` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`TCL INDUSTRIES HOLDINGS CO. AND HISENSE CO., LTD..
`Petitioners,
`
`v.
`
`PARKERVISION, INC.
`Patent Owner
`
`___________________________
`
`Case No. IPR2021-
`
`___________________________
`
`
`
`DECLARATION OF MATTHEW B. SHOEMAKE, PH.D.
`
`REGARDING U.S. PATENT NO. 7,110,444
`
`
`
`
`
`
`
`
`
`00990
`
`LG Ex. 1002
`LG Electronics Inc. v. ParkerVision, Inc.
`IPR2022-00245
`Page 00001
`
`

`

`I, Matthew B. Shoemake, Ph.D., do hereby declare andstate, that all
`
`statements are made herein of my own knowledgeare true andthat all statements
`
`made on information and belief are believed to be true.
`
`I am overthe age of 21
`
`and am competent to makethis declaration. These statements were made with the
`
`knowledgethat willful false statements are punishable by fine or imprisonment, or
`
`both, under Section 1001 of Title 18 of the United States Code.
`
`Dated: May 20, 2021 Cds
`
`Matthew B. Shoemake, Ph.D.
`
`IPR2022-00245 Page 00002
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`IPR2022-00245 Page 00002
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`

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`
`
`TABLE OF CONTENTS
`
`I.
`
`QUALIFICATIONS ........................................................................................ 1
`
`II. MATERIALS REVIEWED .......................................................................... 10
`
`III. PERSON OF ORDINARY SKILL IN THE ART ........................................ 10
`
`IV. STANDARDS OF ANTICIPATION AND OBVIOUSNESS ..................... 12
`
`V.
`
`BACKGROUND TECHNOLOGY ............................................................... 23
`
`A. Wireless Signals .................................................................................. 23
`
`B.
`
`“Up-Conversion” and “Down-Conversion” ........................................ 24
`
`VI. OVERVIEW OF THE ’444 PATENT .......................................................... 24
`
`A. Alleged Problem .................................................................................. 24
`
`B. Alleged Invention ................................................................................ 25
`
`C.
`
`Patent Owner Added Insignificant Limitations To Obtain the
`Challenged Claims .............................................................................. 29
`
`VII. CLAIM CONSTRUCTION .......................................................................... 30
`
`A.
`
`B.
`
`C.
`
`“frequency down-conversion module” (Claims 2 and 3) .................... 31
`
`“subtractor module” (Claims 2, 3) ...................................................... 32
`
`“under-sample” (Claim 2) ................................................................... 34
`
`VIII. OVERVIEW OF THE PRIOR ART REFERENCES ................................... 34
`
`A.
`
`B.
`
`C.
`
`D.
`
`Tayloe .................................................................................................. 34
`
`TI Datasheet ........................................................................................ 40
`
`Lam ...................................................................................................... 42
`
`Enz ....................................................................................................... 44
`
`E. Motivation to Combine ....................................................................... 49
`
`ii
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`IPR2022-00245 Page 00003
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`

`

`
`
`1.
`
`2.
`
`Tayloe with TI Datasheet .......................................................... 49
`
`Lam with Enz and Tayloe ......................................................... 52
`
`IX. SPECIFIC GROUNDS FOR PETITION ...................................................... 54
`
`A. Ground I: Claims 2 and 3 Are Obvious Over Tayloe in View of TI
`Datasheet ............................................................................................. 54
`
`1.
`
`Independent Claim 2 ................................................................. 54
`
`(a)
`
`(c)
`
`Element [2-preamble]: “A wireless modem
`apparatus, comprising” ...................................................54
`(b) Element [2A]: “a receiver for frequency down-
`converting an input signal including” .............................56
`Element [2B]: “a first frequency down-conversion
`module to down-convert the input signal, wherein
`said first frequency down-conversion module down-
`converts said input signal according to a first control
`signal and outputs a first down-converted signal” .........57
`(d) Element [2C]: “a second frequency down-conversion
`module to down-convert the input signal, wherein
`said second frequency down-conversion module
`down-converts said input signal according to a
`second control signal and outputs a second down-
`converted signal” ............................................................65
`Element [2D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a down-converted
`signal” .............................................................................70
`Element [2E]: “wherein said first frequency down-
`conversion module under-samples said input signal
`according to said first control signal, and” .....................73
`(g) Element [2F]: “said second frequency down-
`conversion module under-samples said input signal
`according to said second control signal” ........................75
`Independent Claim 3 ................................................................. 76
`
`(e)
`
`(f)
`
`2.
`
`iii
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`IPR2022-00245 Page 00004
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`

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`
`
`(a)
`
`(c)
`
`Element [3-preamble]: “A wireless modem
`apparatus, comprising” ...................................................76
`(b) Element [3A]: “a receiver for frequency down-
`converting an input signal including” .............................76
`Element [3B]: “a first frequency down-conversion
`module to down-convert the input signal, wherein
`said first frequency down-conversion module down-
`converts said input signal according to a first control
`signal and outputs a first down-converted signal” .........77
`(d) Element [3C]: “a second frequency down-conversion
`module to down-convert said input signal, wherein
`said second frequency down-conversion module
`down-converts said input signal according to a
`second control signal and outputs a second down-
`converted signal; and” ....................................................77
`Element [3D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a down-converted
`signal” .............................................................................77
`Element [3E]: “wherein said first and said second
`frequency down-conversion modules each comprise a
`switch and a storage element” ........................................77
`B. Ground II: Claims 2, 3 and 4 Are Obvious Over Lam in View of
`Enz and Tayloe .................................................................................... 79
`
`(e)
`
`(f)
`
`1.
`
`Independent Claim 2 ................................................................. 79
`
`(a)
`
`Element [2-preamble]: “A wireless modem
`apparatus, comprising” ...................................................80
`(b) Element [2A]: “a receiver for frequency down-
`converting an input signal including” .............................81
`Element [2B]: “a first frequency down-conversion
`module to down-convert the input signal, wherein
`said first frequency down-conversion module down-
`converts said input signal according to a first control
`signal and outputs a first down-converted signal” .........82
`
`(c)
`
`iv
`
`IPR2022-00245 Page 00005
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`

`

`
`
`(e)
`
`(d) Element [2C]: “a second frequency down-conversion
`module to down-convert the input signal, wherein
`said second frequency down-conversion module
`down-converts said input signal according to a
`second control signal and outputs a second down-
`converted signal” ............................................................88
`Element [2D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a down-converted
`signal” .............................................................................89
`Element [2E]: “wherein said first frequency down-
`conversion module under-samples said input signal
`according to said first control signal, and said second
`frequency down-conversion module under-samples
`said input signal according to said second control
`signal.” ............................................................................92
`Independent Claim 3 ................................................................. 93
`
`(a)
`
`2.
`
`(a)
`
`(c)
`
`Element [3-preamble]: “A wireless modem
`apparatus, comprising” ...................................................93
`(b) Element [3A]: “a receiver for frequency down-
`converting an input signal including” .............................94
`Element [3B]: “a first frequency down-conversion
`module to down-convert the input signal, wherein
`said first frequency down-conversion module down-
`converts said input signal according to a first control
`signal and outputs a first down-converted signal” .........94
`(d) Element [3C]: “a second frequency down-conversion
`module to down-convert said input signal, wherein
`said second frequency down-conversion module
`down-converts said input signal according to a
`second control signal and outputs a second down-
`converted signal; and” ....................................................94
`Element [3D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a down-converted
`signal” .............................................................................94
`
`(e)
`
`v
`
`IPR2022-00245 Page 00006
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`

`

`
`
`(f)
`
`Element [3E]: “wherein said first and second
`frequency down-conversion modules each comprise a
`switch and a storage element.” .......................................94
`Dependent Claim 4.................................................................... 96
`
`3.
`
`(a)
`
`Element [4]: “The apparatus of claim 3, wherein said
`storage elements comprises a capacitor that reduces a
`DC offset voltage in said first down-converted signal
`and said second down-converted signal” .......................96
`CONCLUSION .............................................................................................. 98
`
`X.
`
`
`
`
`vi
`
`IPR2022-00245 Page 00007
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`

`

`I.
`
`QUALIFICATIONS
`
`
`
`1.
`
`I, Matthew B. Shoemake, Ph.D., submit this declaration in support of
`
`TCL Industries Holdings Co., Ltd. and Hisense Co., Ltd. (“Petitioners”) Petition
`
`for inter partes review (“IPR”) of claims 2, 3, and 4 (“the challenged claims”) of
`
`USPN 7,292,835 (“the ’444 patent”) (Ex. 1001). I understand that the ’444 patent
`
`is currently owned by ParkerVision, Inc., (“Patent Owner”).
`
`2.
`
`I have been asked to provide my opinion about the state of the art of
`
`the technology described in the ’835 patent and on the patentability of certain
`
`claims of this patent.
`
`3.
`
`The statements herein include my opinions and the bases for those
`
`opinions, which relate to the following documents:
`
`Exhibit
`
`Description
`
`1001
`
`U.S. Patent No. 7,110,444 (“‘444 patent”)
`
`1003
`
`’444 patent File History
`
`1004
`
`U.S. Patent No. 6,230,000 (“Tayloe”)
`
`1005
`
`SN74CBT3253D Dual 1-of-4 FET Multiplexer/Demultiplexer
`(rev. ed. May 1998) (“TI Datasheet”)
`
`
`
`IPR2022-00245 Page 00008
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`

`

`
`
`1006
`
`U.S. Patent No. 5,937,013 (“Lam”)
`
`1007
`
`1008
`
`Circuit Techniques for Reducing the Effects of Op-Amp
`Imperfections: Autozeroing, Correlated Double Sampling, and
`Chopper Stabilization, Proceedings of the IEEE, Vol.84, No.11,
`November 1996 (“Enz”)
`
`Haque et al, A Two Chip PCM Voice CODEC With Filters, IEEE
`Journal of Solid-State Circuits, Vol. 4, SC-14, No. 6, Dec. 1979
`(“Haque”)
`
`1009
`
`Declaration of Maureen M. Honeycutt (“Honeycutt Decl.”)
`
`1014
`
`U.S. Pat. No. 5,764,693 (“Taylor”)
`
`1015
`
`U.S. Patent 5,742,641 (“Dingsor”)
`
`
`
`4.
`
`Although I am being compensated for my time at a rate of $670 per
`
`hour in preparing this declaration, the opinions herein are my own. I have no stake
`
`in the outcome of this IPR proceeding. My compensation does not depend in any
`
`way on the outcome of Petitioner’s petition or this IPR proceeding.
`
`5.
`
`I graduated magna cum laude from Texas A&M University in 1994
`
`upon earning two bachelor’s degrees, one in Electrical Engineering and one in
`
`Computer Science. While at Texas A&M I took several classes on analog and RF
`
`2
`
`IPR2022-00245 Page 00009
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`
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`design including the use of switched capacitors. I also took digital signal
`
`processing at Texas A&M.
`
`6.
`
`I also earned a master’s degree and a Ph.D. in Electrical Engineering
`
`from Cornell University in 1997 and 1999, where my studies focused on
`
`communications systems, communication protocols, and information theory. While
`
`at Cornell I also was a teaching assistant for digital signal processing courses.
`
`7.
`
`I have almost 30 years of experience in a variety of technologies and
`
`industries related to communications systems. From 1991 to 1995, I worked as an
`
`intern in the Digital Signal Processing Group at Texas Instruments, Inc. in
`
`Stafford, Texas. I worked on both product engineering and applications
`
`engineering projects. Our DSP chips were used in a variety of products including
`
`wired and wireless communication systems.
`
`8.
`
`I was on the founding team of Alantro Communications, Inc.
`
`(“Alantro”), a manufacturer of semiconductor products that relate to
`
`communication systems. While employed by Alantro, I served as an engineer and
`
`engineering manager in the development of an HDSL2 modem, a cable modem, a
`
`2.4 GHz cordless phone, and Wi-Fi technologies. During that time, I was
`
`responsible for developing the digital baseband portions of physical layers; the
`
`portion of a communication system that is responsible for transmitting information
`
`over a physical medium, such as wire, fiber, or air; and successfully decoding the
`
`3
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`IPR2022-00245 Page 00010
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`

`

`
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`information at the receiver. I also worked on standardized interface technologies
`
`such as Ethernet (802.3) and USB. My team at Alantro worked on and pioneered
`
`Wi-Fi technology, which was the foundation of the Wi-Fi product line offered by
`
`Texas Instruments. Texas Instruments acquired Alantro in 2000.
`
`9.
`
`After Texas Instruments acquired Alantro, I became the director of the
`
`Wireless Networking Branch in the Texas Instruments DSP Solutions R&D Center
`
`from 2000 to 2003. While manager of this group, I developed technologies for
`
`increasing throughput and quality of service in communications networks. I also
`
`worked with sister organizations including DSL and cable modem teams to
`
`integrate Wi-Fi into products such as home gateways.
`
`10.
`
`In 2003, I founded WiQuest Communications, Inc. and was the CEO
`
`from 2003 to 2008. At WiQuest, I developed and sold the world’s first wireless
`
`docking system for notebook computers and the world's first 1 Gbps ultra
`
`wideband chipset. Our products contained RF and analog circuitry for modulating
`
`and demodulating high-speed signals transmitted wirelessly.
`
`11. From 2008 to 2018 I was the CEO and Founder of Biscotti Inc., which
`
`designs high-definition, Wi-Fi-based video calling systems for the home and
`
`office. Biscotti was founded in 2008 for the purpose of enabling consumer-based
`
`video calling in the home. Biscotti’s products were awarded the 2012 CES
`
`Innovation award and have been featured on television’s The View as well as in
`
`4
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`IPR2022-00245 Page 00011
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`

`

`
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`numerous publications including The Financial Times, The Dallas Morning News,
`
`Mashable, EE Times, USA Today, PC World and Engadget. Biscotti cameras
`
`provided secure audio/video communication. Biscotti’s cameras performed audio
`
`and video processing and included interfaces such as HDMI, Wi-Fi, Ethernet and
`
`IR. Biscotti products also use interchip communication technologies such as USB,
`
`I2C and I2S.
`
`12. Beginning in 2008, companies began calling on me to serve as an
`
`expert in patent litigation. I have testified in numerous cases related to
`
`communication networks as well as standards. After working as a sole proprietor
`
`for many years, I incorporated Peritum LLC in 2016. I continue my expert
`
`consulting work via Peritum today.
`
`13.
`
`I participated in the IEEE 802.11 standards development process
`
`between 1998 and 2004, including, but not limited to, through my participation in
`
`the IEEE 802.11a, IEEE 802.11b, IEEE 802.11g, IEEE 802.11e, IEEE 802.11i and
`
`IEEE 802.11n standards development processes. I also made numerous
`
`presentations to the participants in the groups that developed the IEEE 802.11b,
`
`802.11g and 802.11n amendments. Based on those submissions, technologies of
`
`which I am an inventor were ultimately adopted into the IEEE 802.11b and
`
`802.11g amendments.
`
`5
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`IPR2022-00245 Page 00012
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`14.
`
`I have personal experience with standard-setting meeting and with
`
`rules governing the conduct of meetings at standards-setting bodies. For example,
`
`I was a voting member of the IEEE 802.11 Working Group during critical votes
`
`that were taken during the 802.11a, b, g, e, i, and n standards development
`
`processes. In September of 1999, I organized and hosted the IEEE 802.11
`
`Working Group meeting in Santa Rosa, California, the meeting at which IEEE
`
`802.11a (now Wi-Fi 1) and IEEE 802.11b (now Wi-Fi 2) were ratified. In January
`
`of 2001, I organized and hosted the IEEE 802.11 Working Group meeting in
`
`Dallas, Texas. I have continued to actively monitor the 802.11 development
`
`process through the years and periodically attend meetings today.
`
`15.
`
`I have years of experience with the rules and practices for chairing
`
`standard-setting meetings during the standardization process. Having heavily
`
`participated in the IEEE 802.11b standardization process, I was elected by the
`
`membership of the 802.11 Working Group to chair a Study Group to develop a
`
`high-rate extension to the IEEE 802.11b amendment, which ultimately became the
`
`IEEE 802.11g amendment (now Wi-Fi 3). This Study Group evolved into a Task
`
`Group (known as Task Group G, or TGg), which I also chaired.
`
`16. As Chairperson of Task Group G, I was responsible for leading all of
`
`the activities of Task Group G, including, among other things, ensuring
`
`compliance with standard-setting rules, processes, and procedures, including patent
`
`6
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`IPR2022-00245 Page 00013
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`

`
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`policies; being knowledgeable in both the standards process and parliamentary
`
`procedure; setting goals and deadlines; developing and publishing meeting
`
`agendas; calling meetings; entertaining motions; ensuring fairness in discussions,
`
`including mediating discussions and seeking consensus; managing balloting;
`
`prioritizing work to best serve the group and its goals; fulfilling financial reporting
`
`requirements as appropriate; reporting on TGg status, work, and activities to the
`
`full 802.11 Working Group; interfacing with other Task Group chairs as
`
`appropriate; and delegating and assigning functions and subtasks of the group. I
`
`was the Chair of TGg from inception through ratification of the IEEE 802.11g
`
`amendment in 2003.
`
`17.
`
`In 2003, I was elected by the IEEE 802.11 Working Group members
`
`to be the Chairperson of the 802.11n Task Group (now Wi-Fi 4). In early 2004 I
`
`stepped down as chair of IEEE 802.11n to take a CEO position.
`
`18.
`
`I am an inventor of technology that was adopted as part of the 802.11
`
`standard (e.g., PBCC), including the 802.11b and 802.11g amendments.
`
`19. My familiarity with digital signal processing, communication systems
`
`and analog and RF design began while I was an undergraduate at Texas A&M
`
`University in College Station between 1989 and 1994. Further, during my
`
`undergraduate studies I was an intern at Texas Instruments’ Digital Signal
`
`Processor (DSP) group in Stafford, Texas. Texas Instruments’ DSP chips were
`
`7
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`IPR2022-00245 Page 00014
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`

`

`
`
`used in multiple applications, including wireless digital communication systems.
`
`My study of communication theory continued from 1994 to 1999 while I was a
`
`graduate student at Cornell University.
`
`20.
`
`I have actively programmed computers for over 40 years, having
`
`started programming in BASIC circa 1982. My programming expertise includes
`
`BASIC, C, C++, Pascal, Java, Swift, assembly languages, HTML, Matlab, UNIX
`
`shell scripts, and hardware description languages (HDL).
`
`21. Based on my study and work experience, I am aware of a wealth of
`
`work that relates to communication systems, protocols, standards and interfaces.
`
`Examples of previous work I am familiar with include channel access protocols,
`
`the OSI and TCP/IP networking models, datagram/frame/packet formatting
`
`techniques, automatic repeat request (ARQ) techniques, handshakes, RTS/CTS,
`
`detection and estimation theory, capabilities signaling, information theory
`
`including theoretical channel capacities and source coding, forward error control
`
`(FEC), IEEE 802.1, IEEE 802.3, IEEE 802.11, video communications, audio
`
`communications, general purpose and specialized processors, Bluetooth, CAN,
`
`USB, wireless USB, I2C, I2S, UARTs, DSL, cable modems, AM radio, FM radio,
`
`DVB, NSTC, ATSC, MPEG, MP3, h.264, binary convolutional codes, Reed
`
`Solomon codes, trellis codes, low-density parity-check codes, color space
`
`conversions, QAM, BPSK, QPSK, SSB, frequency translation, DC offset, carrier
`
`8
`
`IPR2022-00245 Page 00015
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`

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`
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`offset, LPC-10, G.711, G.722 and AAC. I am also familiar with various file
`
`formats including vCards, JSON, XML, and HTML as well as databases.
`
`22.
`
`I have authored numerous publications in the field of wireless
`
`technology, including “Low Peak-to-Average Ratio Channel Estimation Sequences
`
`for MultiBand OFDM Systems” in EE Times, “High Performance Wireless
`
`Ethernet” in IEEE Communications Magazine, and various other articles in IEEE
`
`publications. I have presented papers at many IEEE and other meetings. I
`
`organized and hosted the September 1999 IEEE 802.11 meeting in Santa Rosa,
`
`California and the January 2002 meeting in Dallas, Texas. In March 2019 I gave
`
`an invited lecture as part of Texas A&M University’s Distinguished Speaker
`
`Series. The lecture was on the topic of LDPC coding for robust communication
`
`networks. I was recognized as a “leader and innovator” and recognized for my
`
`“many accomplishments as a researcher leader and scholar.”
`
`23. The IEEE 802.11g Task Group that I chaired received the Technology
`
`Excellence award in 2003 from PC Magazine for the protocols incorporated in the
`
`IEEE 802.11g amendment developed under my leadership.
`
`24. Companies I have founded won CES Innovations Awards in 2008 and
`
`2012 for OFDM-based wireless technology and Wi-Fi connected cameras,
`
`respectively.
`
`25.
`
`I am a named inventor on at least thirty-four patents.
`
`9
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`IPR2022-00245 Page 00016
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`

`

`
`
`26.
`
`I served on the External Advisory Committee of the Texas A&M
`
`University Department of Electrical and Computer Engineering from 2006 to 2020.
`
`27. A full list of my qualifications and experience is contained in my CV,
`
`which I attached as an Appendix to this report.
`
`II. MATERIALS REVIEWED
`
`28. My opinions are based on years of education, research and experience,
`
`as well as investigation and study of relevant materials. In forming my opinions, I
`
`have considered the materials identified in this declaration, including the Exhibits
`
`mentioned above.
`
`29.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional documents
`
`and information in forming any necessary opinions—including documents that
`
`may not yet have been provided to me.
`
`30. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`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.
`
`III. PERSON OF ORDINARY SKILL IN THE ART
`
`10
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`IPR2022-00245 Page 00017
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`
`
`31.
`
`I have been informed that the ’444 patent and its claims, as well as the
`
`prior art, are interpreted the way a hypothetical person having ordinary skill in the
`
`relevant art would have interpreted these materials at the time of the invention. I
`
`understand that the “time of the invention” in this IPR proceeding is the earliest
`
`“priority date” that the applicant for the ’444 patent claimed in the United States
`
`Patent & Trademark Office (“USPTO”). Here, the face of the patent indicates that
`
`the application claims a priority date of August 4, 1999. As mentioned above, I
`
`was conducting research in the relevant technological field at that time.
`
`32.
`
`In determining the characteristics of a person of ordinary skill in the
`
`art at the time of the claimed invention, I considered several things, including the
`
`factors discussed below, as well as (1) the levels of education and experience of the
`
`inventor and other persons actively working in the relevant field; (2) the types of
`
`problems encountered in the field; (3) prior art solutions to these problems; (4) the
`
`rapidity in which innovations are made; and (5) the sophistication of the relevant
`
`technology. I also placed myself back in the relevant time period and considered
`
`the individuals that I had worked with in the field.
`
`33.
`
`It is my opinion that a person having ordinary skill in the relevant art
`
`at the time of the invention (“POSITA”) would have been someone with at least an
`
`undergraduate degree in electrical engineering or a related subject and two or more
`
`years of experience in the fields of communication systems, signal processing
`
`11
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`IPR2022-00245 Page 00018
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`

`
`
`and/or RF circuit design. Less work experience may be compensated by a higher
`
`level of education, such as a master’s degree.
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`34.
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`I understand that a person of ordinary skill in the relevant art is a
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`hypothetical person who is assumed to be aware of all the pertinent information
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`that qualifies as prior art. He or she is a person of ordinary creativity, not an
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`automaton. He or she makes inferences and takes creative steps. In addition, a
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`person of ordinary skill recognizes that prior art items may have obvious uses
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`beyond their primary purposes, and in many cases he or she will be able to fit the
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`teachings of multiple pieces of prior art together like pieces of a puzzle.
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`35.
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`I am prepared to testify as an expert in this field and also as someone
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`who had at least the knowledge of a person having ordinary skill in the art at the
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`time of the claimed invention, and someone who worked with others that had at
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`least the knowledge of a person having ordinary skill in the art at the time of the
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`alleged invention.
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`36. Unless otherwise stated, my statements below refer to the knowledge,
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`beliefs and abilities of a person having ordinary skill with respect to the arts
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`relevant to the ’444 patent at the time of the claimed invention.
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`IV. STANDARDS OF ANTICIPATION AND OBVIOUSNESS
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`37.
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`I offer no opinions on the law. However, I have developed an
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`understanding of several legal principles regarding invalidity of patent claims, and
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`other relevant legal issues. I have applied this understanding in arriving at my
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`stated opinions and conclusions in this declaration.
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`38.
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`I understand that the ’444 patent contains independent and dependent
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`claims. An independent claim is one that does not refer to other claims in the
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`patent, and it must be read separately from the other claims to determine the scope
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`of such a claim. On the other hand, a dependent claim refers to at least one other
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`claim in the patent. Such a claim incorporates all of the elements of any claim to
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`which the dependent claim refers, as well as the additional elements recited in the
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`dependent claim itself.
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`39.
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`I understand that, for example in federal district court infringement
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`actions, a claim in an issued patent is presumed to be valid. In such federal court
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`actions, a patent claim can be “invalidated” upon a showing of clear and
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`convincing evidence. This is not such an action.
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`40. Rather, I understand that in an IPR proceeding like this one, the
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`Petitioner(s) has the burden of proving a proposition of “unpatentability” by a
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`“preponderance of the evidence.” I understand that preponderance of the evidence
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`means the greater weight of evidence. In an IPR proceeding, the USPTO may
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`cancel “as unpatentable” one or more claims of a patent on a ground that could be
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`raised under section 102 or 103 of the Patent Act, and only on the basis of prior art
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`consisting of patents or printed publications.
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`41.
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`I am informed that the patentability of the challenged claims in this
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`proceeding are to be assessed under the pre-America Invents Act (“pre-AIA”)
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`section 102 and 103 of the Patent Act. References to section 102 or 103 herein
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`refer to the pre-AIA versions of those statutes.
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`42.
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`I understand that section 102 deals with the “novelty” of patent
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`claims. I understand that under section 102(a), a person is not entitled to a patent
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`if, among other things, the invention was patented or described in a printed
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`publication in this or a foreign country, before the invention thereof by the
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`applicant for patent. Under section 102(b), a person is not entitled to a patent if,
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`among other things, the invention was patented or described in a printed
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`publication in this or a foreign country, more than one year prior to the date of the
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`application for patent in the United States. Under section 102(e), a person is not
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`entitled to a patent if the invention was described in a published or issued patent
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`application that was filed by another in the United States before the invention by
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`the applicant for patent. Under section 102(g), a person is not entitled to a patent
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`if, before the applicant’s invention, the invention was made in the United States by
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`another inventor who had not abandoned, suppressed, or concealed it.
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`43.
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`I understand that prior art under one or more of these provisions can
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`include, for example but not limited to, one or more of printed publications, patent
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`applications, published patent applications, and domestic, foreign patents, or
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`international patents or publications (e.g., published PCT applications). These are
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`sometimes referred to as prior art “references.”
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`44.
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`I understand that in order for a claim to be unpatentable for lack of
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`novelty, i.e., anticipated, a single prior art reference must disclose each and every
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`claim limitation of that patent claim. It is not considered in a void, rather, one
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`must take into account what a person having ordinary skill in the art would have
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`understood from the reference. I also understand that one should consider not only
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`what is expressly disclosed in the prior art reference, but also what would
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`naturally, inherently have been understood from what is disclosed in the prior art
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`reference. I understand that to prove inherency, the matter that is not expressly
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`described must be necessarily present in the reference, and it would be so
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`recognized by an ordinarily skilled artisan.
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`45.
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`I understand that in order to cancel as unpatentable a dependent claim,
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`all elements of that dependent claim and the claim (or claims) from which it
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`depends must be disclosed or suggested in the prior art.
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`46.
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`I understand that determining anticipation of a patent claim requires a
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`comparison of the properly construed claim language to the prior art on an
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`element-by-element basis. As it pertains to an IPR proceeding, a claim is
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`“anticipated” if each and every element of the claim, as properly construed, has
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`been disclosed in a single prior art reference, either expressly or inherently, and the
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`claimed arrangement or combination of those elements must also be disclosed,
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`either expressly or inherently, in that same prior art reference.
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`47.
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`I also understand that while anticipation cannot be established by
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`combining references, additional references may be used to interpret the
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`anticipating reference by, for example, indicating what the anticipating