`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`NETLIST, INC.,
`Patent Owner
`
`Patent No. 11,016,918
`Issued: May 25, 2021
`Filed: December 30, 2020
`Inventors: Chi-She Chen, Jeffrey C. Solomon, Scott H. Milton, and Jayesh Bhakta
`Title: Flash-DRAM Hybrid Memory Module
`____________________
`Inter Partes Review No. IPR2022-00996
`
`
`
`
`
`
`
`
`DECLARATION OF DR. ANDREW WOLFE
`REGARDING U.S. PATENT NO. 11,016,918
`
`
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. i
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`I.
`
`2.
`
`TABLE OF CONTENTS
`INTRODUCTION ......................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`C.
`Compensation and Prior Testimony ...................................................... 7
`D.
`Information Considered ......................................................................... 8
`LEGAL STANDARDS FOR PATENTABILITY ...................................... 8
`II.
`III. THE 918 PATENT .......................................................................................16
`A.
`Effective Filing Date of the 918 Patent: No Earlier Than June 2,
`2008 .....................................................................................................16
`1.
`Several Limitations in All Claims Are Unsupported by
`the 586 Provisional Application Filed June 1, 2007 .................16
`Some Limitations Appear Unsupported by the 873
`Application Filed June 2, 2008, or by Any Later
`Application ................................................................................20
`Person of Ordinary Skill in the Art .....................................................22
`Overview of the 918 Patent .................................................................23
`The Prosecution History of the 918 Patent .........................................34
`1.
`Provisional Application No. 60/941,586 (June 1, 2007) ..........34
`2.
`Application No. 12/131,873 (June 2, 2008) (abandoned) ........35
`3.
`Application No. 12/240,916 (’833 Patent) ................................35
`4.
`Provisional App No. 61/512,871 (July 28, 2011) .....................39
`5.
`Application No. 13/559,476 (’831 Patent) ................................39
`6.
`Application No. 14/489,269 (’830 Patent) ................................41
`7.
`Application No. 14/840,865 (’186 Patent) ................................42
`8.
`Application No. 15/934,416 (abandoned) .................................44
`9.
`Application No. 17/138,766 (’918 Patent) ................................47
`Construction of Terms Used in the 918 Patent Claims .......................48
`E.
`IV. OVERVIEW OF THE PRIOR ART .........................................................48
`A.
`Prior Art ...............................................................................................48
`
`B.
`C.
`D.
`
`ii
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. ii
`
`

`

`2.
`3.
`
`4.
`
`B.
`
`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`1.
`
`C.
`D.
`
`U.S. Patent Publication No. 2006/0174140 to Harris (Ex.
`1023) .........................................................................................48
`U.S. Patent No. 7,724,604 to Amidi (Ex. 1024) .......................50
`U.S. Patent Publication No. 2006/0080515 to Spiers (Ex.
`1025) .........................................................................................52
`JEDEC Standards for Fully Buffered Dual In-Line
`Memory Module (“FBDIMM Standards”) (Exs. 1027-28) ......54
`U.S. Patent No. 6,856,556 to Hajeck (Ex. 1038) ......................56
`5.
`Background Technology .....................................................................59
`1.
`JEDEC Standards ......................................................................59
`2.
`PCI Bus Standards (Ex. 1031) ..................................................63
`3.
`Buck Converters (Exs. 1032, 1058) ..........................................65
`The Combinations Relied on Here ......................................................67
`Reasons to Combine ............................................................................68
`1.
`Ground 1: Harris in view of JEDEC’s FBDIMM
`Standards ...................................................................................68
`Ground 2: Ground 1 in view of Amidi .....................................79
`2.
`Ground 3: Ground 2 in view of Hajeck ...................................89
`3.
`Ground 4: Spiers in view of Amidi ...........................................94
`4.
`Ground 5: Ground 4 in view of Hajeck ..................................104
`5.
`V. COMPARISON OF THE PRIOR ART TO THE CLAIMS OF
`THE 918 PATENT .....................................................................................108
`A.
`Claims 1-30 Are Unpatentable Over Grounds 1, 2, and/or 3 ............108
`1.
`Claim 1 is Unpatentable ..........................................................108
`2.
`Claim 2 is Unpatentable ..........................................................179
`3.
`Claim 3 is Unpatentable ..........................................................190
`4.
`Claim 4 is Unpatentable ..........................................................192
`5.
`Claim 5 is Unpatentable ..........................................................193
`6.
`Claim 6 is Unpatentable ..........................................................204
`7.
`Claim 7 is Unpatentable ..........................................................208
`8.
`Claim 8 is Unpatentable ..........................................................212
`9.
`Claim 9 is Unpatentable ..........................................................229
`
`iii
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. iii
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`10. Claim 10 is Unpatentable ........................................................230
`11. Claim 11 is Unpatentable ........................................................235
`12. Claim 12 is Unpatentable ........................................................236
`13. Claim 13 is Unpatentable ........................................................239
`14. Claim 14 is Unpatentable ........................................................241
`15. Claim 15 is Unpatentable ........................................................242
`16. Claim 16 is Unpatentable ........................................................248
`17. Claim 17 is Unpatentable ........................................................258
`18. Claim 18 is Unpatentable ........................................................261
`19. Claim 19 is Unpatentable ........................................................262
`20. Claim 20 is Unpatentable ........................................................263
`21. Claim 21 is Unpatentable ........................................................265
`22. Claim 22 is Unpatentable ........................................................268
`23. Claim 23 is Unpatentable ........................................................271
`24. Claim 24 is Unpatentable ........................................................282
`25. Claim 25 is Unpatentable ........................................................283
`26. Claim 26 is Unpatentable ........................................................285
`27. Claim 27 is Unpatentable ........................................................286
`28. Claim 28 is Unpatentable ........................................................287
`29. Claim 29 is Unpatentable ........................................................288
`30. Claim 30 is Unpatentable ........................................................289
`Claims 1-30 Are Unpatentable Over Grounds 4 and/or 5 .................291
`1.
`Claim 1 is Unpatentable ..........................................................291
`2.
`Claim 2 is Unpatentable ..........................................................341
`3.
`Claim 3 is Unpatentable ..........................................................344
`4.
`Claim 4 is Unpatentable ..........................................................345
`5.
`Claim 5 is Unpatentable ..........................................................349
`6.
`Claim 6 is Unpatentable ..........................................................358
`7.
`Claim 7 is Unpatentable ..........................................................361
`8.
`Claim 8 is Unpatentable ..........................................................364
`
`iv
`
`B.
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. iv
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`Claim 9 is Unpatentable ..........................................................378
`9.
`10. Claim 10 is Unpatentable ........................................................380
`11. Claim 11 is Unpatentable ........................................................382
`12. Claim 12 is Unpatentable ........................................................383
`13. Claim 13 is Unpatentable ........................................................388
`14. Claim 14 is Unpatentable ........................................................389
`15. Claim 15 is Unpatentable ........................................................392
`16. Claim 16 is Unpatentable ........................................................395
`17. Claim 17 is Unpatentable ........................................................404
`18. Claim 18 is Unpatentable ........................................................406
`19. Claim 19 is Unpatentable ........................................................408
`20. Claim 20 is Unpatentable ........................................................408
`21. Claim 21 is Unpatentable ........................................................409
`22. Claim 22 is Unpatentable ........................................................413
`23. Claim 23 is Unpatentable ........................................................415
`24. Claim 24 is Unpatentable ........................................................426
`25. Claim 25 is Unpatentable ........................................................427
`26. Claim 26 is Unpatentable ........................................................428
`27. Claim 27 is Unpatentable ........................................................429
`28. Claim 28 is Unpatentable ........................................................430
`29. Claim 29 is Unpatentable ........................................................431
`30. Claim 30 is Unpatentable ........................................................432
`
`
`
`
`v
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. v
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained by counsel for Samsung Electronics Co., Ltd.
`1.
`
`(“Samsung”) as an expert witness in the above-captioned proceeding. I have been
`
`asked to provide my opinion about the state of the art of the technology described
`
`in U.S. Patent No. 11,016,918 (“the 918 Patent”) (Ex. 1001) and on the
`
`patentability of the claims of this patent. The following is my written declaration
`
`on these topics.
`
`Background and Qualifications
`B.
`2. My professional qualifications, experience, publications and
`
`presentations, and a listing of previous cases in which I have provided expert
`
`testimony are set forth in my CV, attached as Exhibit 1004.
`
`3.
`
`I am the founder and sole employee of Wolfe Consulting. Through
`
`Wolfe Consulting, I provide technical and business analytics to businesses on
`
`processor technology, computer systems, consumer electronics, software, design
`
`tools, data security, cryptography and intellectual property issues. I have more than
`
`thirty years’ experience developing products, researching, consulting, and teaching
`
`in those fields. In that time, I have worked as a computer architect, computer
`
`system designer, and as an executive in the PC and electronics business. I have
`
`also taught at some of the world’s leading institutions in those fields, including
`
`
`
`1
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 1
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`Stanford University, Princeton University, Carnegie Mellon University, and Santa
`
`Clara University.
`
`4.
`
`In 1985, I earned the B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from the Johns Hopkins University. In 1987, I received the M.S.
`
`degree in Electrical and Computer Engineering from Carnegie Mellon University
`
`and in 1992, I received the Ph.D. degree in Computer Engineering from Carnegie
`
`Mellon University. My doctoral dissertation proposed a new approach for the
`
`architecture of a computer processor.
`
`5.
`
`I have more than 35 years of experience as a computer architect,
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`computer system designer, personal computer graphics designer, educator, and
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`executive in the electronics industry.
`
`6.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a senior
`
`design engineer for Touch Technology, Inc. During the course of my design
`
`projects with Technology, I designed I/O cards for PC-compatible computer
`
`systems, including the IBM PC-AT, to interface with interactive touch-based
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`computer terminals that I designed for use in public information systems. I
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`continued designing and developing related technology as a consultant to the
`
`Carroll Touch division of AMP, Inc., where in 1986 I designed one of the first
`
`custom touch-screen integrated circuits. I designed the touch/pen input system for
`
`
`
`2
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 2
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`the Linus WriteTop, which many believe to be the first commercial tablet
`
`computer.
`
`7.
`
`From 1986 through 1987, I designed and built a high-performance
`
`computer system as a student at Carnegie Mellon University. From 1986 through
`
`early 1988, I also developed the curriculum, and supervised the teaching
`
`laboratory, for processor design courses.
`
`8.
`
`In the latter part of 1989, I worked as a senior design engineer for
`
`ESL-TRW Advanced Technology Division. While at ESL-TRW, I designed and
`
`built a bus interface and memory controller for a workstation-based computer
`
`system, and also worked on the design of a multiprocessor system.
`
`9.
`
`At the end of 1989, I (along with some partners) reacquired the rights
`
`to the technology I had developed at Touch Technology and at AMP, and founded
`
`The Graphics Technology Company. Over the next seven years, as an officer and a
`
`consultant for The Graphics Technology Company, I managed the company’s
`
`engineering development activities and personally developed dozens of touch
`
`screen sensors, controllers, and interactive touch-based computer systems.
`
`10.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technology advisory
`
`boards for two processor design companies: BOPS, Inc., where I chaired the board,
`
`and Siroyan Ltd., where I served in a similar role for three networking chip
`
`
`
`3
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 3
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`companies – Intellon, Inc., Comsilica, Inc., and Entridia, Inc. – and one 3D game
`
`accelerator company, Ageria, Inc.
`
`11.
`
`I have also served as a technology advisor to Motorola and to several
`
`venture capital funds in the U.S. and Europe. Currently, I am a director at Turtle
`
`Beach Corporation, providing guidance in its development of premium audio
`
`peripheral devices for a variety of commercial electronic products.
`
`12. From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I
`
`taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems and
`
`related topics. From 1999 through 2002, I taught a Computer Architecture course
`
`to both undergraduate and graduate students at Stanford University multiple times
`
`as a Consulting Professor. At Princeton, I received several teaching awards, both
`
`from students and from the School of Engineering. I have also taught advanced
`
`microprocessor architecture to industry professionals in IEEE and ACM sponsored
`
`seminars. I am currently a lecturer at Santa Clara University teaching courses on
`
`Microprocessor Systems, Advanced Logic Design, Real-Time Computing, and
`
`Mechatronics. I teach about memory, including DDR SDRAM and flash memory,
`
`
`
`4
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 4
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`in several of my classes and rely on the JEDEC specifications as industry
`
`standards.
`
`13. From 1997 through 2002, I held a variety of executive positions at a
`
`publicly held fabless semiconductor company originally called S3, Inc. and later
`
`called Sonicblue Inc. I held the positions of Chief Technology Officer, Vice
`
`President of System Integration Products, Senior Vice President of Business
`
`Development, and Director of Technology, among others.
`
`14.
`
`In the roles listed above, I worked with and managed architecture and
`
`design teams responsible for the development of SRAM and DRAM memories,
`
`graphics chip memory controllers, and CPU memory controllers. I also worked
`
`with memory vendors and memory standards bodies, directly and through my staff,
`
`on the development of memory technology and standards. I have been involved
`
`with interpreting and understanding JEDEC memory standards since at least 1997.
`
`For many years, I had a direct-report staff member who would attend JEDEC
`
`meetings and bring me both proposed and final standards for review and comment.
`
`I also have used proposed and final JEDEC standards for chips, modules, and
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`protocols to guide product decisions and to facilitate technical discussions with
`
`corporate partners and with consulting clients. I supervised design teams that
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`implemented memory controllers for successful commercial products that
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`interoperated with JEDEC-compliant DDR memory chips and memory modules.
`
`
`
`5
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 5
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`15. My teams also developed the Rio MP3 players and a music delivery
`
`platform and webstore backend service for selling music. In 1999, this music
`
`delivery system was spun out as a separate company called RioPort.com. I served
`
`on the RioPort.com board of directors and became involved in their product and
`
`technology strategy. I also managed engineering and marketing for the Rio product
`
`line for a period of time as an interim general manager. The Rio MP3 players were
`
`among the first consumer products to incorporate large quantities of NAND flash
`
`memory. I worked with CEOs and General Managers at several leading flash
`
`memory suppliers on strategic planning for the flash market. I also worked with
`
`my engineering teams to evaluate and implement flash memory protocols and
`
`select flash memory form factors. During my time at SonicBlue we launched more
`
`than 30 new consumer electronics products.
`
`16.
`
`I served as a board member and technical advisor as KBGear Inc.
`
`from 1999-2001. KBGear Inc. designed and produced digital cameras and music
`
`players.
`
`17.
`
`I have published more than fifty peer-reviewed papers in computer
`
`architecture and computer systems and IC design. I have also chaired IEEE and
`
`ACM conferences in microarchitecture and integrated circuit design and served as
`
`an associate editor for IEEE and ACM journals. I served on the IEEE Computer
`
`Society Awards committee. I am an IEEE Fellow and a Member of ACM. I am a
`
`
`
`6
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 6
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`named inventor on at least fifty-seven U.S. patents and thirty-seven foreign
`
`patents.
`
`18.
`
`I have been the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International Conference
`
`on Multimedia. I have also been an invited speaker on various aspects of
`
`technology or the PC industry at numerous industry events including the Intel
`
`Developer’s Forum, Microsoft Windows Hardware Engineering Conference,
`
`Microprocessor Forum, Embedded Systems Conference, Comdex, and Consumer
`
`Electronics Show as well as at the Harvard Business School and the University
`
`Illinois Law School. I have been interviewed on subjects related to technology and
`
`the electronics industry by publications such as the Wall Street Journal, New York
`
`Times, LA Times, Time, Newsweek, Forbes, and Fortune as well as CNN, NPR,
`
`and the BBC. I have also spoken at dozens of universities including MIT, Stanford,
`
`University of Texas, Carnegie Mellon, UCLA, University of Michigan, Rice
`
`University, and Duke University.
`
`C. Compensation and Prior Testimony
`I am being compensated at a rate of $600.00 per hour for my study
`19.
`
`and testimony in this matter. My compensation is not contingent on the outcome of
`
`this matter or the specifics of my testimony.
`
`
`
`7
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 7
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`20. My CV, attached as Exhibit 1004, lists all other cases in which, during
`
`the previous 4 years, I have testified as an expert at trial or by deposition.
`
`Information Considered
`D.
`21. My opinions are based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials. In forming
`
`my opinions, I have considered the materials I identify in this report and those
`
`listed in the Exhibit List at the end of this declaration.
`
`22.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner. I may also consider additional documents
`
`and information in forming any necessary opinions — including documents that
`
`may not yet have been provided to me.
`
`23. My analysis of the materials produced in this matter is ongoing and I
`
`will continue to review any new materials as it is provided. This declaration
`
`represents only those opinions I have formed to date.
`
`II. LEGAL STANDARDS FOR PATENTABILITY
`In expressing my opinions and considering the subject matter of the
`24.
`
`claims of the 918 Patent, I am relying upon certain basic legal principles that have
`
`been explained to me.
`
`
`
`8
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 8
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`25. First, I understand that for an invention claimed in a patent to be
`
`found patentable, it must be, among other things, new and not obvious from what
`
`was known before the invention was made.
`
`26.
`
`I understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as “prior art” and
`
`generally includes patents and printed publications (e.g., books, journal
`
`publications, articles on websites, product manuals, etc.).
`
`27.
`
`I understand that in this proceeding the Petitioner has the burden of
`
`proving that the claims of the 918 Patent are anticipated by or obvious from the
`
`prior art by a preponderance of the evidence. I understand that “a preponderance of
`
`the evidence” is evidence sufficient to show that a fact is more likely true than it is
`
`not.
`
`28.
`
`I understand that in this proceeding, the claims should be given their
`
`ordinary and accustomed meaning as understood by one of ordinary skill in the art
`
`in view of the patent and its file history. The claims after being construed in this
`
`manner are then to be compared to the information in the prior art.
`
`29.
`
`I understand that in this proceeding, the information that may be
`
`evaluated is limited to patents and printed publications. My analysis below
`
`compares the claims to patents and printed publications that are prior art to the
`
`claims.
`
`
`
`9
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 9
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`30.
`
`I understand that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to have made the claim “obvious” to a
`
`person of ordinary skill in the art. In this declaration I focus on “obviousness.” My
`
`understanding of the legal standard for “obviousness” is set forth below.
`
`31.
`
`I understand that a claimed invention is not patentable if it would have
`
`been obvious to a person of ordinary skill in the field of the invention at the time
`
`the invention was made.
`
`32.
`
`I understand that the obviousness standard is defined in the patent
`
`statute (35 U.S.C. § 103(a)) as follows:
`
`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having
`ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the
`invention was made.
`I understand that the following standards govern the determination of
`33.
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether the asserted claims of the 918 Patent would have been
`
`considered obvious as of the priority date of the patent.
`
`34.
`
`I understand that to find a claim in a patent obvious, one must make
`
`certain findings regarding the claimed invention and the prior art. Specifically, I
`
`
`
`10
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 10
`
`

`

`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
`
`understand that the obviousness question requires consideration of four factors
`
`(although not necessarily in the following order):
`
`•
`
`•
`
`•
`
`The scope and content of the prior art;
`
`The differences between the prior art and the claims at issue;
`
`The knowledge of a person of ordinary skill in the pertinent art;
`and
`
`• Whatever objective factors indicating obviousness or non-
`obviousness may be present in any particular case.
`In addition, I understand that the obviousness inquiry should not be
`
`35.
`
`done in hindsight, but must be done using the perspective of a person of ordinary
`
`skill in the relevant art as of the effective filing date of the patent claim.
`
`36.
`
`I understand the objective factors indicating obviousness or non-
`
`obviousness may include: commercial success of products covered by the patent
`
`claims; a long-felt need for the invention; failed attempts by others to make the
`
`invention; copying of the invention by others in the field; unexpected results
`
`achieved by the invention; praise of the invention by those in the field; the taking
`
`of licenses under the patent by others; expressions of surprise by experts and those
`
`skilled in the art at the making of the invention; and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. I also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention. I am not presently aware of any evidence of “objective factors”
`11
`
`
`
`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 11
`
`

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`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
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`suggesting the claimed methods are not obvious, and reserve my right to address
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`any such evidence if it is identified in the future.
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`37.
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`I understand the combination of familiar elements according to known
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`methods is likely to be obvious when it does no more than yield predictable results.
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`I also understand that an example of a solution in one field of endeavor may make
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`that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`38.
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`I also understand that if a person of ordinary skill can implement a
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`predictable variation, that variation would have been considered obvious. I
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`understand that for similar reasons, if a technique has been used to improve one
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`device, and a Skilled Artisan would recognize that it would improve similar
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`devices in the same way, using that technique to improve the other device would
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`have been obvious unless its actual application yields unexpected results or
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`challenges in implementation.
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`39.
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`I understand that the obviousness analysis need not seek out precise
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`teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that
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`12
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`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 12
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`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
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`does no more than yield predictable results, which are inferences and creative steps
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`that a Skilled Artisan would employ.
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`40.
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`I understand that sometimes it will be necessary to look to interrelated
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`teachings of multiple patents; the effects of demands known to the design
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`community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`41.
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`I understand that the obviousness analysis cannot be confined by a
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`formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int’l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
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`requirement of a “teaching, suggestion, or motivation to combine” known elements
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`of prior art for purposes of an obviousness analysis as a precondition for finding
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`obviousness. It is my understanding that KSR confirms that any motivation that
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`would have been known to a person of skill in the art, including common sense, or
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`derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
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`42.
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`I understand that a person of ordinary skill attempting to solve a
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`problem will not be led only to those elements of prior art designed to solve the
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`13
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`Samsung Electronics Co., Ltd.
`Ex. 1003, p. 13
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`Declaration of Dr. Andrew Wolfe Regarding U.S. Patent No. 11,016,918
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches
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`that familiar items may have obvious uses beyond their primary purposes, and in
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`many cases a person of ordinary skill will be able to fit the teachings of multiple
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`patents together like pieces of a puzzle. As such, the prior art considered can be
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`directed to any need or problem known in the field of endeavor as of the priority
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`date of the patent and can provide a reason for combining the elements of the prior
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`art in the manner claimed. In other words, the prior art does not need to be directed
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`towards solving the same problem that is addressed in the patent. Further, the
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`individual prior art references themselves need not all be directed towards solving
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`the same problem.
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`43.
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`I understand that obviousness does not require that the features of a
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`secondary reference be bodily incorporated into the structure of the primary
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`reference. Rather, the test is what the combined teachings of those references
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`would have suggested to a Skilled Artisan. The disclosures of the prior art
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`references need not be physically combinable. Combining the teachings of
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`references s