IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Sunil K. Rao, et al.
`In re Patent of:
`9,614,943
`U.S. Patent No.:
`April 4, 2017
`Issue Date:
`Appl. Serial No.: 13/621,294
`Filing Date:
`September 17, 2012
`Title:
`SYSTEM TO INTERFACE INTERNET PROTOCOL (IP) BASED
`WIRELESS DEVICES WITH SUBTASKS AND CHANNELS
`
` Attorney Docket No.: 39843-0128IP1
`
`DECLARATION OF DR. MICHAEL ALLEN JENSEN
`
`1
`
`SAMSUNG 1003
`
`

`

`TABLE OF CONTENTS
`I. 
`ASSIGNMENT ................................................................................................ 5 
`QUALIFICATIONS AND BACKGROUND INFORMATION .................... 6 
`II. 
`III.  OVERVIEW OF CONCLUSIONS FORMED ............................................. 11 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 18 
`V. 
`LEGAL STANDARDS ................................................................................. 19 
`A. 
`Claim Construction ............................................................................. 19 
`B. 
`Legal Standards for Obviousness ........................................................ 20 
`VI.  The ’943 Patent .............................................................................................. 25 
`A.  Overview of the ’943 Patent ................................................................ 25 
`B. 
`File History of the ’943 Patent ............................................................ 26 
`VII.  SUMMARY OF THE CITED PRIOR ART ................................................. 28 
`A.  Overview of Byrne .............................................................................. 28 
`B. 
`Overview of WO748 ........................................................................... 29 
`C. 
`Overview of Johnston .......................................................................... 32 
`D.  Overview of Pillekamp ........................................................................ 33 
`E. 
`Overview of Raleigh ........................................................................... 34 
`F. 
`Overview of Billström ......................................................................... 37 
`VIII.  ANALYSIS OF BYRNE (GROUND 1A) .................................................... 39 
`A. 
`Claim 1 ................................................................................................ 39 
`B. 
`Claim 5 ................................................................................................ 53 
`C. 
`Claim 6 ................................................................................................ 56 
`D. 
`Claim 7 ................................................................................................ 58 
`E. 
`Claim 8 ................................................................................................ 59 
`F. 
`Claim 9 ................................................................................................ 61 
`IX.  ANALYSIS OF COMBINATION OF BYRNE AND WO748
`(GROUND 1B) .............................................................................................. 62 
`
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`

`

`Combination of Byrne and WO748 .................................................... 62 
`A. 
`Claim 3 ................................................................................................ 65 
`B. 
`Claim 4 ................................................................................................ 69 
`C. 
`X.  ANALYSIS OF COMBINATION OF BYRNE, JOHNSTON,
`AND PILLEKAMP (GROUND 1C) ............................................................ 70 
`A. 
`Combination of Byrne, Johnston, and Pillekamp ............................... 70 
`B. 
`Claim 12 .............................................................................................. 77 
`XI.  ANALYSIS OF COMBINATION OF BYRNE, JOHNSTON,
`PILLEKAMP, AND BILLSTRöM (GROUND 1D) .................................... 80 
`A. 
`Combination of Byrne, Johnston, Pillekamp, and
`Billström .............................................................................................. 80 
`Claim 13 .............................................................................................. 84 
`B. 
`Claim 14 .............................................................................................. 85 
`C. 
`XII.  ANALYSIS OF COMBINATION OF RALEIGH and BYRNE
`(GROUND 2A) .............................................................................................. 85 
`A. 
`Combination of Raleigh and Byrne ..................................................... 85 
`B. 
`Claim 1 ................................................................................................ 92 
`C. 
`Claim 2 ..............................................................................................106 
`D. 
`Claim 5 ..............................................................................................109 
`E. 
`Claim 6 ..............................................................................................113 
`F. 
`Claim 7 ..............................................................................................114 
`G. 
`Claim 8 ..............................................................................................115 
`H. 
`Claim 9 ..............................................................................................117 
`XIII.  ANALYSIS OF COMBINATION OF RALEIGH, BYRNE,
`AND WO748 (GROUND 2B) ....................................................................119 
`A. 
`Combination of Raleigh, Byrne, and WO748 ...................................119 
`B. 
`Claim 3 ..............................................................................................120 
`
`3
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`

`

`Claim 4 ..............................................................................................120 
`C. 
`XIV.  ANALYSIS OF COMBINATION OF RALEIGH, BYRNE,
`AND PILLEKAMP (GROUND 2C) ...........................................................120 
`A. 
`Combination of Raleigh, Byrne, and Pillekamp ...............................120 
`B. 
`Claim 12 ............................................................................................123 
`C. 
`Claim 15 ............................................................................................126 
`D. 
`Claim 18 ............................................................................................129 
`E. 
`Claim 19 ............................................................................................132 
`F. 
`Claim 20 ............................................................................................133 
`XV.  ANALYSIS OF COMBINATION OF RALEIGH, BYRNE,
`PILLEKAMP, AND BILLSTRöM (GROUND 2D) ..................................134 
`A. 
`Combination of Raleigh, Byrne, Pillekamp, and Billström ..............134 
`B. 
`Claim 13 ............................................................................................138 
`C. 
`Claim 14 ............................................................................................139 
`XVI.  ANALYSIS OF COMBINATION OF RALEIGH, BYRNE,
`PILLEKAMP, and WO748 (GROUND 2E) ...............................................139 
`A. 
`Combination of Raleigh, Byrne, Pillekamp, and WO748 .................139 
`B. 
`Claim 16 ............................................................................................141 
`C. 
`Claim 17 ............................................................................................145 
`XVII. CONCLUSION ............................................................................................147 
`
`
`
`
`4
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`I, Michael A. Jensen, declare as follows:
`
`I.
`
`ASSIGNMENT
`1.
`I have been retained as a technical expert by counsel on behalf of
`
`Samsung Electronics Co., Ltd. (“Petitioner”). I understand that Petitioner is
`
`requesting that the Patent Trial and Appeal Board institute an inter partes review
`
`(“IPR”) proceeding with respect to U.S. Patent No. 9,614,943 (“the ’943 patent”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’943
`
`patent in light of the prior art publications cited in Section VII below.
`
`3.
`
`I am not, and never have been, an employee of Petitioner. I received
`
`no compensation for this Declaration beyond my normal hourly compensation
`
`based on my time actually spent analyzing the ’943 patent, the prior art
`
`publications cited in Section VII below, and issues related thereto, and I will not
`
`receive any added compensation based on the outcome of any IPR or other
`
`proceeding involving the ’943 patent.
`
`4. My analysis here is based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited here. I may rely upon these materials, my knowledge and experience,
`
`and/or additional materials to rebut arguments raised by the Patent Owner. Further,
`
`I may also consider additional documents and information in forming any
`
`5
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`

`

`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`5. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated here based on new information and
`
`on my continuing analysis of the materials already provided.
`
`
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION
`6.
`I have personal knowledge or have developed knowledge of these
`
`technologies based upon education, training, or experience, of the matters set forth
`
`herein.
`
`7.
`
`A detailed description of my professional qualifications, including a
`
`listing of my specialties/expertise and professional activities, is contained in my
`
`curriculum vitae, a copy of which is provided as Appendix A. Below is a short
`
`summary of my professional qualifications.
`
`8.
`
`I earned a Bachelor of Science (B.S.) degree and a Master of Science
`
`(M.S.) degree in Electrical Engineering from Brigham Young University in 1990
`
`and 1991, respectively, and a Doctor of Philosophy (Ph.D.) degree in Electrical
`
`Engineering from the University of California, Los Angeles in 1994.
`
`6
`
`

`

`9.
`
`I am a tenured Professor at Brigham Young University. In this role, I
`
`have taught undergraduate and graduate courses for 27 years in the areas of
`
`electromagnetic field theory, antenna design and analysis, radio frequency circuit
`
`design, signal processing, and communications systems. Additionally, I have
`
`supervised twenty-five graduate student theses and dissertations within these
`
`subject areas.
`
`10.
`
`I am Dean of the Ira A. Fulton College of Engineering at Brigham
`
`Young University and a Fellow of the Institute of Electrical and Electronics
`
`Engineers (IEEE). I was previously the President of the IEEE Antennas and
`
`Propagation Society, an elected member of the Administrative Committee for the
`
`IEEE Antennas and Propagation Society, Editor-in-Chief of the IEEE Transactions
`
`on Antennas and Propagation, and associate editor for the IEEE Transactions on
`
`Antennas and Propagation and the IEEE Antennas and Wireless Propagation
`
`Letters. I was Chair of the Department of Electrical and Computer Engineering at
`
`Brigham Young University from 2006 through 2012.
`
`11.
`
`I was recognized for my research and teaching at Brigham Young
`
`University by being awarded University Professor status in 2013. I also received
`
`the Karl G. Maeser Research and Creative Arts Award at Brigham Young
`
`University in 2005, the Outstanding Faculty Award from the Electrical and
`
`Computer Engineering Department at Brigham Young University in 1998, and the
`
`7
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`

`

`student-selected Outstanding Faculty Award for the Electrical and Computer
`
`Engineering Department at Brigham Young University in 2002, 2003, and 2007.
`
`12.
`
`I have 31 years of experience in the design and analysis of
`
`communications systems that convey information over the air (wireless) or over
`
`transmission lines (cable, power lines, and optical fiber). My experience includes
`
`work with antennas and radio frequency (RF) circuitry for both wireless and hard-
`
`wired systems, as well as with algorithm design and implementation for wireless
`
`communication systems. Over much of my career, a particular area of focus has
`
`been on wireless communication systems that use multiple antennas to increase
`
`throughput and/or reliability of the communication. From time to time, I have
`
`consulted with various corporations, such as Symmetry Wireless, SDRC Inc., and
`
`SAIC, to create system designs and evaluate algorithms for various wireless
`
`communication systems.
`
`13.
`
`I have authored or co-authored over 290 technical articles and book
`
`chapters in the areas of antenna design, wireless communications, optical fiber
`
`communications, and radar systems. I received the Harold A. Wheeler
`
`Applications Prize Paper Award for an article in the IEEE Transactions on
`
`Antennas and Propagation in 2002, the Overall Best Paper Award in the 2004
`
`International Telemetry Conference, and the Best Student Paper Award in the 1993
`
`IEEE Antennas and Propagation Society International Symposium. Forty of my
`
`8
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`

`

`publications have been solicited from journal editors or conference organizers, and
`
`I have delivered ten keynote addresses at technical symposia at the request of the
`
`symposia organizers.
`
`14.
`
`I have extensive research experience and expertise in the area of
`
`antenna technology for cellular and wireless local area network systems. A non-
`
`exhaustive list of examples of papers that I have co-authored related to cellular
`
`antenna technology is:
`
` “Impact of array mutual coupling on multi-antenna propagation-based key
`
`establishment,” IEEE Trans. Antennas and Propagation, 2015.
`
` “Key establishment employing reconfigurable antennas: impact of antenna
`
`complexity,” IEEE Trans. Wireless Communications, November 2014.
`
` “Near-optimal radiation patterns for antenna diversity,” IEEE Trans.
`
`Antennas and Propagation, November 2010.
`
` “Uncoupled matching for active and passive impedances of coupled arrays
`
`in MIMO systems,” IEEE Trans. Antennas Propagation, October 2010.
`
` “Optimal antenna radiation characteristics for diversity and MIMO
`
`systems,” IEEE Trans. Antennas Propagation, November 2009.
`
` “Antenna design for mobile MIMO systems,” IEICE Trans. on
`
`Communications, June 2008.
`
`9
`
`

`

` “Evaluation of personal communications dual-antenna handset diversity
`
`performance,” IEEE Transactions on Vehicular Technology, August 1998.
`
`15. My experience includes practical engineering design and analysis in
`
`connection with companies that I have created. In 1998, I co-founded a company
`
`named AJ Design Group, Inc. that developed software for radio frequency circuit
`
`design. These tools, commercially marketed by Keysight Technologies, Inc.,
`
`synthesize and/or analyze radio frequency filters, matching networks, couplers,
`
`amplifiers, and other electronic components used in radio frequency circuits for
`
`wireless communication and radar. In 2000, I co-founded Wavetronix, LLC that
`
`designs and manufactures microwave and millimeter wave radar products for the
`
`vehicular traffic industry. In recognition for the success of this company, I was
`
`recognized as an Ernst and Young Entrepreneur of the Year for the Utah region in
`
`2020.
`
`16. My experience in the field has enabled me to work on interesting
`
`problems related to multichannel wireless communications. For example, my work
`
`on understanding the capabilities of multi-antenna communication networks –
`
`known as multiple-input multiple-output (MIMO) systems – in realistic operational
`
`environments has received considerable attention. This work demonstrated how
`
`effectively a radio system could use these multiple antennas to transmit different
`
`10
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`

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`information in parallel across a single-frequency wireless channel. The impact of
`
`this work is one of the reasons the IEEE elevated me to the grade of Fellow.
`
`17. As another example, I worked with personnel testing military aircraft
`
`to solve a problem where their telemetry of data from the aircraft to the ground
`
`would be interrupted as the plane made aggressive maneuvers due to the airframe
`
`blocking the transmission. The solution attempted by these personnel was to place
`
`multiple antennas on the aircraft, but this created new problems as the antennas
`
`interfered with each other under a wide range of aircraft attitudes. I developed a
`
`transmission scheme that used the multiple antennas but solved their interference
`
`problem, a technique that has been adopted in commercial products.
`
`18.
`
`I have worked as an expert in several legal matters, as a consulting
`
`expert and as an expert witness. I have written expert reports and had my
`
`deposition taken.
`
`
`
`III. OVERVIEW OF CONCLUSIONS FORMED
`19. The analysis and conclusions set forth in this Declaration are informed
`
`by my educational background and experiences in the field (see Section II).
`
`20. Additionally, as part of my independent analysis for this Declaration, I
`
`have considered the following: the background knowledge/technologies that were
`
`commonly known to a person of ordinary skill in the art at the time of alleged
`
`11
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`

`

`invention (“POSITA”) before the earliest claimed priority date for the ’943 patent;
`
`my own knowledge and experiences gained from my work experience in the field
`
`and related disciplines; and my experience in working with others involved in this
`
`field and related disciplines.
`
`21.
`
`In addition, I have reviewed the ’943 patent (EX-1001), relevant
`
`excerpts of the prosecution history of the ’943 patent (EX-1002). I have also
`
`reviewed at least the following prior art references:
`
` U.S. Patent No. 6,144,711 to Gregory G. Raleigh, et al. (“Raleigh”) (EX-
`
`1005)
`
` U.S. Patent No. 5,784,032 to Ronald H. Johnston, et al. (“Johnston”)
`
`(EX-1006)
`
` International Publication No. WO 98/27748 (“WO748”) (EX-1007)
`
` European Patent Application 0 660 626 A2 to John Daniel Byrne
`
`(“Byrne”) (EX-1008)
`
` U.S. Patent No. 5,594,737 to Klaus-Dieter Pillekamp (“Pillekamp”) (EX-
`
`1009)
`
` U.S. Patent No. 5,590,133 to Lars Billström, et al. (“Billström”) (EX-
`
`1010)
`
` P.W. Wolniansky, et al., V-BLAST: An Architecture for Realizing Very
`
`High Data Rates Over the Rich-Scattering Wireless Channel, published
`
`12
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`

`in 1998 URSI International Symposium on Signals, Systems, and
`
`Electronics. Conference Proceedings (Cat. No.98EX167) (October 1998)
`
`(“Wolniansky”) (EX-1011)
`
` U.S. Patent No. 6,005,876 to Leonard Joseph Cimini, Jr., et al.
`
`(“Cimini”) (EX-1012)
`
` ETSI EN 301 344 V6.7.1, Digital cellular telecommunications system
`
`(Phase 2+); General Packet Radio Service (GPRS); Service description;
`
`Stage 2 (GSM 03.60 version 6.7.1 Release 1997) (EX-1014)
`
` U.S. Patent No. 5,425,050 to William F. Schreiber, et al. (EX-1015)
`
` U.S. Patent No. 5,726,978 to Carl Magnus Frodigh, et al. (EX-1016)
`
` J. J. Spicer, et al., “Wireless office data communications using CT2 and
`
`DECT,” IEE Colloquium on Personal Communications: Circuits,
`
`Systems and Technology, 1993, pp. 9/1-9/4. (EX-1018)
`
` U.S. Patent No. 6,243,581 to Jastinder Jawanda (EX-1019)
`
` Excerpts from Alan V. Oppenheim, et al., Signals and Systems, Prentice
`
`Hall, New Jersey, 1983 (EX-1020)
`
` Excerpts from Theodore S. Rappaport, Wireless Communications
`
`Principles & Practice, Prentice Hall, 1996 (EX-1021)
`
`13
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`

`

` R. G. Vaughan, et al., Antenna diversity in mobile communications, in
`
`IEEE Transactions on Vehicular Technology, vol. 36, no. 4, pp. 149-172,
`
`Nov. 1987 (EX-1022)
`
` S. M. Alamouti, A simple transmit diversity technique for wireless
`
`communications, in IEEE Journal on Selected Areas in Communications,
`
`vol. 16, no. 8, pp. 1451-1458, Oct. 1998 (EX-1023)
`
` A. A. Abidi, Direct-conversion radio transceivers for digital
`
`communications, in IEEE Journal of Solid-State Circuits, vol. 30, no. 12,
`
`pp. 1399-1410, Dec. 1995 (EX-1024)
`
` Yonghong Gao, et al., Low-Power Implementation of a Fifth-Order
`
`Comb Decimation Filter for Multi-Standard Transceiver Applications,
`
`Electronic System Design Laboratory, Royal Institute of Technology,
`
`Nov. 1999 (EX-1025)
`
` Reza Karimi, et al., Wideband Digital Receivers for Multi-Standard
`
`Software Radios, Motorola GSM Products Division, Oct. 1997 (EX-
`
`1026)
`
` Dictionary Definitions of “communication port,” “I/O port,” and “port”
`
`(IBM Dictionary of Computing, McGraw-Hill, Inc., August 1993) (EX-
`
`1027)
`
`14
`
`

`

` Jon D. Brady, Virtual Private Networking – The Flexible Approach,
`
`Institution of Electrical Engineers, 1997 (EX-1028)
`
` Excerpts from Ziemer and Tranter, Principles of Communications:
`
`Systems, Modulation, and Noise, Fourth Edition, John Wiley & Sons,
`
`New York, 1995 (EX-1029)
`
` Dictionary Definition of “Nyquist Theorem” (Newton’s Telecom
`
`Dictionary, Flatiron Publishing, 1998) (EX-1030)
`
` U.S. Patent No. 6,175,737 to Chiiming Kao (EX-1035)
`
` U.S. Patent No. 6,016,311 to Sheldon L. Gilbert et al. (EX-1036)
`
` Douglas E. Comer, Internetworking with TCP/IP Volume One, Third
`
`Edition, 1995 (EX-1037)
`
` S. Segars, The ARM9 family-high performance microprocessors for
`
`embedded applications, in Proceedings of the International Conference
`
`on Computer Design. VLSI in Computers and Processors, 5-7 Oct. 1998
`
`(EX-1038)
`
` Chaucer Kuo, John Wong, Multi-Standard DSP based wireless systems,
`
`in Proceedings of the Fourth International Conference on Signal
`
`Processing, pp. 1712-1728, 12-16 Oct. 1998 (EX-1039)
`
`15
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`

`

` J.-P. van Deursen, et al., Switched antenna diversity within a DECT
`
`system, IEEE Second Symposium on Communications and Vehicular
`
`Technology in the Benelux, 1994, pp. 141-148 (EX-1040)
`
` P. E. Mogensen, et al., Practical considerations of using antenna diversity
`
`in DECT, Proceedings of IEEE Vehicular Technology Conference
`
`(VTC), 1994, pp. 1532-1536 vol.3 (EX-1041)
`
` U.S. Patent No. 5,819,041 to Murat I. Bilgic (EX-1042)
`
` U.S. Patent No. 6,148,324 to Antonio Juan Ransom et. al. (EX-1043)
`
` U.S. Patent No. 5,983,366 to Michael Roy King (EX-1044)
`
` Kunle Olukotun, et al., The Case for a Single-Chip Multiprocessor,
`
`Computer Systems Laboratory Stanford University, 1996 (EX-1045)
`
` Basem A. Nayfeh, et al., Evaluation of Design Alternatives for a
`
`Multiprocessor Microprocessor, Computer Systems Laboratory Stanford
`
`University, 1996 (EX-1046)
`
`22.
`
`I have also reviewed some cited supporting references and
`
`documentation in forming my opinions below.
`
`23. Counsel has informed me that I should consider these materials
`
`through the lens of one of ordinary skill in the art related to the ’943 patent at the
`
`time of the earliest possible priority date of the ’943 patent, and I have done so
`
`during my review of these materials. Counsel has informed me that the earliest
`
`16
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`

`possible priority date to which the challenged claims of ’943 patent are entitled is
`
`June 4, 1999 (“Critical Date”), and I have therefore used that Critical Date in my
`
`analysis below.
`
`24. Any figures that appear within this document have been prepared with
`
`the assistance of Counsel and reflect my understanding of the ’943 patent and the
`
`prior art discussed below.
`
`25. Although this Declaration refers to certain portions of the cited
`
`references for the sake of brevity, it should be understood that these citations are
`
`examples, and that one of ordinary skill in the art would have viewed the
`
`references cited herein in their entireties and, for reasons detailed later, in
`
`combination with other references cited herein or cited within those references
`
`themselves. The references used in this Declaration, therefore, should be viewed as
`
`being cited and analyzed herein in their entireties.
`
`26. This declaration explains the conclusions that I have formed based on
`
`my analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art publications listed above, I believe that:
`
` Claims 1 and 5-9 are rendered obvious by Byrne (Ground 1A)
`
` Claims 3-4 are rendered obvious by Byrne in view of WO748 (Ground
`
`1B)
`
`17
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`

`

` Claim 12 is rendered obvious by Byrne in view of Johnston and
`
`Pillekamp (Ground 1C)
`
` Claims 13-14 are rendered obvious by Byrne in view of Johnston,
`
`Pillekamp, and Billström (Ground 1D)
`
` Claims 1, 2, and 5-9 are rendered obvious by Raleigh in view of Byrne
`
`(Ground 2A)
`
` Claims 3-4 are rendered obvious by Raleigh in view of Byrne and
`
`WO748 (Ground 2B)
`
` Claims 12, 15, and 18-20 are rendered obvious by Raleigh in view of
`
`Byrne and Pillekamp (Ground 2C)
`
` Claims 13-14 are rendered obvious by Raleigh in view of Byrne,
`
`Pillekamp, and Billström (Ground 2D)
`
` Claims 16-17 are rendered obvious by Raleigh in view of Byrne,
`
`Pillekamp, and WO748 (Ground 2E)
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`27. Based on my knowledge and experience in the field and my review of
`
`the ’943 patent and its file history, I believe that a person of ordinary skill in the art
`
`at the time of alleged invention (“POSITA”) would have had a Bachelor’s degree
`
`in electrical engineering, computer engineering, computer science, or a related
`
`18
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`

`

`field, and at least two years of experience related to the design or development of
`
`wireless communication systems, or the equivalent. Additional graduate education
`
`could substitute for professional experience, or significant experience in the field
`
`could substitute for formal education.
`
`28. Based on my experiences, I have a good understanding of the
`
`capabilities of one of ordinary skill. Indeed, I have taught and worked closely with
`
`many such persons over the course of my career. Based on my knowledge, skill,
`
`and experience, I have an understanding of the capabilities of one of ordinary skill.
`
`For example, from teaching and supervising my students, I have an understanding
`
`of the knowledge that a person with this academic experience possesses.
`
`Furthermore, I possess those capabilities myself.
`
`
`
`V. LEGAL STANDARDS
`29.
`I have been informed by counsel of certain legal principles applicable
`
`to a patentability analysis and I have applied these principles as listed below.
`
`A. Claim Construction
`30.
`I have been informed by Counsel and understand that the best
`
`indicator of claim meaning is its usage in the context of the patent specification as
`
`understood by one of ordinary skill. I further understand that the words of the
`
`claims should be given their plain meaning unless that meaning is inconsistent with
`
`19
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`

`the patent specification or the patent’s history of examination before the Patent
`
`Office. Counsel has also informed me, and I understand that, the words of the
`
`claims should be interpreted as they would have been interpreted by one of
`
`ordinary skill at the time of the invention was made (not today). Because I do not
`
`know at what date the invention as claimed was made, I have used the earliest
`
`priority date of the ’943 patent as the point in time for claim interpretation
`
`purposes. That date was June 4, 1999.
`
`B.
`31.
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`Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
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`materials that qualify as prior art can render a patent claim unpatentable as
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`obvious. I am informed by Counsel and understand that all prior art references are
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`to be looked at from the viewpoint of a person of ordinary skill in the art at the
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`time of the invention, and that this viewpoint prevents one from using his or her
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`own insight or hindsight in deciding whether a claim is obvious.
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`32.
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`I have been informed by Counsel and understand that a claim is
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`unpatentable for obviousness under 35 U.S.C. § 103 “if the differences between the
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`subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`person having ordinary skill in the art to which said subject matter pertains.” I am
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`informed by Counsel and understand that obviousness may be based upon a
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`combination of references. I am informed by Counsel and understand that the
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`combination of familiar elements according to known methods is likely to be
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`obvious when it does no more than yield predictable results. However, I am
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`informed by Counsel and understand that a patent claim composed of several
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`elements is not proved obvious merely by demonstrating that each of its elements
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`was, independently, known in the prior art.
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`33.
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`I am informed by Counsel and understand that when a patented
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`invention is a combination of known elements, a court must determine whether
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`there was an apparent reason to combine the known elements in the fashion
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`claimed by the patent at issue by considering the teachings of prior art references,
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`the effects of demands known to people working in the field or present in the
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`marketplace, and the background knowledge possessed by a person having
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`ordinary skill in the art.
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`34.
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`I am informed by Counsel and understand that a patent claim
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`composed of several limitations is not proved obvious merely by demonstrating
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`that each of its limitations was independently known in the prior art. I am informed
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`by counsel for the Patent Owner and understand that identifying a reason those
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`elements would be combined can be important because inventions in many
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`instances rely upon building blocks long since uncovered, and claimed discoveries
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`almost of necessity will be combinations of what, in some sense, is already known.
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`I am informed by Counsel and understand that it is improper to use hindsight in an
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`obviousness analysis, and that a patent’s claims should not be used as a “roadmap.”
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`35.
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`I am informed by Counsel and understand that an obviousness inquiry
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`requires consideration of the following factors: (1) the scope and content of the
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`prior art; (2) the differences between the claims and the prior art; (3) the level of
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`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
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`such as commercial success, long-felt but unresolved need, failure of others,
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`industry recognition, copying, and unexpected results. I understand that the
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`foregoing factors are sometimes referred to as the “Graham factors.”
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`36.
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`I have been informed by Counsel and understand that an obviousness
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`evaluation can be based on a combination of multiple prior art references. I
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`understand that the prior art references themselves may provide a suggestion,
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`motivation, or reason to combine, but that the nexus linking two or more prior art
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`references is sometimes simple common sense. I have been informed by Counsel
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`and understand that obviousness analysis recognizes that market demand, rather
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`than scientific literature, often drives innovation, and that a motivation to combine
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`references may be supplied by the direction of the marketplace.
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`37.
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`I have been informed by Counsel and understand that if a technique
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`has been used to improve one device, and a person of ordinary skill at the time of
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`invention would have recognized that it would improve similar devices in the same
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`way, using the technique is obvious unless its actual application is beyond his or
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`her skill.
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`38.
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`I have been informed by Counsel and understand that practical and
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`common sense considerations should guide a proper obviousness analysis, because
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`familiar items may have obvious uses beyond their primary purposes. I have been
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`informed by Counsel and understand that a person of ordinary skill looking to
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`overcome a problem will often be able to fit together the teachings of multiple
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`prior art references. I have been informed by Counsel and understand that
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`obviousness analysis therefore takes into account the inferences and creative steps
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`that a person of ordinary skill would have employed at the time of invention.
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`39.
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`I have been informed by Counsel and understand that a proper
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`obviousness analysis focuses on what was known or obvious to a person of
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`ordinary skill at the time of invention, not just the patentee. Accordingly, I
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`understand that any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for combining the
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`elements in the manner claimed.
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`40.
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`I have been informed by Counsel and understand that a claim can be
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`obvious in light of a single reference, without the need to combine references, if
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`the elements of the claim that are not found explicitly or inherently in the