UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________________
`
`
`COMMSCOPE, INC.,
`Petitioner
`
`v.
`
`
`TQ DELTA, LLC,
`Patent Owner
`
`________________________
`
`U.S. Patent No. 9,485,055
`Issue Date: November 1, 2016
`Title: PACKET RETRANSMISSION AND MEMORY SHARING
`
`Case No. IPR2022-00833
`________________________
`
`DECLARATION OF BRUCE MCNAIR IN SUPPORT OF PETITION FOR INTER
`PARTES REVIEW OF U.S. PATENT NO. 9,485,055
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
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`TABLE OF CONTENTS
`
`Page
`
`2.
`3.
`
`4.
`5.
`
`
`I.
`
`II.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A.
`INTRODUCTION ................................................................................ 1
`B. QUALIFICATIONS AND EXPERIENCE ......................................... 2
`1.
`EDUCATION ............................................................................ 2
`2.
`RELEVANT INDUSTRY EXPERIENCE ................................ 2
`3.
`PUBLICATIONS ....................................................................... 4
`4.
`PRIOR EXPERT TESTIMONY ............................................... 5
`C. MATERIALS CONSIDERED ............................................................. 5
`LEGAL PRINCIPLES .................................................................................... 8
`A.
`PRIOR ART ......................................................................................... 8
`B.
`CLAIM CONSTRUCTION ................................................................. 9
`C. ANTICIPATION ................................................................................ 11
`D. OBVIOUSNESS ................................................................................ 12
`1. MOTIVATION TO COMBINE .............................................. 15
`2.
`SECONDARY CONSIDERATIONS ..................................... 17
`III. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 18
`IV. THE ’055 PATENT ...................................................................................... 20
`A.
`TECHNOLOGY BACKGROUND ................................................... 20
`1.
`DATA TRANSMISSION PROTOCOLS AND PACKET
`STRUCTURE .......................................................................... 20
`NOISE IN DATA TRANSMISSION ...................................... 25
`SPEED AND ACCURACY IN DATA
`TRANSMISSION .................................................................... 26
`RETRANSMISSION ............................................................... 29
`QOS IN DATA TRANSMISSION PROTOCOLS ................. 30
`
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`2.
`
`DSL AND ADSL ..................................................................... 35
`6.
`B. OVERVIEW OF THE ’055 PATENT ............................................... 40
`C.
`PROSECUTION HISTORY .............................................................. 45
`D.
`THE CHALLENGED CLAIMS ........................................................ 51
`V.
`CLAIM CONSTRUCTION ......................................................................... 54
`VI. APPLICATION OF THE PRIOR ART TO THE CHALLENGED
`CLAIMS ....................................................................................................... 55
`A.
`BRIEF SUMMARY OF PRIOR ART ............................................... 55
`1.
`U.S. PATENT APPLICATION PUBLICATION NO.
`2005/0036497 TO KAWAKAMI (“KAWAKAMI”) (EX.
`1004) ........................................................................................ 55
`REYNDERS, D., WRIGHT, E., “PRACTICAL TCP/IP
`AND ETHERNET NETWORKING” (2003)
`(“REYNDERS”) (EX. 1005) ................................................... 61
`RFC 791, “INTERNET PROTOCOL,” SEPTEMBER
`1981 (EX. 1006) ....................................................................... 75
`RFC 793, “TRANSMISSION CONTROL
`PROTOCOL,” SEPTEMBER 1981 (EX. 1007) ..................... 78
`RFC 768, “USER DATAGRAM PROTOCOL,”
`AUGUST 28, 1980 (EX. 1008) ............................................... 83
`B. GROUND 1: CLAIMS 1, 5, 10, 11, 15, AND 20 ARE
`UNPATENTABLE AS OBVIOUS UNDER 35 U.S.C. §103(A)
`IN VIEW OF KAWAKAMI (EX. 1004). .......................................... 85
`1.
`INDEPENDENT CLAIM 1 ..................................................... 85
`2.
`INDEPENDENT CLAIM 11 ................................................... 97
`3.
`DEPENDENT CLAIMS 5 AND 15 ........................................ 99
`4.
`DEPENDENT CLAIMS 10 AND 20 .................................... 100
`C. GROUND 2: CLAIMS 1, 4, 5, 7, 9, 10, 11, 14, 15, 17, 19,
`AND 20 ARE UNPATENTABLE AS OBVIOUS UNDER 35
`U.S.C. §103(A) BY REYNDERS (EX. 1005) ................................. 101
`
`5.
`
`3.
`
`4.
`
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`INDEPENDENT CLAIM 1 ................................................... 101
`1.
`INDEPENDENT CLAIM 11 ................................................. 115
`2.
`DEPENDENT CLAIMS 4 AND 14 ...................................... 117
`3.
`DEPENDENT CLAIMS 5 AND 15 ...................................... 119
`4.
`DEPENDENT CLAIMS 7 AND 17 ...................................... 122
`5.
`DEPENDENT CLAIMS 9 AND 19 ...................................... 123
`6.
`DEPENDENT CLAIMS 10 AND 20 .................................... 124
`7.
`D. GROUND 3: CLAIMS 1, 4, 5, 7, 9, 10, 11, 14, 15, 17, 19,
`AND 20 ARE UNPATENTABLE AS OBVIOUS UNDER 35
`U.S.C. §103(A) OVER RFC 791 (EX. 1006), RFC 793 (EX.
`1007), AND RFC 768 (EX. 1008). .................................................. 125
`1. MOTIVATION TO COMBINE ............................................ 125
`2.
`INDEPENDENT CLAIM 1 ................................................... 127
`3.
`INDEPENDENT CLAIM 11 ................................................. 133
`4.
`DEPENDENT CLAIMS 4 AND 14 ...................................... 136
`5.
`DEPENDENT CLAIMS 5 AND 15 ...................................... 137
`6.
`DEPENDENT CLAIMS 7 AND 17 ...................................... 139
`7.
`DEPENDENT CLAIMS 9 AND 19 ...................................... 140
`8.
`DEPENDENT CLAIMS 10 AND 20 .................................... 141
`VII. CONCLUSION ........................................................................................... 142
`
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`I, Bruce McNair, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`Introduction
`A.
`1.
`I am an independent consultant.
`
`2.
`
`I have been retained by Goodwin Procter LLP, counsel for
`
`CommScope Inc. (“CommScope”), as a technical expert witness in connection
`
`with the petition for inter partes review of U.S. Patent No. 9,485,055 (“’055
`
`patent”). I understand that the ’055 patent claims priority to a provisional
`
`application filed on April 12, 2006. For purposes of my analysis herein, I have
`
`assumed this date is the priority date.
`
`3.
`
`I have been asked by CommScope to offer opinions regarding the
`
`ʼ055 patent, including the patentability of the claims in view of certain prior art
`
`references and the knowledge of a person having ordinary skill in the art. This
`
`Declaration sets forth the opinions I have reached to date regarding these matters.
`
`4.
`
`In preparing this Declaration, I have reviewed the ’055 patent, its
`
`prosecution history, and each of the documents I reference herein. In reaching my
`
`opinions, I have relied upon my experience in the field and have also considered
`
`the viewpoint of a person having ordinary skill in the art at the time of the ’055
`
`patent’s priority date. As explained below, I am familiar with the level of skill of a
`
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`person having ordinary skill in the art regarding the technology at issue as of that
`
`time frame.
`
`5.
`
`I am receiving my customary hourly rate for my services. I do not
`
`have any personal or financial stake or interest in the outcome of the present
`
`proceeding, and my compensation is not dependent on the outcome of this IPR and
`
`in no way affects the substance of my statements in this declaration.
`
`B. Qualifications and Experience
`6. My qualifications for forming the opinions set forth in this
`
`Declaration are summarized here and explained in more detail in my curriculum
`
`vitae, which I have attached to my Declaration. The following sections recite the
`
`most relevant aspects of my educational, professional, and technical background.
`
`Education
`1.
`I received my Bachelors of Engineering (Electrical) from Stevens
`
`7.
`
`Institute of Technology in 1971 and my Masters of Electrical Engineering from
`
`Stevens in 1974. I have taken numerous PhD-level courses in Electrical
`
`Engineering, Computer Engineering and Computer Science at Stevens, as well.
`
`Relevant Industry Experience
`2.
`I was employed by the US Army Electronics Command at Fort
`
`8.
`
`Monmouth, NJ, from 1971 to 1973 and 1974 to 1978 where I worked with voice,
`
`data and wireless communications systems.
`
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`9.
`
`In 1973, I was employed by ITT Defense Communications Division
`
`in Nutley, NJ, where I designed digital hardware and computer software to
`
`investigate signal processing of speech signals and transmission of satellite
`
`communications signals using advanced forward error correction schemes.
`
`10. From 1978 to 2002, I was employed by AT&T Bell Laboratories and
`
`AT&T Laboratories at various New Jersey locations. My work there involved
`
`public data networks, high-speed digital communications over analog networks,
`
`speech processing, network security, and wireless communications. Several of my
`
`positions were closely associated with the subject matter of asserted patents. In
`
`particular, while I was in the Bell Labs Data Services Center in the late 1970s, I
`
`participated in the design of the Advanced Communications Service, a network
`
`very much like today’s Internet, built on X.25 and related international standards,
`
`rather than the TCP/IP protocol stack that the Internet is based on. While I was in
`
`the Bell Labs Data Communications Laboratory in the early 1980s, I worked on
`
`high-speed analog modems using techniques that others in the organization later
`
`applied to DSL signaling. John Cioffi, one of the inventors of cited prior art was
`
`one of the other members of the group I was in. Rich Gitlin, who was the
`
`supervisor of that group and later the head of the same department is the
`
`recognized inventor of the initial concept of DSL technologies for the local
`
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`telephone plant. From 1987 to 1994, I created and supervised the Bell Labs
`
`Security and System Reliability Architecture Group. In this role, I investigated
`
`network security issues including those created in TCP/IP networks. Later in my
`
`AT&T/Bell Labs career (1994-2002) I investigated the use of Orthogonal
`
`Frequency Division Multiplexing (OFDM) for wireless communications. OFDM
`
`forms the basis for DSL communications although the characteristics of a wireless
`
`network environment make communications far more difficult than the relatively
`
`benign DSL environment. My research in OFDM for wireless applications
`
`included the use of interleaving, forward error correction, synchronization and
`
`Reed-Solomon codes. My teaching at Stevens has included several graduate
`
`courses that have components that address issues in TCP/IP networks and I have
`
`supervised a number of undergraduate senior design projects that have emphasized
`
`TCP/IP networking.
`
`Publications
`3.
`11. My list of publications is shown in my CV, listed in Appendix A, but
`
`I highlight a few that are closely related to the subject matter of the asserted
`
`patents: At VTC00, I presented results from an experimental implementation of
`
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`OFDM in a wireless environment1. I presented further results for this OFDM
`
`system at the Sarnoff Symposium in 2001.2 Seven more of my papers are also
`
`OFDM related.
`
`Prior Expert Testimony
`4.
`In the past four years, I have testified as an expert at deposition or
`
`12.
`
`trial as described in my CV, which is attached as Appendix A.
`
`C. Materials Considered
`13. The analysis I provide in this Declaration is based on my education
`
`and experience in the field of DSL, as well as the documents I have considered,
`
`including the ’055 patent (Ex. 1001) and its prosecution history (Ex. 1002) and the
`
`other documents that I reference in this Declaration. The ’055 patent states on its
`
`face that it issued from an application filed on January 20, 2014, as a continuation
`
`of Application No. 13/766,059, filed on February 13, 2013, now Pat. No.
`
`8,645,784, which is a continuation of Application No. 12/783,758, filed on May
`
`20, 2010, now Patent No. 8,407,546, which is a continuation of application No.
`
`12/295,828, filed as application No. PCT/US2007/066522 on April 12, 2007, now
`
`Patent No. 8,335,956, and also claimed the benefit of U.S. Provisional
`
`1 B. McNair, L. Cimini, N. Sollenberger, “Performance of an Experimental 384 kb/s 1900 MHz
`Radio Link in a Wide-Area High-Mobility Environment,” Proc. IEEE Vehicular Technology
`Conference – VTC00, Boston, MA, October 2000.
`2 B, McNair, L. Cimini, “OFDM for High Data Rate, High-Mobility, Wide-Area Wireless
`Communications,” Proc. IEEE Sarnoff Symposium, Princeton, NJ, March 2001.
`
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`Applications No. 60/849,650 and 60/792,236, filed on October 5, 2006 and April
`
`12, 2006, respectively. For the purposes of this Declaration, I have assumed that
`
`April 12, 2006 is the effective filing date for the ’055 patent. I have cited to the
`
`following documents in my analysis below:
`
`Exhibit #
`1001
`1002
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`Description
`
`U.S. Patent No. 9,485,055
`Prosecution History of U.S. Patent Application No. 14/159,125
`U.S. Patent Application Publication No. 2005/0036497 to Kawakami
`(“Kawakami”)
`Reynders, D. and Wright, E., “Practical TCP/IP and Ethernet
`Networking,” 2003 (“Reynders”)
`RFC 791, “Internet Protocol,” Information Sciences Institute, Sept.
`1981 (“RFC 791”)
`RFC 793, “Transmission Control Protocol,” Information Sciences
`Institute, Sept. 1981 (“RFC 793”)
`RFC 768, “User Datagram Protocol,” Information Sciences Institute,
`Aug. 1980 (“RFC 768”)
`RFC 790, “Assigned Numbers,” Information Sciences Institute, Sept.
`1981 (“RFC 790”)
`U.S. Patent Application Publication No. US 2004/0252700
`(“Anandakumar”)
`U.S. Patent Application Publication No. US 2003/0067903
`(“Jorgensen”)
`
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`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`1018
`1019
`1020
`1021
`
`1022
`
`International Patent Application Publication No. WO 01/80558
`(“Bastone”)
`International Patent Application Publication No. WO 00/45581
`(“Oliver”)
`RFC 762, “Assigned Numbers,” Information Sciences Institute, Jan.
`1980 (“RFC 762”)
`Halapoto, I. A., Chowdhry, B. S., Abro, F. R., “Implementation of
`DSL in Pakistan-Growth, Potential and Bandwidth Impact – A
`Technical Report,” Mehran University Research Journal of
`Engineering and Technology, Volume 24, No. 3 (July 2005)
`(“Halapoto”)
`Sutherland, B., “The Alcatel Experience of DSL Deployment, The
`Institution of Electrical Engineers, 2000 (“Sutherland”)
`ITU-T Recommendation G.992.1 (June 1999) (“G.992.1”)
`ITU-T Recommendation G.993.1 (June 2004) (“G.993.1”)
`ITU-T Recommendation G.992.3 (July 2002) (“G.992.3”)
`ATIS ADSL Standard T1.413 Issue 1 (1995) (“T1.413 Issue 1”)
`Claim Construction Order, TQ Delta, LLC. v. Adtran, Inc., No. 1:14-
`cv-954, Dkt. No. 396 (D. Del. May 15, 2018) (“Claim Construction
`Order”)
`Park, J., Yoon, Y., Lee, S., “An Extended TCP/IP Protocol Over the
`Local Area Network for DCCS,” IFAC Proceedings Volume 30,
`Issue 15, pp. 97-104 (July 1997) (“Park”)
`
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`1023
`
`1024
`1025
`1026
`
`1027
`
`Smith, M. A., Ramakrishnan, K. K., “Formal Specification and
`Verification of Safety and Performance of TCP Selective
`Acknowledgment,” III/ACM Transactions on Networking, Vol. 10,
`No. 2, pp. 193-207 (April 2002) (“Smith”)
`U.S. Patent No. 7,016,658
`U.S. Pat. App. Pub. No. 2006/0039330 (“Hackett”)
`Summers, C. K., ADSL Standards, Implementation, and Architecture,
`CRC Press (1999) (“Summers”)
`Texas Instruments TNETD2000C Product Bulletin (1998)
`(“TNETD2000C Product Bulletin”)
`
`II. LEGAL PRINCIPLES
`I am not offering any opinions on the law in this Declaration. For
`14.
`
`purposes of this Declaration, I have been informed about certain aspects of the law
`
`that are relevant to my analysis and opinions, as set forth below.
`
`A.
`15.
`
`Prior Art
`I understand that the prior art to the ʼ055 patent includes patents and
`
`printed publications in the relevant art that predate the ʼ055 patent’s priority date.
`
`As I explained previously, I have assumed for purposes of my analysis that April
`
`12, 2006 is the relevant date for determining what is “prior art.” In other words, I
`
`have considered as “prior art” publications and general knowledge in the field
`
`publicly available prior to April 12, 2006. I further understand that, for purposes of
`
`this proceeding in the United States Patent Trial and Appeal Board, only patents
`
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`and documents that have the legal status of a “printed publication” may be cited as
`
`prior art.
`
`B. Claim Construction
`I understand that under the applicable legal principles, claim terms
`16.
`
`are generally given their ordinary and customary meaning, which is the meaning
`
`that the term would have had to a person having ordinary skill in the art in question
`
`at the time of the invention, i.e., as of the effective filing date of the patent
`
`application. I further understand that the person having ordinary skill in the art is
`
`deemed to read a claim term not only in the context of the particular claim in
`
`which that claim term appears, but also in the context of the entire patent,
`
`including the specification and file history.
`
`17.
`
`I am informed by counsel that under these legal principles, the patent
`
`specification has been described as the best guide to the meaning of a claim term
`
`and is thus highly relevant to the interpretation of claim terms. I also understand
`
`that the specification usually supplies the best context of understanding the
`
`meaning of terms that do not have a customary meaning within the art.
`
`18.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as
`
`to the meaning of a claim term. Because the claim terms are normally used
`
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`consistently throughout the patent, the usage of a term in one claim can often
`
`illuminate the meaning of the same term in other claims. Differences among claims
`
`can also be a useful guide in understanding the meaning of particular claim terms.
`
`19.
`
`I understand that the prosecution history can further inform the
`
`meaning of the claim language by demonstrating how the inventors understood the
`
`invention and whether the inventors limited the invention during the course of
`
`prosecution, making the claim scope narrower than it otherwise would be.
`
`Extrinsic evidence may also be consulted in construing the claim terms, such as my
`
`experience and expert testimony.
`
`20.
`
`I have been informed by counsel that, in IPR proceedings, a claim of
`
`a patent shall be construed using the same claim construction standard that would
`
`be used to construe the claim in a civil action filed in a U.S. district court (which I
`
`understand is called the “Phillips” claim construction standard), including
`
`construing the claim in accordance with the ordinary and customary meaning of
`
`such claim as understood by one of ordinary skill in the art and the prosecution
`
`history pertaining to the patent.
`
`21.
`
`I understand that some claims are independent, and that these claims
`
`are complete by themselves. Other claims refer to these independent claims and are
`
`“dependent” from those independent claims. The dependent claims include all of
`
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`the limitations of the claims from which they depend.
`
`C. Anticipation
`I understand that to anticipate a patent claim under 35 U.S.C. §102, a
`22.
`
`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly, implicitly, or inherently, to a person having
`
`ordinary skill in the art. There must be no difference between the claimed
`
`invention and the disclosure of the alleged prior art reference as viewed from the
`
`perspective of the person having ordinary skill in the art. Also, I understand that in
`
`order for a reference to be an anticipating reference, it must describe the claimed
`
`subject matter with sufficient clarity to establish that the subject matter existed and
`
`that its existence was recognized by persons having ordinary skill in the field of the
`
`invention, and must allow a person having ordinary skill in the art to make or
`
`perform the claimed subject matter without undue experimentation. In addition, I
`
`understand that in order to establish that an element of a claim is “inherent” in the
`
`disclosure of an asserted prior art reference, extrinsic evidence (or the evidence
`
`outside the four corners of the asserted prior art reference) must make clear that the
`
`missing element is necessarily found in the prior art, and that it would be
`
`recognized as necessarily present by persons having ordinary skill in the relevant
`
`field.
`
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`23.
`
`In my opinions below, when I say that a person having ordinary skill
`
`would understand, readily understand, or recognize that an element or aspect of a
`
`claim is disclosed by a reference, I mean that the element or aspect of the claim is
`
`disclosed explicitly, implicitly, or inherently to a person having ordinary skill in
`
`the art.
`
`D. Obviousness
`I am also informed and understand that a patent claim is unpatentable
`24.
`
`under 35 U.S.C. §103 if the differences between the claimed invention and the
`
`prior art are such that the subject matter as a whole would have been obvious at the
`
`time of the invention to a person having ordinary skill in the art to which the
`
`subject matter pertains. I understand that obviousness is assessed by considering (i)
`
`the scope and content of the prior art, (ii) the differences between the prior art and
`
`the claim, (iii) the level of ordinary skill in the art, and (iv) if provided by the
`
`patent owner, any secondary indications of non-obviousness (e.g., “secondary
`
`considerations” such as commercial success in the marketplace of the claimed
`
`invention), to the extent they exist.
`
`25.
`
`I understand that whether there are any relevant differences between
`
`the prior art and the claimed invention is to be analyzed from the viewpoint of a
`
`person having ordinary skill in the art at the time of the invention. For purposes of
`
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`this analysis, I was asked to assume the date of the invention was the date of the
`
`filing of the earliest-filed provisional application, April 12, 2006. Should other
`
`information regarding date of invention become available, I will consider such
`
`information. A person having ordinary skill in the art is a hypothetical person who
`
`is presumed to be aware of all of the relevant art at the time of the invention. The
`
`person having ordinary skill is not an automaton, and may be able to fit together
`
`the teachings of multiple patents or publications employing ordinary creativity and
`
`the common sense that familiar items may have obvious uses in another context or
`
`beyond their primary purposes.
`
`26.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I understand that I must consider the impact, if any, of
`
`such differences on the obviousness or non-obviousness of the invention as a
`
`whole, not merely some portion of it. The person having ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`27. An invention is obvious if a person having ordinary skill in the art,
`
`facing the wide range of needs created by developments in the field, would have
`
`seen an obvious benefit to the solutions tried by the patent applicant. When there is
`
`a design need or market pressure to solve a problem and there is a finite number of
`
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`identified, predictable solutions, it would be obvious to a person having ordinary
`
`skill to try the known options. If a technique has been used to improve one device,
`
`and a person having ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique would have been obvious.
`
`28.
`
`I understand that I do not need to look for precise teaching in the
`
`prior art directed to the subject matter of the claimed invention. I understand that I
`
`may take into account the inferences and creative steps that a person having
`
`ordinary skill in the art would have employed in reviewing the prior art at the time
`
`of the invention. For example, if the claimed invention combined elements known
`
`in the prior art, and the combination yielded results that were predictable to a
`
`person having ordinary skill in the art at the time of the invention, then this
`
`evidence would make it more likely that the claim was obvious. On the other hand,
`
`if the combination of known elements yielded unexpected or unpredictable results,
`
`or if the prior art teaches away from combining the known elements, then this
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`evidence would make it less likely that the claim that successfully combined those
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`elements was obvious.
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`29.
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`In determining whether a claimed invention is unpatentable for
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`obviousness, I understand that I should consider the scope and content of the prior
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`art, the level of ordinary skill in the relevant art, the differences between the
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`claimed invention and the prior art, and whether the claimed invention would have
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`been obvious to a person having ordinary skill in the art in light of those
`
`differences. I understand that hindsight must not be used when comparing the prior
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`art to the invention for obviousness.
`
`30.
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`I further understand that obviousness may be shown by
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`demonstrating that it would have been obvious to modify what is taught in a single
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`piece of prior art to create the patented invention. Obviousness may also be
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`demonstrated by showing that it would have been obvious to combine the
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`teachings of two or more items of prior art.
`
`1. Motivation to Combine
`I understand that a claimed invention may be obvious if some
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`31.
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`teaching, suggestion, or motivation exists that would have led a person having
`
`ordinary skill in the art to combine the disclosures of two or more references. I also
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`understand that this suggestion or motivation may come from sources such as
`
`explicit statements in the prior art, or from the knowledge of a person having
`
`ordinary skill in the art. Alternatively, any need or problem known in the field at
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`the time and addressed by the patent may provide a reason for combining elements
`
`of the prior art. I also understand that when there is a design need or market
`
`pressure, and there is a finite number of predictable solutions, a person having
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`ordinary skill may be motivated to apply both his skill and common sense in trying
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`to combine the known options in order to solve the problem.
`
`32.
`
`In determining whether a piece of prior art could have been combined
`
`with other prior art or with other information within the knowledge of a person
`
`having ordinary skill in the art, the following are examples of approaches and
`
`rationales that may be considered:
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`• Combining prior art elements according to known methods to yield
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`predictable results;
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`• Simple substitution of one known element for another to obtain predictable
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`results;
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`• Use of a known technique to improve similar devices (methods, or products)
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`in the same way;
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`• Applying a known technique to a known device (method, or product) ready
`
`for improvement to yield predictable results;
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`• Applying a technique or approach that would have been “obvious to try”
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`(choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success);
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`• Known work in one field of endeavor that 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
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`other market forces if the variations would have been predictable to a person
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`having ordinary skill in the art; or
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`• Some teaching, suggestion, or motivation in the prior art that would have led
`
`a person having ordinary skill to modify the prior art reference or to combine
`
`prior art reference teachings to arrive at the claimed invention.
`
`Secondary Considerations
`2.
`I understand that certain objective factors, sometimes known as
`
`33.
`
`“secondary considerations,” may also be taken into account in determining whether
`
`a claimed invention would have been obvious. In most instances, these secondary
`
`considerations of non-obviousness are raised by the patentee. In that context, the
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`patentee argues that an invention would not have been obvious in view of these
`
`considerations, which include: (a) commercial success of a product due to the
`
`merits of the claimed invention; (b) a long-felt but unsatisfied need for the
`
`invention; (c) failure of others to find the solution provided by the claimed
`
`invention; (d) deliberate copying of the invention by others; (e) unexpected results
`
`achieved by the invention; (f) praise of the invention by others skilled in the art; (g)
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`lack of independent simultaneous invention within a comparatively short space of
`
`time; (h) teaching away from the invention in the prior art. I also understand that
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`these objective indications are only relevant to obviousness if there is a connection,
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`or nexus, between them and the invention covered by the patent claims.
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`34.
`
`I understand that certain “secondary considerations,” such as
`
`independent invention by others within a comparatively short space of time,
`
`indicate obviousness.
`
`35.
`
`I also understand that secondary considerations of non-obviousness
`
`are inadequate to overcome a strong showing on the primary considerations of
`
`obviousness. For example, where the invention represents no more than the
`
`predictable use of prior art elements according to their established functions, the
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`secondary considerations are inadequate to establish non-obviousness.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`I understand that an assessment of claims of the ’055 patent should
`36.
`
`be undertaken from the perspective of a person having ordinary skill in the art as of
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`the earliest claimed priority date, which I understand is April 12, 2006. I have also
`
`been advised that to determine the appropriate level of a person having ordinary
`
`skill in the art, the following factors may be considered: (1) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (2) the
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`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (3) the educational level of active workers in the
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`field; and (4) the educational level of the inventor.
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`37.
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`In my opinion, a person having ordinary skill in the art at the time of
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`the alleged invention of the ’055 patent in 2006 would have had a bachelor’s
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`degree in electrical or computer engineering,