`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`
`
`APPLE INC.,
`Petitioner
`
`
`v.
`
`
`
` CPC Patent Technologies PTY, LTD.,
`Patent Owner
`_________________
`
`
`
`Inter Partes Review Case No. IPR2022-00601
`
`U.S. Patent No. 9,269,208
`
`
`
`DECLARATION OF DR. ANDREW SEARS
`
`
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...................................................................................... 9
`A.
`BACKGROUND AND QUALIFICATIONS .............................................. 10
`B. MATERIALS CONSIDERED ................................................................ 13
`II. LEGAL FRAMEWORK ......................................................................... 15
`A. ANALOGOUS ART ........................................................................... 16
`B. OBVIOUSNESS ................................................................................. 16
`C.
`SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .................... 22
`III. CLAIM CONSTRUCTION ..................................................................... 23
`A. NON-CONSTRUED CLAIM TERMS..................................................... 23
`B.
`CONSTRUED CLAIM TERMS ............................................................. 24
`1.
`Non Means-Plus Function Terms ......................................... 24
`2. Means-Plus-Function Limitations ........................................ 24
`3. Mathiassen’s Teaching of “computer program product” ..... 27
`IV. BACKGROUND OF TECHNOLOGY ................................................... 30
`A.
`BIOMETRIC ACCESS SYSTEMS ......................................................... 31
`B. HARDWARE COMPONENTS OF A BIOMETRIC ACCESS SYSTEM .......... 40
`C.
`SECURE ACCESS SIGNAL ................................................................. 44
`D.
`INPUTTING A SERIES OF ENTRIES FOR INVOKING FUNCTIONS IN A
`BIOMETRIC ACCESS SYSTEM ........................................................... 47
`PROVIDING DIFFERENT TYPES OF ACCESS ....................................... 51
`E.
`V. OPINIONS REGARDING THE ’208 PATENT AND PRIOR ART .... 58
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’208 PATENT ..... 59
`B. OPINIONS REGARDING MATHIASSEN ................................................. 63
`C. OPINIONS REGARDING MCKEETH .................................................... 69
`D. OPINIONS REGARDING ANDERSON ................................................... 72
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`2.
`3.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`BRIEF OVERVIEW OF THE OPINIONS ON THE ’208 PATENT ................ 77
`E.
`VI. GROUND 1: OPINIONS REGARDING THE COMBINATION
`OF MATHIASSEN, MCKEETH, AND ANDERSON ........................... 80
`A.
`CLAIM 10 ....................................................................................... 80
`1.
`Claim 10(Pre1): “A method for providing secure access
`to a controlled item in a system comprising” ....................... 80
`Claim 10(Pre2): “a database of biometric signatures” ....... 85
`Claim 10(Pre3): “a transmitter subsystem comprising a
`biometric sensor for receiving a biometric signal, and
`means for emitting a secure access signal capable of
`granting more than two types of access to the controlled
`item” .................................................................................... 89
`Claim 10(Pre4): “a receiver sub-system comprising
`means for receiving the transmitted secure access signal,
`and”................................................................................... 121
`Claim 10(Pre5): “means for providing conditional
`access to the controlled item dependent upon information
`in said secure access signal” ............................................. 124
`Claim 10(a): “the method comprising the steps of:
`populating the database of biometric signatures by” ......... 133
`Claim 10(a1): “receiving a series of entries of the
`biometric signal” ............................................................... 134
`Claim 10(a2): “determining at least one of the number of
`said entries and a duration of each said entry”.................. 139
`Claim 10(a3): “mapping said series into an instruction” .. 153
`9.
`10. Claim 10(a4): “populating the database according to the
`instruction”........................................................................ 156
`11. Claim 10(b): “receiving a biometric signal” ..................... 167
`12. Claim 10(c): “matching the biometric signal against
`members of the database of biometric signatures to
`thereby output an accessibility attribute” .......................... 168
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
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`B.
`
`C.
`
`D.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`13. Claim 10(d): “emitting a secure access signal conveying
`information dependent upon said accessibility attribute” .. 181
`14. Claim 10(e): “providing conditional access to the
`controlled item dependent upon said information” ............ 184
`15. Claim 10(f): “wherein the controlled item is one of: a
`locking mechanism of a physical access structure or an
`electronic lock on an electronic computing device” ........... 186
`CLAIM 11 ..................................................................................... 187
`CLAIM 11: “THE METHOD ACCORDING TO CLAIM 10, WHEREIN
`THE STEP OF POPULATING THE DATABASE OF BIOMETRIC
`SIGNATURES FURTHER COMPRISES THE STEP OF ENROLLING
`A BIOMETRIC SIGNATURE INTO THE DATABASE OF
`BIOMETRIC SIGNATURES COMPRISING THE STEPS OF:
`RECEIVING A BIOMETRIC SIGNAL; AND ENROLLING THE
`BIOMETRIC SIGNAL AS AN ADMINISTRATOR SIGNATURE IF
`THE DATABASE OF BIOMETRIC SIGNATURES IS EMPTY.” ........ 187
`CLAIM 13 ..................................................................................... 189
`CLAIM 13: “A NON-TRANSITORY COMPUTER READABLE STORAGE
`MEDIUM FOR STORING A COMPUTER PROGRAM COMPRISING
`INSTRUCTIONS, WHICH WHEN EXECUTED BY PROCESSORS
`CAUSES THE PROCESSORS TO PERFORM THE STEPS OF THE
`METHOD OF CLAIM 10” ........................................................ 189
`CLAIM 1 ....................................................................................... 191
`1.
`Claim 1(pre): “A system for providing secure access to a
`controlled item, the system comprising” ............................ 191
`Claim 1(a): “a database of biometric signatures” ............. 191
`Claim 1(b): “a transmitter subsystem comprising:” .......... 191
`Claim 1(b1): “a biometric sensor for receiving a
`biometric signal” ............................................................... 192
`Claim 1(b2): “means for matching the biometric signal
`against members of the database of biometric signatures
`to thereby output an accessibility attribute” ...................... 192
`
`2.
`3.
`4.
`
`5.
`
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`6.
`
`7.
`8.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Claim 1(b3): “means for emitting a secure access signal
`conveying information dependent upon said accessibility
`attribute” ........................................................................... 194
`Claim 1(c): “a receiver subsystem comprising” ................ 194
`Claim 1(c1): “means for receiving the transmitted secure
`access signal” .................................................................... 194
`Claim 1(c2): “means for providing conditional access to
`the controlled item dependent upon said information”....... 194
`10. Claim 1(d): “wherein the transmitter subsystem further
`comprises means for populating the data base of
`biometric signatures, the population means comprising:” . 195
`11. Claim 1(d1): “means for receiving a series of entries of
`the biometric signal, said series being characterized
`according to at least one of the number of entries and a
`duration of each said entry:” ............................................. 196
`12. Claim 1(d2): “means for mapping said series into an
`instruction”........................................................................ 199
`13. Claim 1(d3): “means for populating the data base
`according to the instruction” ............................................. 201
`14. Claim 1(e): “wherein the controlled item is one of: a
`locking mechanism of a physical access structure or an
`electronic lock on an electronic computing device” ........... 202
`CLAIM 3 ....................................................................................... 202
`1.
`Claim 3(a): “The system according to claim 1, wherein
`the database of biometric signatures comprises
`signatures in at least one of a system administrator class,
`a system user class, and a duress class” ............................ 202
`Claim 3(b): “the accessibility attribute preferably
`comprising: an access attribute if the biometric signal
`matches a member of the database of biometric
`signatures” ........................................................................ 207
`
`9.
`
`E.
`
`2.
`
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`3.
`
`4.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Claim 3(c): “a duress attribute if the biometric signal
`matches a member of the database of biometric
`signatures and said member belongs to the duress class” .. 209
`Claim 3(d): “an alert attribute if the biometric signal
`does not match a member of the database of biometric
`signatures” ........................................................................ 212
`CLAIM 4: ...................................................................................... 212
`CLAIM 4: “THE SYSTEM ACCORDING TO CLAIM 1, WHEREIN THE
`BIOMETRIC SENSOR IS RESPONSIVE TO ONE OF VOICE,
`RETINAL PATTERN, IRIS PATTERN, FACE PATTERN, AND
`PALM CONFIGURATION, AND/OR THE DATABASE OF
`BIOMETRIC SIGNATURES IS LOCATED IN AT LEAST ONE OF
`THE TRANSMITTER SUB-SYSTEM AND THE RECEIVER SUB-
`SYSTEM.” ............................................................................ 212
`CLAIM 5: ...................................................................................... 213
`CLAIM 5: “THE SYSTEM ACCORDING TO CLAIM 1, WHEREIN SAID
`CONDITIONAL ACCESS COMPRISES ONE OF: PROVISION OF
`ACCESS TO THE CONTROLLED ITEM IF THE ACCESSIBILITY
`ATTRIBUTE COMPRISES AN ACCESS ATTRIBUTE, PROVIDING
`OF ACCESS TO THE CONTROLLED ITEM AND SOUNDING OF
`AN ALERT IF THE ACCESSIBILITY ATTRIBUTE COMPRISES A
`DURESS ATTRIBUTE, AND DENIAL OF ACCESS TO THE
`CONTROLLED ITEM AND SOUNDING OF AN ALERT IF THE
`ACCESSIBILITY ATTRIBUTE COMPRISES AN ALERT
`ATTRIBUTE.” ....................................................................... 213
`CLAIM 6 ....................................................................................... 215
`1.
`Claim 6(a): “The system as claimed in claim 1, wherein:
`the biometric sensor is for authenticating the identity of a
`user” .................................................................................. 215
`Claim 6(b): “the means for emitting comprises a
`transmitter for transmitting information capable of
`granting more than two types of access to the controlled
`item using a secure wireless signal dependent upon a
`request from the user and the authentication of the user
`identity” ............................................................................. 216
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`F.
`
`G.
`
`H.
`
`2.
`
`

`

`3.
`
`I.
`
`J.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Claim 6(c): “the system further comprising a control
`panel for receiving the information and for providing the
`secure access requested” ................................................... 218
`CLAIM 7 ....................................................................................... 221
`CLAIM 7: “THE SYSTEM ACCORDING TO CLAIM 6, WHEREIN THE
`CONTROL PANEL INCLUDES A CONVERTER FOR RECEIVING
`THE SECURE WIRELESS SIGNAL AND FOR OUTPUTTING THE
`INFORMATION, AND/OR THE BIOMETRIC SENSOR
`AUTHENTICATES THE IDENTITY OF THE USER BY
`COMPARING A BIOMETRIC INPUT FROM THE USER WITH A
`BIOMETRIC SIGNATURE FOR THE USER IN A BIOMETRIC
`DATABASE, AND/OR THE BIOMETRIC SENSOR, THE
`BIOMETRIC DATABASE, AND THE TRANSMITTER ARE
`LOCATED IN A REMOTE FOB.” ............................................... 221
`CLAIM 9 ....................................................................................... 222
`1.
`Claim 9(Pre): “A transmitter sub-system for operating a
`system for providing secure access to a controlled item,
`wherein the transmitter sub-system comprises:” ................ 222
`Claim 9(a): “a biometric sensor for receiving a
`biometric signal” ............................................................... 223
`Claim 9(b): “means for matching the biometric signal
`against members of a database of biometric signatures to
`thereby output an accessibility attribute” .......................... 223
`Claim 9(c): “means for emitting a secure access signal
`conveying said information dependent upon said
`accessibility attribute” ....................................................... 223
`Claim 9(d): “wherein the transmitter sub-system further
`comprises: means for populating the database of
`biometric signatures, the populating means comprising” .. 223
`Claim 9(d1): “means for receiving a series of entries of
`the biometric signal, said series being characterized
`according to at least one of the number of said entries
`and a duration of each said entry”..................................... 223
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
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`7.
`
`8.
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Claim 9(d2): “means for mapping said series into an
`instruction”........................................................................ 223
`Claim 9(d3): “means for populating the database
`according to the instruction” ............................................. 223
`Claim 9(e): “wherein the controlled item is one of: a
`locking mechanism of a physical access structure or an
`electronic lock on an electronic computing device” ........... 224
`VII. CONCLUSION ...................................................................................... 225
`
`
`9.
`
`
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`I, Andrew Sears, PhD, hereby declare the following:
`INTRODUCTION
`1. My name is Andrew Sears, and I am over 21 years of age and otherwise
`
`I.
`
`competent to make this Declaration. I make this Declaration based on facts and
`
`matters within my own knowledge and on information provided to me by others,
`
`and, if called as a witness, I could and would competently testify to the matters set
`
`forth herein.
`
`2.
`
`I have been retained as a technical expert witness in this matter by
`
`Counsel for the Petitioner, Apple Inc. (“Petitioner”) to provide my independent
`
`opinions on certain issues requested by Counsel for Petitioner relating to the
`
`accompanying Petition for Inter Partes Review of U.S. Patent No. 9,269,208 (“the
`
`’208 Patent”). I am being compensated at an hourly rate of $750.00. My
`
`compensation in this matter is not based on the substance of my opinions or on the
`
`outcome of this matter. I have been informed that CPC Patent Technologies PTY,
`
`LTD. is the purported owner of the ’208 Patent. I note that I have no direct financial
`
`interest in CPC Patent Technologies PTY, LTD. or Petitioner, and I have no other
`
`interest in the outcome of this matter.
`
`3.
`
`I have been informed by counsel that the claims being challenged in the
`
`accompanying Petition for the ’208 Patent is Claims 1, 2-7, 9-11, and 13 (“the
`
`Challenged Claims of the ’208 Patent).
`
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`A. Background and Qualifications
`4.
`I have summarized in this section my educational background, career
`
`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`
`history, and other qualifications relevant to this matter. I have also included a current
`
`version of my curriculum vitae, attached as Appendix B.
`
`5.
`
` I am currently a Professor and Dean of the College of Information
`
`Sciences and Technology at The Pennsylvania State University (“Penn State”).
`
`6.
`
`I received a Bachelor of Science degree in Computer Science from the
`
`Rensselaer Polytechnic Institute in May of 1988. I received my Ph.D. in Computer
`
`Science from University of Maryland-College Park in May of 1993. My dissertation
`
`focused on human-computer interaction.
`
`7.
`
`From July 1993 to June 1999, I was employed by DePaul University as
`
`an Assistant Professor for the School of Computer Science, Telecommunications
`
`and Information Systems. In July 1999, I joined the University of Maryland,
`
`Baltimore County (UMBC) as an Associate Professor in the Information Systems
`
`Department where I was subsequently promoted to Professor in 2003. I served as the
`
`Chair for the Information Systems Department (2002-2011). From August 2008 to
`
`July 2011, I served as the Constellation Professor of Information Technology and
`
`Engineering.
`
`8.
`
`In August of 2011, I joined the Rochester Institute of Technology as
`
`Professor and Dean of the B. Thomas Golisano College of Computing and
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Information Sciences. In July of 2015, I joined Penn State as Professor and Dean of
`
`the College of Information Sciences and Technology, and I continue to serve in this
`
`position. From September 2015 to December 2017, I also served as the Interim Chief
`
`Information Security Officer at Penn State.
`
`9. My research has explored a variety of topics related to human-centered
`
`computing. My research projects have addressed topics related to interacting with
`
`touchscreen technologies, interacting with mobile computing devices, evaluating
`
`user
`
`interfaces, health
`
`information
`
`technologies, speech recognition-based
`
`interactions, and accessibility for individuals with a variety of disabilities. My
`
`research projects have been supported by a variety of government agencies (e.g., the
`
`National Science Foundation, the National Institute on Disability and Rehabilitation
`
`Research, the National Institute of Standards and Technology, and NASA),
`
`companies (e.g., IBM, Intel, Microsoft, and Motorola), and non-profit organizations
`
`(e.g., the Verizon Foundation).
`
`10. Beginning in 2006, I served as founding Editor-in-Chief of the
`
`Association for Computing Machinery’s (ACM) Transactions on Accessible
`
`Computing, and I served in this capacity until 2013. From 2013 to 2018, I served as
`
`a Member of the Editorial Board for ACM’s Transactions on Accessible Computing.
`
`From 2008 to 2020, I served as a Member of the Editorial Board for the International
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`Journal of Human-Computer Studies. From 2011 to 2021, I served as an Associate
`
`Editor for ACM’s Transactions on Computer-Human Interaction.
`
`11. From 2013 to 2019, I served as a Member of the Board of Directors for
`
`the Computing Research Association. I have also served as a member of the
`
`Accessibility Committee of the ACM U.S. Public Policy Council, as well as a
`
`member of the ACM Council, the ACM Special Interest Group Governing Board,
`
`and in various capacities with the ACM Special Interest Group for Accessible
`
`Computing. I have chaired or co-chaired various conferences including the premier
`
`conferences on human computer interaction and accessibility in the context of
`
`computing technologies. I have served on a numerous program and organizing
`
`committees for other conferences in this field.
`
`12.
`
`I have served as editor on multiple scholarly books. In particular, I was
`
`an editor for the first and second editions of “The Human-Computer Interaction
`
`Handbook: Fundamentals, Evolving Technologies and Emerging Applications,”
`
`published in 2003 and 2008 respectively. I am also author or co-author on more than
`
`a dozen book chapters and more than 100 journal articles and conference/workshop
`
`papers.
`
`13.
`
`I am being compensated for my time spent in connection with this case.
`
`I have no financial interest in the outcome of this case. The opinions provided in this
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`report are my own and my compensation does not depend in any way on the
`
`substance of my opinions.
`
`14. Based on my experiences described above, and as indicated in my
`
`Curriculum Vitae, I am qualified to provide the following opinions with respect to
`
`the patents in this case. Additionally, I was at least a person having ordinary skill in
`
`the art as of the priority date of the ’208 Patent.
`
`B. Materials Considered
`15. As part of my work and in forming my opinions in connection with this
`
`proceeding, I have reviewed the following materials. For any prior art listed below,
`
`it is my opinion persons of ordinary skill in my field would reasonably rely upon
`
`such prior art in forming opinions regarding the subject matter of this proceeding:
`
`• Petition for Inter Partes Review of U.S. Patent No. 9,269,208 (the
`“Petition”);
`• U.S. Patent No. 9,269,208 (“the ’208 Patent”) (Ex. 1001);
`• File History for U.S. Patent 9,269,208 (Ex. 1002);
`• U.S. Patent Application Publication No. 2004/0123113 to Mathiassen et
`al. (“Mathiassen”) (Ex. 1004);
`• U.S. Patent No. 6,766,456 to McKeeth (“McKeeth”) (Ex. 1005);
`• U.S. Patent No. 6,509,847 to Anderson (“Anderson”) (Ex. 1006);
`• U.S. Patent No. 6,612,928 to Bradford et al. (“Bradford”) (Ex. 1010);
`• Biometric Identification, Anil Jain, Lin Hong, and Sharath Pankanti,
`Communication of the ACM, February 2000, vol. 43, No. 2 (Ex. 1011);
`• Advances in Fingerprint Technology, Second Edition, Henry C. Lee and
`R.E. Gaensslen, CRC Press, copyright 2001 (Ex. 1012);
`• An Introduction to Evaluating Biometric Systems, P. Jonathan Phillips et
`al., National Institute of Standards and Technology, IEEE, copyright 2000
`(Ex. 1013);
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`• U.S. Patent Application Publication No. 2003/0117261 to Gunsch
`(“Gunsch”) (Ex. 1014);
`• U.S. Patent Application Publication No. 2003/0036825 (“Kim”) (Ex.
`1015);
`• U.S. Patent No. 6,140,939 to Flick (“Flick”) (Ex. 1016);
`• U.S. Patent No. 6,164,403 to Wuidart (“Wuidart”) (Ex. 1017);
`• U.S. Patent No. 7,239,227 to Gupta et al. (“Gupta”) (Ex. 1018);
`• U.S. Patent No. 6,877,097 to Hamid et al. (“Hamid”) (Ex. 1019);
`• U.S. Patent Application Publication No. 2001/0049785 to Kawan
`(“Kawan”) (Ex. 1020);
`• U.S. Patent Application Publication No. 2002/0091937 to Ortiz (“Ortiz”)
`(Ex. 1021);
`• U.S. Patent Application Publication No. 2003/0046552 to Hamid (“Hamid
`’552”) (Ex. 1022);
`• U.S. Patent Application Publication No. 2002/0063154 to Hoyos et al.
`(“Hoyos”) (Ex. 1023);
`• U.S. Patent No. 6,484,260 to Scott (“Scott”) (Ex. 1024);
`• U.S. Patent No. 7,404,086 to Sands (“Sands”) (Ex. 1025);
`• A Rolling Code 4-Channel UHF Remote Control: What is “Code
`Hopping” or “Rolling Code”, Ross Tester, Silicon Chip.com.au, July
`2002 (Ex. 1026);
`• Bluetooth Revealed: The Insider’s Guide to an Open Specification for
`Global Wireless Communications, Brent A. Miller, Chatschik Bisdikian,
`2001 (Ex. 1027);
`• U.S. Patent No. 7,284,266 to Morris et al. (“Morris”) (Ex. 1028);
`• Bricolage:
`Data
`Compression
`–
`Morse
`https://perl.plover.com/Huffman/huffman.html, 1998 (Ex. 1029);
`• U.S. Patent No. 6,323,565 to Williams, Jr. et al. (“Williams”) (Ex. 1030);
`• U.S. Patent No. 7,020,270 to Ghassabian (“Ghassabian”) (Ex. 1031);
`• U.S. Patent Application Publication No. 2003/0048260 to Matusis
`(“Matusis”) (Ex. 1032);
`• International Publication WO 02/27455 to Mathiassen (“Mathiassen
`’455”) (Ex. 1033);
`• European Patent Application No. 88301738.6 to Araki et al. (“Araki”) (Ex.
`1034);
`• U.S. Patent No. 7,152,045 to Hoffman (“Hoffman”) (Ex. 1035);
`• U.S. Patent No. 6,833,785 to Brown et al. (“Brown”) (Ex. 1036);
`
`Code,
`
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`• U.S. Patent Application Publication No. 2004/0015450 to Zingher et al.
`(“Zingher”) (Ex. 1037);
`• U.S. Patent No. 6,498,970 to Colmenarez (“Colmenarez”) (Ex. 1038);
`• U.S. Patent No. 6,100,811 to Hsu et al. (“Hsu”) (Ex. 1039);
`• U.S. Patent No. 4,638,292 to Mochida (“Mochida”) (Ex. 1040);
`• K-9 Car Alarm Owner’s Guide and Installation Instructions, K-9 Mundlal,
`Omega Research and Development, 2000 (Ex. 1041);
`• U.S. Patent No. 7,110,580 to Bostrom (“Bostrom”) (Ex. 1042);
`• U.S. Patent No. 7,336,174 to Maloney (“Maloney”) (Ex. 1043);
`• Microsoft Press Computer Dictionary, Second edition, JoAnne
`Woodcock, 1994 (Ex. 1044);
`• Microsoft Computer Dictionary, fifth edition, Microsoft Press, 2002 (Ex.
`1045);
`• OnStar
`Features,
`OnStar,
`https://web.archive.org/web/20000619021703/http://www.onstar.com/fea
`tures/3button.htm, June 19, 2000 (Ex. 1046);
`• U.S. Patent No. 6,420,975 to DeLine et al. (“DeLine”) (Ex. 1047);
`• PC Basics: Get a Great Start, Survive and Thrive, copyright 2002 (Ex.
`1049);
`• U.S. Patent Application Publication No. 2003/0160692 to Nonaka et al.
`(“Nonaka”) (Ex. 1050);
`• U.S. Patent No. 5,307,048 to Sonders (“Sonders”) (Ex. 1051);
`• Merriam Webster’s Collegiate Dictionary, tenth edition, copyright 1998
`(Ex. 1052);
`• The Application of Programmable DSPs in Mobile Communications:
`Biometric Systems applied to Mobile Communications, Alex Gatherer and
`Edgar Auslander, 2002 (Ex. 1053);
`• Dictionary of Electrical and Computer Engineering, McGraw-Hill, 2003
`(Ex. 1054); and
`• U.S. Patent No. 6,970,970 to Jung et al. (“Jung”) (Ex. 1055).
`
`II. LEGAL FRAMEWORK
`16.
`I am a technical expert and do not offer any legal opinions. However, I
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`have been informed about certain legal principles regarding patentability and related
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`matters under United States patent law, which I have applied in performing my
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`analysis and arriving at my technical opinions in this matter.
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`A. Analogous Art
`17.
`I have been informed by counsel that for prior art to be used to establish
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`the unpatentability of a patent based on obviousness, the prior art must be “analogous
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`art” to the claimed invention. I have also been informed by counsel that a prior art
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`reference is analogous art to the claimed invention if: (1) the reference is from the
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`same field of endeavor as the claimed invention, even if it addresses a different
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`problem; or (2) the reference is reasonably pertinent to the problem faced by the
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`invention, even if it is not in the same field of endeavor as the claimed invention.
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`B. Obviousness
`18.
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`I have been informed that a person cannot obtain a patent on an
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`invention if the differences between the invention and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a person having ordinary skill in the art (“POSITA”). I have been informed
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`that a conclusion of obviousness may be founded upon more than a single item of
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`prior art. I have been further informed that obviousness is determined by evaluating
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`the following factors: (1) the scope and content of the prior art, (2) the differences
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`between the prior art and the claim at issue, (3) the level of ordinary skill in the
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`pertinent art, and (4) secondary considerations of non-obviousness. In addition, the
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`obviousness inquiry should not be done in hindsight. Instead, the obviousness
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`inquiry should be done through the eyes of a POSITA at the time of the alleged
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`invention.
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`19.
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`In considering whether certain prior art renders a particular patent claim
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`obvious, I have been informed that I can consider the scope and content of the prior
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`art, including the fact that one of skill in the art would regularly look to the
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`disclosures in patents, trade publications, journal articles, conference papers,
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`industry standards, product
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`literature and documentation,
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`texts describing
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`competitive technologies, requests for comment published by standard setting
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`organizations, and materials from industry conferences, as examples. I have been
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`informed that for a prior art reference to be proper for use in an obviousness analysis,
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`the reference must be “analogous art” to the claimed invention. I have been informed
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`that a reference is analogous art to the claimed invention if: (1) the reference is from
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`the same field of endeavor as the claimed invention (even if it addresses a different
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`problem); or (2) the reference is reasonably pertinent to the problem faced by the
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`inventor (even if it is not in the same field of endeavor as the claimed invention). In
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`order for a reference to be “reasonably pertinent” to the problem, it must logically
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`have commended itself to an inventor's attention in considering his problem. In
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`determining whether a reference is reasonably pertinent, one should consider the
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`problem faced by the inventor, as reflected either explicitly or implicitly, in the
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`specification. I believe that all of the references I considered in forming my opinions
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`in this IPR are well within the range of references a POSITA would have consulted
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`to address the type of problems described in the Challenged Claims.
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`20.
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`I have been informed that, in order to establish that a claimed invention
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`was obvious based on a combination of prior art elements, a clear articulation of the
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`reason(s) why a claimed invention would have been obvious must be provided.
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`Specifically, I am informed that, under the U.S. Supreme Court’s KSR decision, a
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`combination of multiple items of prior art renders a patent claim obvious when there
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`was an apparent reason for one of ordinary skill in the art, at the time of the invention,
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`to combine the prior art, which can include, but is not limited to, any of the following
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`rationales: (A) combining prior art methods according to known methods to yield
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`predictable results; (B) substituting one known element for another to obtain
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`predictable results; (C) using a known technique to improve a similar device in the
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`same way; (D) applying a known technique to a known device ready for
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`improvement to yield predictable results; (E) trying a finite number of identified,
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`predictable potential solutions, with a reasonable expectation of success; (F)
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`identifying that known work in one field of endeavor may prompt variations of it for
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`use in either the same field or a different one based on design incentives or other
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`market forces if the variations are predictable to one of ordinary skill in the art; or
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`(G) identifying an explicit teaching, suggestion, or motivation in the prior art that
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`Declaration of Dr. Andrew Sears
`U.S. Patent No. 9,269,208
`would have led one of ordinary skill to modify the prior art reference or to combine
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`the prior art references to arrive at the claimed invention. I am also informed that
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`where there is a motivation to combine, claims may be rejected as prima facie
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`obvious provided a POSITA would have had a reasonable expectation of success
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`regarding the proposed combination.
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`21.
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`I am informed that the existence of an explicit teaching, suggestion, or
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`motivation to combine known elements of the prior art is a sufficient, but not a
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`necessary, condition to a finding of obviousness. This so-called “teaching-
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`suggestion-motivation” test is not the exclusive test and is not to be applied rigidly
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`in an obviousness analysis. In determining whether the subject matter of a patent
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`claim is obvious, neither the particular motivation nor the avowed purpose of the
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`patentee controls. Instead, the important consideration is the objective reach of the
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`claim. In other words, if the claim extends to what is obvious, then the claim is
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`invalid. I am further informed that the obviousness analysis often necessitates
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`consideration of the interrelated teachings of multiple patents, the effects of demands
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`known to the technological community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art. All of
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`thes