IPR2022-00246
`U.S. Patent No. 7,292,835
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
`
`LG ELECTRONICS INC.,
`
`Petitioners,
`
`v.
`
`PARKERVISION, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2022-00246
`
`U.S. Patent No. 7,292,835
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`DECLARATION OF DEAN P. NEIKIRK, PH.D.
`REGARDING U.S. PATENT NO. 7,292,835
`
`LG Ex. 1099
`LG Electronics Inc. v. ParkerVision, Inc.
`IPR2022-00246
`Page 00001
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`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
`
`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.
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`Dated: December 17, 2021
`
`Dean P. Neikirk, Ph.D.
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`i
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`IPR2022-00246
`U.S. Patent No. 7,292,835
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`TABLE OF CONTENTS
`QUALIFICATIONS ........................................................................................ 1
`I.
`II. MATERIALS REVIEWED ............................................................................ 9
`III. PERSON OF ORDINARY SKILL IN THE ART ........................................ 10
`STANDARDS OF ANTICIPATION AND OBVIOUSNESS ..................... 12
`IV.
`V.
`BRIEF SUMMARY OF OPINIONS ............................................................ 23
`A.
`The ’835 Patent ................................................................................... 23
`B.
`The Claims are Obvious Over Hulkko in View of Gibson ................. 27
`The Claims Are Obvious Over Gibson in View of Schiltz ................. 32
`C.
`D.
`Claim 1 Preamble: “Cable Modem” .................................................. 35
`VI. BACKGROUND TECHNOLOGY ............................................................... 38
`A. Wireless Communications Signals ...................................................... 38
`“Modulating” Signals for Wireless Communications ......................... 39
`B.
`1.
`Amplitude Modulation .............................................................. 39
`2.
`Phase Modulation ...................................................................... 40
`3.
`Quadrature Amplitude Modulation (“QAM”) .......................... 41
`VII. OVERVIEW OF THE ’835 PATENT .......................................................... 44
`A. Alleged Problem .................................................................................. 44
`B. Alleged Invention ................................................................................ 44
`The Examiner Did Not Consider or Analyze the Primary Prior Art
`C.
`References Presented in the Petition During Original Prosecution .... 49
`VIII. CLAIM CONSTRUCTION .......................................................................... 50
`A.
`“cable modem” (Claim 1, Preamble) .................................................. 50
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`U.S. Patent No. 7,292,835
`“frequency translation module” (Claims 1, 18) .................................. 51
`B.
`C.
`“storage module” (Claims 1, 18) ......................................................... 53
`IX. OVERVIEW OF THE PRIOR ART REFERENCES ................................... 54
`A. Hulkko (Ex. 1004) ............................................................................... 54
`B. Gibson (Ex. 1005) ............................................................................... 57
`C.
`Schiltz (Ex. 1006) ................................................................................ 58
`DOCSIS References (Goldberg (Ex. 1007), Thacker (Ex. 1008)) ..... 60
`D.
`E.
`ITU-T J.83b (Ex. 1009) ....................................................................... 61
`F.
`Applicant Admitted Prior Art (“AAPA”) ........................................... 62
`G. Motivation to Combine ....................................................................... 63
`Ground 1: Hulkko in View of Gibson ..................................... 63
`1.
`Ground 2: Gibson in View of Schiltz ...................................... 65
`2.
`3.
`“Cable Modem” ........................................................................ 67
`SPECIFIC GROUNDS FOR PETITION ...................................................... 69
`Ground I: Claims 1, 12, 15, and 17 are Obvious Over Hulkko
`A.
`in View of Gibson ............................................................................... 69
`1.
`Claim 1 ...................................................................................... 69
`(a)
`Element [1 preamble]: “A cable modem for
`down-converting an electromagnetic signal having
`complex modulations, comprising” ................................ 69
`Element [1A]: “an oscillator to generate an in-phase
`oscillating signal” ........................................................... 71
`Element [1B]: “a phase shifter to receive said in-phase
`oscillating signal and to create a quadrature-phase
`oscillating signal” ........................................................... 72
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`X.
`
`(b)
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`(c)
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`(g)
`(h)
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`(i)
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`(j)
`(k)
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`U.S. Patent No. 7,292,835
`Element [1C]: “a first frequency down-conversion
`module to receive the electromagnetic signal and said
`in-phase oscillating signal” ............................................. 75
`Element [1D]: “a second frequency down-conversion
`module to receive the electromagnetic signal and said
`quadrature-phase oscillating signal” ............................... 76
`Element [1E]: “wherein said first frequency
`down-conversion module further comprises a first
`frequency translation module”........................................ 77
`Element [1F]: “and a first storage module” ................... 78
`Element [1G]: “wherein said first frequency
`down-conversion module samples the electromagnetic
`signal at a rate that is a function of said in-phase
`oscillating signal, thereby creating a first sampled signal”
` ........................................................................................ 79
`Element [1H]: “said second frequency down-conversion
`module further comprises a second frequency translation
`module” ........................................................................... 81
`Element [1I]: “and a second storage module” ............... 81
`Element [1J]: “wherein said second frequency
`down-conversion module samples the electromagnetic
`signal at a rate that is a function of said quadrature-phase
`oscillating signal, thereby creating a second sampled
`signal” ............................................................................. 82
`Claim 12: “The cable modem of claim 1, wherein said sampled
`signal is a first information output signal, and said second
`sampled signal is a second information output signal.” ........... 83
`Claim 15: “The cable modem of claim 1, further comprising a
`first filter receiving said first sampled signal and outputting a
`first filtered signal, and a second filter receiving said second
`sampled signal and outputting a second filtered signal.” ......... 83
`Claim 17: “The cable modem of claim 1, wherein the
`electromagnetic signal has been transmitted by a wireless
`method to the cable modem.” ................................................... 84
`
`(d)
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`(e)
`
`(f)
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`2.
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`3.
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`4.
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`B.
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`(b)
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`(c)
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`(d)
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`(e)
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`(f)
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`Ground II: Claims 1, 12-15, and 18-20 are Obvious Over Gibson in
`View of Schiltz .................................................................................... 86
`1.
`Claim 1 ...................................................................................... 86
`Element [1 preamble]: “A cable modem for
`(a)
`down-converting an electromagnetic signal having
`complex modulations, comprising” ................................ 86
`Element [1A]: “an oscillator to generate an in-phase
`oscillating signal” ........................................................... 88
`Element [1B]: “a phase shifter to receive said in-phase
`oscillating signal and to create a quadrature-phase
`oscillating signal” ........................................................... 88
`Element [1C]: “a first frequency down-conversion
`module to receive the electromagnetic signal and said
`in-phase oscillating signal” ............................................. 89
`Element [1D]: “a second frequency down-conversion
`module to receive the electromagnetic signal and said
`quadrature-phase oscillating signal” ............................... 92
`Element [1E]: “wherein said first frequency
`down-conversion module further comprises a first
`frequency translation module”........................................ 93
`Element [1F]: “and a first storage module” ................... 94
`Element [1G]: “wherein said first frequency
`down-conversion module samples the electromagnetic
`signal at a rate that is a function of said in-phase
`oscillating signal, thereby creating a first sampled signal”
` ........................................................................................ 94
`Element [1H]: “said second frequency down-conversion
`module further comprises a second frequency translation
`module” ........................................................................... 96
`Element [1I]: “and a second storage module” ............... 97
`Element [1J]: “wherein said second frequency
`down-conversion module samples the electromagnetic
`signal at a rate that is a function of said quadrature-phase
`oscillating signal, thereby creating a second sampled
`signal” ............................................................................. 97
`
`(g)
`(h)
`
`(i)
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`(j)
`(k)
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`v
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`2.
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`3.
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`4.
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`5.
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`6.
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`7.
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`Claim 12: “The cable modem of claim 1, wherein said sampled
`signal is a first information output signal, and said second
`sampled signal is a second information output signal.” ........... 99
`Claim 13: “The cable modem of claim 1, further comprising a
`first amplifier receiving said first sampled signal and outputting
`a first amplified signal, and a second amplifier receiving said
`second sampled signal and outputting a second amplified
`signal.” ....................................................................................100
`Claim 14: “The cable modem of claim 13, further comprising a
`first filter receiving said first amplified signal and outputting a
`first filtered signal, and a second filter receiving said second
`amplified signal and outputting a second filtered signal.” .....101
`Claim 15: “The cable modem of claim 1, further comprising a
`first filter receiving said first sampled signal and outputting a
`first filtered signal, and a second filter receiving said second
`sampled signal and outputting a second filtered signal.” .......101
`Claim 17: “The cable modem of claim 1, wherein the
`electromagnetic signal has been transmitted by a wireless
`method to the cable modem.” .................................................102
`Claim 18 ..................................................................................102
`(a)
`Element [18A]: “The cable modem of claim 1, wherein
`said first frequency translation module comprises a first
`switch coupled to said first storage module, and said
`second frequency translation module comprises a second
`switch coupled to said second storage module” ...........102
`Element [18B]: “and wherein said first frequency
`down-conversion module further comprises a first control
`signal generator coupled to said first switch and coupled
`to receive said in-phase oscillating signal” ..................103
`Element [18C]: “and said second frequency
`down-conversion module further comprises a second
`control signal generator coupled to said second switch
`and coupled to receive said quadrature-phase oscillating
`signal.” ..........................................................................103
`
`(b)
`
`(c)
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`9.
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`8.
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`U.S. Patent No. 7,292,835
`Claim 19: “The cable modem of claim 18, wherein each of said
`first and second switches comprises: a first port; a second port;
`and a third port.” .....................................................................104
`Claim 20: “The cable modem of claim 19, wherein said first
`port of said first switch receives the electromagnetic signal, said
`second port of said first switch receives a first control signal
`generated by said first control signal generator, and said third
`port of said first switch is coupled to said first storage device,
`and wherein said first port of said second switch receives the
`electromagnetic signal, said second port of said second switch
`receives a second control signal generated by said second
`control signal generator, and said third port of said second
`switch is coupled to said second storage device.” ..................104
`XI. CONCLUSION ............................................................................................104
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`IPR2022-00246
`U.S. Patent No. 7,292,835
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`I.
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`QUALIFICATIONS
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`1.
`
`I, Dean P. Neikirk, Ph.D., have been retained by counsel for LG
`
`Electronics Inc. (“LGE” or “Petitioner”) to provide assistance regarding USP
`
`7,292,835 (“’835 patent”) (Ex. 1001). Specifically, I have been asked to consider
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`the validity of claims 1, 12, 13, 14, 15, 17, 18, 19, and 20 (“the challenged claims”)
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`in connection with LGE’s petition for inter partes review and request for joinder
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`with an instituted inter partes proceeding filed by TCL Industries Holdings Co.,
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`Ltd., Hisense Co., Ltd., and ZyXEL Communications Corp. (“TCL”), IPR2021-
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`00985. I have reviewed the expert declaration of Dr. Matthew B. Shoemake,
`
`Ph.D., submitted in support of TCL’s IPR petition (see Ex. 1002) and agree with
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`Dr. Shoemake’s opinions and conclusions therein. I have been informed that it is
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`appropriate here to duplicate statements from Dr. Shoemake’s declaration
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`concerning facts and opinions with which I agree. Hence, this declaration,
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`particularly in sections II – X, is substantively identical to Dr. Shoemake’s
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`declaration, and does not include any new or additional opinions. I have personal
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`knowledge of the facts and opinions set forth in this declaration, and, if called upon
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`to do so, I would testify competently thereto. I understand that the ’835 patent is
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`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 ’835 patent and on the patentability of certain
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`claims of this patent. With respect to these topics, I have reviewed Dr.
`
`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
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`declaration I have studied:
`
`Exhibit
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`Description
`
`1001
`
`1003
`
`1004
`
`1005
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`1006
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`1007
`
`1008
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`1009
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`1010
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`1011
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`U.S. Patent No. 7,292,835 (“the ’835 patent”)
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`Excerpts of ’835 patent File History
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`U.S. Patent No. 5,734,683 (“Hulkko”)
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`U.S. Patent No. 4,672,117 (“Gibson”)
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`U.S. Patent No. 5,339,459 (“Schiltz”)
`
`L. Goldberg, “MCNS/DOCSIS MAC Clears a Path for the
`Cable-Modem Invasion,” Electronic Design; Dec. 1, 1997; 45, 27;
`Materials Science & Engineering Collection pg. 69 (“Goldberg”)
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`USPN 6,011,548 (“Thacker”)
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`ITU-T J.83b Recommendation (April 1997) (“ITU-T J.83b”)
`
`Declaration of Brenda Ray
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`Claim Construction Order, ParkerVision v. Intel,
`20:cv-00108-ADA (W.D. Tex. January 26, 2021)
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`2
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`U.S. Patent No. 7,292,835
`In forming the opinions expressed below, I have considered:
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`4.
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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
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`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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`8.
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`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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`3
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`U.S. Patent No. 7,292,835
`Each of my academic degrees involved significant studies in solid
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`9.
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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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`millimeter wave integrated circuits especially in the area of detectors and imaging
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`arrays.”
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`U.S. Patent No. 7,292,835
`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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`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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`5
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`U.S. Patent No. 7,292,835
`In 1985, I established the Microelectronics Fabrication Teaching
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`16.
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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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`2007 Lockheed Martin Aeronautics Company Award for Excellence in
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`Engineering Teaching.
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`6
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`For 37 years I conducted research with students and research scientists
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`18.
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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.
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`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
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`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
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`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
`
`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
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`Engineers (“IEEE”). From March 1991 to October 1994, I served as an Associate
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`Editor for the IEEE publication called “IEEE Transactions on Education.” I also
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`7
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`IPR2022-00246
`U.S. Patent No. 7,292,835
`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.
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`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.
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`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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`“Detection system based on an analyte reactive particle,” U.S. Patent 7,316,899,
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`8
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`U.S. Patent No. 7,292,835
`‘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.”
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`26.
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`I have also devoted a significant portion of my time at the University
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`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.
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`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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`IPR2022-00246
`U.S. Patent No. 7,292,835
`have considered the materials identified in this declaration, including the Exhibits
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`mentioned above.
`
`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
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`31.
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`I have been informed that the ’835 patent and its claims, as well as the
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`prior art, are interpreted the way a hypothetical person having ordinary skill in the
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`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 ’835 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 priority to a provisional patent application filed January 28,
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`2000. As mentioned above, I was conducting research in the relevant
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`technological field at that time.
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`32.
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`In determining the characteristics of a person of ordinary skill in the
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`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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`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 ’835 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 ’835 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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`public