IPR2022-00245
`U.S. Patent No. 7,110,444
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`LG ELECTRONICS INC.,
`
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-00245
`
`U.S. Patent No. 7,110,444
`
`____________
`
`DECLARATION OF DEAN P. NEIKIRK, PH.D.
`REGARDING U.S. PATENT NO. 7,110,444
`
`LG Ex. 1099
`LG Electronics Inc. v. ParkerVision, Inc.
`IPR2022-00245
`Page 00001
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`IPR2022-00245
`U.S. Patent No. 7,110,444
`I, Dean P. Neikirk, Ph.D., do hereby declare and state, that all statements are
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`made herein of my own knowledge are true and that all statements made on
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`information and belief are believed to be true. I am over the age of 21 and am
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`competent to make this declaration. These statements were made with the
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`knowledge that willful false statements are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code.
`
`Dated: December 17, 2021
`
`Dean P. Neikirk, Ph.D.
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`i
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`IPR2022-00245
`U.S. Patent No. 7,110,444
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`TABLE OF CONTENTS
`QUALIFICATIONS ........................................................................................ 1
`I.
`II. MATERIALS REVIEWED ............................................................................ 9
`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 ................................................................................ 24
`C.
`Patent Owner Added Insignificant Limitations To Obtain the
`Challenged
`Claims .................................................................................................. 28
`VII. CLAIM CONSTRUCTION .......................................................................... 29
`A.
`“frequency down-conversion module” (Claims 2 and 3) .................... 30
`B.
`“subtractor module” (Claims 2, 3) ...................................................... 31
`C.
`“under-sample” (Claim 2) ................................................................... 33
`VIII. OVERVIEW OF THE PRIOR ART REFERENCES ................................... 34
`A.
`Tayloe .................................................................................................. 34
`B.
`TI Datasheet ........................................................................................ 39
`C.
`Lam ...................................................................................................... 41
`D.
`Enz ....................................................................................................... 43
`E. Motivation to Combine ....................................................................... 48
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`U.S. Patent No. 7,110,444
`Tayloe with TI Datasheet .......................................................... 48
`1.
`Lam with Enz and Tayloe ......................................................... 51
`2.
`IX. SPECIFIC GROUNDS FOR PETITION ...................................................... 53
`A. Ground I: Claims 2 and 3 Are Obvious Over Tayloe in View of TI
`Datasheet ............................................................................................. 53
`1.
`Independent Claim 2 ................................................................. 53
`(a) Element [2-preamble]: “A wireless modem
`apparatus, comprising” ................................................... 53
`(b) Element [2A]: “a receiver for frequency
`down-converting an input signal including” .................. 55
`(c) 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” ............................................................................. 56
`(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” ...................... 64
`(e) Element [2D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a
`down-converted signal” .................................................. 69
`Element [2E]: “wherein said first frequency
`down-conversion module under-samples said input
`signal according to said first control signal, and” .......... 72
`(g) Element [2F]: “said second frequency
`down-conversion module under-samples said input
`signal according to said second control signal” ............. 74
`Independent Claim 3 ................................................................. 75
`
`(f)
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`2.
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`U.S. Patent No. 7,110,444
`(a) Element [3-preamble]: “A wireless modem
`apparatus, comprising” ................................................... 76
`(b) Element [3A]: “a receiver for frequency
`down-converting an input signal including” .................. 76
`(c) 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” ............................................................................. 76
`(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” .............. 76
`(e) Element [3D]: “a subtractor module that subtracts
`said second down-converted signal from said first
`down-converted signal and outputs a
`down-converted signal” .................................................. 76
`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
`1.
`Independent Claim 2 ................................................................. 79
`(a) Element [2-preamble]: “A wireless modem
`apparatus, comprising” ................................................... 79
`(b) Element [2A]: “a receiver for frequency
`down-converting an input signal including” .................. 80
`(c) 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
`
`(f)
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`(f)
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`U.S. Patent No. 7,110,444
`control signal and outputs a first down-converted
`signal” ............................................................................. 81
`(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
`(e) 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) Element [3-preamble]: “A wireless modem
`apparatus, comprising” ................................................... 93
`(b) Element [3A]: “a receiver for frequency
`down-converting an input signal including” .................. 93
`(c) 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” ............................................................................. 93
`(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” .............. 93
`
`2.
`
`
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`(f)
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`U.S. Patent No. 7,110,444
`(e) 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
`Element [3E]: “wherein said first and second
`frequency down-conversion modules each
`comprise a switch and a storage element.” ..................... 94
`Dependent Claim 4 ................................................................... 95
`(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” .................................................. 95
`CONCLUSION .............................................................................................. 97
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`3.
`
`X.
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`
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`IPR2022-00245
`U.S. Patent No. 7,110,444
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`I.
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`QUALIFICATIONS
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`1.
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`I, Dean P. Neikirk, Ph.D., have been retained by counsel for LG
`
`Electronics Inc. (“LGE” or “Petitioner”) to provide assistance regarding USP
`
`7,110,444 (“’444 patent”) (Ex. 1001). Specifically, I have been asked to consider
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`the validity of claims 2, 3, and 4 (“the challenged claims”) in connection with
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`LGE’s petition for inter partes review and request for joinder with an instituted
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`inter partes proceeding filed by TCL Industries Holdings Co., Ltd. and Hisense
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`Co., Ltd. (“TCL”), IPR2021-00990. I have reviewed the expert declaration of Dr.
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`Matthew B. Shoemake, Ph.D., submitted in support of TCL’s IPR petition (see Ex.
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`1002) and agree with Dr. Shoemake’s opinions and conclusions therein. I have
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`been informed that it is appropriate here to duplicate statements from Dr.
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`Shoemake’s declaration concerning facts and opinions with which I agree. Hence,
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`this declaration, particularly in sections II – X, is substantively identical to Dr.
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`Shoemake’s declaration, and does not include any new or additional opinions. I
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`have personal knowledge of the facts and opinions set forth in this declaration, and,
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`if called upon to do so, I would testify competently thereto. I understand that the
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`’444 patent is currently owned by ParkerVision, Inc. (“Patent Owner”).
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`2.
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`I have been asked to provide my opinion about the state of the art of
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`the technology described in the ’444 patent and on the patentability of certain
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`
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`U.S. Patent No. 7,110,444
`claims of this patent. With respect to these topics, I have reviewed Dr.
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`Shoemake’s declaration. I concur with his opinions and adopt them herein.
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`3.
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`In addition to Dr. Shoemake’s declaration, in preparation of this
`
`declaration I have studied:
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`Exhibit
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`Description
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`1001
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`1003
`
`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1014
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`U.S. Patent No. 7,110,444 (“’444 patent”)
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`’444 patent File History
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`U.S. Patent No. 6,230,000 (“Tayloe”)
`
`SN74CBT3253D Dual 1-of-4 FET Multiplexer/Demultiplexer
`(rev. ed. May 1998) (“TI Datasheet”)
`
`U.S. Patent No. 5,937,013 (“Lam”)
`
`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”)
`
`Declaration of Maureen M. Honeycutt (“Honeycutt Decl”)
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`U.S. Pat. No. 5,764,693 (“Taylor”)
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`
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`2
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`IPR2022-00245
`U.S. Patent No. 7,110,444
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`Exhibit
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`Description
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`1015
`
`U.S. Patent 5,742,641 (“Dingsor”)
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`
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`4.
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`In forming the opinions expressed below, I have considered:
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`(1) The documents listed above;
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`(2) Any additional documents discussed below; and
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`(3) My own knowledge and experience based upon my work in the fields of
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`communication systems, signal processing and circuit design as described
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`below.
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`5.
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`Although I am being compensated for my time at a rate of $650 per
`
`hour in preparing this declaration, the opinions herein are my own. I have no stake
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`in the outcome of this IPR proceeding. My compensation does not depend in any
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`way on the outcome of Petitioner’s petition or this IPR proceeding.
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`6.
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`I am currently an Emeritus Professor in the Department of Electrical
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`and Computer Engineering, at the Cockrell School of Engineering of The
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`University of Texas at Austin, holding the Emeritus Cullen Trust for Higher
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`Education Professorship in Engineering.
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`7.
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`I received a B.S. degree (1979) in physics from Oklahoma State
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`University, and an M.S. degree (1981) and Ph.D. (1984) degree in applied physics
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`from the California Institute of Technology.
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`
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`3
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`U.S. Patent No. 7,110,444
`8. My earliest research was in the interaction of light with optically
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`active materials, including color centers in crystals for use as laser hosts.
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`9.
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`Each of my academic degrees involved significant studies in solid
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`state physics, semiconductor devices, electrical engineering, electronic systems,
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`electromagnetics, optics, radio frequency systems, and antennas. For example,
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`courses relating to these fields that I took include two years of study in
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`electromagnetics and optics, one year of study in solid state and semiconductor
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`physics, as well as four years of graduate research in electronic devices, antenna
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`design, antenna fabrication, microwave systems, including mixing and both
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`frequency down-conversion and up-conversion, and optical systems.
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`10. My Ph.D. thesis was on the design and fabrication of high frequency
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`electromagnetic detectors and quasi-optical imaging antenna arrays, including
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`research on integrated-circuit fabrication, high frequency RF semiconductor
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`devices, integrated circuits, antennas, sensors, and IC packaging.
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`11.
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`I designed and fabricated the first monolithic integrated-circuit
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`imaging antenna array for use at wavelengths in the far infrared (sometimes
`
`referred to as the terahertz) region of the electromagnetic spectrum. For this work
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`on the first high resolution focal plane antenna array for use at wavelengths
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`between 0.1 mm and 1 mm I was awarded the 1984 Marconi International
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`Fellowship Young Scientist Award “for contributions to the development of
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`
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`IPR2022-00245
`U.S. Patent No. 7,110,444
`millimeter wave integrated circuits especially in the area of detectors and imaging
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`arrays.”
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`12. My work as a professor began in 1984, when I joined the University
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`of Texas at Austin as an assistant professor. In 1988 I became an associate
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`professor, and in 1992 became a full professor.
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`13.
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`I received the 1986 National Science Foundation Presidential Young
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`Investigator for research in terahertz devices, optically controlled microwave
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`devices, such as phase shifters and attenuators, and high frequency semiconductor
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`heterostructures. I also received a 1985-86 IBM Corporation Faculty Development
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`Award to support my early work in advanced semiconductor devices.
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`14. My research over the last forty years has concentrated heavily in the
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`areas of electromagnetics, microwave and RF engineering, microelectronics,
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`semiconductor devices, IC fabrication, and new sensors. This research work has
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`been funded by many agencies, focusing on the fabrication and modeling of
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`semiconductor devices, electromagnetic devices and detectors, chemical sensors,
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`temperature sensors, proximity sensors, and pressure sensors, as well as research
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`on the high frequency properties of transmission lines, RF devices, and infrared to
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`terahertz detectors (both direct detectors and down-conversion mixers) for use in
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`focal plane imaging arrays.
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`
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`U.S. Patent No. 7,110,444
`15. My research related to the development of new chemical sensors (an
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`“electronic taste” sensor) was selected for a commercialization venture between
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`The University of Texas and two outside start-up companies.
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`16.
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`In 1985, I established the Microelectronics Fabrication Teaching
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`Laboratory at The University of Texas at Austin, which continues to this day to
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`provide undergraduate and graduate students with hands-on experience in IC
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`fabrication. I have taught many courses in integrated-circuit fabrication,
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`microwave devices, IC packaging, electromagnetics, computer aided design
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`methods for circuit simulation, sensors of all sorts, and micro-electromechanical
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`systems.
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`17.
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`In recognition of my research and classroom teaching
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`accomplishments, I received the 1984-85 Engineering Foundation Faculty Award
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`from the University of Texas at Austin Engineering Foundation Advisory Council,
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`the 1985-90 General Motors Foundation Centennial Teaching Fellowship, the 1987
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`Award for Outstanding Engineering Teaching by an Assistant Professor, the 1990-
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`1992 Temple Foundation Endowed Faculty Fellowship, the 1997 College of
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`Engineering Award for Outstanding Teaching in the Department of Electrical and
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`Computer Engineering, the 2003 Department of Electrical and Computer
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`Engineering Gordon T. Lepley IV Endowed Memorial Teaching Award, and the
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`
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`6
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`U.S. Patent No. 7,110,444
`2007 Lockheed Martin Aeronautics Company Award for Excellence in
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`Engineering Teaching.
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`18. For 37 years I conducted research with students and research scientists
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`in the Microelectromagnetics Research Group in the Microelectronics Research
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`Center at The University of Texas at Austin.
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`19. For over ten years I also served as the Graduate Advisor of the
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`Department of Electrical and Computer Engineering at the University of Texas at
`
`Austin, as well as serving for over five years as an Associate Chairman of the
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`Electrical and Computer Engineering Department at The University of Texas at
`
`Austin. I also served as Associate Dean of Graduate Studies from 2014 to 2021.
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`20. Over the years, I have taught a variety of electrical engineering
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`courses at the University of Texas. These include Integrated Circuit Fabrication,
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`VLSI Fabrication Techniques, Ultra Large Scale Integrated Circuit Fabrication
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`Techniques, Integrated Circuit Nanomanufacturing Techniques, Electromagnetics
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`in Packaging, Simulation Methods in CAD/VLSI, Micro-Electromechanical
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`Systems, Electromagnetic Engineering, and Microwave and Radio Frequency
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`Engineering. I have also taught several continuing education courses in these
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`fields.
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`21.
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`I am a Senior Member of the Institute of Electrical and Electronics
`
`Engineers (“IEEE”). From March 1991 to October 1994, I served as an Associate
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`U.S. Patent No. 7,110,444
`Editor for the IEEE publication called “IEEE Transactions on Education.” I also
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`served as a member of the Editorial Board on the IEEE Transactions on
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`Microwave Theory and Techniques in the 1990-2000 timeframe.
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`22. Through my work on sensors, electronic systems and innovations in
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`other related fields, I have been named an inventor on 17 U.S. patents. These are
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`summarized in my curriculum vitae.
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`23. My issued patents include, for example, U.S. Patent No, 5,408,107,
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`titled “Semiconductor Device Apparatus Having Multiple Current-Voltage Curves
`
`and Zero-Bias Memory.” This patent is directed to a semiconductor device that can
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`be switched between current-voltage curve settings at higher positive or negative
`
`voltages and can be read at lower voltages.
`
`24. As another example, U.S. Patent No. 9,291,586, titled “Passive
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`Wireless Self-Resonant Sensor,” relates to a sensor for detecting materials,
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`including a substrate, a passivation layer formed on the substrate, a high surface
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`area material disposed on the passivation layer, and a self-resonant structure that
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`includes a planar spiral inductor and a plurality of planar interdigitated capacitor
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`electrodes disposed within the passivation layer.
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`25. Many of my patents are related to sensor arrays used for chemical
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`testing. These include, for example, U.S. Patent 6,589,779: “General signaling
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`protocol for chemical receptors in immobilized matrices,” U.S. Patent 6,602,702:
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`U.S. Patent No. 7,110,444
`“Detection system based on an analyte reactive particle,” U.S. Patent 7,316,899,
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`‘Portable sensor array system,” and U.S. Patent 8,105,849, “Integration of fluids
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`and reagents into self-contained cartridges containing sensor elements.”
`
`26.
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`I have also devoted a significant portion of my time at the University
`
`of Texas to contributing to various technical journals and other publications. My
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`work has been included in 95 archival journal publications, 165 referenced
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`conference proceedings, and 24 published abstracts. I have also contributed to
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`book chapters and technical reports relating to various electrical engineering
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`topics. My publications have addressed technologies such as chemical sensors,
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`integrated circuits for antenna arrays, determining conductor loss in transmission
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`lines, optical and electromagnetic devices for infrared detection, multilayer
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`interconnection lines for high speed digital integrated circuits, RF oscillator
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`circuits for use in both transmitter and receiver systems, memory-switching
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`double-barrier quantum-well diodes circuits, RF and infrared detection circuits,
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`and other topics related to sensors and optical systems.
`
`27.
`
` A full list of my qualifications and experience is contained in my CV,
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`which I attached as an Appendix to this report.
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`II. MATERIALS REVIEWED
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`28. My opinions are based on years of education, research and experience,
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`as well as investigation and study of relevant materials. In forming my opinions, I
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`U.S. Patent No. 7,110,444
`have considered the materials identified in this declaration, including the Exhibits
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`mentioned above.
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`29.
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`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional
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`documents and information in forming any necessary opinions—including
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`documents that may not yet have been provided to me.
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`30. My analysis of the materials produced in this proceeding 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,
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`supplement, and/or amend my opinions stated herein based on new information
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`and on my continuing analysis of the materials already provided.
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`III. PERSON OF ORDINARY SKILL IN THE ART
`
`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
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`understand that the “time of the invention” in this IPR proceeding is the earliest
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`“priority date” that the applicant for the ’444 patent claimed in the United States
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`Patent & Trademark Office (“USPTO”). Here, the face of the patent indicates that
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`the application claims a priority date of August 4, 1999. As mentioned above, I
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`was conducting research in the relevant technological field at that time.
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`In determining the characteristics of a person of ordinary skill in the
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`32.
`
`art at the time of the claimed invention, I considered several things, including the
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`factors discussed below, as well as (1) the levels of education and experience of the
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`inventor and other persons actively working in the relevant field; (2) the types of
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`problems encountered in the field; (3) prior art solutions to these problems; (4) the
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`rapidity in which innovations are made; and (5) the sophistication of the relevant
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`technology. I also placed myself back in the relevant time period and considered
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`the individuals that I had worked with in the field.
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`33.
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`It is my opinion that a person having ordinary skill in the relevant art
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`at the time of the invention (“POSITA”) would have been someone with at least an
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`undergraduate degree in electrical engineering or a related subject and two or more
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`years of experience in the fields of communication systems, signal processing
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`and/or RF circuit design. Less work experience may be compensated by a higher
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`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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`IPR2022-00245
`U.S. Patent No. 7,110,444
`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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`IPR2022-00245
`U.S. Patent No. 7,110,444
`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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`IPR2022-00245
`U.S. Patent No. 7,110,444
`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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`IPR2022-00245
`U.S. Patent No. 7,110,444
`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 sa