Patent No. 9,552,376
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` Declaration of Rajeev Surati, Ph.D
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 9,552,376
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`Inter Partes Review No. IPR2022-00032
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`DECLARATION OF RAJEEV SURATI, PH.D
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` Declaration of Rajeev Surati, Ph.D
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
`Petitioner
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`v.
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`MEMORYWEB, LLC
`Patent Owner
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`Patent No. 9,552,376
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`Inter Partes Review No. IPR2022-00032
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`DECLARATION OF RAJEEV SURATI, PH.D
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` Declaration of Rajeev Surati, Ph.D
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`I, Rajeev Surati, Ph.D., declare as follows:
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`1.
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`I make this declaration based upon my own personal knowledge and,
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`if called upon to testify, would testify competently to the matters stated herein.
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`2.
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`I have been retained on behalf of MemoryWeb, LLC, (“MemoryWeb”
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`or “Patent Owner”) as an independent expert consultant to provide this declaration
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`concerning the technical subject matter relevant to U.S. Patent No. 9,552,376 (“the
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`‘376 patent”) in connection with an inter partes review (“IPR”) petition filed by
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`Apple, Inc. (“Petitioner”).
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`3.
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`I am being compensated at my standard hourly rate of $550 per hour
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`for the time I spend on this matter. My compensation is not based on the content
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`of my opinions or the resolution of this matter, and I have no other interest in this
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`proceeding.
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`4.
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`In this declaration, I offer my expert opinion regarding the technical
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`subject matter of claims 1-12 of the ‘376 patent. Specifically, I have considered
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`whether the challenged claims are valid under 35 U.S.C. § 103. The substance and
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`bases of my opinions appear below.
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`I.
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` Declaration of Rajeev Surati, Ph.D
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`BACKGROUND AND QUALIFICATIONS
`5.
`In formulating my opinions, I have relied on my knowledge, training,
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`and experience in the relevant field, which I will summarize briefly here. In
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`addition, my curriculum vitae (CV) is attached to this declaration.
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`6.
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`I hold a Doctor of Philosophy in Electrical Engineering and Computer
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`Science from the Massachusetts Institute of Technology (awarded in 1999) with a
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`Grade Point Average of 5.0/5.0. I obtained a Master of Science in Electrical
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`Engineering and Computer Science from the Massachusetts Institute of
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`Technology (awarded in 1995) with a Grade Point Average of 5.0/5.0. I have a
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`Bachelor of Science in Electrical Engineering from the Massachusetts Institute of
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`Technology (awarded 1992) and graduated with a Grade Point Average of 4.9/5.0.
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`7. My Ph.D. thesis was entitled “Scalable Self-Calibrating Technology
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`for Large Scale Displays.” My Master's thesis was entitled “Practical Partial
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`Evaluation.” My Undergraduate thesis, which I received the MIT EECS’s William
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`A. Martin thesis prize for best undergraduate thesis, was entitled “A Parallelizing
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`Compiler based on Partial Evaluation.” Lastly, I was awarded the highly selective
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`Department of Energy’s Computational Science Fellowship in 1995, which funded
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`my Ph.D. studies.
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`8.
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`Between 1989 and 1999 I was employed as a researcher/programmer
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`at the MIT Artificial Intelligence Lab. At the lab, I worked for Thomas F. Knight
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`Jr., Ph.D. He is one of the noted inventors of the first bit-mapped displays for
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`computers, a core programmer on the ITS (intelligent time-sharing operating
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`system), creator of several innovations in VLSI, and most recently noted as being
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`one of the grandfathers of synthetic biology. I also worked for Professor Anant
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`Agarwal on parallel computing and Professors Hal Abelson and Gerald J. Sussman
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`on parallel and scientific computing.
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`9.
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`In 1996, I began working on a Ph.D. thesis related to the display of
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`multimedia across large displays. My Ph.D. thesis system was a special kind of
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`display allowing one to create ultra-high-resolution displays composed of multiple
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`projectors tiled with a slight overlap. A camera-based feedback system is used to
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`create an inverse map to drive the system such that a person would only see a
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`continuous, seamless display with no bezel or overlap. What content and how to
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`drive it onto the display was a topic I became familiar with. Also, at this time,
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`several interactive TV projects were going on at MIT, which I had exposure to
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`from this vantage, especially concerning the idea that these large displays would be
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`in the living rooms of the future. Thus, I became familiar with content
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`encoding/decoding, user interfaces for driving large displays, multimedia content
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`storage, high-resolution imagery, networks, recording, GPUs, storage of content,
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`etc.
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`10.
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`In 2002, MIT was awarded U.S. Patent 6,456,339, entitled “Super-
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`resolution Display,” for my Ph.D. work. Today this technology is better known as
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`automatic calibration for projection mapping. My experience, along with a patent I
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`developed and licensed based on my Ph.D. thesis, were used to create a new
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`startup company called Scalable Display Technologies that works with a variety of
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`Pro AV display companies’ products.
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`11. While at MIT pursuing my doctorate, I started a company called Flash
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`Communications in 1997, which invented an instant messaging platform focused
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`on enterprise needs. It had its basis from my having observed the popularity at
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`MIT of the Zephyr Instant Messaging Service from 1988 onwards. Given this
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`enterprise focus, Microsoft soon acquired the company in 1998. We built both a
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`client and server product, and the basic protocol we invented became the basis of
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`the well-known XMPP protocol that was widely used in the mid-2000s among
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`instant messaging providers. I worked on developing both the client and server
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`products and particularly dealt with many, if not all, of the issues one might have
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`to face when implementing contact lists.
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`12. Upon graduation, I joined Microsoft (as was required by Microsoft in
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`the acquisition of Flash Communications) and worked on both client and server
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`technologies related to instant messaging, covering both the Microsoft Exchange
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`Instant Messaging product that was released in 2000 and MSN Messenger. At
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`Microsoft, I also worked on the client and server side of the products.
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`13. At Microsoft, I participated in development of the Instant Messaging
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`and Presence Protocol (IMPP), which was at least partially derived from a similar
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`protocol that I worked on at Flash. The IMPP protocol was later incorporated into
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`the Extensible Messaging and Presence Protocol (XMPP) protocol that was used
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`widely for instant messaging by Microsoft, Google, Cisco, Jabber, and several
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`others.
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`14. As this XMPP adoption was going on, there was further internal
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`discussion regarding the Session Initiation Protocol (SIP) protocol, which was
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`eventually adopted more broadly by Microsoft for Instant Messaging. The SIP
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`protocol is used for signaling and controlling multimedia communication sessions
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`in applications of Internet telephony for voice and video calls, instant messaging
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`over Internet Protocol (IP) networks, as well as mobile phone calling over LTE
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`(VoLTE). While working at Flash and Microsoft, I was personally responsible for
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`developing source code for parsing and processing input messages and generating
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`output messages in accordance with the above-described protocols, and thus I have
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`an extensive working knowledge of many different protocols used in multimedia
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`communications systems. Furthermore, I worked on an SDK integrating the
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`Exchange Servers with the MSN Servers.
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`15.
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`In 2002, I served as a technical consultant for Cordant
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`Communication, which was founded for the purpose of archiving instant messages.
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`During this time period, I also served as an informal adviser to IMLogic, which
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`also worked on message archiving. Later in 2007, I served as a technical adviser to
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`Unify Square, which built software to manage Microsoft telephony and messaging
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`solutions deployed in Fortune 500 companies. Unify Square was recently sold to
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`Unisys.
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`16. From 2000 to 2007, I cofounded, led, and sold a business called
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`photo.net to Namemedia, which is now part of GoDaddy.com. In 2000, while
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`running the site, I worked on many features including a chat feature, a WAP
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`interface to photo.net, and a rich user interface based on JavaScript. Photo.net for
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`a time in early 2000 was considered a top 1,000 website so it received large
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`amounts of traffic. Having built the site from running on a single computer that I
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`installed in a datacenter to a full rack of computers in that data center, I became
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`very familiar with the careful design and programming one needs to employ in
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`building and maintaining such systems. I became intimately familiar with
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`implementing file systems for use with multimedia and super high performance
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`image encoding/decoding systems as well as real time delivery of high bandwidth
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`content.
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`17. At photo.net, we prototyped many fundamental Internet community
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`features such as photo sharing, social networking, and memberships in the late
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`1990s and early 2000s. This system was written on top of Oracle SQL Database
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`and had to serve up many millions of web pages a day (corresponding to millions
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`of records), with high volume inserts and also incorporated an ecommerce system
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`used for billing of subscriptions, tracking users etc. I spent seven years running the
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`site both writing new features driven by the Oracle SQL database and maintaining
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`tables with many millions of records being generated. I also served as the database
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`administrator for seven years, which provided me with personal and extensive
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`operational experience running such a system, dealing with database query speed-
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`up and more mundane day-to-day issues regarding maintaining relational databases
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`such as backups, etc.
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`18.
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`I also worked with the team at ArsDigita including Dr. Philip
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`Greenspun, who created the photo.net site as a hobby in 1993 while we were at
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`MIT, and who asked me to cofound the business with him in 1999 when I came
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`back from Microsoft. ArsDigita built public open source community web site
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`creation tools similar to what people today call Drupal on which many thousands
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`of websites were built, including both enterprise and consumer web sites.
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`ArsDigita’s product came out of the work to develop photo.net, and photo.net
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`served as a prime example site of one using the ArsDigita System as its underlying
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`content management system.
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`19. The photo sharing system on photo.net was built on top of a photo
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`database engine called PhotoDB including features like key word tagging and even
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`making custom fields that users could customize for making their own personal
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`tables. Thus, my experience with photo database is quite relevant to the matter at
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`hand.
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`20. Because photo.net was focused on high-end amateur photographers, I
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`worked with many consumer electronics manufacturers in the digital camera
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`business. There, I implemented a photo sharing system involving the delivery of
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`multimedia content. Additionally, I worked on e-commerce capabilities that
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`involved some product configuration options. In running photo.net, I became
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`intimately familiar with implementing file systems for use with multimedia and
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`super high performance image encoding/decoding systems as well as real time
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`delivery of high bandwidth content.
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`21. Messaging and broadcasting content were a core part of the offering
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`of the site, and I managed the implementation and hosting aspect of setting up and
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`running various SMTP, MTA, WAP, and SMS servers to enable communication
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`with our user base. In that regard, WAP PUSH, which is a relevant protocol to
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`messaging, was something I worked on as well at the time.
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`22.
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`In 2001, I became involved with helping a rich user interface (UI)
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`web company, Nexaweb, as both an investor and advisor. In that role, I worked on
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`the underlying infrastructure for a device independent (mobile device, PC, etc.)
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`way to write UIs for web application utilizing Java as a rendering engine backed
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`by web server backend. Underlying that technology required providing server
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`pushes over http. At that time JavaScript could provide a UI but it was not
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`standardized across browsers, which made it hard to implement reliable systems
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`that worked across browsers—especially ones that required server push underneath
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`it.
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`23.
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`In 2004, I founded Scalable Display Technologies (SDT) and I have
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`been the President and Chairman of the company since the founding. Among its
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`operations, SDT operates in the Audio Video domain and has licensed software
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`and firmware to various companies including Hitachi and NEC. I also wrote a
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`network synchronized media playback system involving encoding and decoding of
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`video and audio content as well as real time recording and video capture, a product
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`known as “ScalablePlayer.” I was also involved in building a network architecture
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`using both broadcast and point-to-point communication mechanisms.
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`24. Also, as detailed in my attached CV, I am an inventor of subject
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`matter in approximately 10 U.S. Patents. I have also received additional patents,
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`including: U.S. Patent No. 8,817,111, entitled “System and method of calibrating a
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`display system free of variation in system input resolution”; U.S. Patent No.
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`8,994,757, “System and method for providing improved display quality by display
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`adjustment and image processing using optical feedback”; U.S. Patent No.
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`9,215,455, “System and method of calibrating a display system free of variation in
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`system input resolution”; U.S. Patent No. 9,369,683, “System and method for
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`calibrating a display system using manual and semi-manual techniques”; and U.S.
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`Patent No. 9,497,447, “System and method for color and intensity calibrating of a
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`display system for practical usage.”
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`25.
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`I am co-inventor of patented technology related to instant messaging
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`upon I which focused on technology related to U.S. Patent No. 5,943,478 and
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`associated technology that I had developed related to pop-up, two-way messaging
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`over the Internet. While at Microsoft, I was an inventor on several patents
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`including: U.S. Patent No. 6,260,148 relating to methods and systems for message
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`forwarding and property notifications using electronic subscriptions; and U.S.
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`Patent Nos. 6,415,318 and 6,604,133 relating to inter-enterprise messaging systems
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`using bridgehead servers. Aspects of these patents relate specifically to messaging
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`and notification technology in telecommunications systems.
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`26.
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`I am on the advisory boards of several technology companies,
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`including: Paneve, which develops general purpose ASICs coupled with compiler
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`technology; Nexaweb, which develops real-time web application frameworks using
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`HTTPS; Antix Labs, which develops compiler technology for a universal gaming
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`platform; and Permabit, which develops content addressable storage.
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`27.
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`I have received several awards for my contributions as an inventor
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`and entrepreneur, including the Global Indus. Technovator Award 2009 and
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`Laureate of 2009 Computer World Honors Program.
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`28.
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`In parallel with my work at SDT, I lectured at MIT on many subjects
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`including the Android operating system, and I worked with a group of students on
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`developing mobile applications for Android in 2008 with Rich Miner, who is a co-
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`founder of Android. Many students created applications involving Google Maps
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`and localization, so I was familiar with these. I also served as a lecturer and
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`mentor at MIT Playas, which was an incubator for augmented reality (AR) and
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`virtual reality (VR) software for mobile handsets and headset applications.
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`Notably in addition to mobile handsets, Android runs on the Oculus headset. As
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`part of that program, I worked with several startup companies on mobile
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`applications including one that developed applications for Telegram, which is a
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`cross-platform, cloud-based instant messaging system.
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`29. Since 2014, I have been working as an independent consultant for
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`several companies including NEC, Hitachi, Hi Marley, and Estee Lauder.
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`30.
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`In 2018, I became a senior partner at nCent Labs. In this role, I
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`consulted on the development of an incentive market-based platform for block
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`chains and cryptocurrency. Part of my work at nCent Labs focused on the
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`development of SMS messaging applications for the nCent platform.
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`31. Between 2019 and 2020, I served as a Technical Lead at Hydrow,
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`which is a startup company that develops indoor rowing machines. In this role, I
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`worked on special projects including development of a virtual reality experience
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`using Magic Leap and Oculus to immerse users in a world of rowing crew based
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`on virtual reality (VR) cinematography.
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`32.
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`I have published numerous papers on subjects relating to computing
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`systems, computer network communications, databases, and other subjects within
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`the realm of electrical and computer engineering.
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`33.
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`In 2020, I started a company called Skyline Nav AI Inc. that develops
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`technology using visual location (using skyline) to geo-locate the place a picture
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`was taken as an alternative to GPS.
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`34. Over the past decade, I have served as a technical consultant and
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`expert witness on matters relating to numerous patent infringement cases. In the
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`course of this work, I have provided consulting services to a wide variety of
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`technology companies including BritishTelecom, Apple, IBM, Philips, Shopify,
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`Zillow, Polaris Powered Technologies, Amazon, Salesforce, Hitachi, Slack, Harris
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`Teeter, and others.
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`35.
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` I have been teaching a Big Data Class at Harvard Medical School one
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`month of every year since 2018. The name of the class is “Computationally
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`Enabled Medicine.”
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`36. Finally, for the last 10 years I have served as an Angel Investor and
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`also as a mentor for startup companies as part of different programs at MIT.
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`II. MATERIALS CONSIDERED
`37.
`In forming the opinions set forth in herein, I have considered and
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`relied upon my education, knowledge of the relevant field, and my experience. I
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`have also reviewed and considered the ‘376 patent (Ex. 1001), the ‘376 patent’s
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`file history (Ex. 1002), and at least the following additional materials:
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` Apple Inc.’s Petition for Inter Partes Review of the ‘376 Patent (“the ‘376
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`Petition”) (Paper 1)
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` The Board’s IPR Institution Decision for the ‘376 patent (Paper 12)
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` PGR2022-00006, Paper 1
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` U.S. Patent No. 9,552,376 (Ex. 1001)
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` File history of U.S. Patent No. 9,552,376 (Ex. 1002)
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` Declaration of Dr. Loren Terveen Regarding U.S. Patent No. 9,552,376
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`(hereinafter, “Ex. 1003”)
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` Aperture 3 User Manual (“A3UM”) (Ex. 1005)
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` U.S. Patent Pub. No. 2010/0058212 (“Belitz”) (Ex. 1006)
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` U.S. Patent No. 7,620,496 to Rasmussen (Ex. 1025)
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` Aperture 3 Installation DVD purchased by counsel for Patent Owner
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` U.S. Patent App. Pub. No. 2011/0074811 (Ex. 1028)
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` Todd Bogdan, Announcing Picassa 3.5, now with name tags, better
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`geotagging and more, The Official Google Blog (Sept. 22, 2009)
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`(Archive.org Nov. 11, 2009) (Ex. 1032)
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` Stephen Shankland, What’s the best Web site for geotagged photos?, CNET
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`(Mar. 18, 2009) (Ex. 1033)
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` Panoramio, Embedding a Panoramio map into your web page, (Archive.org
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`Mar. 28, 2010) (Ex. 1034)
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` Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt Publishing (2007)
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`(Ex. 1035)
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` Google Code, Google Maps API Reference (Ex. 1040)
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` Devin Coldewey, Review: Aperture 3, CrunchGear (Archive.org Mar. 22,
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`2010) (Ex. 1044)
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` Tony Wu, Using Aperture 3: Part 1 (Archive.org Apr. 2, 2010) (Ex. 1045)
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` U.S. Patent App. Pub. No. 2007/0030391 to Kim (Ex. 1049)
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` U.S. Patent No. 7,978,936 (Ex. 1050)
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` Allan Hoffman, Create Great iPhone Photos: Apps, Tips, Tricks, and
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`Effects, No Starch Press, Inc. (Copyright 2011) (Ex. 2004)
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` U.S. Patent Publication No. 2010/0171763 (“Bhatt”) (Ex. 2005)
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` Aperture 3 Software License Agreement (Ex. 2007)
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` Devin Coldewey, Review: Aperture 3, CrunchGear
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`(https://techcrunch.com/2010/03/19/review-aperture-3/) (last accessed Feb.
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`2, 2022) (Ex. 2014)
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` Hilary Greenbaum, Who Made Google’s Map Pin?, The New York Times,
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`(Apr. 18, 2011) (Ex. 2015)
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` Google Developers, Customizing a Google Map: Custom Markers (last
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`accessed Feb. 17, 2022) (Ex. 2016)
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` KML4Earth, Google Earth/Maps Public Icons,
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`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27, 2012)
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`(2017)
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` KML4Earth, Google Earth/Maps Public Icons,
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`http://kml4earth.appspot.com:80/icons.html (Archive.org May 27, 2012)
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` U.S. Pat. Pub. No. 2007/0282908 (“Van der Meulen”) (Ex. 2019)
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`Apple v. MemoryWeb – IPR2022-00032
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`
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`Patent No. 9,552,376
`IPR2022-00032
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`
`
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` Declaration of Rajeev Surati, Ph.D
`
` Wilbert O. Galitz, “The Essential Guide to User Interface Design: An
`
`Introduction to GUI Design Principles and Techniques,” Wiley Publishing,
`
`Inc. (3rd Ed.) (2007) (Ex. 2022)
`
` Deposition Transcript of Dr. Loren Terveen, Vol. I (Sept. 13, 2022) (Ex.
`
`2023)
`
` Deposition Transcript of Dr. Loren Terveen, Vol. II (Sept. 14, 2022) (Ex.
`
`2024)
`
` Deposition Transcript of Mr. Matthew Birdsell (Aug. 11, 2022) (Ex. 2026)
`
` eBay Receipt (August 15, 2022) (Ex. 2032)
`
` Jennifer Tidwell, Designing Interfaces, O’Reilly (1st Ed. 2005) (2033)
`
`III. LEGAL STANDARDS
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`38.
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`I am not a patent attorney nor have I independently researched the law
`
`on patentability. I have a general understanding of validity, prior art and priority
`
`date based on my discussions with counsel.
`
`A. Claim Construction
`
`39.
`
`I understand that claim construction is the process by which a court
`
`determines the scope and meaning of terms used in the claims of a patent. I
`
`understand that the goal of this process is to give claim terms the ordinary and
`
`customary meaning they would have had to a person of ordinary skill in the art
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`
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`(“POSITA”) at the time of the invention, after reading the entire patent and its
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` Declaration of Rajeev Surati, Ph.D
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`
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`prosecution history.
`
`40.
`
`I understand that it is possible that the patent specification may reveal
`
`a special definition given to a claim term by the patentee that differs from the
`
`meaning it would otherwise have to a POSITA. In such cases, I understand that
`
`the patentee’s definition usually controls.
`
`41.
`
`I understand that the prosecution history of a patent can inform the
`
`meaning of some claim language and must be taken into account in construing the
`
`claims.
`
`42.
`
`I understand that, in some cases, the court may consider extrinsic
`
`evidence, such as dictionaries, treatises, and expert opinions, to understand the
`
`underlying technology and the way in which claim terms would be understood by a
`
`POSITA at the relevant time.
`
`43.
`
`I understand that a dependent claim incorporates each and every
`
`limitation of the claim or claims from which it depends
`
`B. Anticipation
`
`44.
`
`I understand that anticipation analysis is a two-step process. The first
`
`step is to determine the meaning and scope of the asserted claims. Each claim
`
`must be viewed as a whole, and it is improper to ignore any element of the claim.
`
`For a claim to be anticipated under U.S. patent law: (1) each and every claim
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`Patent No. 9,552,376
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`element must be identically disclosed, either explicitly or inherently, in a single
`
` Declaration of Rajeev Surati, Ph.D
`
`
`
`prior art reference; (2) the claim elements disclosed in the single prior art reference
`
`must be arranged in the same way as in the claim; and (3) the identical invention
`
`must be disclosed in the single prior art reference, in as complete detail as set forth
`
`in the claim. Where even one element is not disclosed in a reference, the
`
`anticipation contention fails. Moreover, to serve as an anticipatory reference, the
`
`reference itself must be enabled, i.e., it must provide enough information so that a
`
`person of ordinary skill in the art can practice the subject matter of the reference
`
`without undue experimentation.
`
`45.
`
`I further understand that where a prior art reference fails to explicitly
`
`disclose a claim element, the prior art reference inherently discloses the claim
`
`element only if the prior art reference must necessarily include the undisclosed
`
`claim element. Inherency may not be established by probabilities or possibilities.
`
`The fact that an element may result from a given set of circumstances is not
`
`sufficient to prove inherency. I have applied these principles in forming my
`
`opinions in this matter.
`
`C. Obviousness
`46.
`I understand that a patent claim is invalid under 35 U.S.C. § 103 as
`
`being obvious only if the differences between the claimed invention and the prior
`
`art are such that the subject matter as a whole would have been obvious at the time
`
`
`
`17
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`Patent No. 9,552,376
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`the invention was made to a person of ordinary skill in that art. An obviousness
`
` Declaration of Rajeev Surati, Ph.D
`
`
`
`analysis requires consideration of four factors: (1) scope and content of the prior
`
`art relied upon to challenge patentability; (2) differences between the prior art and
`
`the claimed invention; (3) the level of ordinary skill in the art at the time of the
`
`invention; and (4) the objective evidence of nonobviousness, such as commercial
`
`success, unexpected results, the failure of others to achieve the results of the
`
`invention, a long-felt need which the invention fills, copying of the invention by
`
`competitors, praise for the invention, skepticism for the invention, or independent
`
`development.
`
`47.
`
`I understand that a prior art reference is proper to use in an
`
`obviousness determination if the prior art reference is analogous art to the claimed
`
`invention. I understand that a prior art reference is analogous art if at least one of
`
`the following two considerations is met. First, a prior art reference is analogous art
`
`if it is from the same field of endeavor as the claimed invention, even if the prior
`
`art reference addresses a different problem and/or arrives at a different solution.
`
`Second, a prior art reference is analogous art if the prior art reference is reasonably
`
`pertinent to the problem faced by the inventor, even if it is not in the same field of
`
`endeavor as the claimed invention.
`
`48.
`
`I understand that it must be shown that one having ordinary skill in
`
`the art at the time of the invention would have had a reasonable expectation that a
`18
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`MemoryWeb Ex. 2025
`Apple v. MemoryWeb – IPR2022-00032
`
`
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`Patent No. 9,552,376
`IPR2022-00032
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`modification or combination of one or more prior art references would have
`
` Declaration of Rajeev Surati, Ph.D
`
`
`
`succeeded. Furthermore, I understand that a claim may be obvious in view of a
`
`single prior art reference, without the need to combine references, if the elements
`
`of the claim that are not found in the reference can be supplied by the knowledge
`
`or common sense of one of ordinary skill in the relevant art. However, I
`
`understand that it is inappropriate to resolve obviousness issues by a retrospective
`
`analysis or hindsight reconstruction of the prior art and that the use of “hindsight
`
`reconstruction” is improper in analyzing the obviousness of a patent claim.
`
`49.
`
`I further understand that the law recognizes several specific guidelines
`
`that inform the obviousness analysis. First, I understand that a reconstructive
`
`hindsight approach to this analysis, i.e., the improper use of post-invention
`
`information to help perform the selection and combination, or the improper use of
`
`the listing of elements in a claim as a blueprint to identify selected portions of
`
`different prior art references in an attempt to show that the claim is obvious, is not
`
`permitted. Second, I understand that any prior art that specifically teaches away
`
`from the claimed subject matter, i.e., prior art that would lead a person of ordinary
`
`skill in the art to a specifically different solution than the claimed invention, points
`
`to non-obviousness, and conversely, that any prior art that contains any teaching,
`
`suggestion, or motivation to modify or combine such prior art reference(s) points
`
`to the obviousness of such a modification or combination. Third, while many
`19
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`
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`MemoryWeb Ex. 2025
`Apple v. MemoryWeb – IPR2022-00032
`
`
`
`Patent No. 9,552,376
`IPR2022-00032
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`combinations of the prior art might be “obvious to try,” I understand that any
`
` Declaration of Rajeev Surati, Ph.D
`
`
`
`obvious to try analysis will not render a patent invalid unless it is shown that the
`
`possible combinations are: (1) sufficiently small in number so as to be reasonable
`
`to conclude that the combination would have been selected; and (2) such that the
`
`combination would have been believed to be one that would produce predictable
`
`and well understood results. Fourth, I understand that if a claimed invention that
`
`arises from the modification or combination of one or more prior art references
`
`uses known methods or techniques that yield predictable results, then that factor
`
`also points to obviousness. Fifth, I understand that if a claimed invention that
`
`arises from the modification or combination of one or more prior art references is
`
`the result of known work in one field prompting variations of it for use in the same
`
`field or a different one based on design incentives or other market forces that
`
`yields predicable variations, then that factor also points to obviousness. Sixth, I
`
`understand that if a claimed invention that arises from the modification or
`
`combination of one or more prior art references is the result of routine
`
`optimization, then that factor also points to obviousness. Seventh, I understand
`
`that if a claimed invention that arises from the modification or combination of one
`
`or more prior art references is the result of a substitution of one known prior art
`
`element for another known prior art element to yield predictable results, then that
`
`factor also points to obviousness.
`
`
`
`20
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`MemoryWeb Ex. 2025
`Apple v. MemoryWeb – IPR2022-00032
`
`
`
`Patent No. 9,552,376
`IPR2022-00032
`
`
`
`
` Declaration of Rajeev Surati, Ph.D
`
`50.
`
`I understand that each alleged prior art reference in a proposed
`
`obv
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