Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC.,
`Petitioner
`
`v.
`
`PALO ALTO RESEARCH CENTER INC.,
`Patent Owner
`
`
`U.S. Patent No. 8,489,599 B2
`Issue Date: July 16, 2013
`
`Title: CONTEXT AND ACTIVITY-DRIVEN CONTENT DELIVERY AND INTERACTION
`
`DECLARATION OF CHRISTOPHER M. SCHMANDT
`
`Facebook's Exhibit No. 1002
`Page 001
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`

`

`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION AND QUALIFICATIONS .............................................. 5 
`A.  Qualifications and Experience ............................................................. 5 
`B.  Materials Considered .......................................................................... 10 
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 11 
`STATEMENT OF LEGAL PRINCIPLES ................................................... 14 
`A. 
`Claim Construction ............................................................................ 14 
`B. 
`Obviousness ........................................................................................ 16 
`IV.  THE ’599 PATENT ...................................................................................... 21 
`A.  Overview of the Specification ............................................................ 21 
`B. 
`The Challenged Claims ...................................................................... 23 
`V.  APPLICATION OF THE PRIOR ART TO CHALLENGED
`CLAIMS ....................................................................................................... 24 
`A. 
`Brief Summary of Prior Art ............................................................... 25 
`1. 
`Lamont [Ex. 1003] ................................................................... 25 
`2.  Wolfe [Ex. 1004] ...................................................................... 29 
`3.  Wang [Ex. 1006] ...................................................................... 35 
`4. 
`Belimpasakis [Ex. 1007] .......................................................... 40 
`5.  Meyers [Ex. 1008].................................................................... 43 
`Ground 1: Claims 1, 4, 6, 7, 10-12, 15, 17-19, 22, 24, and 25
`Are Obvious Over Lamont, Wolfe and Wang ................................... 46 
`1. 
`Claim 1 ..................................................................................... 46 
`
`I. 
`
`II. 
`III. 
`
`B. 
`
`
`
`
`
`2
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`
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`

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`TABLE OF CONTENTS
`(continued)
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`Page
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`(a) 
`
`(b) 
`
`(c) 
`
`(d) 
`
`(e) 
`
`(f) 
`
`“receiving at least one content package, wherein
`the content package includes at least one content
`piece and a set of rules associated with the content
`package, wherein the set of rules includes a trigger
`condition and an expected response, and wherein
`the trigger condition specifies a context that
`triggers a presentation of the content piece” (Claim
`1[a]) ................................................................................ 49 
`“receiving a set of contextual information with
`respect to the first user” (Claim 1[b]) ............................ 67 
`“processing the contextual information to
`determine a current context for the first user”
`(Claim 1[c]) ................................................................... 70 
`“determining whether the current context satisfies
`the trigger condition” (Claim 1[d]) ................................ 82 
`“in response to the trigger condition being
`satisfied, presenting the content piece to the first
`user” (Claim 1[e]) .......................................................... 83 
`“receiving a response from the first user
`corresponding to the presented content piece;
`determining whether the received response
`matches the expected response; and performing an
`action based on an outcome of the determination.”
`(Claim 1[f]-[h]) .............................................................. 86 
`Claim 4 ..................................................................................... 89 
`Claim 6 ..................................................................................... 94 
`Claim 7 ..................................................................................... 98 
`Claim 10 ................................................................................... 99 
`Claim 11 ................................................................................. 100 
`Claim 12 ................................................................................. 100 
`Claim 15 ................................................................................. 103 
`
`-3-
`
`
`
`
`
`
`
`
`
`2. 
`3. 
`4. 
`5. 
`6. 
`7. 
`8. 
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`Claim 17 ................................................................................. 103 
`9. 
`10.  Claim 18 ................................................................................. 104 
`11.  Claim 19 ................................................................................. 105 
`12.  Claim 22 ................................................................................. 113 
`13.  Claim 24 ................................................................................. 114 
`14.  Claim 25 ................................................................................. 114 
`Ground 2: Claim 9 is Obvious Over Lamont, Wolfe and Wang,
`in Further View of Belimpasakis ..................................................... 115 
`1. 
`Claim 9 ................................................................................... 115 
`D.  Ground 3: Claims 1, 4, 6, 7, 10-12, 15, 17-19, 22, 24, and 25
`Are Obvious Over Lamont, Wolfe, Wang and Meyers ................... 122 
`Ground 4: Claims 9 Is Obvious Over Lamont, Wolfe, Wang,
`Belimpasakis, and Meyers ................................................................ 127 
`VI.  NO SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS ...... 128 
`VII.  CONCLUSION ........................................................................................... 128 
`
`C. 
`
`E. 
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`
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`
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`-4-
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`I, Christopher M. Schmandt, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`
`1.
`
`I have recently retired from my position as a Principal Research
`
`Scientist at the Media Laboratory at Massachusetts Institute of Technology
`
`(“M.I.T”), after 40 years of employment by M.I.T. In that role, I also served as
`
`faculty for the M.I.T. Media Arts and Sciences academic program. I have more than
`
`40 years of experience in the field of Media Technology, and was a founder of the
`
`M.I.T. Media Laboratory.
`
`2.
`
`I received my Bachelor of Science degree in Electrical Engineering and
`
`Computer Science from M.I.T. in 1978, and my Master of Science degree in Visual
`
`Studies (Computer Graphics), also from M.I.T. I had been employed at M.I.T. since
`
`1980, initially at the Architecture Machine Group, which was an early computer
`
`graphics research lab. In 1985, I helped found the Media Laboratory and continued
`
`to work there until my retirement. I ran a research group titled “Living Mobile.”
`
`My research spanned distributed communication and collaborative systems, with an
`
`emphasis on multi-media and user interfaces; I have more than 70 published
`
`conference and journal papers and one book in these fields.
`
`3.
`
`In my faculty position, I taught courses and directly supervised student
`
`
`
`5
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`research and theses at the Bachelors, Masters, and Ph.D. level. I oversaw the Masters
`
`and Ph.D. thesis programs for the entire Media Arts and Sciences academic program.
`
`Based on the above experience and qualifications, I have a solid understanding of
`
`the knowledge and perspective of a person of ordinary skill in this technical field
`
`since at least 1980.
`
`4.
`
`From the earliest days of my involvement, both at the Architecture
`
`Machine Group and subsequently at the Media Laboratory at MIT, my work has
`
`been centered around multimedia computer mediated communication and
`
`corresponding user interfaces. In 1979, I co-authored “Put That There,” a pioneering
`
`multi-modal conversational system employing speech, graphics, and gesture.
`
`Several years later, in 1981, my Intelligent Ear project was one of the first graphical
`
`user interfaces to allow editing of digital audio voice recordings by means of a touch
`
`screen user interface. I worked with early audio and visual real time conferencing
`
`system, doing acoustic and facial feature detection to enable minimal transmission
`
`bandwidth by creating surrogates at the remote sides of conference links.
`
`5.
`
`In part because of my work with speech understanding, many of my
`
`research projects included telephone components, initially wired and, in time,
`
`wireless. I built what was perhaps the first unified messaging system, allowing
`
`mixes of voice, text, and image in electronic messages, in 1984. Later my
`
`
`
`6
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
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`Phoneshell system allowed telephone access to many ordinary desktop utilities,
`
`including voice and text messages, calendar, contact list, and news and weather
`
`information. Information could be spoken or sent as facsimile if an image.
`
`6.
`
`As reliable digital wireless communication started to become available
`
`around the mid-1990s, many of the voice features were also implemented as text,
`
`including for example two-way alphanumeric pagers. Later audio pagers were used,
`
`and by early in the millennium many of these projects had transitioned to mobile
`
`phones. Computer mediated communications on mobile phones became a dominant
`
`thrust of my work resulting in changing the name of my research lab to “Speech and
`
`Mobility” and later “Living Mobile.”
`
`7.
`
`In the course of working with mobile devices, it became clear that a
`
`person’s context could be exploited in several ways. First, context could mediate
`
`incoming information, i.e., interruptions, for the user, or prioritize information for
`
`presentation, such as sorting email messages, over low bandwidth channels. Second,
`
`context, particularly a person’s location, could be used to tie the virtual world of
`
`computer information to real world times and places.
`
`8.
`
`In these contexts, and with the help of my students, I built a number of
`
`systems employing context in manners similar to the subject area of the ’599 patent.
`
`As early as 1985, my Conversational Desktop system allowed a system user to
`
`
`
`7
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
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`record reminder messages for later context-dependent playback. For example, if I
`
`recorded a reminder based on the condition “When I talk to Barry,” the system would
`
`play that reminder just before I called Barry (using the systems phone management
`
`software), or when I was just receiving a call from Barry, or when the system
`
`reminded me (via its scheduling software) of a scheduled meeting with Barry about
`
`to happen.
`
`9.
`
`The MailCall system (1996) sorted email
`
`into priorities, for
`
`presentation over mobile phones using text-to-speech for example, based on user
`
`context mined from previous communications (with whom I communicated
`
`frequently), my calendar (people and companies I may have upcoming meetings
`
`with) and my location (as evidenced by the area code of a contact number when on
`
`the road). Several years later this was incorporated into Active Messenger, which
`
`would proactively contact me using voice or text when context-determined priority
`
`voice or text messages were received. Active Messenger also added new context
`
`filtering, based on detecting the most recent way I had connected to my computer
`
`(office, dialup, cell phone, or text pager), and it changed its filtering rules depending
`
`on this context.
`
`10. The comMotion project (1999) could store reminder or to-do lists and
`
`deliver them just in time based on my location. For example, if the grocery list was
`
`
`
`8
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`not empty I would be reminded to shop for food when nearing a grocery store I
`
`frequented. Data in the shopping list, either voice or text, could be shared with
`
`others, such as family and roommates, any of whom could add to or act on the list.
`
`This work was further developed into WatchMe (2005), a system which learned a
`
`person’s travel patterns, and favorite locations such as “home” and “work”, and
`
`could deliver high-level descriptions of location based on such, for example “On the
`
`way to the office, will be there in five minutes.” In the process, other sensors, such
`
`as accelerometers, were used to enhance the context awareness to determine mode
`
`of travel (foot, bike, bus, car) and suggest the most appropriate means of
`
`communication (phone call, voice message, text message) in each context.
`
`11.
`
`In 2007 some of the same logic was incorporated into Ringing In The
`
`Rain, another system which would learn a user’s travel patterns (emphasis on foot
`
`or bike) and, similarly to WatchMe, predict route and time of arrival. This
`
`information was combined with external context by detecting rain storms from web-
`
`accessible weather radars, and thereby provide highly personal contextualized
`
`weather predictions. These systems were all built and published before the filing
`
`date of the ‘599 patent.
`
`12. Several additional system also used location and activity as context to
`
`drive information delivery. Are We There Yet (20008) used location to temporarily
`
`
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`drive a music play list, including tune selection and time scaling, such that the music
`
`would finish when the listener arrived at their destination. On the Run (2011) and
`
`Spellbound (2013) were location and activity based games, requiring participants to
`
`visit locations, solve problems, and perform activities together, guided by visual or
`
`audible instructions on their mobile phones. Merry Miser (2009) was a location
`
`based intervention based on credit card spending patterns designed to influence
`
`credit card holders on the verge of entering a store with the goal of minimizing
`
`destructive impulse spending habits.
`
`13. As a result of these various projects, I became well-known in the field
`
`of ubiquitous computing as a pioneer in location-based context driven computer
`
`applications and services.
`
`14. My Curriculum Vitae is attached as Exhibit A.
`
`15.
`
`I have been retained by counsel for Petitioner to provide my expert
`
`opinion in connection with the above-captioned proceeding as set forth herein.
`
`B. Materials Considered
`
`16. The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered. In forming
`
`my opinions, I have read and considered U.S. Patent No. 8,489,599 B2 (“’599
`
`patent”) [Ex. 1001] and its prosecution history. I have cited to the following
`
`
`
`10
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`Declaration of
`
`M. Schmandt in Support of
`Christopher
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`documents in my analysis
`
`below:
`
`Exhibit
`No.
`
`Description
`
`of Document
`
`U.S. Patent No. 8,489,599 B2 to Victoria M.E. Bellotti
`(filed
`or “599
`December8, 2008, issued
`July 16, 2013) (’599”
`patent”)
`U.S. Patent No. 7,652,594 B2 to Ivan J. Lamontet al.
`2006, issued January 26, 2010)
`
`(filed April 7,
`
`U.S. Patent No. 8,428,614 B2 to Jason H. Wolfe
`issued
`April 23, 2010)
`
`(filed July 10, 2007,
`
`Ser. No. 60/819,576 to Jason H. Wolfe
`U.S. Provisional
`Application
`to Ex.
`1004) (filed July 10, 2006)
`
`(provisional
`
`Excerpts from Wallace Wang, Beginning Programmingfor
`(1999)
`
`Dummies
`
`US. Patent No. 9,467,530 B2 to Petros
`11, 2006, issued October 11, 2016)
`
`Belimpasakis
`
`et al. (filed April
`
`1007
`
`1008
`
`1009.
`
`If.
`
`PERSON OF ORDINARYSKILL IN THE ART 17.
`
`Excerpts from Scott
`Windows(1995)
`Excerpts from Microsoft Computer Dictionary
`
`Meyers
`
`et al., The Downloader’s Companion for
`
`(5th ed. 2002
`
`J understand that, under the patent laws in effect before the America
`
`Invents Act
`
`(“AIA”)
`
`of 2011,
`
`an assessment of claimsof a
`
`patent filed before the
`
`AIA took effect should be undertaken from the
`
`perspective
`
`of a
`
`person of
`
`ordinary
`
`skill in the art as of the earliest claimed
`
`priority
`
`date (i.e., the “time the invention
`
`was
`
`made”).
`
`I have assumed that date to be December 2, 2008, the date the
`
`ll
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`application for the ’599 patent (Appl. Ser. No. 12/326,457) was filed. I am not aware
`
`of any claim by the Patent Owner to an earlier date of invention, but the opinions
`
`and analysis in this Declaration would not change if the Patent Owner were to later
`
`claim that the ’599 patent was entitled to a priority date sometime in 2008 before
`
`December 2008, in 2007 or earlier.
`
`18.
`
`I have also been advised that to determine the appropriate level of a
`
`person having ordinary skill in the art, the following factors may be considered: (1)
`
`the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (2) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (3) the educational level of active
`
`workers in the field; and (4) the educational level of the inventor.
`
`19. The ’599 patent generally relates to a “techniques and systems for
`
`creating and presenting content to a user,” and more specifically, “techniques and
`
`systems for creating and presenting content based on contextual information.”
`
`(’599, 1:7-11.) The patent describes “a content management system for organizing
`
`and delivering packages of audio and visual content to a user in response to activities
`
`being performed by the user, and in response to a number of environmental factors
`
`associated with the user.” (’599, 3:51-55.)
`
`20.
`
`In my opinion, a person of ordinary skill in the art as of December 2008
`
`
`
`12
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`would have possessed at least a bachelor’s degree in electrical engineering or
`
`computer science, and two years of work experience in multimedia data
`
`communications and user interfaces. A person could also have qualified as a person
`
`of ordinary skill in the art with some combination of (1) more formal education (such
`
`as a master’s of science degree) and less technical experience, or (2) less formal
`
`education and more technical or professional experience in the fields listed above.
`
`21. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 40 years of experience in the field of computer
`
`science, multimedia, and Web technology, my understanding of the basic
`
`qualifications that would be relevant to an engineer or scientist tasked with
`
`investigating methods and systems in the relevant area, and my familiarity with the
`
`backgrounds of colleagues, co-workers, and employees, both past and present.
`
`22. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’599 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of December 2008. As noted, my opinions and analysis
`
`in this Declaration would not change if the relevant timeframe were December 2008
`
`or any time between 2007 and December 2008.
`
`
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`
`23.
`
`I understand that a purpose of claim construction is to determine what
`
`a person of ordinary skill in the art would have understood the claim terms to mean.
`
`Claim terms are generally given their ordinary and customary meaning, which is the
`
`meaning that the term would have to a person of ordinary skill in the art in question
`
`as of the critical date (i.e., either the earliest claimed priority date (pre-AIA) or the
`
`effective filing date (AIA)).
`
`24.
`
`I understand that the person of ordinary skill in the art is deemed to read
`
`the claim term not only in the context of the particular claim in which the disputed
`
`term appears, but in the context of the entire patent, including the specification. I
`
`understand that the patent specification, under the legal principles, has been
`
`described as the single best guide to the meaning of a claim term, and is thus highly
`
`relevant to the interpretation of claim terms. And I understand for terms that do not
`
`have a customary meaning within the art, the specification usually supplies the best
`
`context of understanding the meaning of those terms.
`
`25.
`
`I further understand that other claims of the patent in question, both
`
`asserted and unasserted, can be valuable sources of information as to the meaning of
`
`a claim term. Because the claim terms are normally used consistently throughout
`
`
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
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`the patent, the usage of a term in one claim can often illuminate the meaning of the
`
`same term in other claims. Differences among claims can also be a useful guide in
`
`understanding the meaning of particular claim terms.
`
`26.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence, such as
`
`dictionaries, may also be consulted in construing the claim terms.
`
`27.
`
`I understand that, in Inter Partes Review (IPR) proceedings, a claim of
`
`a 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
`
`understand is called the “Phillips” claim construction standard), including
`
`construing the claim in accordance with the ordinary and customary meaning of such
`
`claim as understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent.
`
`28.
`
`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips” standard
`
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`as provided to me by counsel.
`
`B.
`
`Obviousness
`
`29.
`
`I understand that a patent claim is obvious if, as of the critical date (i.e.,
`
`either the earliest claimed priority date (pre-AIA) or the effective filing date (AIA),
`
`it would have been obvious to a person having ordinary skill in the field of the
`
`technology (the “art”) to which the claimed subject matter belongs.
`
`30.
`
`I understand that the following factors should be considered in
`
`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
`
`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
`
`art. I also understand that certain other facts known as “secondary considerations”
`
`such as commercial success, unexplained results, long felt but unsolved need,
`
`industry acclaim, simultaneous invention, copying by others, skepticism by experts
`
`in the field, and failure of others may be utilized as indicia of nonobviousness. I
`
`understand, however, that secondary considerations should be connected, or have a
`
`“nexus,” with the invention claimed in the patent at issue.
`
`31.
`
`I understand that a reference qualifies as prior art for obviousness
`
`purposes when it is analogous to the claimed invention. The test for determining
`
`what art is analogous is: (1) whether the art is from the same field of endeavor,
`
`regardless of the problem addressed, and (2) if the reference is not within the field
`
`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
`
`particular problem with which the inventor is involved.
`
`32.
`
`I understand that a person of ordinary skill in the art is assumed to have
`
`knowledge of all prior art. I understand that one skilled in the art can combine
`
`various prior art references based on the teachings of those prior art references, the
`
`general knowledge present in the art, or common sense. I understand that a
`
`motivation to combine references may be implicit in the prior art, and there is no
`
`requirement that there be an actual or explicit teaching to combine two references.
`
`Thus, one may take into account the inferences and creative steps that a person of
`
`ordinary skill in the art would employ to combine the known elements in the prior
`
`art in the manner claimed by the patent at issue. I understand that one should avoid
`
`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
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`this does not mean that a person of ordinary skill in the art for purposes of the
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`obviousness inquiry does not have recourse to common sense.
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`33.
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`I understand that when determining whether a patent claim is obvious
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`in light of the prior art, neither the particular motivation for the patent nor the stated
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`purpose of the patentee is controlling. The primary inquiry has to do with the
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`objective reach of the claims, and that if those claims extend to something that is
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`obvious, then the entire patent claim is invalid.
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`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`
`34.
`
`I understand one way that a patent can be found obvious is if there
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`existed at the time of the invention a known problem for which there was an obvious
`
`solution encompassed by the patent’s claims. I understand that a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`understand that a person of ordinary skill is also a person of at least ordinary
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`creativity. I understand when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp. If this finite number of predictable solutions leads to the anticipated
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`success, I understand that the invention is likely the product of ordinary skill and
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`common sense, and not of any sort of innovation. I understand that the fact that a
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`combination was obvious to try might also show that it was obvious, and hence
`
`invalid, under the patent laws. I understand that if a patent claims a combination of
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`
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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`familiar elements according to known methods, the combination is likely to be
`
`obvious when it does not more than yield predictable results. Thus, if a person of
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`ordinary skill in the art can implement a predictable variation, an invention is likely
`
`obvious. I understand that combining embodiments disclosed near each other in a
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`prior art reference would not ordinarily require a leap of inventiveness.
`
`35.
`
`I understand that obviousness may be shown by demonstrating that it
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`would have been obvious to modify what is taught in a single piece of prior art to
`
`create the patented invention. Obviousness may also be shown by demonstrating
`
`that it would have been obvious to combine the teachings of more than one item of
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`prior art. I understand that a claimed invention may be obvious if some teaching,
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`suggestion, or motivation exists that would have led a person of ordinary skill in the
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`art to combine the invalidating references. I also understand that this suggestion or
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`motivation may come from the knowledge of a person having ordinary skill in the
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`art, or from sources such as explicit statements in the prior art. I understand that
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`when there is a design need or market pressure, and there are a finite number of
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`predictable solutions, a person of ordinary skill may be motivated to apply common
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`sense and his skill to combine the known options in order to solve the problem.
`
`36.
`
`I understand the following are examples of approaches and rationales
`
`that may be considered in determining whether a piece of prior art could have been
`
`
`
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`

`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`combined with other prior art or with other information within the knowledge of a
`
`person having ordinary skill in the art:
`
`(1)
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`Some teaching, motivation, or suggestion in the prior art that would
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`have led a person of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention;
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`(2) Known work in one field of endeavor may prompt variations of it for
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`use in the same field or a different field based on design incentives or other
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`market forces if the variations would have been predictable to a person of
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`ordinary skill in the art;
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`(3) Combining prior art elements according to known methods to yield
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`predictable results;
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`(4) Applying a known technique to a known device, method, or product
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`ready for improvement to yield predictable results;
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`(5) Applying a technique or approach that would have been “obvious to
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`try” (choosing from a finite number of identified, predictable solutions, with
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`a reasonable expectation of success);
`
`(6)
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`Simple substitution of one known element for another to obtain
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`predictable results; or
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`
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`

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`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,489,599 B2
`
`
`(7) Use of a known technique to improve similar products, devices, or
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`methods in the same way.
`
`37.
`
`I understand that, when determining whether a claimed combination is
`
`obvious, the correct analysis is not whether one of ordinary skill in the art, writing
`
`on a blank slate, would have chosen the particular combination of elements
`
`describ