IPR2022-00032
`
`U.S. Patent No. 9,552,376
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`MEMORYWEB, LLC,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2022-00032
`U.S. Patent No. 9,552,376
`
`––––––––––––––––––
`
`DECLARATION OF DR. LOREN TERVEEN REGARDING
`U.S. PATENT NO. 9,522,376
`
`Petitioners – EX1003, Cover
`
`

`

`IPR2022-00032
`
`U.S. Patent No. 9,552,376
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`I do hereby declare and state, that all statements made herein of 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, under Section 1001 of Title 18 of the United States Code.
`
`
`
`Dated: 11/8/2021
`
`
`
`
`
`
`
`
`
`
`
`
`Dr. Loren Terveen
`
`
`
`
`Petitioner Apple Inc. – EX1003, p. i
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`

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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`TABLE OF CONTENTS
`
`II.
`
`Exhibits Considered ................................................................................................. v
`I.
`INTRODUCTION ......................................................................................... 1
`A.
`Background and Qualifications ............................................................. 1
`B.
`Compensation ........................................................................................ 5
`C.
`Information Considered ......................................................................... 5
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 6
`A. Anticipation ........................................................................................... 8
`B.
`Obviousness ........................................................................................... 9
`III. BACKGROUND OF THE ’376 PATENT ................................................ 15
`A.
`Priority Date ........................................................................................ 15
`B.
`Level of Ordinary Skill and the Date Used for Measuring the State of
`the Art .................................................................................................. 15
`Overview of the ’376 Patent ................................................................ 16
`C.
`Prosecution History of the ’376 Patent ............................................... 22
`D.
`Claim Construction ............................................................................. 23
`E.
`IV. OVERVIEW OF THE PRIOR ART ......................................................... 23
`A.
`Technical Background ......................................................................... 23
`B.
`Aperture 3 User Manual (“A3UM”) (EX1005) .................................. 34
`1.
`Publication of A3UM ................................................................ 34
`a.
`Retail Copies of Aperture 3 ............................................ 35
`b. Website Compilation ...................................................... 51
`2.
`Overview of A3UM .................................................................. 55
`U.S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al. (“Belitz”)
`(EX1006) ............................................................................................. 60
`D. U.S. Patent No. 7,620,496 to Rasmussen (“Rasmussen,” EX1025) ... 64
`V. ANALYSIS OF THE PRIOR ART AND ’376 PATENT CLAIMS ....... 65
`
`C.
`
`Petitioner Apple Inc. – EX1003, p. ii
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`A.
`
`b.
`
`2.
`
`Claims 1-12 Are Obvious Over A3UM (EX1005) and Belitz
`(EX1006) ............................................................................................. 65
`1.
`Obvious Combination of A3UM, Belitz, and Rasmussen ........ 65
`a.
`A Skilled Artisan Would Have Been Motivated to
`Combine A3UM and Belitz ............................................ 65
`A Skilled Artisan Would Have Been Further Motivated
`to Combine A3UM and Belitz with Rasmussen ............ 77
`Claim 1 ...................................................................................... 82
`a.
`Preamble and Storing Step ............................................. 82
`b. Map View and Interactive Map ...................................... 87
`c.
`First and Second User Selectable Thumbnail Images .... 95
`d.
`First and Second Count Value Images ......................... 101
`e.
`First and Second Location Views ................................. 105
`f.
`First and Second Map Images ...................................... 110
`Claim 2 .................................................................................... 121
`Claim 3 .................................................................................... 122
`Claim 4 .................................................................................... 127
`Claim 5 .................................................................................... 130
`a.
`Preamble and Storing Step ........................................... 130
`b.
`Displaying Step ............................................................. 131
`c.
`First User Selectable Element (“Person”) .................... 131
`d.
`Second User Selectable Element (“Location”) ............ 132
`e.
`People View .................................................................. 133
`f.
`Location View .............................................................. 135
`Claim 6 .................................................................................... 136
`Claim 7 .................................................................................... 137
`a.
`Receiving Step .............................................................. 137
`b. Modifying Step ............................................................. 139
`c.
`Exporting Step .............................................................. 142
`
`3.
`4.
`5.
`6.
`
`7.
`8.
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`Petitioner Apple Inc. – EX1003, p. iii
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`9.
`Claim 8 .................................................................................... 143
`10. Claim 9 .................................................................................... 144
`11. Claim 10 .................................................................................. 145
`12. Claim 11 .................................................................................. 146
`13. Claim 12 .................................................................................. 147
`a.
`Preamble ....................................................................... 147
`b.
`Storing Step .................................................................. 149
`c. Map View and Interactive Map .................................... 150
`d.
`First and Second User Selectable Thumbnail Images .. 151
`e.
`First and Second Count Value Images ......................... 152
`f.
`First and Second Location Views ................................. 153
`g.
`First and Second Map Images ...................................... 154
`h.
`Slideshow View ............................................................ 155
`i.
`First Mini-Search Engine Tag (“Location”) ................. 156
`j.
`Second Mini-Search Engine Tag (“Person”) ................ 158
`
`
`
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`Petitioner Apple Inc. – EX1003, p. iv
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`EXHIBITS CONSIDERED
`
`Exhibit Description
`No.
`1001 U.S. Patent No. 9,552,376
`1002 File History of U.S. Patent No. 9,552,376
`1003 Declaration of Dr. Loren Terveen regarding U.S. Patent No. 9,552,376
`1004 CV of Dr. Loren Terveen
`1005 Aperture 3 User Manual, Apple Inc. (Feb. 2010) (“A3UM”)
`1006 U.S. Patent App. Pub. No. 2010/0058212 A1 to Belitz et al. (“Belitz”)
`1008 U.S. Patent No. 8,160,400 to Snavely et al.
`1010 U.S. Patent No. 9,098,531 (“’531 patent”)
`1012 U.S. Patent No. 10,423,658 (“’658 patent”)
`1013 U.S. Patent No. 10,621,228 (“’228 patent”)
`1014 U.S. Patent No. 11,017,020 (“’020 patent”)
`1015 File History of U.S. Patent No. 9,098,531
`1017 File History of U.S. Patent No. 10,423,658
`1018 File History of U.S. Patent No. 10,621,228
`1019 File History of U.S. Patent No. 11,017,020
`1020 Declaration of Matthew Birdsell
`1021 Apple Inc., www.apple.com (various) (Archive.org: Feb. 17 to Mar. 5,
`2010)
`1022 Standard Affidavit, Internet Archive (Oct. 8, 2021), available at
`https://archive.org/legal/affidavit.php
`1025 U.S. Patent No. 7,620,496 to Rasmussen
`1028 U.S. Patent App. Pub. No. 2011/0074811 A1 to Hanson et al.
`1029 Top 11 Technologies of the Decade, IEEE Spectrum, pp. 27-63 (Jan.
`2011).
`1030 Wikipedia Entry for “Photo sharing” (Archive.org: May 6, 2011),
`available at https://web.archive.org/web/20110506092919/
`http:/en.wikipedia.org/wiki/Photo_sharing
`
`Petitioner Apple Inc. – EX1003, p. v
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`Exhibit Description
`No.
`1031 Wikipedia Entry for “Image organizer” (Archive.org: Apr. 27, 2010),
`available at https://web.archive.org/web/20100427092553/
`https:/en.wikipedia.org/wiki/Image_organizer
`1032 Todd Bogdan, “Announcing Picasa 3.5, now with name tags, better
`geotagging and more,” The Official Google Blog (Sept. 22, 2009)
`(Archive.org: Nov. 11, 2009), available at
`https://web.archive.org/web/20091103113337/
`http://googlephotos.blogspot.com/2009/09/announcing-picasa-35-
`now-with-name-tags.html
`1033 Stephen Shankland, “What’s the best Web site for geotagged photos?,”
`CNET (Mar. 18, 2009), available at
`https://www.cnet.com/tech/computing/whats-the-best-web-site-for-
`geotagged-photos/
`1034 Panoramio, “Embedding a Panoramio map into your web page”
`(Archive.org: Mar. 28, 2010), available at
`https://web.archive.org/web/20100328215828/
`http://www.panoramio.com/help/embedding
`1035 Shu-Wai Chow, PHP Web 2.0 Mashup Projects, Packt Publishing
`(2007)
`1036 Exchangeable image file format for digital still cameras: Exif Version
`2.2, JEITA CP-3451 (Apr. 2002), available at
`https://www.exif.org/Exif2-2.PDF.
`Information Interchange Model Version 4, IPTC-NAA (July 1999)
`1037
`1038 Guidelines for Handling Image Metadata v. 1.0, Metadata Working
`Group (Sept. 2008), , available at
`https://web.archive.org/web/20090206012835/
`http:/metadataworkinggroup.org/pdf/mwg_guidance.pdf.
`iPhoto ’09 Review (Archive org: May 26, 2009), available at
`https://web.archive.org/web/20090901000000*/http://www.killersites.
`com/magazine/2009/iphoto-09-review/
`1040 Google Code, Google Maps API Reference (Archive.org: Feb. 23,
`2010), available at:
`http://code.google.com/apis/maps/documentation/reference.html
`
`1039
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`Petitioner Apple Inc. – EX1003, p. vi
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`Exhibit Description
`No.
`1043 Flickr, Tour: Maps (Archive.org: Feb. 9, 2010), available at
`http://www.flickr.com/tour/maps
`1047 Apple Inc., Mac OS X v10.6.3 Update (Mar. 29, 2010) (Archive.org
`Apr. 11, 2010), available at
`https://web.archive.org/web/20100411001846/
`https://support.apple.com/kb/dl1018.
`1048 Apple Inc., Apple Releases Aperture 3 (Feb. 9, 2010) (Archive.org
`May 20, 2010), available at
`https://web.archive.org/web/20100520085140/
`https://www.apple.com/pr/library/2010/02/0https://www.apple.com/pr/
`library/2010/02/09aperture.html.
`1051 Apple Inc., Exploring Aperture 3 (2010), available at
`https://manuals.info.apple.com/MANUALS/1000/ MA1522/en_US/
`Exploring_Aperture_3.pdf.
`1052 Sept. 17, 2021 eBay Order Confirmation for “Apple Aperture 3
`Academic Software DVD With Serial Code”
`1053 Martin C. Brown, Hacking Google Maps and Google Earth, Wiley
`Publishing, Inc. (2006)
`1054 U.S. Patent App. Pub. No. 2010/0066822 A1 to Steinberg et al.
`1055 Apple Inc., http://documentation.apple.com/en/aperture/usermanual/
`HTML Source File (Archive.org Feb. 17, 2010), available at view-
`source:https://web.archive.org/web/20100217035925/http://documenta
`tion.apple.com/en/aperture/usermanual/
`
`
`Petitioner Apple Inc. – EX1003, p. vii
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`IPR2022-00032
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`I.
`
`INTRODUCTION
`
`U.S. Patent No. 9,552,376
`
`1.
`
`I have been retained on behalf of Petitioners to offer opinions
`
`regarding the invalidity, novelty, application of prior art, obviousness
`
`considerations, and understanding of a person of ordinary skill in the art in the
`
`industry as it relates to U.S. Patent No. 9,552,376 (“’376 patent”) (EX1001), which
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`is entitled “Method and Apparatus for Managing Digital Files.”
`
`A. Background and Qualifications
`
`2.
`
`As indicated in my curriculum vitae (“CV”), EX1004, I am a
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`professor in the Department of Computer Science and Engineering at the
`
`University of Minnesota. I received a B.A. in Computer Science, Mathematics,
`
`and History from the University of South Dakota in 1984, a M.S. in Computer
`
`Science from the University of Texas in 1988, and a Ph.D. from the University of
`
`Texas in Computer Science in 1991. My dissertation demonstrated and evaluated
`
`the application of Artificial Intelligence methods to produce more natural and
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`effective interaction between users and computers.
`
`3.
`
`I am a member of the Association for Computing Machinery (ACM),
`
`the oldest, largest, and most prestigious computing society in the world. From
`
`2015-2018, I was the President of ACM’s Special Interest Group on Computer-
`
`Human Interaction (SIGCHI), one of its largest and most active special interest
`
`groups. I also have been a member of the ACM Council, the highest governing
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`Petitioner Apple Inc. – EX1003, p. 1
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`U.S. Patent No. 9,552,376
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`body of the ACM. I received the ACM Distinguished Scientist Award in 2009,
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`and was inducted into the ACM SIGCHI Academy in 2019.
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`4. My research and teaching focus on human-computer interaction, user
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`interface design, and social computing. I have several decades of experience in
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`these specialties of computer science in both industry and academia. I worked for
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`AT&T Laboratories from 1991 through 2002, during which time I conducted
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`research and developed systems that solved problems in software engineering,
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`information management, web information seeking and organization, and
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`recommender systems. In all my research, I designed, implemented, and tested
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`graphical user interfaces.
`
`5.
`
`For example, I led multiple projects that involved collecting
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`information from the World Wide Web; storing it on a server that I maintained;
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`analyzing it to extract aggregate patterns, such as the most important information
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`resources for a topic, including text documents, audio, image, and video files; and
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`designing web-based graphical interfaces that gave users access to the aggregated
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`information. As another example, I have researched geographically-based online
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`communities and helped create novel open content systems to support
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`geographically-based communities of interest.
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`6.
`
`I am a named inventor on 10 patents, including, for example, U.S.
`
`Patent Nos. 5,659,724, 5,806,060, 6,029,192, and 6,256,648. U.S. Patent No.
`
`Petitioner Apple Inc. – EX1003, p. 2
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`IPR2022-00032
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`5,659,724 (entitled “Interactive data analysis apparatus employing a knowledge
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`base”) and U.S. Patent No. 5,806,060 (entitled “Interactive data analysis
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`employing a knowledge base”) described inventions to use a knowledge
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`representation framework to create a graphical user interface that improved access
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`to conventional databases. U.S. Patent No. 6,029,192 (entitled “System and
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`Method for Locating Resources on a Network Using Resource Evaluations
`
`Derived from Electronic Messages”) and U.S. Patent No. 6,256,648 (entitled
`
`“System and Method for Selecting and Displaying Hyperlinked Information
`
`Resources”) described inventions for collecting, aggregating, and analyzing
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`information from the World Wide Web and creating graphical interfaces for
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`making the aggregated information available to users.
`
`7.
`
`I have been an expert witness in multiple cases involving graphical
`
`user interface and have analyzed various products and patents. I have been
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`retained on behalf of companies including Apple, Microsoft, Netflix, Roku, LG
`
`Electronics, and VIZIO. I have written multiple expert reports on these topics,
`
`been deposed seven times, and testified in court. Specific cases include:
`
`(i) Motorola Mobility v. Microsoft, No. 1:10-cv-24063 (S.D. Fla.); (ii) In Re
`
`Certain Products Containing Interactive Program Guide and Parental Control
`
`Technology, No. 337-TA-845 (USITC); and (iii) Netflix, Inc. v. Rovi Corp., No.
`
`4:11-cv-06591 (N.D. Cal.).
`
`Petitioner Apple Inc. – EX1003, p. 3
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`U.S. Patent No. 9,552,376
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`8.
`
`I have been employed full-time as a professor in the Department of
`
`Computer Science & Engineering at the University of Minnesota since 2002; my
`
`current title is Distinguished McKnight University Professor. I teach classes in
`
`computer science, human-computer interaction and social computing, and have
`
`conducted, supervised, and published research in the field. My research has been
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`published in numerous journal and conference papers, as well as in a book I co-
`
`authored entitled “Foundational Issues in Artificial Intelligence and Cognitive
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`Science: Impasse and Solution.”
`
`9.
`
`During my time at the University of Minnesota, I have led multiple
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`projects involving location- and map-based systems and user interfaces. Some
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`example publications based on this work include: Ludford, Pamela J., Dan
`
`Frankowski, Ken Reily, Kurt Wilms, and Loren Terveen, “Because I carry my cell
`
`phone anyway: functional location-based reminder applications,” Proceedings of
`
`the SIGCHI Conference on Human Factors in Computing Systems (2006); Zhou,
`
`Changqing, Dan Frankowski, Pamela Ludford, Shashi Shekhar, and Loren
`
`Terveen, “Discovering personally meaningful places: An interactive clustering
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`approach,” ACM Transactions on Information Systems (TOIS) 25, no. 3 (2007);
`
`Ludford, Pamela J., Reid Priedhorsky, Ken Reily, and Loren Terveen, “Capturing,
`
`sharing, and using local place information,” Proceedings of the SIGCHI
`
`Conference on Human Factors in Computing Systems, pp. 1235-1244 (2007);
`
`Petitioner Apple Inc. – EX1003, p. 4
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`Priedhorsky, Reid, and Loren Terveen, “The Computational Geowiki: What, Why,
`
`and How,” Proceedings of the 2008 ACM Conference on Computer Supported
`
`Cooperative Work, pp. 267-276 (2008).
`
`10.
`
`I have served on the editorial board of ACM’s Transactions on
`
`Human-Computer Interaction and the Communications of the ACM, have led and
`
`served on the Program Committees for all the leading conferences in my research
`
`fields, and have served as a reviewer for numerous journals, including ACM
`
`Computing Surveys, IEEE Transactions on Data and Knowledge Engineering, the
`
`International Journal of Human-Computer Studies, and the Journal of Computer-
`
`Supported Cooperative Work.
`
`B. Compensation
`
`11.
`
`I am being compensated for my time at the rate of $600 per hour for
`
`my work in connection with this matter. I am being reimbursed for reasonable and
`
`customary expenses associated with my work in this investigation. This
`
`compensation is not dependent in any way on the contents of this Declaration, the
`
`substance of any further opinions or testimony that I may provide or the ultimate
`
`outcome of this matter.
`
`C.
`
`Information Considered
`
`12. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`Petitioner Apple Inc. – EX1003, p. 5
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`U.S. Patent No. 9,552,376
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`my opinions, I have considered the materials I identify in this report and those
`
`listed in the attached Exhibit List.
`
`13.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by MemoryWeb. I may also consider additional documents
`
`and information in forming any necessary opinions, including documents that may
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`not yet have been provided to me.
`
`14. My analysis of the materials produced in this investigation is ongoing,
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`and I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`
`15.
`
`I have relied upon various legal principles in formulating my
`
`opinions. My understanding of these principles is summarized below.
`
`16.
`
`I understand that a patent claim defines the metes and bounds of an
`
`alleged invention. I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`17.
`
`I understand that the effective filing date of the claimed invention is
`
`the actual filing date of the claims, unless the applicant claims priority to an earlier
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`Petitioner Apple Inc. – EX1003, p. 6
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`filed application that supports the claimed subject matter in the manner required by
`
`35 U.S.C. § 112. I understand that this section requires the patent’s specification
`
`to contain a sufficient written description of the claimed invention to demonstrate
`
`that the applicant actually possessed the invention as of the filing date as broadly
`
`as it is claimed. In considering whether this written description requirement is met,
`
`I understand that I should consider the written description from the viewpoint of a
`
`person of ordinary skill in the art. I also understand that I should consider whether
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`this person of ordinary skill would have recognized that the written description
`
`describes the full scope of the claimed invention and that the inventor actually
`
`possessed that full scope as of the claimed effective filing date.
`
`18.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and can
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`include patents and printed publications. I also understand that a patent will be
`
`prior art if it was filed before the earliest effective filing date of the claimed
`
`invention, while a printed publication will be prior art if it was publicly available
`
`before that date. I understand that in this proceeding, the information that may be
`
`evaluated to show unpatentability is limited to patents and printed publications.
`
`19.
`
`I understand that in this proceeding Petitioners have the burden of
`
`proving that the challenged claims are unpatentable over the prior art by a
`
`preponderance of the evidence. I understand that “a preponderance of the
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`Petitioner Apple Inc. – EX1003, p. 7
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`evidence” is evidence sufficient to show that a fact is more likely true than it is not.
`
`I understand that there are two ways in which prior art may render a patent claim
`
`unpatentable. First, the prior art can be shown to “anticipate” the claim. Second,
`
`the prior art can be shown to have made the claim “obvious” to a person of
`
`ordinary skill in the art (“POSA”).
`
`A. Anticipation
`
`20.
`
`I understand that, for a patent claim to be “anticipated” by the prior
`
`art, each and every requirement of the claim must be found, expressly or
`
`inherently, in a single prior art reference as recited in the claim.
`
`21.
`
`I understand that claim limitations that are not expressly described in
`
`a prior art reference may still be there if they are “inherent” to the thing or process
`
`being described in the prior art.
`
`22.
`
`I understand that it can be acceptable to consider evidence other than
`
`the information in a particular prior art document to determine if a feature is
`
`necessarily present in or inherently described by that document. For example, an
`
`indication in a prior art reference that a particular process complies with a
`
`published standard would indicate that the process must inherently perform certain
`
`steps or use certain data structures that are necessary to comply with the published
`
`standard.
`
`Petitioner Apple Inc. – EX1003, p. 8
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`23.
`
`I understand that if a reference incorporates other documents by
`
`reference, the incorporating reference and the incorporated reference(s) should be
`
`treated as a single prior art reference for purposes of analyzing anticipation.
`
`24.
`
`I understand that to be anticipatory, a reference must not only
`
`explicitly or inherently disclose every claimed feature, but those features must also
`
`be “arranged as in the claim.” Differences between the prior art reference and a
`
`claimed invention, however slight, invoke the question of obviousness, not
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`anticipation.
`
`B. Obviousness
`
`25.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made. I understand that the obviousness standard is defined in
`
`the patent statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
`
`Petitioner Apple Inc. – EX1003, p. 9
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`26.
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`I understand that the following standards govern the determination of
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`whether a claim in a patent is obvious. I have applied these standards in my
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`evaluation of whether the asserted claims of the patent at issue here would have
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`been considered obvious as of the relevant priority date.
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`27.
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`I understand that the obviousness inquiry should not be done based on
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`hindsight, but must be done using the perspective of a person of ordinary skill in
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`the relevant art as of the priority date of the patent claim.
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`28.
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`I understand that in determining whether a patent claim is obvious,
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`one must consider the following four factors: (i) the scope and content of the prior
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`art, (ii) the differences between the prior art and the claims at issue, (iii) the
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`knowledge of a person of ordinary skill in the pertinent art; and (iv) objective
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`factors indicating obviousness or non-obviousness, if present (such as commercial
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`success or industry praise).
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`29.
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`I understand the objective factors indicating obviousness or non-
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`obviousness may include: commercial success of products covered by the patent
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`claims; a long-felt need for the invention; failed attempts by others to make the
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`invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by those in the field; the taking
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`of licenses under the patent by others; expressions of surprise by experts and those
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`skilled in the art at the making of the invention; and the patentee proceeded
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`Petitioner Apple Inc. – EX1003, p. 10
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`contrary to the accepted wisdom of the prior art. I also understand that any of this
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`evidence must be specifically connected to the invention rather than being
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`associated with the prior art or with marketing or other efforts to promote an
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`invention. I am not presently aware of any evidence of “objective factors”
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`suggesting the claimed methods are not obvious, and reserve my right to address
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`any such evidence if it is identified in the future.
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`30.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`31.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a person of ordinary skill in the art would recognize that it would
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`improve similar devices in the same way, using that technique to improve the other
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`Petitioner Apple Inc. – EX1003, p. 11
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`32.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`does no more than yield predictable results, which are inferences and creative steps
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`that a person of ordinary skill in the art would employ.
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`33.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`34.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int’l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
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`requirement of a “teaching, suggestion, or motivation to combine” known elements
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`of prior art for purposes of an obviousness analysis as a precondition for finding
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`obviousness. It is my understanding that KSR confirms that any motivation that
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`Petitioner Apple Inc. – EX1003, p. 12
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`would have been known to a person of skill in the art, including common sense, or
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`derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
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`35.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor
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`as of the effective filing date and can provide a reason for combining the elements
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`of the prior art in the manner claimed. In other words, the prior art does not need to
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`be directed towards solving the same problem that is addressed in the patent.
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`Further, the individual prior art references themselves need not all be directed
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`towards solving the same problem.
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`36.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry
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`Petitioner Apple Inc. – EX1003, p. 13
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`IPR2022-00032
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`U.S. Patent No. 9,552,376
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it
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`would not work or explicit statements sa