IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of: Marcus Da Silva et al.
`U.S. Patent No.:
`10,715,235 Attorney Docket No.: 50095-0047IP2
`Issue Date:
`July 14, 2020
`Appl. Serial No.: 15/495,539
`Filing Date:
`April 24, 2017
`Title:
`DIRECTED WIRELESS COMMUNICATION
`
`DECLARATION OF DR. ROBERT AKL
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`By: __________________________
`
`Dr. Robert Akl, D.Sc.
`
`
`
`
`June 16, 2022
`Date: __________________________
`
`
`
`1
`
`APPLE ET AL. 1026
`
`

`

` 
`
`Table of Contents
`INTRODUCTION ........................................................................................... 7 
`I. 
`QUALIFICATIONS AND BACKGROUND INFORMATION .................... 8 
`II. 
`III.  MATERIALS RELIED UPON ..................................................................... 14 
`IV.  OVERVIEW OF CONCLUSIONS FORMED ............................................. 16 
`V. 
`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 17 
`VI.  LEGAL STANDARDS ................................................................................. 18 
`Terminology ........................................................................................ 18 
` 
`Legal Standards ................................................................................... 18 
`1. 
`Anticipation ............................................................................... 19 
`2.   Obviousness .............................................................................. 19 
`VII.  THE ’235 PATENT ....................................................................................... 23 
`  Overview of the ’235 Patent ................................................................ 23 
`Relevant History of the ’235 Patent .................................................... 29 
` 
`VIII.  OVERVIEW AND COMBINATIONS OF PRIOR ART
`REFERENCES .............................................................................................. 29 
`  Overview of Saunders ......................................................................... 29 
`Overview of Hottinen .......................................................................... 31 
` 
`Combination of Saunders and Hottinen .............................................. 34 
` 
`  Overview of Shull ............................................................................... 39 
`Combination of Saunders, Hottinen, and Shull ................................... 40 
` 
`IX.  THE PRIOR ART REFERENCES RENDERS CLAIMS 1-7 AND
`15-16 OF THE ’235 PATENT UNPATENTABLE ...................................... 43 
`Claim 1 ................................................................................................ 43 
` 
`[1pre] A receiver for use in a wireless communications system,
`the receiver comprising: .............................................................. 43 
`[1a] an antenna, wherein the antenna comprises a first antenna
`element and a second antenna element; ...................................... 44 
`[1b] a transceiver operatively coupled to the antenna and
`configured to transmit and receive electromagnetic signals
`using the antenna; and ................................................................. 47 
`
`2
`
`

`

`[1c] a processor operatively coupled to the transceiver, the
`processor configured to: .............................................................. 51 
`[1c-1] receive a first signal transmission from a remote station
`via the first antenna element and a second signal
`transmission from the remote station via the second
`antenna element simultaneously; ................................................ 52 
`[1c-2] determine first signal information for the first signal
`transmission; ............................................................................... 58 
`[1c-3] determine second signal information for the second
`signal transmission, wherein the second signal information
`is different than the first signal information; .............................. 60 
`[1c-4] determine a set of weighting values based on the first
`signal information and the second signal information,
`wherein the set of weighting values is configured to be
`used by the transceiver to construct one or more beam-
`formed transmission signals; ....................................................... 60 
`[1c-5] cause the transceiver to transmit a third signal to the
`remote station via the antenna, the third signal comprising
`content based on the set of weighting values. ............................. 62 
`Claim 2 ................................................................................................ 63 
`[2] The receiver as recited in claim 1, wherein the first signal
`transmission and the second signal transmission comprise
`electromagnetic signals comprising one or more
`transmission peaks and one or more transmission nulls. ............ 63 
`Claim 3 ................................................................................................ 65 
`[3] The receiver as recited in claim 2, wherein the first signal
`transmission and the second signal transmission are
`directional transmissions. ............................................................ 65 
`Claim 4 ................................................................................................ 65 
`[4] The receiver as recited in claim 1, wherein the content
`comprises data configured to be used by the remote station
`to modify the placement of one or more transmission
`peaks and one or more transmission nulls in a subsequent
`signal transmission. ..................................................................... 65 
`Claim 5 ................................................................................................ 66 
`
` 
`
` 
`
` 
`
` 
`
`3
`
`

`

` 
`
`[5] The receiver as recited in claim 4, wherein the set of
`weighting values is further based on one or more of: a
`transmit power level, a data transmit rate, an antenna
`direction, quality of service data, or timing data. ....................... 66 
`Claim 6 ................................................................................................ 67 
`[6pre] A receiver for use in a wireless communications system,
`the receiver comprising: .............................................................. 67 
`[6a] an antenna; ................................................................................... 67 
`[6b] a transceiver operatively coupled to the antenna and
`configured to transmit and receive electromagnetic signals
`using the antenna; and ................................................................. 67 
`[6c] a processor operatively coupled to the transceiver, the
`processor configured to: .............................................................. 67 
`[6c-1] receive a first signal transmission from a remote station
`via the antenna and a second signal transmission from the
`remote station via the antenna simultaneously; .......................... 67 
`[6c-2] determine first signal information for the first signal
`transmission; ............................................................................... 68 
`[6c-3] determine second signal information for the second
`signal transmission, wherein the second signal information
`is different than the first signal information; .............................. 68 
`[6c-4] determine a set of weighting values based on the first
`signal information and the second signal information,
`wherein the set of weighting values is configured to be
`used by the transceiver construct one or more beam-
`formed transmission signals; ....................................................... 68 
`[6c-5] cause the transceiver to generate a third signal
`comprising content based on the set of weighting values; ......... 68 
`[6c-6] determine a plurality of signal strength indications for
`the first signal transmission; ....................................................... 68 
`[6c-7] determine a first signal strength average based on the
`plurality of signal strength indications for the first signal
`transmission; ............................................................................... 69 
`[6c-8] determine a plurality of signal strength indications for
`the second signal transmission; ................................................... 70 
`
`4
`
`

`

`[6c-9] determine a second signal strength average based on the
`plurality of signal strength indications for the second
`signal transmission; and .............................................................. 73 
`[6c-10] cause the transceiver to generate a fourth signal based
`on the first signal strength average and the second signal
`strength average. ......................................................................... 73 
`Claim 7 ................................................................................................ 74 
`[7] The receiver as recited in claim 6, wherein the processor is
`further configured to: cause the transceiver to transmit the
`fourth signal to the remote station via the antenna. .................... 74 
`Claim 15 .............................................................................................. 74 
`[15pre] An apparatus for use in a wireless communications
`system, the apparatus comprising: .............................................. 74 
`[15a] an antenna; ................................................................................. 74 
`[15b] a transceiver operatively coupled to the antenna; and ............... 74 
`[15c] a processor operatively coupled to the transceiver, the
`processor configured to: .............................................................. 74 
`[15c-1] receive a first signal transmission from a remote station
`via the antenna, ........................................................................... 74 
`[15c-2] the first signal transmission comprising first signal
`information, wherein the first signal information
`comprises one or more of: a transmit power level, a data
`transmit rate, an antenna direction, quality of service data,
`or timing data; ............................................................................. 74 
`[15c-3] receive a second signal transmission from the remote
`station via the antenna, the second signal transmission
`comprising second signal information; ....................................... 75 
`[15c-4] determine a set of weighting values based on the first
`signal information and the second signal information,
`wherein the set of weighting values is configured to be
`used by the transceiver to construct one or more beam-
`formed transmission signals; ....................................................... 75 
`[15c-5] cause the transceiver to generate a third signal
`comprising content based on the set of weighting values. .......... 75 
`Claim 16 .............................................................................................. 75 
`
` 
`
` 
`
` 
`
`5
`
`

`

`[16] The apparatus as recited in claim 15, wherein the first
`signal transmission and the second signal transmission
`comprise electromagnetic signals comprising one or more
`transmission peaks and one or more transmission nulls. ............ 75 
`CONCLUSION .............................................................................................. 75 
`
`
`X. 
`
`
`
`
`
`6
`
`

`

`I.
`INTRODUCTION
`1. My name is Robert Akl. I have been retained by counsel as an expert
`
`witness to provide assistance regarding U.S. Patent No. 10,715,235 (“the ’235
`
`Patent”). It is my understanding that Apple Inc. and HP Inc. (collectively
`
`“Petitioners”) are submitting an IPR petition challenging certain claims of the ’235
`
`Patent. Specifically, I have been asked to review claims 1-7, 15, and 16 of the ’235
`
`Patent (the “Challenged Claims”) in view of prior art references, and the
`
`understanding of a person of ordinary skill in the art (“POSITA”) as it relates to the
`
`’235 Patent. I have personal knowledge of the facts and opinions set forth in this
`
`declaration and believe them to be true. If called upon to do so, I would testify
`
`competently thereto.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study, the substance of
`
`my opinions, or the outcome of any proceeding involving the challenged claims. I
`
`have no financial interest in the outcome of this matter or on the pending litigation
`
`between Petitioners and Patent Owner.
`
`3.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of wireless
`
`communications and electrical engineering; my experience in teaching those
`
`7
`
`

`

`subjects; and my experience in working with others involved in those fields. In
`
`addition, I have analyzed various publications and materials, in addition to other
`
`materials I cite in my declaration.
`
`4. My opinions, as explained below, are based on my education,
`
`experience, and expertise in the fields relating to the ’235 Patent. Unless otherwise
`
`stated, my testimony below refers to the knowledge of a POSITA as of the earliest
`
`priority date of the ’235 Patent, or before. Any figures that appear within this
`
`document have been prepared with the assistance of Counsel and reflect my
`
`understanding of the ’235 Patent, and the prior art discussed below.
`
`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 herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION
`6.
`I am an expert in the field of wireless communication systems. I have
`
`studied, taught, practiced, and researched this field for over 27 years. I have
`
`summarized in this section my educational background, work experience, and other
`
`relevant qualifications. Attached hereto as Appendix A, is a true and correct copy
`
`of my curriculum vitae describing my background and experience.
`
`8
`
`

`

`7.
`
`I earned my Bachelor of Science degrees in Electrical Engineering and
`
`Computer Science summa cum laude with a grade point average of 4.0/4.0 and a
`
`ranking of first in my undergraduate class from Washington University in St. Louis
`
`in 1994. In 1996, I earned my Master of Science degree in Electrical Engineering
`
`from Washington University in St. Louis with a grade point average of 4.0/4.0. I
`
`earned my Doctor of Science in Electrical Engineering from Washington University
`
`in St. Louis in 2000, again with a grade point average of 4.0/4.0, with my dissertation
`
`being on “Cell Design to Maximize Capacity in Cellular Code Division Multiple
`
`Access (CDMA) Networks.”
`
`8. While a graduate student, from 1996 through 2000, I worked at
`
`MinMax Corporation in St. Louis, where I designed software packages that provided
`
`tools to flexibly allocate capacity in a CDMA communications network and
`
`maximize the number of subscribers. I also analyzed and simulated different audio
`
`compression schemes. I also validated the hardware architecture for an
`
`Asynchronous Transfer Mode (ATM) switch capable of channel group switching, as
`
`well as performed logical and timing simulations, and developed the hardware
`
`architecture for the ATM switch. I also worked with Teleware Corporation in Seoul,
`
`South Korea, where I designed and developed algorithms that were commercially
`
`deployed in a software package suite for analyzing the capacity in a CDMA network
`
`implementing the IS-95 standard to maximize the number of subscribers.
`
`9
`
`

`

`9.
`
`After obtaining my Doctor of Science degree, I worked as a Senior
`
`Systems Engineer at Comspace Corporation from October of 2000 to December of
`
`2001. At Comspace, I designed and developed advanced data coding and
`
`modulation methods for improving the reliability and increasing the available data
`
`rates for cellular communications. I coded and simulated different encoding
`
`schemes (including Turbo coding, Viterbi decoding, trellis coded modulation, and
`
`Reed-Muller codes) and modulation techniques using amplitude and phase
`
`characteristics and multi-level star constellations. This work further entailed the
`
`optimization of soft decision parameters and interleavers for additive white Gaussian
`
`and Rayleigh faded channels. In addition, I also extended the control and trunking
`
`of Logic Trunked Radio (LTR) to include one-to-one and one-to-many voice and
`
`data messaging.
`
`10.
`
`In January of 2002, I joined the faculty of the University of New
`
`Orleans in Louisiana as an Assistant Professor in the Department of Electrical
`
`Engineering. While in this position, I designed and taught two new courses called
`
`“Computer Systems Design I and II.” I also developed a Computer Engineering
`
`Curriculum with a strong hardware-design emphasis, formed a wireless research
`
`group, and advised graduate and undergraduate students.
`
`11.
`
`In September of 2002, I received an appointment as an Assistant
`
`Professor in the Department of Computer Science and Engineering at the University
`
`10
`
`

`

`of North Texas (UNT), in Denton, Texas. In May of 2008, I became a tenured
`
`Associate Professor in the Department of Computer Science and Engineering. As a
`
`faculty member, I have taught courses and directed research in networking and
`
`telecommunications, including 2G, 3G, 4G, 5G, CDMA/WCDMA, GPS, GSM,
`
`UMTS, LTE, ad-hoc networks, antenna design and beamforming, Bluetooth, call
`
`admission control, channel coding, communication interfaces and standards,
`
`compression, computer architecture, MIMO systems, multi-cell network
`
`optimization, network security, packet-networks, telephony, VoIP, Wi-Fi (802.11),
`
`802.15.4, Zigbee, wireless communication, and wireless sensors. I am also the
`
`director of the Wireless Sensor Lab (“WiSL”) at UNT. I am a member of the Center
`
`for Information and Cyber Security (CICS). It is the only program in the U.S. to be
`
`federally certified by the National Security Agency as a Center of Academic
`
`Excellence in Information Assurance Education and Research and Cyber Defense
`
`Research. I was also a member of the NSF Net-Centric & Cloud Software &
`
`Systems: Industry-University Cooperative Research Center (I/UCRC). Several of
`
`my research projects are funded by industry. In January of 2015, I was appointed to
`
`Associate Chair of Graduate Studies in the Department of Computer Science and
`
`Engineering.
`
`12.
`
`In addition to advising and mentoring students at UNT, I was asked to
`
`join the faculty of the University of Arkansas in Little Rock as an Adjunct Assistant
`
`11
`
`

`

`Professor from 2004 to 2008 in order to supervise the research of two Ph.D. graduate
`
`students who were doing research in wireless communications. At UNT, I have
`
`advised and supervised more than 250 undergraduate and graduate students, several
`
`of whom received a master’s or doctorate degree under my guidance.
`
`13. Further, since 2005, I have received over a million dollars in funding
`
`from the State of Texas, Texas Higher Education Coordination Board, the National
`
`Science Foundation, and industry to design and conduct robotics, video, and mobile
`
`gaming (e.g., Xbox, PC, mobile device) programming summer camps for middle
`
`and high school students at UNT. By using video and mobile gaming as the
`
`backdrop, participants have learned coding and programming principles and
`
`developed an understanding of the role of physics and mathematics in video game
`
`design.
`
`14.
`
`In addition to my academic work, I have remained active in the
`
`communication industry through my consulting work. In 2002, I consulted for
`
`Input/Output Inc. and designed and implemented algorithms for optimizing the
`
`frequency selection process used by sonar for scanning the bottom of the ocean. In
`
`2004, I worked with Allegiant Integrated Solutions in Ft. Worth, Texas, to design
`
`and develop an integrated set of tools for fast deployment of wireless networks, using
`
`the 802.11 standard. Among other features, these tools optimize the placement of
`
`Access Points and determine their respective channel allocations to minimize
`
`12
`
`

`

`interference and maximize capacity. I also assisted the Collin County Sheriff’s
`
`Office (Texas) in a double homicide investigation, analyzing cellular record data to
`
`determine user location.
`
`15.
`
`I have authored and co-authored over 100 journal publications,
`
`conference proceedings, technical papers, book chapters, and technical presentations
`
`in a broad array of communications-related technologies, including networking and
`
`wireless communication. I have also developed and taught over 100 courses related
`
`to communications and computer systems, including several courses on signals and
`
`systems, 4G/LTE and 5G/NR, OFDM, VoIP, Wi-Fi (802.11), 802.15.4, Zigbee,
`
`wireless communication, antenna design and beamforming, communications
`
`systems, communication interfaces and standards, sensor networks, source coding
`
`and compression, network security, computer systems design, game and app design,
`
`and computer architecture. These courses have included introductory courses on
`
`communication networks and signals and systems, as well as more advanced courses
`
`on wireless communications. A complete list of my publications and the courses I
`
`have developed and/or taught is also contained in my curriculum vitae.
`
`16. My professional affiliations include services in various professional
`
`organizations and serving as a reviewer for a number of technical publications,
`
`journals, and conferences. I have also received a number of awards and recognitions,
`
`including the IEEE Professionalism Award (2008), UNT College of Engineering
`
`13
`
`

`

`Outstanding Teacher Award (2008), and Tech Titan of the Future (2010) among
`
`others, which are listed in my curriculum vitae.
`
`17.
`
`I have also served as an expert in certain legal proceedings. A list of
`
`cases in which I have testified at trial, hearing, or by deposition (including those
`
`during the past five years) is provided in my curriculum vitae. Over the years, I have
`
`been retained by both patent owners and petitioners.
`
`III. MATERIALS RELIED UPON
`18.
`I have reviewed the ’235 Patent (EX-1001) and relevant excerpts of the
`
`prosecution history of the ’235 Patent (EX-1002). I have also reviewed the
`
`following references:
`
`Prior Art References
`
`U.S. Patent No. 6,006,077 (“Shull” or EX-1007)
`
`U.S. Provisional Application No. 62/423,660 (“’660 Provisional
`
`Application” or EX-1009)
`
`U.S. Patent No. 6,879,823 (“Raaf” or EX-1010)
`
`PCT Application Publication No. WO 02/47286 (“Hottinen” or
`
`EX-1011)
`
`U.S. Patent No. 6,662,024 (“Walton” or EX-1012)
`
`U.S. Patent No. 6,208,863 (“Salonaho” or EX-1013)
`
`14
`
`

`

`Prior Art References
`
`Andrea Goldsmith, Wireless Communications, Cambridge
`
`University Press, 2005 (“Goldsmith” or EX-1017)
`
`U.S. Patent No. 6,031,877 (“Saunders” or EX-1027)
`
`U.S. Patent No. 6,473,036 (“Procotor” or EX-1028)
`
`Zhi Ning Chen et al., “Antennas for Base Stations in Wireless
`
`Communications,” McGraw Hill, 2009 (“Chen” or EX-1029)
`
`Houman Zarrinkoub, “Understanding LTE with MATLAB®,”
`
`Wiley, 2014 (“Zarrinkoub” or EX-1041)
`
`
`
`19.
`
`I have also reviewed various supporting references and other
`
`documentation as further noted in my opinions below.
`
`20.
`
`I was informed by counsel that I should consider these materials
`
`through the lens of a POSITA related to the ’235 Patent at the time of the earliest
`
`priority date of the ’235 Patent, and I have done so during my review of these
`
`materials. The ’235 Patent was filed on April 24, 2017 (“the ’235 Patent Filing
`
`Date”). EX-1001, cover. The ’235 Patent is a part of a family of patent applications
`
`claiming priority to U.S. Patent Apl. No. 13/855,410, filed on April 2, 2013 and now
`
`issued as U.S. Patent No. 9,462,589. Id., 2. Apl. No. 13/855,410 is a divisional of
`
`U.S. Patent Apl. No. 10/700,329, filed on November 3, 2003, which further claims
`
`priority from U.S. Provisional Patent Apl. No. 60/423,660, filed on November 4,
`
`15
`
`

`

`2002. Id. Counsel has indicated that I should use November 3, 2003 as the earliest
`
`priority date of the ’235 Patent.1 I have therefore used November 3, 2003 as the date
`
`for my analysis below and the date for determining a POSITA. Even if the
`
`November 4, 2002 or February 1, 2002 dates were to be used (which I understand
`
`from Counsel that Patent Owner may attempt to establish as the priority date), my
`
`opinions as to the obviousness of the claims would not change.
`
`21.
`
`In the cited references, all emphasis is added unless otherwise noted.
`
`IV. OVERVIEW OF CONCLUSIONS FORMED
`22. This declaration explains the conclusions that I have formed based on
`
`my analysis. I have summarized my conclusions below:
`
` Claims 1-5, 15, and 16 are obvious over Saunders in view of Hottinen;
`
`and
`
` Claims 6 and 7 are obvious over Saunders in view of Hottinen and
`
`Shull.
`
`23.
`
`In support of these conclusions, I provide an overview of the references
`
`in Section VIII and more detailed comments regarding the obviousness of claims 1-
`
`7, 15, and 16 (“the Challenged Claims”) of the ’235 Patent in Section IX.
`
`
`
`1 As I explain below in Section VII.B, Apl. No. 60/423,660 does not support the
`
`Challenged Claims.
`
`16
`
`

`

`V. LEVEL OF ORDINARY SKILL IN THE ART
`24.
`In rendering the opinions set forth in this declaration, I was asked to
`
`consider the patent claims and the prior art through the eyes of a POSITA at the time
`
`of the alleged invention, which I understand is asserted to be the earliest priority date
`
`(November 3, 2003) of the ’235 Patent. I understand that the factors considered in
`
`determining the ordinary level of skill in a field of art include the level of education
`
`and experience of persons working in the field; the types of problems encountered
`
`in the field; the teachings of the prior art, and the sophistication of the technology at
`
`the time of the alleged invention. I understand that a POSITA is not a specific real
`
`individual, but rather is a hypothetical individual having the qualities reflected by
`
`the factors above. I understand that a POSITA would also have knowledge from the
`
`teachings of the prior art, including the art cited below.
`
`25. Taking these factors into consideration, on or before November 3, 2003,
`
`a POSITA of the ’235 Patent would have had a Bachelor’s degree in electrical
`
`engineering or a related field, in combination with training or at least two years of
`
`related work experience in wireless communication systems, or the equivalent.
`
`Alternatively, the person could have also had a Master’s or Doctorate degree in
`
`electrical engineering with a year of related work experience in wireless
`
`communication systems.
`
`17
`
`

`

`26. Before November 3, 2003, my level of skill in the art was at least that
`
`of a POSITA. I am qualified to provide opinions concerning what a POSITA would
`
`have known and understood at that time, and my analysis and conclusions herein are
`
`from the perspective of a POSITA as of that date.
`
`VI. LEGAL STANDARDS
` Terminology
`27.
`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 a POSITA. 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 a POSITA at the time of the invention was made
`
`(not today). I have been informed by Counsel that I should use ’235 Patent Filing
`
`Date as the point in time for claim interpretation purposes with respect to this
`
`declaration.
`
`
`28.
`
`Legal Standards
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as being
`
`anticipated or obvious.
`
`18
`
`

`

`29.
`
`I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a POSITA at the time of the invention, and
`
`that this viewpoint prevents one from using his or her own insight or hindsight in
`
`deciding whether a claim is anticipated or rendered obvious.
`
`Anticipation
`1.
`I understand that patents or printed publications that qualify as prior art
`
`30.
`
`can be used to invalidate a patent claim as anticipated or as obvious.
`
`31.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a limitation-
`
`by-limitation basis.
`
`32.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all limitations of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`2. Obviousness
`I understand that even if a patent is not anticipated, it is still invalid if
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`33.
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`the differences between the claimed subject matter and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the invention was
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`made to a POSITA.
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`19
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`34.
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`I have been informed by Counsel and understand that a claim is
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`unpatentable for obviousness and that obviousness may be based upon a
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`combination of prior art references. I am informed by Counsel and understand that
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`the 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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`35.
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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 determines whether there was
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`an apparent reason to combine the known elements in the fashion claimed by the
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`patent at issue by considering the teachings of prior art references, the effects of
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`demands known to people working in the field or present in the marketplace, and the
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`background knowledge possessed by a POSITA.
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`36.
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`I am informed by Counsel and understand that a patent claim composed
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`of several limitations is not proved obvious merely by demonstrating that each of its
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`limitations was independently known in the prior art. I am informed by Counsel and
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`understand that identifying a reason those elements would be combined can be
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`important because inventions in many instances rely upon building blocks long since
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`uncovered, and claimed discoveries almost of necessity will be combinations of
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`what, in some sense, is already known. I am informed by Counsel and understand
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`that it is improper to use hindsight in an obviousness analysis, and that a patent’s
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`claims should not be used as a “roadmap.”
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`37.
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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 prior
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`art, (2) the differences between the prior art and the claims, (3) the level of ordinary
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`skill in the art, and (4) any so called “secondary considerations” of non-obviousness,
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`which include: (i) “long felt need” for the claimed invention, (ii) commercial success
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`attributable to the claimed invention, (iii) unexpected results of the claimed
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`invention, and (iv) “copying” of the claimed invention by others.
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`38.
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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 single reference or a combination of multiple prior art
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`references. I understand that th