IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Sanjay K. Rao, et al.
`In re Patent of:
`9,084,291 Attorney Docket No.: 39843-0129IP1
`U.S. Patent No.:
`July 14, 2015
`Issue Date:
`Appl. Serial No.: 14/273,323
`Filing Date:
`May 8, 2014
`Title:
`INTERFACING INTERNET PROTOCOL-BASED WIRELESS
`DEVICES WITH NETWORKS
`
`
`
`DECLARATION OF DR. MICHAEL ALLEN JENSEN
`
` 
`
` 
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`1
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`SAMSUNG 1003
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`
`
`TABLE OF CONTENTS
`
`I. ASSIGNMENT .................................................................................................... 4
`II. QUALIFICATIONS AND BACKGROUND INFORMATION ........................ 5
`III. OVERVIEW OF CONCLUSIONS FORMED ................................................. 10
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 16
`V. LEGAL STANDARDS ..................................................................................... 16
`A. Claim Construction ......................................................................................... 17
`B. Legal Standards for Obviousness ................................................................... 17
`VI. The ’291 Patent .................................................................................................. 22
`A. Overview of the ’291 Patent ........................................................................... 22
`B. File History of the ’291 Patent ....................................................................... 25
`VII. SUMMARY OF THE CITED PRIOR ART .................................................... 27
`A. Overview of Raleigh ....................................................................................... 27
`B. Overview of Sainton ....................................................................................... 30
`C. Overview of Gernert ....................................................................................... 32
`VIII. ANALYSIS OF COMBINATION OF RALEIGH, SAINTON, AND
`GERNERT (GROUND 1) ....................................................................................... 34
`A. Combination of Raleigh and Sainton ............................................................. 34
`B. Combination of Raleigh, Sainton, and Gernert .............................................. 44
`C. Claim 5 ........................................................................................................... 51
`D. Claim 6 ........................................................................................................... 86
`E. Claim 7 ........................................................................................................... 92
`F. Claim 8 ........................................................................................................... 96
`G. Claim 9 .........................................................................................................100
`H. Claim 10 .......................................................................................................101
`I. Claim 11 .......................................................................................................102
`J. Claim 12 .......................................................................................................103
`K. Claim 13 .......................................................................................................105
`L. Claim 14 .......................................................................................................107
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`M. Claim 15 .......................................................................................................108
`N. Claim 16 .......................................................................................................109
`O. Claim 1 .........................................................................................................109
`P. Claim 2 .........................................................................................................135
`Q. Claim 3 .........................................................................................................136
`R. Claim 4 .........................................................................................................137
`IX. CONCLUSION ................................................................................................139
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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 re-
`
`questing that the Patent Trial and Appeal Board institute an inter partes review
`
`(“IPR”) proceeding with respect to U.S. Patent No. 9,084,291 (“the ’291 patent”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’291 pa-
`
`tent 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 ’291 patent, the prior art publica-
`
`tions 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 in-
`
`volving the ’291 patent.
`
`4. My analysis here is based on my years of education, research and ex-
`
`perience, 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 neces-
`
`sary opinions, including documents that may not yet have been provided to me.
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`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
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`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.
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`5
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`9.
`
`I am a tenured Professor at Brigham Young University. In this role, I
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`have taught undergraduate and graduate courses for 27 years in the areas of elec-
`
`tromagnetic field theory, antenna design and analysis, radio frequency circuit de-
`
`sign, signal processing, and communications systems. Additionally, I have super-
`
`vised twenty-five graduate student theses and dissertations within these subject ar-
`
`eas.
`
`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 Engi-
`
`neers (IEEE). I was previously the President of the IEEE Antennas and Propaga-
`
`tion 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 An-
`
`tennas 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 Univer-
`
`sity in 2005, the Outstanding Faculty Award from the Electrical and Computer En-
`
`6
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`

`

`gineering Department at Brigham Young University in 1998, and the student-se-
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`lected 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 communi-
`
`cations systems that convey information over the air (wireless) or over transmis-
`
`sion lines (cable, power lines, and optical fiber). My experience includes work with
`
`antennas and radio frequency (RF) circuitry for both wireless and hard-wired sys-
`
`tems, as well as with algorithm design and implementation for wireless communi-
`
`cation 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 sys-
`
`tems.
`
`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 Applica-
`
`tions 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 Te-
`
`lemetry Conference, and the Best Student Paper Award in the 1993 IEEE Antennas
`
`7
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`and Propagation Society International Symposium. Forty of my 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 organiz-
`
`ers.
`
`14.
`
`I have extensive research experience and expertise in the area of an-
`
`tenna technology for cellular and wireless local area network systems. A non-ex-
`
`haustive list of examples of papers that I have co-authored related to cellular an-
`
`tenna 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. An-
`
`tennas 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 sys-
`
`tems,” IEEE Trans. Antennas Propagation, November 2009.
`
` “Antenna design for mobile MIMO systems,” IEICE Trans. on Communi-
`
`cations, June 2008.
`
`8
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`

`

` “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., syn-
`
`thesize and/or analyze radio frequency filters, matching networks, couplers, ampli-
`
`fiers, 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 ef-
`
`fectively a radio system could use these multiple antennas to transmit different in-
`
`formation 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.
`
`9
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`

`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 in-
`
`terfered 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 ex-
`
`pert 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 in-
`
`vention (“POSITA”) before the earliest claimed priority date for the ’291 patent;
`
`my own knowledge and experiences gained from my work experience in the field
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`and related disciplines; and my experience in working with others involved in this
`
`field and related disciplines.
`
`21.
`
`In addition, I have reviewed the ’291 patent (EX-1001), relevant ex-
`
`cerpts of the prosecution history of the ’291 patent (EX-1002). I have also re-
`
`viewed at least the following prior art references:
`
` U.S. Patent No. 6,144,711 to Gregory G. Raleigh, et al. (“Raleigh”) (EX-
`
`1004)
`
` U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al. (“Sainton”) (EX-
`
`1005)
`
` U.S. Patent No. 6,600,734 to Alex Gernert, et al. (“Gernert”) (EX-1008)
`
` U.S. Patent No. 5,768,691 to Jorma Matero, et al. (EX-1009)
`
` U.S. Patent No. 5,479,479 to Michael F. Braitberg, et al. (EX-1010)
`
` P.W. Wolniansky, et al., V-BLAST: An Architecture for Realizing Very
`
`High Data Rates Over the Rich-Scattering Wireless Channel, published
`
`in 1998 URSI International Symposium on Signals, Systems, and Elec-
`
`tronics. Conference Proceedings (Cat. No.98EX167) (October 1998)
`
`(“Wolniansky”) (EX-1011)
`
` U.S. Patent No. 5,852,721 to Douglas M. Dillon, et al. (EX-1012)
`
` U.S. Patent No. 5,425,050 to William F. Schreiber, et al. (EX-1013)
`
` U.S. Patent No. 5,726,978 to Carl Magnus Frodigh, et al. (EX-1014)
`
`11
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`

` U.S. Patent No. 6,005,876 to Leonard Joseph Cimini, Jr., et al. (“Ci-
`
`mini”) (EX-1015)
`
` T. Yamawaki et al., A 2.7-V GSM RF transceiver IC, in IEEE Journal of
`
`Solid-State Circuits, vol. 32, no. 12, pp. 2089-2096, Dec. 1997 (“Yama-
`
`waki”) (EX-1016)
`
` C. Marshall et al., “A 2.7 V GSM transceiver ICs with on-chip filtering,”
`
`Proceedings ISSCC '95 - International Solid-State Circuits Conference,
`
`1995, pp. 148-149 (EX-1017)
`
` T. D. Stetzler, I. G. Post, J. H. Havens and M. Koyama, “A 2.7-4.5 V sin-
`
`gle chip GSM transceiver RF integrated circuit,” in IEEE Journal of
`
`Solid-State Circuits, vol. 30, no. 12, pp. 1421-1429, Dec. 1995 (EX-
`
`1018)
`
` TCM8030 Analog Baseband Processor User’s Guide, Texas Instruments,
`
`July 1997 (EX-1019)
`
` U.S. Patent No. 6,249,889 to Rochit Rajsuman, et al. (EX-1020)
`
` U.S. Patent No. 6,449,741 to Donald V. Organ et al. (EX-1021)
`
` U.S. Patent No. 6,463,298 to John R. Sorenson, et al. (EX-1022)
`
` Jonathan Singer, A Shared Bus Architecture for a Digital Signal Proces-
`
`sor and a Microcontroller, Department of Electrical Engineering and
`
`12
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`Computer Science, MASSACHUSETTS INSTITUTE OF TECHNOL-
`
`OGY, submitted on May 20, 1996, indexed on June 11, 1996 (EX-1023)
`
` A. A. Abidi, Low-power radio-frequency ICs for portable communica-
`
`tions, in Proceedings of the IEEE, vol. 83, no. 4, pp. 544-569, April 1995
`
`(EX-1024)
`
` 800 MHz Cellular Service, Federal Communications Commission
`
`(fcc.gov), available at https://www.fcc.gov/wireless/bureau-divisions/mo-
`
`bility-division/800-mhz-cellular-service (EX-1025)
`
` Paging, Federal Communications Commission (fcc.gov), available at
`
`https://www.fcc.gov/wireless/bureau-divisions/mobility-division/pag-
`
`ing#:~:text=Commercial%20paging%20operates%20in%20the,(re-
`
`fer%20to%20band%20plan) (EX-1026)
`
` Broadband Personal Communications Service (PCS), Federal Communi-
`
`cations Commission (fcc.gov), available at https://www.fcc.gov/wire-
`
`less/bureau-divisions/mobility-division/broadband-personal-communica-
`
`tions-service-pcs (EX-1027)
`
` Time and Frequency from A to Z, G, National Institute of Standards and
`
`Technology (NIST), available at https://www.nist.gov/pml/time-and-fre-
`
`quency-division/popular-links/time-frequency-z/time-and-frequency-z-
`
`13
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`

`g#:~:text=All%20GPS%20satellites%20broad-
`
`cast%20on,on%20L5%20at%201176%20MHz (EX-1028)
`
` Part 11: Wireless LAN Medium Access Control (MAC) and Physical
`
`Layer (PHY) specifications, IEEE Std 802.11a-1999, September 16, 1999
`
`(EX-1029)
`
` GSM Technical Specification, Digital cellular telecommunication system
`
`(Phase 2+); Physical layer on the radio path; General description (GSM
`
`05.01 version 5.4.0), April 1998 (EX-1030)
`
` Dictionary Definitions of “communication port,” “I/O port,” and “port”
`
`(IBM Dictionary of Computing, McGraw-Hill, Inc., August 1993) (EX-
`
`1033)
`
` U.S. Patent Application Publication No. 2002/0057682 to Joseph Mi-
`
`chael Hansen, et al. (EX-1034)
`
`22.
`
`I have also reviewed some cited supporting references and documen-
`
`tation 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 ’291 patent at the
`
`time of the earliest possible priority date of the ’291 patent, and I have done so dur-
`
`ing my review of these materials. Counsel has informed me that the earliest possi-
`
`ble priority date to which the challenged claims of ’291 patent are entitled is June
`
`14
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`

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`4, 1999 (“Critical Date”), and I have therefore used that Critical Date in my analy-
`
`sis below.
`
`24. Any figures that appear within this document have been prepared with
`
`the assistance of Counsel and reflect my understanding of the ’291 patent and the
`
`prior art discussed below.
`
`25. Although this Declaration refers to certain portions of the cited refer-
`
`ences for the sake of brevity, it should be understood that these citations are exam-
`
`ples, 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 refer-
`
`ences used in this Declaration, therefore, should be viewed as being cited and ana-
`
`lyzed 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 ex-
`
`perience and my review of the prior art publications listed above, I believe that:
`
` Claims 1-16 are rendered obvious by Raleigh in view of Sainton and
`
`Gernert (Ground 1)
`
`
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`15
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`27. Based on my knowledge and experience in the field and my review of
`
`the ’291 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
`
`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 capabil-
`
`ities 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 ex-
`
`perience, 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.
`
`16
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`

`

`A. Claim Construction
`30.
`I have been informed by Counsel and understand that the best indica-
`
`tor of claim meaning is its usage in the context of the patent specification as under-
`
`stood 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 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
`
`’291 patent as the point in time for claim interpretation purposes. That date was
`
`June 4, 1999.
`
`B.
`31.
`
`Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as obvi-
`
`ous. I am informed by Counsel and understand that all prior art references are to be
`
`looked at from the viewpoint of a person of ordinary skill in the art at the time of
`
`the invention, and that this viewpoint prevents one from using his or her own in-
`
`sight or hindsight in deciding whether a claim is obvious.
`
`17
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`

`32.
`
`I have been informed by Counsel and understand that a claim is un-
`
`patentable for obviousness under 35 U.S.C. § 103 “if the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject mat-
`
`ter 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.” I am
`
`informed by Counsel and understand that obviousness may be based upon a combi-
`
`nation of references. I am informed by Counsel and understand that the combina-
`
`tion of familiar elements according to known methods is likely to be obvious when
`
`it does no more than yield predictable results. However, I am informed by Counsel
`
`and understand that a patent claim composed of several elements is not proved ob-
`
`vious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.
`
`33.
`
`I am informed by Counsel and understand that when a patented inven-
`
`tion is a combination of known elements, a court must determine whether there
`
`was an apparent reason to combine the known elements in the fashion claimed by
`
`the patent at issue by considering the teachings of prior art references, the effects
`
`of demands known to people working in the field or present in the marketplace,
`
`and the background knowledge possessed by a person having ordinary skill in the
`
`art.
`
`18
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`

`

`34.
`
`I am informed by Counsel and understand that a patent claim com-
`
`posed of several limitations is not proved obvious merely by demonstrating that
`
`each of its limitations was independently known in the prior art. I am informed by
`
`counsel for the Patent Owner and understand that identifying a reason those ele-
`
`ments would be combined can be important because inventions in many instances
`
`rely upon building blocks long since uncovered, and claimed discoveries almost of
`
`necessity will be combinations of what, in some sense, is already known. I am in-
`
`formed by Counsel and understand that it is improper to use hindsight in an obvi-
`
`ousness analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`35.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
`
`such as commercial success, long-felt but unresolved need, failure of others, indus-
`
`try recognition, copying, and unexpected results. I understand that the foregoing
`
`factors are sometimes referred to as the “Graham factors.”
`
`36.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a combination of multiple prior art references. I under-
`
`stand that the prior art references themselves may provide a suggestion, motiva-
`
`19
`
`

`

`tion, or reason to combine, but that the nexus linking two or more prior art refer-
`
`ences is sometimes simple common sense. I have been informed by Counsel and
`
`understand that obviousness analysis recognizes that market demand, rather than
`
`scientific literature, often drives innovation, and that a motivation to combine ref-
`
`erences may be supplied by the direction of the marketplace.
`
`37.
`
`I have been informed by Counsel and understand that if a technique
`
`has been used to improve one device, and a person of ordinary skill at the time of
`
`invention would have recognized that it would improve similar devices in the same
`
`way, using the technique is obvious unless its actual application is beyond his or
`
`her skill.
`
`38.
`
`I have been informed by Counsel and understand that practical and
`
`common sense considerations should guide a proper obviousness analysis, because
`
`familiar items may have obvious uses beyond their primary purposes. I have been
`
`informed by Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the teachings of multiple
`
`prior art references. I have been informed by Counsel and understand that obvious-
`
`ness analysis therefore takes into account the inferences and creative steps that a
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`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 obvi-
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`ousness analysis focuses on what was known or obvious to a person of ordinary
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`skill at the time of invention, not just the patentee. Accordingly, I understand that
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`any need or problem known in the field of endeavor at the time of invention and
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`addressed by the patent can provide a reason for combining the elements in the
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`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 reference
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`can be supplied by the common sense of one of skill in the art.
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`41.
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`I have been informed by Counsel and understand that secondary indi-
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`cia of non-obviousness may include (1) a long felt but unmet need in the prior art
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`that was satisfied by the invention of the patent; (2) commercial success of pro-
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`cesses covered by the patent; (3) unexpected results achieved by the invention; (4)
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`praise of the invention by others skilled in the art; (5) taking of licenses under the
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`patent by others; (6) deliberate copying of the invention; (7) failure of others to
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`find a solution to the long felt need; and (8) skepticism by experts. I understand
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`that evidence of secondary indicia of non-obviousness, if available, should be con-
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`sidered as part of the obviousness analysis.
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`42.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`43.
`
`In sum, my understanding is that prior art teachings are properly com-
`
`bined where one of ordinary skill having the understanding and knowledge re-
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`flected in the prior art and motivated by the general problem facing the inventor,
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`would have been led to make the combination of elements recited in the claims.
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`Under this analysis, the prior art references themselves, or any need or problem
`
`known in the field of endeavor at the time of the invention, can provide a reason
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`for combining the elements of multiple prior art references in the claimed manner.
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`44.
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`I have been informed by Counsel and understand that in an inter
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`partes review, “the petitioner shall have the burden of proving a proposition of un-
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`patentability,” including a proposition of obviousness, “by a preponderance of the
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`evidence.” 35 U.S.C. §316(e).
`
`
`
`VI. THE ’291 PATENT
`A. Overview of the ’291 Patent
`45. The ’291 patent generally relates to a “portable wireless device with
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`dual RF communication and antennas.” EX-1001, Title. It describes a “cellular tel-
`
`ephone/mobile wireless device (CT/MD)” equipped with multiple transmitters and
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`receivers that are coupled with multiple antennas. EX-1001, 1:45-55. Distinguish-
`
`ing from “the typical CT/MD” having “one transmitter and one receiver (T/R),
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`with one antenna,” the ’291 patent employs multiple transmitters/receivers and
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`multiple antennas to provide “enhanced capabilities” and allow “the single CT/MD
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`to perform tasks in different environments—each T/R being specifically designed
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`or configured for that specific purpose.” Id.; see also 4:1-31.
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`46. The ’291 patent describes a “dual antenna, dual T/R unit” in a CT/MD
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`to implement a “dual band system.” EX-1001, 4:9-5:15, Figures 4 and 5A (below).
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`As shown in Figure 5A, the CT/MD includes “multiple antennas 508 and multiple
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`T/R units 504” as well as “multiple processors 506” for “parallel and custom pro-
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`cessing of each signal or data stream to achieve higher speed and better quality of
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`output.” Id., 4:32-67.
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`EX-1001, Figures 4 and 5A
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`
`
`47.
`
`In addition, the ’291 patent describes that “wireless units 904 and 906,
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`such as CT/MDs or wireless boxes” communicate with each other via “multiple
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`channels 912.” EX-1001, 6:62-7:18, Figure 9 (below).
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`
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`EX-1001, Figure 9
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`48. Referring to Figure 10, the ’291 patent further discloses a “data sys-
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`tem 1000” that processes “three data streams DS1 1002, DS2 1004 and DS3 1006”
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`and combines them into a “data stream 1028” sent “to Server C 1030.” Id., 7:19-
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`45, Figure 10 (below); see also 7:46-8:9, Figure 11.
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`EX-1001, Figure 10
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`
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`49. Based on my knowledge and experience in the field and my review of
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`the ’291 patent, it would have been clear to a POSITA that the ’291 patent de-
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`scribes no more than conventional technologies in or before 1999. A POSITA
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`would have understood that the advanced state of the prior art renders claims 1-16
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`obvious as discussed below (¶¶62-207).
`
`B.
`File History of the ’291 Patent
`50. As part of my preparation of this Declaration, I reviewed the file his-
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`tory of the ’291 patent (EX-1002). I understand that the application that led to the
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`’291 patent was filed in the United States on May 8, 2014, and the patent issued on
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`July 14, 2015. EX-1001, cover page.
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`51. The Examiner allowed the claims after two rejections. EX-1002, 5-
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`126. The claims (then-pending claims 1-4 and 13-24, which now correspond to
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`claims 1-16) were allowed after being amended to recit