Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`––––––––––
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`––––––––––
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2022-00079
`Patent RE48,089
`
`––––––––––
`
`DECLARATION OF MICHAEL KOTZIN
`
`1
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`ERICSSON EXHIBIT 1003, Page 1
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`

`

`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`V.
`VI.
`
`Table of Contents
`INTRODUCTION .......................................................................................... 9
`I.
`II. MATERIALS CONSIDERED ..................................................................... 10
`III. QUALIFICATIONS ..................................................................................... 12
`IV.
`LEGAL UNDERSTANDING ...................................................................... 17
`A. My Understanding of Claim Construction ......................................... 17
`B. My Understanding of Obviousness .................................................... 19
`C.
`Level of Ordinary Skill in the Art ...................................................... 23
`BACKGROUND OF THE TECHNOLOGY ............................................... 24
`THE ’089 PATENT ...................................................................................... 32
`A.
`Priority Date ....................................................................................... 32
`B.
`Overview of the ’089 Patent ............................................................... 33
`C.
`Level of Ordinary Skill in the Art ...................................................... 41
`D.
`The Challenged Claims ...................................................................... 43
`E.
`The Prosecution History ..................................................................... 44
`F.
`Claim Construction............................................................................. 45
`1.
`“Coverage Assessment” ............................................................46
`2.
`“Information Collector” and “Coverage Estimator” .................46
`(i)
`Selecting, Associating, and Generating Limitations ..... 47
`(ii)
`Instructing and Obtaining Limitations........................... 48
`(iii) Providing and Obtaining Limitations ............................ 50
`Claim 11 Means-Plus-Function Terms .....................................51
`3.
`VII. APPLICATION OF THE PRIOR ART TO THE CHALLENGED
`CLAIMS ....................................................................................................... 53
`A.
`Grounds of Unpatentability ................................................................ 53
`B.
`Brief Summary of Prior Art ............................................................... 53
`1.
`Overview of Olofsson (EX1006) ..............................................53
`2.
`Overview of Kuruvilla (EX1007) .............................................57
`Ground 1: Olofsson in view of Kuruvilla ........................................... 60
`1.
`Claim 1 ......................................................................................61
`2
`
`C.
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`ERICSSON EXHIBIT 1003, Page 2
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`(i)
`
`(ii)
`(iii)
`(iv)
`
`1[p]: “An automatic coverage assessment system
`configured for generating a coverage assessment for
`a
`second wireless
`access network of
`a
`telecommunications infrastructure comprising a
`first wireless access network and the second
`wireless access network, the first and second
`wireless access networks capable of providing
`services to a plurality of terminals, the system
`comprising:” .................................................................. 61
`(a) Motivations to Combine ...................................... 65
`1[a]: “an information collector;” ................................... 71
`1[b]: “a coverage estimator” .......................................... 71
`1[a][i]: “wherein the information collector is
`configured to: (i) select one or more terminals from
`at least part of the plurality of the terminals, the at
`least part of the plurality of the terminals capable of
`communicating with both the first wireless access
`network and the second wireless access network;” ....... 71
`1[a][ii]: “wherein the information collector is
`configured to: . . . (ii) instruct the selected one or
`more terminals to measure signals from the second
`wireless access network,” .............................................. 83
`1[a][iii]: “wherein the information collector is
`configured to: . . . (iii) obtain measurement
`information indicative of the signals measured from
`the second wireless access network by the selected
`one or more terminals, and” .......................................... 88
`(vii) 1[a][iv]: “wherein the information collector is
`configured to: . . . (iv) provide the measurement
`information to the coverage estimator, and” ............... 108
`(viii) 1[b][i]: “wherein
`the coverage estimator
`is
`configured
`to:
`(i) obtain
`the measurement
`information from the information collector, and” ....... 124
`1[b][ii]: “wherein
`the coverage estimator
`is
`configured to: . . . (ii) based on the obtained
`measurement information, generate the coverage
`
`(v)
`
`(vi)
`
`(ix)
`
`3
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`ERICSSON EXHIBIT 1003, Page 3
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`assessment for the second wireless access network
`of the telecommunications infrastructure.” ................. 135
`Claim 2 ....................................................................................146
`(i)
`“The automatic coverage assessment system
`of claim 1, wherein the system further comprises a
`trigger configured for triggering the information
`collector to select the one or more terminals.” ............ 146
`(a) Motivations to Combine .................................... 149
`Claim 3 ....................................................................................154
`(i)
`“The automatic coverage assessment system of
`claim 1, wherein the information collector is further
`configured to obtain location information for at
`least one of the at least part of the plurality of
`terminals prior to selecting the one or more
`terminals.” .................................................................... 154
`Claim 4 ....................................................................................157
`(i)
`4[p]: “The automatic coverage assessment system
`of claim 3,” .................................................................. 157
`4[a]: “wherein the information collector is further
`configured to associate the location information
`with at least one of the selected one or more
`terminals and” .............................................................. 157
`4[b]: “wherein the information collector is further
`configured to . . . provide the location information
`associated with the at least one of the selected one
`or more terminals to the coverage estimator” ............. 164
`Claim 5 ....................................................................................169
`(i)
`“The automatic coverage assessment system of
`claim 1, wherein the information collector is further
`configured to provide location information valid
`upon obtaining the measurement information for at
`least one of the selected one or more terminals.” ........ 169
`Claim 11 ..................................................................................172
`(i)
`11[p]: “A mobile user terminal configured for use
`in an automatic coverage assessment method for
`
`(iii)
`
`(ii)
`
`4
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`ERICSSON EXHIBIT 1003, Page 4
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`(ii)
`
`(iii)
`
`generating a coverage assessment for a second
`wireless access network of a telecommunications
`infrastructure,
`the
`telecommunications
`infrastructure comprising a first wireless access
`network and the second wireless access network,
`wherein the first and second wireless access
`networks are capable of providing services to a
`plurality of terminals, and wherein the mobile user
`terminal comprises:” .................................................... 172
`11[a]: “means for measuring signals from the
`second wireless access network; and” ......................... 176
`11[b]: “means for providing the measurement
`information to at least one of an information
`collector or a coverage estimator based on the
`measured signals,” ....................................................... 178
`11[c]: “wherein the mobile user terminal is further
`configured to: receive an instruction from the
`information collector to measure signals,” .................. 181
`11[d]: “wherein the information collector carries
`out operations including collecting information
`from terminals by:” ...................................................... 182
`11[d][i]: “selecting one or more terminals from at
`least part of the plurality of the terminals, the at least
`part of the plurality of the terminals capable of
`communicating with both the first wireless access
`network and the second wireless access network,” ..... 182
`(vii) 11[d][ii]: “instructing the selected one or more
`terminals to measure signals from the second
`wireless access network,” ............................................ 183
`(viii) 11[d][iii]: “obtaining measurement information
`indicative of the signals measured from the second
`wireless access network by the selected one or more
`terminals, and” ............................................................. 183
`11[d][iv]: “providing the measurement information
`to a coverage estimator; and” ...................................... 183
`
`(iv)
`
`(v)
`
`(vi)
`
`(ix)
`
`5
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`ERICSSON EXHIBIT 1003, Page 5
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`(x)
`
`(xi)
`
`(ii)
`
`7.
`
`11[e]: “measure signals from the second wireless
`access network;” .......................................................... 184
`11[f]: “wherein the coverage estimator carries out
`operations
`including generating
`the coverage
`assessment for the second wireless access network
`by:”............................................................................... 184
`(xii) 11[f][i]: “obtaining the measurement information
`from the information collector, and” ........................... 184
`(xiii) 11[f][ii]: “based on the obtained measurement
`information, generating the coverage assessment for
`the second wireless access network of
`the
`telecommunications infrastructure.” ............................ 185
`Claim 13 ..................................................................................185
`(i)
`13[p]:
`“A network node
`for use
`in a
`telecommunications infrastructure comprising a
`first wireless access network and a second wireless
`access network, the first and second wireless access
`networks capable of providing services to a
`plurality of terminals, the node comprising:” .............. 185
`13[a]: “means for selecting one or more terminals
`from at least part of the plurality of the terminals,
`the at least part of the plurality of the terminals
`capable of communicating with both the first
`wireless access network and the second wireless
`access network;” .......................................................... 189
`13[b]: “means for instructing the selected one or
`more terminals to measure signals from the second
`wireless access network,” ............................................ 189
`13[c]:
`“means
`for obtaining measurement
`information indicative of the signals measured from
`the second wireless access network by the selected
`one or more terminals; and” ........................................ 189
`13[d]: “means for providing the measurement
`information to a coverage estimator,” ......................... 190
`13[e]: “wherein
`the coverage estimator
`is
`configured to generate the coverage assessment for
`
`(iii)
`
`(iv)
`
`(v)
`
`(vi)
`
`6
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`ERICSSON EXHIBIT 1003, Page 6
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`8.
`
`9.
`
`(ii)
`
`(iii)
`
`the
`the second wireless access network of
`telecommunications infrastructure based on the
`measurement information provided by the network
`node.” ........................................................................... 190
`Claim 14: “The network node of claim 13, wherein the
`coverage estimator is included within the network node.” .....190
`Claim 15 ..................................................................................195
`(i)
`15[p]:
`“A network node
`for use
`in a
`telecommunications infrastructure comprising a
`first wireless access network and a second wireless
`access network, the first and second wireless access
`networks capable of providing services to a
`plurality of terminals, the node comprising:” .............. 195
`15[a]:
`“means
`for obtaining measurement
`information from an information collector; and” ........ 196
`15[b]: “means
`for generating
`the coverage
`assessment for the second wireless access network
`of the telecommunications infrastructure based on
`the obtained measurement information,” .................... 196
`15[c][i]: “wherein the information collector is
`configured to: (i) select one or more terminals from
`at least part of the plurality of the terminals, the at
`least part of the plurality of the terminals capable of
`communicating with both the first wireless access
`network and the second wireless access network,” ..... 197
`15[c][ii]: “wherein the information collector is
`configured to: . . . (ii) instruct the selected one or
`more terminals to measure signals from the second
`wireless access network,” ............................................ 197
`15[c][iii]: “wherein the information collector is
`configured to: . . . (iii) obtain measurement
`information indicative of the signals measured from
`the second wireless access network by the selected
`one or more terminals, and” ........................................ 198
`
`(iv)
`
`(v)
`
`(vi)
`
`7
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`ERICSSON EXHIBIT 1003, Page 7
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`(vii) 15[c][iv]: “wherein the information collector is
`configured to: . . . (iv) provide the measurement
`information to the network node.” ............................... 198
`VIII. SECONDARY CONSIDERATIONS ........................................................ 198
`IX. CONCLUSION ........................................................................................... 199
`Appendix A:
`CV of Michael Kotzin
`
`8
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`ERICSSON EXHIBIT 1003, Page 8
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`I, Dr. Michael Kotzin, declare as follows:
`I.
`INTRODUCTION
`1.
`I have been retained by Ericsson Inc. (“Petitioner”) in connection with
`
`the above-captioned inter partes review (“IPR”) of Claims 1-5, 11, 13-15 of U.S.
`
`Patent No. RE48,089 (“the ’089 Patent”), entitled “Method and System for
`
`Automatic Coverage Assessment for Cooperating Wireless Access Networks” by
`
`named inventors Ljupco Jorguseski, Remco Litjens, Haibin Zhang, and Adrian
`
`Victor Pais. I understand that the ’089 Patent is assigned to Koninklijke KPN N.V.
`
`(the “Patent Owner”). I have been retained by Petitioner to provide technical review,
`
`analysis, insights, and opinions regarding the ’089 Patent and the prior art references
`
`that form the basis for the ground of unpatentability set forth in the Petition for Inter
`
`Partes Review of the ’089 Patent (the “Petition”).
`
`2.
`
`I make this declaration based on my personal knowledge. I am over the
`
`age of 18 and competent to make this declaration.
`
`3.
`
`The statements herein include my opinions and the bases for those
`
`opinions, which relate to at least the Petition and associated exhibits.
`
`4.
`
`I have reviewed the Petition in detail, and I agree with its analysis and
`
`conclusions as it relates to the technology described in the ’089 Patent and prior art
`
`references addressed herein.
`
`9
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`ERICSSON EXHIBIT 1003, Page 9
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`5.
`
`I am being compensated for my time at my standard hourly consulting
`
`rate in 2021 of $300 per hour for my time spent on this matter. My compensation is
`
`not contingent on the substance of my opinions, on the outcome of the IPR, or on
`
`the outcome of any related dispute between Petitioner and Patent Owner.
`
`6.
`
`I do not have a conflict of interest with respect to Petitioner or Patent
`
`Owner.
`
`7.
`
`I reserve my right to offer additional opinions in other dispute venues.
`
`II. MATERIALS CONSIDERED
`8.
`The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered, including the
`
`’089 Patent (EX1001) and its prosecution history (EX1002). I have reviewed and
`
`am familiar with the specification of the ’089 Patent. I have reviewed and am
`
`familiar with the prosecution history of the ’089 Patent.
`
`9.
`
`In preparing this Declaration, I have also reviewed and am familiar with
`
`the following prior art used in the Petition and in my Declaration below:
`
`Exhibit 1006 – WO Pub. No. 2010/034157 to Henrik Olofsson et al.
`
`(“Olofsson”) was published on April 1, 2010 and filed on September 26, 2008
`
`as PCT/CN2008/072543. I understand from counsel for Petitioner that
`
`Olofsson qualifies as prior art under at least pre-AIA 35 U.S.C. § 102(e).
`
`10
`
`ERICSSON EXHIBIT 1003, Page 10
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`Exhibit 1007 – U.S. Patent Pub. No. 2009/0181664 to Eapen Kuruvilla et al.
`
`(“Kuruvilla”) was filed on January 15, 2008 as U.S. Application No. 12/008,855,
`
`and published on July 16, 2009. I understand from counsel for Petitioner that
`
`Kuruvilla qualifies as prior art under at least pre-AIA 35 U.S.C. §102(e).
`
`10.
`
`I have considered the following documents in my analysis below:
`
`Exhibit No.1
`1001
`
`1002
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`1009
`1010
`
`Description
`U.S. Patent No. RE 48,089 to Ljupco Jorguseski et al. (“the ’089
`Patent”)
`Prosecution File History for the ’089 Patent
`Redacted Original Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`Mar. 31, 2021), Dkt. 7
`Proof of Service of Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson et al., 2:21-cv-113 (E.D. Tex.),
`Dkt. 10
`WO Pub. No. 2010/034157 to Henrik Olofsson et al.
`(“Olofsson”)
`U.S. Patent Pub. No. 2009/0181664 to Eapen Kuruvilla et al.
`(“Kuruvilla”)
`U.S. Patent No. 8,626,175 (“the ’175 Patent”)
`Prosecution File History for the ’175 Patent
`Claim Listing
`
`1 Citations to patents are made by column and line cite; citations to patent
`
`publications are made by paragraph number; citations to Exhibit 1002 is made with
`
`reference to the Bates-stamped pagination; citations to other exhibits are made to the
`
`page number of the document itself.
`
`11
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`Exhibit No.1
`1011
`
`1012
`1013
`1014
`1015
`
`1016
`1017
`1018
`1019
`1020
`
`1021
`
`1022
`
`Description
`Harri Holma & Antti Toskala, WCDMA for UMTS: A Radio
`Access for Third Generation Mobile Communications (3d ed.
`2004)
`U.S. Patent No. 5,095,500 to Tayloe et al.
`U.S. Patent No. 6,442,393 to Hogan
`U.S. Patent Pub. No. 2003/0224806 to Hebron
`“3rd Generation Partnership Project; Technical Specification
`Group Radio Access Network; Stage 2 Functional Specification
`of Location Services in UTRAN”, 3G TS 25.305 V2.0.0, Dec.
`1999, pp. 1-38
`U.S. Patent No. 5,594,718 to Weaver et al.
`U.S. Patent No. 5,697,055 to Gilhousen et al.
`U.S. Patent No. 6,654,362 to Palamara
`U.S. Patent No. 6,845,238 to Muller
`“Network Reference Model for cdma2000 Spread Spectrum
`Systems, Revision A” 3GPP2 S.R0005-A, Dec. 13, 1999
`Excerpts of Plaintiff’s Disclosure of Asserted Claims and
`Infringement Contentions Pursuant to Local Patent Rules 3-1
`and 3-2, Koninklijke KPN N.V. v. Telefonaktiebolaget LM
`Ericsson, No. 2:21-cv-113, (E.D. Tex. Sept. 15, 2021)
`Defendants’ Answer, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`July 26, 2021)
`
`III. QUALIFICATIONS
`11.
`I am familiar with the technology at issue in the ’089 Patent, including
`
`during the period prior to December 21, 2009. In formulating my opinions, I have
`
`relied on my training, knowledge, and experience in the relevant art. I am qualified
`
`by education and experience to testify as an expert in the field of wireless
`
`telecommunications. My academic and professional background is in electrical
`
`engineering and computer science, and I have been working those fields since the
`
`12
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`completion of my B.S. in electrical engineering almost 45 years ago. My
`
`background and qualifications are stated more fully in my curriculum vitae, attached
`
`as Appendix A. Here, I provide a brief summary of my qualifications and
`
`professional experience.
`
`12.
`
`I received a B.S. in electrical engineering and a B.S. in chemistry from
`
`the University of Illinois in 1975, an M.S. in electrical engineering from
`
`Northwestern University in 1977, and a Ph.D. in electrical engineering and computer
`
`science from Northwestern University in 1981. During my graduate study at
`
`Northwestern (1975-1981), I performed research on communications and signal
`
`processing. My research dissertation was titled “Short Range Communication Using
`
`Diffusely Scattered Infrared Radiation.”
`
`13.
`
`I worked at Motorola, Inc. in various professional roles between 1975
`
`and 2009. From 1975 to 1989, I worked for several Motorola Research labs in
`
`Illinois, where I developed technology related to private and public radio
`
`communication systems.
`
`14. Between 1989 and 1998, I was the Vice President of Technical Staff
`
`and Director of Research and Advanced Technology in Motorola’s Cellular
`
`Infrastructure and Networks division. Between 1998 and 2007, I transitioned to the
`
`Office of the Chief Technology Officer for Motorola’s Mobile Devices division. In
`
`13
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`these roles, I provided leadership and strategic directions for the adoption and
`
`creation of new technology for cellular base station and handheld devices.
`
`15. Between 2006 and 2009, I was the Vice President of Technical Staff in
`
`the Corporate Law Department of Motorola’s Patent Operations division. In this
`
`role, I created technology portfolio strategy across businesses including quantitative
`
`goals for new and retained intellectual property assets. I also managed processes and
`
`corporate-wide teams related to creating and maintaining patent portfolios.
`
`16.
`
`In the late 1990s through about 2005, I directly supervised and worked
`
`with engineers in the United States and Europe in developing technology focused on
`
`radio layer and signaling protocols. As part of this work, we developed and provided
`
`technical contributions for the 3rd Generation Partnership Project (“3GPP”)
`
`meetings.
`
`17.
`
`Since 2009, I have been the President of MDK Consulting, Inc., where
`
`I regularly provide technical consulting services on all aspects of wireless systems,
`
`products, and technology.
`
`18. Over the past several decades I have performed extensive research on
`
`various aspects of systems, devices, and networks that acquire, store, process, and
`
`transmit information. My research has addressed software, algorithms, hardware,
`
`networking, protocols and other aspects of these systems and devices, and has
`
`included work on wireless mobile devices and systems, signal processing and
`
`14
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
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`communications, hardware design methodologies, and cybersecurity. For example,
`
`in the 1970s and 1980s, I worked on technologies—including cellular, public safety,
`
`and private mobile—that formed the basis and was essential to several new digital
`
`radio systems.
`
`19.
`
`This work transitioned in the early 1990s to digital cellular applied
`
`research and development on cellular infrastructure and mobile devices. As a senior
`
`technologist and leader, first in the cellular infrastructure division and subsequently
`
`the mobile device division at Motorola, I was a significant participant and
`
`contributor to the development of new and evolving digital systems. Some of these
`
`evolutions included the adoption of functional improvements, continuing quality
`
`improvements, system generation advancements (e.g., GSM, W-CDMA, LTE, etc.),
`
`etc.
`
`20.
`
`I am an inventor on approximately 134 issued U.S. patents and over
`
`500 issued patents worldwide in areas including signal processing, data
`
`compression, communications, and wireless systems.
`
`I have published
`
`approximately 20 technical articles in peer-reviewed engineering journals and
`
`conference proceedings.
`
`21.
`
`In addition to my professional experience, I have previously taught
`
`courses in electrical engineering at Northwestern University as an Adjunct
`
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`Professor. I have also served as Chairman and member of numerous Motorola patent
`
`committees.
`
`22.
`
`I have personally participated in drive testing related activities for both
`
`the European GSM and U.S. CDMA cellular systems. This included performing
`
`technical tasks related to test design, implementation, execution, as well as
`
`subsequent data post-processing and analysis. Specifically, for the U.S. CDMA
`
`system, the test was designed to identify causes for and methods to remediate an
`
`observed call drop scenario. An increased likelihood of call disconnection was
`
`occurring in urban canyon environments when vehicles entered an intersection.
`
`Unexpected signals acting as strong interference were received from unexpected
`
`base stations. More generally, and as evidenced by the patents now shown in my
`
`CV, I have had considerable experience in the related wireless technologies of multi-
`
`mode/multi-band user devices, handover, including between different bands and
`
`systems, as well as positioning/location techniques.
`
`23. Based on my experience and education, I consider myself to be an
`
`expert at least in the fields of telecommunications, cellular networking, and mobile
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`devices. As of the claimed priority date listed on the face of the ’089 Patent, I was
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`at least a person of ordinary skill in the art of the ’089 Patent, and I had personal
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`knowledge of the technologies involved in the ’089 Patent. This is also true as of
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`the conception date that I understand KPN alleges in the co-pending litigation.
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`16
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`

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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
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`24. As I stated above, I have attached my curriculum vitae, which contains
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`further details on my education, experience, publications, and other qualifications to
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`render an expert option, as Appendix A to my Declaration. It also lists my
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`publication record in archival journals, international conferences, and workshops
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`and further includes a list of granted patents.
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`IV. LEGAL UNDERSTANDING
`A. My Understanding of Claim Construction
`25.
`I have been informed by counsel that a purpose of claim construction is
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`to determine what a person of ordinary skill in the art (“POSITA”) would have
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`understood the claim terms to mean. I understand that during an IPR proceeding,
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`claims are to be construed in light of the specification as would be read by a person
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`of ordinary skill in the art at the time the application was filed. I understand that
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`claim terms are given their ordinary and customary meaning as would be understood
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`by a person of ordinary skill in the art in the context of the entire disclosure. A claim
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`term, however, will not receive its ordinary meaning if the patentee acted as his own
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`lexicographer and clearly set forth a definition of the claim term in the specification.
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`In this case, the claim term will receive the definition set forth in the patent.
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`26.
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`I understand that the prosecution history can inform the meaning of the
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`claim language by demonstrating how the inventors understood the invention and
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`whether the inventors limited the invention in the course of prosecution, making the
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
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`claim scope narrower than it otherwise would be. I understand that extrinsic
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`evidence may also be consulted in construing the claim terms, such as dictionary
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`definitions and expert testimony.
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`27.
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`I further understand that 35 U.S.C. § 112 ¶ 6 created an exception to
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`the general rule of claim construction. I understand that patent claims may be drafted
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`in means-plus-function format, in which a claim limitation is expressed as a means
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`or step for performing a specified function, without a recital of structure. I
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`understand that, under § 112 ¶ 6, a limitation will be presumed to be a “means-plus-
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`function” limitation if (a) the claim limitation uses the phrase “means for”; (b) the
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`“means for” is modified by functional language; and (c) the phrase “means for” is
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`not modified by sufficient structure for achieving the specified function.
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`28.
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`I understand that a means-plus-function limitation should be interpreted
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`to cover only the recited function and the corresponding structure for performing the
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`function as described in the specification, as well as equivalent structures. I
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`understand that a structure is deemed equivalent to the corresponding structure in
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`the specification only if the difference between them is insubstantial. For example,
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`two structures may be deemed equivalent if they perform the same function in
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`substantially the same way to achieve substantially the same result. I further
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`understand that a structural equivalent must have been available at the time of
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`issuance of the claim.
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
`
`B. My Understanding of Obviousness
`29.
`I understand that a patent claim is invalid if the claimed invention
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`would have been obvious to a person of ordinary skill in the art at the time the
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`application was filed. This means that even if all of the requirements of the claim
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`cannot be found in a single prior art reference that would anticipate the claim, the
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`claim can still be invalid.
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`30.
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`I understand that to obtain a patent, a claimed invention must have, as
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`of the priority date, been nonobvious in view of the prior art in the field. I understand
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`that the following factors should be considered in analyzing obviousness: (1) the
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`scope and content of the prior art; (2) the differences between the prior art and the
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`claims; and (3) the level of ordinary skill in the pertinent art. I understand that an
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`invention is obvious when the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have
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`been obvious to a person of ordinary skill in the art at the time the invention was
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`made.
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`31.
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`I understand that to prove that prior art or a combination of prior art
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`renders a patent claim obvious, it is necessary to: (1) identify the particular
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`references that, singly or in combination, render the patent obvious; (2) specifically
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`identify which elements of the patent claim appear in each of the asserted references;
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`Expert Declaration of Michael Kotzin
`IPR2022-00079 (U.S. Patent No. RE48,089)
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`and (3) explain how the prior art references could have been combined in order to
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`create the inventions claimed in the asserted claim.
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`32.
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`I understand that a person of ordinary skill in the art is assumed to have
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`knowledge of all prior art references. I also understand that when considering the
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`obviousness of a patent claim, one should consider whether a teaching, suggestion,
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`or motivation to combine the references exists so as to avoid impermissibly applying
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`hindsight when considering the prior art. I understand this test should not be rigidly
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`applied, but that the test can be important to avoiding such hindsight.
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`33.
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`I understand that a person of ordinary