`
`EX1008
`
`EX1009
`
`EX1010
`
`Prior Art References
`U.S. Patent Application Publication No. US20040001429 to
`Ma et al. (“Ma”)
`
`TR 101 146 V3.0 (“TR”)
`
`U.S. Patent No. US6101179 to Soliman (“Soliman”)
`
`U.S. Patent No. US6600772 to Zeira et al. (“Zeira”)
`
`U.S. Patent Application Publication No. US20020159422 to
`Li et al. (“Li”)
`
`U.S. Patent Application Publication No. US20040114504A1
`to Jung et al. (“Jung”)
`
`EX1011
`
`U.S. Patent No. US6839876 to Tong et al. (“Tong”)
`
`12
`
`

`

`EX1014
`
`EX1015
`
`EX1016
`
`EX1019
`
`EX1022
`
`
`
`U.S. Patent No. US7263058 to Joo (“Joo”)
`
`U.S. Patent No. US8199632 to Geile et al. (“Geile”)
`
`ETSI Special Mobile Group (SMG) Report of UMTS 30.06
`v3.0.0 (SMG-Report) 2
`
`Dictionary Definition of “guard band” - McGraw-Hill
`Dictionary of Scientific and Technical Terms 6th Edition
`(Copyright@2003)
`
`Excerpts from Digital Communications: Fundamentals and
`Applications, 2nd Edition (Copyright@2001) (“Textbook”)
`
`17. Counsel (Fish & Richardson) has informed me that I should consider these
`
`materials through the lens of one of ordinary skill in the art related to the ’366
`
`Patent at the time of the earliest possible priority date of the ’366 Patent, and I have
`
`done so during my review of these materials. The ’366 Patent claims priority to
`
`US Provisional Application Serial No. 60/551,589, filed on February March 9,
`
`2004. I have been informed by Counsel to use March 9, 2004 as the “Priority
`
`Date” in my analysis below.
`
`
`
`2 TR and SMG-Report are referred in the alternative because they are
`
`technically identical in content, with different document formats (PDF vs. zip file
`
`with a word document and annex). See generally EX1006, EX1016. All citations
`
`will be to the former and not the latter.
`
`13
`
`

`

`18.
`
`I have no financial interest in the outcome of this proceeding. I am being
`
`compensated for my time spent as an expert on an hourly basis. My compensation
`
`is not dependent on the outcome of these proceedings or the content of my
`
`opinions.
`
`19.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of electrical
`
`engineering and wireless communication networks; my experience in teaching
`
`related subjects; and my experience in working with others involved in those
`
`fields. In addition, I have analyzed various publications and materials, in addition
`
`to other materials I cite in my declaration.
`
`20. My opinions, as explained below, are based on my education, experience,
`
`and expertise in the fields relating to the ’366 Patent. Unless otherwise stated, my
`
`testimony below refers to the knowledge of one of ordinary skill in the art as of the
`
`earliest possible priority date. Any figures that appear within this document have
`
`been prepared with the assistance of Counsel and reflect my understanding of the
`
`’366 Patent and the prior art discussed below.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`21. This declaration explains the conclusions that I have formed based on my
`
`analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art references listed above, I believe that:
`
`14
`
`

`

` Claims 1-4, 6-12, 14-20, 22-24 are obvious over Ma in view of TR.
`
` Claims 5 and 21 are obvious over Ma in view of TR and Soliman.
`
` Claim 13 is obvious over Ma in view of TR and Li.
`
` Claims 1-4, 6-12, 14-20, 22-24 are obvious over Ma in view of Jung.
`
` Claims 5 and 21 are obvious over Ma in view of Jung and Soliman.
`
` Claim 13 is obvious over Ma in view of Jung and Li.
`
`22.
`
`In support of these conclusions, I provide an overview of the references in
`
`Section VI and more detailed comments regarding the obviousness of claims 1-24
`
`(“the Challenged Claims”) of the ’366 Patent in Section VII.
`
`
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`23. One of ordinary skill in the art relating to, and at the time of, the Priority
`
`Date would have been someone with at least a Bachelor’s degree in an academic
`
`area emphasizing electrical engineering or a similar discipline, and at least two
`
`years of experience in the field working with, teaching, or researching wireless
`
`communication networks. Superior education could compensate for a deficiency
`
`in work experience, and vice-versa.
`
`24. Based on my experience, I have an understanding of the capabilities of a
`
`person of ordinary skills in the art (POSITA). Indeed, I have taught, mentored,
`
`participated in organizations, and worked closely with many such persons over the
`
`15
`
`

`

`course of my career. For example, from my industry consulting or conference
`
`interactions, I am familiar with what a POSITA would have known and found
`
`predictable in the art. From teaching and supervising my graduate students, I also
`
`have an understanding of the knowledge that a person with this academic
`
`experience possesses. Furthermore, I possess those capabilities myself.
`
`
`
`IV. LEGAL STANDARDS
` Terminology
`I have been informed by Counsel and understand that the best indicator of
`
`25.
`
`claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should
`
`be given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). I have been informed by
`
`Counsel that I should use March 9, 2004 as the point in time for claim
`
`interpretation purposes with respect to this petition.
`
`
`
`Legal Standards
`
`16
`
`

`

`26.
`
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as being
`
`anticipated or obvious.
`
`27.
`
`I am informed by Counsel and understand that all prior art references are to
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`be looked at from the viewpoint of a person of ordinary skill in the art at the time
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`of the invention, and that this viewpoint prevents one from using his or her own
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`insight or hindsight in deciding whether a claim is anticipated or rendered obvious.
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`1. Anticipation
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`28.
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`I understand that patents or printed publications that qualify as prior art can
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`be used to invalidate a patent claim as anticipated or as obvious.
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`29.
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`I understand that, once the claims of a patent have been properly construed,
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`the second step in determining anticipation of a patent claim requires a comparison
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`of the properly construed claim language to the prior art on a limitation-by-
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`limitation basis.
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`30.
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`I understand that a prior art reference “anticipates” an asserted claim, and
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`thus renders the claim invalid, if all limitations of the claim are disclosed in that
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`prior art reference, either explicitly or inherently (i.e., necessarily present).
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`2. Obviousness
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`31.
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`I understand that even if a patent is not anticipated, it is still invalid if the
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`differences between the claimed subject matter and the prior art are such that the
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`17
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a POSITA.
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`32.
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`I have been informed by Counsel and understand that a claim is unpatentable
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`for obviousness and that obviousness may be based upon a combination of prior art
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`references. I am informed by Counsel and understand that the combination of
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`familiar elements according to known methods is likely to be obvious when it does
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`no more than yield predictable results. However, I am informed by Counsel and
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`understand that a patent claim composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was, independently, known in
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`the prior art.
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`33.
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`I am informed by Counsel and understand that when a patented invention is
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`a combination of known elements, a court determines whether there was an
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`apparent reason to combine the known elements in the fashion claimed by the
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`patent at issue by considering the teachings of prior art references, the effects of
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`demands known to people working in the field or present in the marketplace, and
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`the background knowledge possessed by a person having ordinary skill in the art.
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`34.
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`I am informed by Counsel and understand that a patent claim composed of
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`several limitations is not proved obvious merely by demonstrating that each of its
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`limitations was independently known in the prior art. I am informed by Counsel
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`and understand that identifying a reason those elements would be combined can be
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`18
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`important because inventions in many instances rely upon building blocks long
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`since uncovered, and claimed discoveries almost of necessity will be combinations
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`of what, in some sense, is already known. I am informed by Counsel and
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`understand that it is improper to use hindsight in an obviousness analysis, and that
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`a patent’s claims should not