`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`American Honda Motor Co., Inc.
`
`Petitioner,
`
`v.
`
`MicroPairing Technologies, LLC
`Patent Owner.
`
`
`
`IPR2022-01082
`
`
`
`DECLARATION OF DR. SAYFE KIAEI
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,020,028
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`Submitted Electronically via the Patent Trial and Appeal Board End to End
`System
`
`
`
`AHM, Exh. 1003, p. 1
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`VI.
`
`IX.
`X.
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................ 4
`I.
`II.
`EXPERIENCE AND QUALIFICATIONS ................................................ 4
`III. TASK SUMMARY AND MATERIALS REVIEWED .......................... 11
`IV.
`LIST OF EXHIBITS .................................................................................. 12
`V.
`SUMMARY OF CONCLUSIONS AND GROUNDS FOR
`CHALLENGE ............................................................................................ 14
`LEGAL STANDARDS............................................................................... 15
`A. Level of Ordinary Skill in the Art ............................................................ 15
`B. Legal Standard for Claim Construction ................................................... 16
`C. Obviousness ............................................................................................. 18
`VII. TECHNOLOGY BACKGROUND .......................................................... 20
`VIII. OVERVIEW OF THE CHALLENGED PATENT ................................ 22
`A. Prosecution History of The ’028 Patent ................................................... 22
`Summary of Claimed Subject Matter ...................................................... 23
`CLAIM CONSTRUCTION ...................................................................... 24
`“multiprocessor system” ................................................................................. 25
`“application” ................................................................................................... 25
`XI. OVERVIEW OF THE PRIOR ART ........................................................ 26
`XII. GROUND 1A: CLAIM 18, 20, 21, AND 23 ARE OBVIOUS
`OVER AMI-C IN VIEW OF BERRY, BLUETOOTH AND
`PEDERSEN ................................................................................................. 31
`A. Motivation To Combine AMI-C, Berry, Bluetooth, and Pedersen .......... 31
`B. Claim 18 ................................................................................................... 34
`C. Claim 20 ................................................................................................... 66
`D. Claim 21 ................................................................................................... 66
`E. Claim 23 ................................................................................................... 67
`XIII. GROUND 1B: CLAIM 18, 20, 21, AND 23 ARE OBVIOUS
`OVER AMI-C, BERRY AND BLUETOOTH......................................... 68
`XIV. GROUND 2A: CLAIMS 18, 20, 21, AND 23 ARE OBVIOUS
`OVER BERRY IN VIEW OF BLUETOOTH AND PEDERSEN ........ 69
`
`
`
`
`2
`
`AHM, Exh. 1003, p. 2
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`A. Motivation to Combine Berry, Bluetooth and Pedersen .......................... 69
`B. Claim 18 ................................................................................................... 70
`C. Claim 20 ................................................................................................... 88
`D. Claim 21 ................................................................................................... 89
`E. Claim 23 ................................................................................................... 89
`XV. GROUND 2B: CLAIMS 18, 20, 21, AND 23 ARE RENDERED
`OBVIOUS OVER BERRY AND BLUETOOTH ................................... 90
`XVI. SECONDARY CONSIDERATIONS ....................................................... 92
`XVII. CONCLUSION ........................................................................................... 93
`
`
`
`
`
`3
`
`AHM, Exh. 1003, p. 3
`
`

`

`I.
`
`INTRODUCTION
`
`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`1. My name is Sayfe Kiaei. I make this declaration based upon my own
`
`personal knowledge and, if called upon to testify, would testify competently to the
`
`matters contained herein.
`
`2.
`
`I have been asked to provide technical assistance in the inter partes
`
`review of U.S. Patent No. 8,020,028, which I may abbreviate as “the ’028 Patent”
`
`or refer to as the “Challenged Patent.” This declaration is a statement of my opinions
`
`on issues related to the unpatentability of claims of the ’028 Patent. I am being
`
`compensated at my normal rate of $450 per hour for my analysis, plus
`
`reimbursement for expenses. My compensation does not depend on the content of
`
`my opinions or the outcome of this proceeding.
`
`II. EXPERIENCE AND QUALIFICATIONS
`
`3.
`
`Since 2001 I have held the position of Motorola Endowed Chair
`
`Professor in Analog and Radio Frequency Integrated Circuitry at the School of
`
`Electrical, Computer, and Energy Engineering at Arizona State University in Tempe,
`
`Arizona. I am also the Director of the National Science Foundation Center,
`
`Connection One. Connection One is an industry/university cooperative research
`
`center with over thirty industrial members and five university members focused on
`
`developing communication system and networking technologies. I received my
`
`doctorate in Electrical and Computer Engineering from Washington State University
`
`
`
`
`4
`
`AHM, Exh. 1003, p. 4
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`in 1987. I have graduated over 100 MS and PhD students working under my
`
`supervision on their thesis, and many of them are professors in academia, or have
`
`senior positions in the industry. Currently, I have 8 MS, PhD, and postdoc students
`
`working with in my lab on research related to communication and networking
`
`systems, wireless and wireline systems, RF, and integrated circuits. My research is
`
`funded by various sources, including industry, federal agencies including NSF,
`
`DARPA, ONR, DOE, and other, with an average total research funding of $1M per
`
`year.
`
`4.
`
`I have been involved with wireline systems, cellular systems, RF
`
`Integrated circuits, RFID, Analog/Digital Integrated Circuits, communications,
`
`digital signal processing, and related areas for the last 30 years starting with the first
`
`generation of mobile phones (an analog system called AMPS (for Advanced Mobile
`
`Phone Service)).
`
`5.
`
`I have also worked on second generation (2G) and third generation (3G)
`
`mobile phone technologies including GSM, EDGE, IS-95, 1X CDMA, UMTS, and
`
`Wide band CDMA. These terms all refer to leading mobile phone standards and
`
`technologies, which enjoyed widespread use in mobile telephone networks
`
`throughout the world. I have also worked on other wireless data communication
`
`technologies including Bluetooth, the global positioning system (GPS), Wireless
`
`local area networks (LAN) (often known as Wi-Fi), and related areas.
`5
`
`
`
`
`AHM, Exh. 1003, p. 5
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`From 1985 through 1987, I worked with Boeing on the development of
`
`6.
`
`signal processing and control systems.
`
`7.
`
`From 1987 through 1993, I was a tenured Professor at Oregon State
`
`University in the Electrical and Computer Engineering Department. In my over
`
`thirty years of teaching experience, I have taught university courses in networking,
`
`communication systems, RF, and electronics at both the undergraduate and graduate
`
`level.
`
`8.
`
`From 1993 to 2002, I was a Senior Member of Technical Staff with the
`
`Wireless Technology Center and Broadband Operations at Motorola Inc., where I
`
`was responsible for the development of wireless system, cellular system, RF
`
`integrated circuits, GPS, and Digital Subscriber Lines (DSL) transceivers.
`
`9.
`
`From 1995-1998 I was at Motorola and worked on DSL (digital
`
`subscriber line, a technology used for high speed Internet service over copper
`
`telephone lines), DMT (discrete multi-tone transmission, a technology underlying
`
`DSL and other wireline communication systems), OFDM (orthogonal frequency
`
`division multiplexing, a technology for transmitting data on multiple frequencies at
`
`the same time for wideband digital communication), wireline and wireless systems,
`
`wireless networking, 1G-3G, UMTS, GPS and Bluetooth systems.
`
`10.
`
`I was involved with the design of two way radios at Motorola from
`
`1993–1995. I de-signed RF LNA, Mixer, receive signal strength indicator (RSSI),
`6
`
`
`
`
`AHM, Exh. 1003, p. 6
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`AGC (automatic gain controller), and the baseband analog and digital filtering
`
`sections. I was also one of the main system architects for the Motorola Talkabout
`
`Radio, a handheld radio system with over 100 million units sold. The transceiver I
`
`developed for the Motorola Talkabout was a radio frequency transceiver for
`
`transmitting and receiving radio signals at distances up to 35 miles.
`
`11. From 1998–2002 I was in the Motorola cellular group called WITC
`
`(Wireless integrated Technology Center) within the Motorola communication
`
`enterprise. This group was responsible for the design and development of integrated
`
`circuits for 1G (AMPS, Digital AMPS), 2G (GSM, EDGE), and 3G (CDMA,
`
`WCDMA / UMTS, CDMA2000) transceiver, RFIC, Sensors, RFID, and related
`
`circuits. The products were Motorola flip phone, Razor, iDEN, etc. During this time
`
`period, I was involved with the design of RF front-end including LNA, variable gain
`
`LNA, active and passive mixers, analog front-end, AGC, analog and digital filters,
`
`and related areas in the wireless transceiver components. In these products, we used
`
`RSSI to vary the gain of RF front end circuits, including LNA and mixer, and the
`
`analog circuits including VGA. The circuits used RSSI to find the received signal
`
`strength and vary the circuit gain to increase linearity, reduce power consumption,
`
`and enhance the sensitivity of the transceivers. We used the RSSI and other signal
`
`processing methods to minimize and filter out jammers, interferes, and adjacent
`
`
`
`
`7
`
`AHM, Exh. 1003, p. 7
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`channel interferes. The RF IC’s developed were used in over 10’s of millions of
`
`Motorola phones from 1998–2002.
`
`12.
`
`I have also been a consultant on various projects with Intel (designing
`
`2G and 3G mobile telephone transceivers), Texas Instrument (developing 3G
`
`cellular and Bluetooth technologies), Sony Wireless (developing GPS technologies),
`
`Tektronics (designing wireless systems), and various other consultancies. During
`
`my work in industry, I have designed and contributed to the de-sign of many radio
`
`transceivers for commercial products, including designs for radio transceiver
`
`integrated circuits. Many of my designs are still in use today in products
`
`manufactured by the companies I have worked for, including Motorola, Intel, Sony,
`
`and more.
`
`13. From 2002–2010 I did consulting with Intel on the development of 2G
`
`and 3G RFIC circuits. From 2002–2005 I was consulting with SONY on the
`
`development of GPS RF receivers. I also did some work with Texas instruments on
`
`Bluetooth and GPS RF circuits.
`
`14. From 1997 to 2001, I was the standards technical analyst for Motorola.
`
`I studied the standards and attended the meetings of various standard setting
`
`committees, including ITU, IEEE, and ETSI related to DSL, OFDM, CDMA, 2G,
`
`and 3G systems. I am thus very familiar with the standards for several wireless
`
`communications technologies, including the standards for mobile telephones.
`8
`
`
`
`
`AHM, Exh. 1003, p. 8
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`I joined ASU in 2002 as a tenured full professor and Motorola endowed
`
`15.
`
`chair in RFIC and analog circuits. At ASU, I developed a new course at ASU on the
`
`design of wireless and RF transceivers. I thought that course for over 10 years. This
`
`course is EEE524, RFIC for Wire-less Transmitters, which is a graduate course at
`
`ASU. In this course, we cover design of LNA, Mixer, frequency synthesizer,
`
`Variable gain LAN, and other related topics. I have also taught courses on
`
`Electronics, VLSI, Analog IC design, RFIC, communications, and related areas.
`
`16.
`
`I have published over a hundred journal and conference papers covering
`
`topics such as communication systems, signal processing, radio frequency,
`
`integrated circuits (IC), filter design, and related areas. A list of my publications can
`
`be found in my CV as Ex[1004].
`
`17.
`
`I am an IEEE Fellow, a distinction and the highest level of IEEE
`
`membership awarded by the IEEE directors to recognize a high level of
`
`demonstrated extraordinary accomplishments. The IEEE is the Institute of Electrical
`
`and Electronics Engineers, the world’s largest association of technical professionals
`
`whose objectives include the educational and technical advancement of electrical
`
`and electronic engineering, telecommunications, computer engineering, and related
`
`disciplines. I am a member of the IEEE Circuits and Systems Society, IEEE Solid
`
`State Circuits Society, and IEEE Communication Society, IEEE RF and Microwave
`
`committees, IEEE Inter-national Symposium on Low Power Electronics and Design
`9
`
`
`
`
`AHM, Exh. 1003, p. 9
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`(ISLPED), IEEE Signal Processing Society, IEEE Fellow Selection Committee, and
`
`many other International Electrical Engineering societies.
`
`18.
`
`I was one of the key organizers to establish the IEEE Radio Frequency
`
`Integrated Circuits (RFIC) symposium in 1995, and have been on the executive
`
`committee, and technical committee of RFIC for the last 16 years. The RFIC
`
`Symposium has grown and is now the premier international symposium in the world
`
`where the latest RF circuits and components are presented. I have been involved in
`
`several international conferences in the areas of RF, Communication, RFID, Signal
`
`Processing, and IC design.
`
`19.
`
`I have received several awards including the Carter Best Teacher
`
`Award, the IEEE Darlington Award (which is given for the best technical paper on
`
`circuits and systems in the IEEE Circuits and Systems Society), and the Motorola
`
`10X Rapid Design Cycle Reduction Award.
`
`20.
`
`I have been one of the key organizers of the IEEE International
`
`Symposium on Low Power Electronics and Design (ISLPED) since 1995. I have
`
`published papers and organized sessions on techniques for low-power cellular
`
`phones at ISLPED. I have published a number of pa-pers on the design and
`
`development of low-power RF and wireless transceivers.
`
`
`
`
`10
`
`AHM, Exh. 1003, p. 10
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`III. TASK SUMMARY AND MATERIALS REVIEWED
`
`21.
`
`I have been asked to review the Challenged Patent and its prosecution
`
`history, to provide an understanding of the technology relevant to the Challenged
`
`Patent, to review certain prior-art references, and analyze whether or not those
`
`references disclose or teach limitations of claims from the Challenged Patent. The
`
`opinions stated in this declaration are from the perspective of a person of ordinary
`
`skill in the art (POSITA).
`
`
`
`
`
`
`
`
`11
`
`AHM, Exh. 1003, p. 11
`
`

`

`IV. LIST OF EXHIBITS
`
`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`22.
`
`In forming my opinions, I have reviewed at least the Challenged Patent,
`
`its prosecution history and referenced cited by the Examiner, the materials cited in
`
`the List of Exhibits, and the materials cited throughout my declaration.
`
`Description
`
`U.S. Patent No. 8,020,028
`
`File History for U.S. Patent No. 8,020,028
`
`Declaration of Dr. Sayfe Kiaei
`
`Curriculum Vitae of Dr. Sayfe Kiaei
`
`European Patent No. EP 1,049,347 A1 (“Pedersen”)
`
`U.S. Patent No. 6,559,773 B1 (“Berry”)
`
` RESERVED
`
` RESERVED
`
`Specification of the Bluetooth® System, Version 1.1, Vol. 1
`
`Specification of the Bluetooth® System, Version 1.1, Vol. 2
`
`Declaration of Sylvia Hall-Ellis
`
`U.S. Patent No. 7,146,260 (“’260 Patent”)
`
`U.S. Patent No. 6,629,033 (“’033 Patent”)
`
`U.S. Patent No. 7,778,739 (“’739 Patent”)
`
`MicroPairing Technologies LLC v. American Honda Motor Co, Inc,
`Order Re Scheduling Dates (Nov. 10, 2021), Dkt. 63.
`
`12
`
`Exhibit
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`1013
`1014
`1015
`
`
`
`
`AHM, Exh. 1003, p. 12
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`Description
`
`MicroPairing Technologies LLC v. American Honda Motor Co, Inc,
`Joint Claim Construction and Prehearing Statement Pursuant to
`N.D. Cal. P.L.R. 4-3 (May 9, 2022).
`
`Eagle Harbor Holdings, LLC v. Ford Motor Company, Order of the
`Special Master Regarding Claim Construction, 3:11-cv-05503, Dkt.
`165 (July 29, 2013).
`
`Eagle Harbor Holdings, LLC v. Ford Motor Company, Order of the
`Special Master Regarding Claim Construction, 3:11-cv-05503, Dkt.
`184 (November 13, 2013)
`
`Eagle Harbor Holdings, LLC v. Ford Motor Company, Order of the
`Special Master Regarding “Download” and “Move”, 3:11-cv-
`05503, Dkt. 333 (August 8, 2014)
`
`Eagle Harbor Holdings, LLC v. Ford Motor Company, Order of the
`Special Master Regarding Claim Construction, 3:11-cv-05503, Dkt.
`345 (September 22, 2014)
`
`MicroPairing Technologies LLC v. Toyota Motor Manufacturing
`Texas, Inc., Order Regarding Claim Construction 5:21-cv-00940
`(January 5, 2022)
`
`MicroPairing Technologies LLC v. General Motors LLC, Order
`Regarding Claim Constructions, 6:21-cv-00761-ADA (May 13,
`2022)
`
`AMI-C Architecture Specification – Release 1 (“SPEC 1001”)
`
`AMI-C Functional Requirements – Release 1 (“SPEC 1002”)
`
`AMI-C Use Cases – Release 1 (“SPEC 1003”)
`
`AMI-C Vehicle Interface Specification – Release 1 (“SPEC 3001”)
`
`AMI-C Common Message Set – Release 1 (“SPEC 3002”)
`
`13
`
`Exhibit
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`1024
`1025
`1026
`1027
`
`
`
`
`AHM, Exh. 1003, p. 13
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`Description
`
`AMI-C OEM to IDB-C Gateway Specification – Release 1 (“SPEC
`3003”)
`
`AMI-C Physical Specification – Release 1 (“SPEC 4001”)
`
`AMI-C Technical Glossary – Release 1 (“REF DOC 6001”)
`
`File History of U.S. Patent No. 7,778,739
`
`Declaration of Don Ingersoll
`
`Declaration of Nathaniel E. Frank-White (Internet Archive)
`
`Exhibit
`1028
`
`1029
`1030
`1031
`1032
`1033
`
`
`
`23. Other than the prosecution history, Internet Archive declaration, and
`
`Declaration of Sylvia Halls-Ellis, all citations to exhibits reference original page
`
`numbers found in the underlying document, and all emphases have been added.
`
`V.
`
`SUMMARY OF CONCLUSIONS AND GROUNDS FOR
`CHALLENGE
`
`24. After reviewing the materials identified in the List of Exhibits, I have
`
`concluded that each of claims 18, 20, 21, and 23 (“Challenged Claims”) of the ’028
`
`Patent would have been obvious to a person of ordinary skill in the art, based on the
`
`following grounds.
`
`Ground
`1A
`
`’028 Patent Claims
`18, 20, 21, and 23
`
`18, 20, 21, and 23
`
`18, 20, 21, and 23
`
`1B
`
`2A
`
`
`
`
`Combination of Prior-Art References
`AMI-C in view of Berry and Bluetooth render
`obvious claims 18, 20, 21, and 23
`AMI-C in view of Berry, Bluetooth, and Pedersen
`render obvious claims 18, 20, 21, and 23
`Berry in view of Bluetooth render obvious claims
`18, 20, 21, and 23
`14
`
`AHM, Exh. 1003, p. 14
`
`

`

`Ground
`2B
`
`’028 Patent Claims
`18, 20, 21, and 23
`
`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`Combination of Prior-Art References
`Berry in view of Bluetooth and Pedersen render
`obvious claims 18, 20, 21, and 23
`
`VI. LEGAL STANDARDS
`A. LEVEL OF ORDINARY SKILL IN THE ART
`
`
`
`25. When interpreting a patent, I understand that it is important to identify
`
`the relevant art pertaining to the patent as well as the level of ordinary skill in that
`
`art at the time of the claimed invention. The “art” is the field of technology to which
`
`the patent is related.
`
`26.
`
`I have been instructed by counsel that the person of ordinary skill in the
`
`art (“POSITA”) is a hypothetical person who is presumed to know the relevant prior
`
`art. I understand that the actual inventor’s skill is not determinative of the level of
`
`ordinary skill. I further understand that the factors that may be considered in
`
`determining the level of skill include: the types of problems encountered in the art;
`
`prior art solutions to those problems; rapidity with which innovations are made;
`
`sophistication of the technology; and educational level of active workers in the field.
`
`I understand that not all such factors may be present in every case, and one or more
`
`of them may predominate.
`
`27. A POSITA as of the claimed priority date would have had a bachelor’s
`
`degree in electrical or computer engineering, or a closely related field, and two years
`
`of work experience with computing systems, connected devices, or related fields
`15
`
`
`
`
`AHM, Exh. 1003, p. 15
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`(e.g., applications for control devices). A person with less or different education but
`
`more relevant practical experience, or vice versa, may also meet this standard. The
`
`relevant and prior art also evidences the level of skill in the art.
`
`B.
`
`28.
`
`LEGAL STANDARD FOR CLAIM CONSTRUCTION
`
`I understand that the first step in determining whether a patent claim
`
`would have been anticipated or obvious is to ascertain how a POSITA would have
`
`understood the claim terms.
`
`29.
`
`I have been instructed by counsel on the law regarding claim
`
`construction and patent claims, and I understand that a patent may include two types
`
`of claims: independent claims and dependent claims. An independent claim stands
`
`alone and includes only the limitations it recites. A dependent claim can depend
`
`from an independent claim, or it can further depend from another dependent claim.
`
`I understand that a dependent claim includes all the limitations that it recites, in
`
`addition to all the limitations recited in the claim(s) from which it depends.
`
`30.
`
`It is my understanding that in proceedings before the USPTO, the
`
`claims of a patent are to be construed under what is referred to as the “Phillips
`
`standard.” I understand that this means that claim terms of a patent are given the
`
`meaning the terms would have to a POSITA, in view of the description provided in
`
`the patent itself and the patent’s file history.
`
`
`
`
`16
`
`AHM, Exh. 1003, p. 16
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`I understand that to determine how a person of ordinary skill would
`
`31.
`
`understand a claim term, one should look to those sources available that show what
`
`a person of skill in the art would have understood the disputed claim language to
`
`mean. I understand that, in construing a claim term, one looks primarily to the
`
`intrinsic patent evidence, including the words of the claims themselves, the
`
`remainder of the patent, and the patent’s prosecution history. I understand that
`
`extrinsic evidence, which is evidence external to the patent and the prosecution
`
`history, may also be useful in interpreting patent claims when the intrinsic evidence
`
`itself is insufficient.
`
`32.
`
`I understand that words or terms should be given their ordinary and
`
`accepted meaning unless it appears that the inventors were using them to mean
`
`something else. In making this determination, the claims, the remainder of the
`
`patent, and the prosecution history are of paramount importance. Additionally, the
`
`patent and its prosecution history must be consulted to confirm whether the patentee
`
`has acted as its own lexicographer (i.e., provided its own special meaning to any
`
`disputed terms), or intentionally disclaimed, disavowed, or surrendered any claim
`
`scope.
`
`33.
`
`In comparing the claims of the Challenged Patent to the prior art, I have
`
`considered the Challenged Patent and its file history in light of the understanding of
`
`a person of skill at the time of the alleged invention.
`17
`
`
`
`
`AHM, Exh. 1003, p. 17
`
`

`

`C. OBVIOUSNESS
`
`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`
`34.
`
`I understand that the prior art may render a patent claim “obvious.” I
`
`understand that two or more prior art references (e.g., prior art articles, patents, or
`
`publications) that each disclose fewer than all elements of a patent claim may
`
`nevertheless be combined to render a patent claim obvious if the combination of the
`
`prior art collectively discloses all elements of the claim and one of ordinary skill in
`
`the art at the time would have been motivated to combine the prior art in such a way.
`
`I understand that this motivation to combine need not be explicit in any of the prior
`
`art, but may be inferred from the knowledge of one of ordinary skill in the art at the
`
`time the patent was filed. I also understand that one of ordinary skill in the art is not
`
`an automaton, but is a person having ordinary creativity. I further understand that
`
`one or more prior art references, articles, patents or publications that disclose fewer
`
`than all of the elements of a patent claim may render a patent claim obvious if
`
`including the missing element would have been obvious to one of skill in the art
`
`(e.g., the missing element represents only an insubstantial difference over the prior
`
`art or a reconfiguration of a known system).
`
`35.
`
`I understand that under the doctrine of obviousness, a claim may be
`
`invalid if the differences between the invention 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 POSITA to which the subject matter pertains.
`
`
`
`
`18
`
`AHM, Exh. 1003, p. 18
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`36. To assess obviousness, I understand that I am to consider the scope and
`
`content of the prior art, the differences between the prior art and the claim, the level
`
`of ordinary skill in the art, and any secondary considerations to the extent they exist.
`
`37.
`
`I understand that any evidence of secondary indicia of non-obviousness
`
`should be considered when evaluating whether a claimed invention would have been
`
`obvious to one of ordinary skill at the time of invention. These secondary indicia of
`
`non-obviousness may include, for example:
`
` a long felt but unmet need in the prior art that was satisfied by the
`claimed invention;
`
` commercial success of processes claimed by the patent;
`
` unexpected results achieved by the invention;
`
` praise of the invention by others skilled in the art;
`
` the taking of licenses under the patent by others; and
`
` deliberate copying of the invention.
`
`38.
`
`I understand that there must be a nexus between any such secondary
`
`indicia and the claimed invention.
`
`39.
`
`It is also my understanding that there are additional considerations that
`
`may be used as further guidance as to when the above factors will result in a finding
`
`that a claim is obvious, including the following:
`
` the claimed subject matter is simply a combination of prior art elements
`according to known methods to yield predictable results;
`
`
`
`
`19
`
`AHM, Exh. 1003, p. 19
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
` the claimed subject matter is a simple substitution of one known element
`for another to obtain predictable results;
`
` the claimed subject matter uses known techniques to improve similar
`devices or methods in the same way;
`
` the claimed subject matter applies a known technique to a known device
`or method that is ready for improvement to yield predictable results;
`
` the claimed subject matter would have been “obvious to try” choosing
`from a finite number of identified, predictable solutions, with a
`reasonable expectation of success;
`
` there is known work in one field of endeavor that may prompt variations
`of it for use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to a POSITA;
`
` there existed at the time of the invention a known problem for which
`there was an obvious solution encompassed by the patent’s claims; and
`
` there is some teaching, suggestion, or motivation in the prior art that
`would have led a POSITA to modify the prior art reference or to combine
`prior art reference teachings to arrive at the claimed subject matter.
`
`40. Finally, I understand that a claim may be deemed invalid for
`
`obviousness in light of a single prior art reference, without the need to combine
`
`references, if the elements of the claim that are not found in the reference can be
`
`supplied by the knowledge or common sense of one of ordinary skill in the relevant
`
`art.
`
`VII.
`
`TECHNOLOGY BACKGROUND
`
`41.
`
` JINI (Java) technology is utilized to publish and share services between
`
`devices. JINI proves a uniform platform for seamless interaction between devices
`20
`
`
`
`
`AHM, Exh. 1003, p. 20
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`and services in a network. A wide variety of devices, including Bluetooth devices,
`
`are able to join a JINI system and offer services to other units automatically.
`
`42.
`
`JINI technology provides the capability for an application to discover,
`
`join, and download services from a JINI Lookup Service (“LUS”) The LUS contains
`
`a list of available services provided by the network. The LUS can be included in an
`
`ad-hoc Bluetooth Piconet network comprising two or more Bluetooth devices and
`
`make services available to the plurality of devices in the network. A device can join
`
`a Bluetooth Piconet network and share its services to the network with a JINI LUS
`
`using a “discovery and join” protocol.
`
`43.
`
`JINI LUS is part of a Java-technology-centered distributed software
`
`system that includes Java software code. JINI LUS identifies devices and enables
`
`the devices to provide services to each other in the ad-hoc Bluetooth Piconet
`
`network.
`
`44. The Bluetooth standard defines a set of wireless communication
`
`protocols at 2.4 GHZ to form wireless short range networks. Bluetooth is
`
`incorporated in a wide variety of devices, including PDAs, sensors, laptops, and
`
`wireless devices, for example.
`
`45.
`
`JINI and Bluetooth both address ad-hoc short-range networking and
`
`enable capabilities such as discovery,
`
`interoperability,
`
`robustness, and
`
`heterogeneity. The Bluetooth standard addresses the communication issues that
`21
`
`
`
`
`AHM, Exh. 1003, p. 21
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`arise from the physical through to the application layer. JINI works on the Internet
`
`Protocol (“IP") communication infrastructure. JINI and Bluetooth thus are not
`
`competing technologies, and on the contrary, can coexist and benefit from each other
`
`in heterogeneous ad-hoc networking environments.
`
`VIII. OVERVIEW OF THE CHALLENGED PATENT
`
`46.
`
`I have reviewed U.S. Patent No. 8,020,028 (“the ’028 Patent”), which
`
`is entitled “Application management system for mobile devices.” Ex. 1001. I have
`
`also reviewed U.S. Patent Nos. 7,146,260 (“the ’260 Patent”) and 6,629,033 (“the
`
`’033 Patent”), which are incorporated by reference in their entireties into the ’028
`
`Patent.
`
`A.
`
`47.
`
`PROSECUTION HISTORY OF THE ’028 PATENT
`
`I have reviewed the file history of the ’028 patent. I understand that
`
`what ultimately issued as the ’028 Patent was filed on Aug. 5, 2010 as Application
`
`12/851,488.
`
`48.
`
`I understand that on Apr. 22, 2011, the Applicant submitted preliminary
`
`amendments to the title, abstract, and claims 1, 2, 14, and 18. Ex. 1002 (’028 Patent
`
`File History) at 182-188. I further understand that the Examiner issued a Notice of
`
`Allowance on May 12, 2011, and that on July 6, 2011, the Applicant submitted a
`
`post-allowance amendment with minor amendments to the claims. Ex. 1002 (’028
`
`Patent File History) at-125, 104-105.
`
`
`
`
`22
`
`AHM, Exh. 1003, p. 22
`
`

`

`Declaration of Dr. Sayfe Kiaei
`IPR of USP 8,020,028
`IX. SUMMARY OF CLAIMED SUBJECT MATTER
`
`49. The ’028 patent is directed toward a secure real-time operating system
`
`based on Java