IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Sanjay K. Rao, et al.
`In re Patent of:
`9,319,075
`U.S. Patent No.:
`April 19, 2016
`Issue Date:
`Appl. Serial No.: 14/685,592
`Filing Date:
`April 13, 2015
`Title:
`WIRELESS DEVICES WITH TRANSMISSION CONTROL AND
`MULTIPLE INTERNET PROTOCOL (IP) BASED PATHS OF
`COMMUNICATION
`
` Attorney Docket No.: 52959.103R075
`
`DECLARATION OF DR. MICHAEL ALLEN JENSEN
`
`1
`
`Ex.1003
`APPLE INC. / Page 1 of 77
`
`

`

`
`
`Table of Contents
`
`I. ASSIGNMENT .................................................................................................... 3
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION ........................ 4
`
`III. OVERVIEW OF CONCLUSIONS FORMED ................................................... 9
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ...............................................14
`
`V. LEGAL STANDARDS .....................................................................................14
`
`A. Claim Construction .........................................................................................15
`
`B. Legal Standards for Obviousness ...................................................................15
`
`VI. The ’075 Patent ..................................................................................................20
`
`A. Overview of the ’075 Patent ...........................................................................20
`
`B. File History of the ’075 Patent .......................................................................21
`
`VII.SUMMARY OF THE CITED PRIOR ART .....................................................22
`
`A. Overview of Yegoshin ....................................................................................22
`
`B. Overview of Bernard ......................................................................................24
`
`C. Overview of Johnston .....................................................................................26
`
`D. Overview of Preiss..........................................................................................27
`
`VIII.ANALYSIS OF COMBINATION OF Yegoshin, Bernard, Johnston, and
`Preiss (GROUND I) .................................................................................................28
`
`A. Combination of Yegoshin and Bernard ..........................................................28
`
`B. Combination of Yegoshin, Bernard, and Johnston ........................................36
`
`C. Combination of Yegoshin, Bernard, Johnston, and Preiss .............................39
`
`D. Claim 1 ...........................................................................................................41
`
`E. Claim 2 ...........................................................................................................73
`
`F. Claim 3 ...........................................................................................................74
`
`G. Claim 5 ...........................................................................................................75
`
`IX. CONCLUSION ..................................................................................................77
`
`
`
`2
`
`Ex.1003
`APPLE INC. / Page 2 of 77
`
`

`

`I, Michael A. Jensen declare as follows:
`
`I.
`
`ASSIGNMENT
`
`1.
`
`I have been retained as a technical expert by counsel on behalf of
`
`Apple, Inc. (“Petitioner”). I understand that Petitioner is requesting that the Patent
`
`Trial and Appeal Board institute an inter partes review (“IPR”) proceeding with
`
`respect to U.S. Patent No. 9,319,075 (“the ’075 patent”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’075
`
`patent in light of the prior art publications cited in Section VII below.
`
`3.
`
`I am not, and never have been, an employee of Petitioner. I received
`
`no compensation for this Declaration beyond my normal hourly compensation
`
`based on my time actually spent analyzing the ’075 patent, the prior art
`
`publications cited in Section VII below, and issues related thereto, and I will not
`
`receive any added compensation based on the outcome of any IPR or other
`
`proceeding involving the ’075 patent.
`
`4. My analysis here is based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited here. I may rely upon these materials, my knowledge and experience,
`
`and/or additional materials to rebut arguments raised by the Patent Owner. Further,
`
`I may also consider additional documents and information in forming any
`
`3
`
`Ex.1003
`APPLE INC. / Page 3 of 77
`
`

`

`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`5. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated here based on new information and
`
`on my continuing analysis of the materials already provided.
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION
`
`6.
`
`I have personal knowledge or have developed knowledge of these
`
`technologies based upon education, training, or experience, of the matters set forth
`
`herein.
`
`7.
`
`A detailed description of my professional qualifications, including a
`
`listing of my specialties/expertise and professional activities, is contained in my
`
`curriculum vitae, a copy of which is provided as Exhibit 1004. 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.
`
`4
`
`Ex.1003
`APPLE INC. / Page 4 of 77
`
`

`

`9.
`
`I am a tenured Professor at Brigham Young University. In this role, I
`
`have taught undergraduate and graduate courses for 27 years in the areas of
`
`electromagnetic field theory, antenna design and analysis, radio frequency circuit
`
`design, signal processing, and communications systems. Additionally, I have
`
`supervised twenty-five graduate student theses and dissertations within these
`
`subject areas.
`
`10.
`
`I am Dean of the Ira A. Fulton College of Engineering at Brigham
`
`Young University and a Fellow of the Institute of Electrical and Electronics
`
`Engineers (IEEE). I was previously the President of the IEEE Antennas and
`
`Propagation Society, an elected member of the Administrative Committee for the
`
`IEEE Antennas and Propagation Society, Editor-in-Chief of the IEEE Transactions
`
`on Antennas and Propagation, and associate editor for the IEEE Transactions on
`
`Antennas and Propagation and the IEEE Antennas and Wireless Propagation
`
`Letters. I was Chair of the Department of Electrical and Computer Engineering at
`
`Brigham Young University from 2006 through 2012.
`
`11.
`
`I was recognized for my research and teaching at Brigham Young
`
`University by being awarded University Professor status in 2013. I also received
`
`the Karl G. Maeser Research and Creative Arts Award at Brigham Young
`
`University in 2005, the Outstanding Faculty Award from the Electrical and
`
`Computer Engineering Department at Brigham Young University in 1998, and the
`
`5
`
`Ex.1003
`APPLE INC. / Page 5 of 77
`
`

`

`student-selected Outstanding Faculty Award for the Electrical and Computer
`
`Engineering Department at Brigham Young University in 2002, 2003, and 2007.
`
`12.
`
`I have 31 years of experience in the design and analysis of
`
`communications systems that convey information over the air (wireless) or over
`
`transmission lines (cable, power lines, and optical fiber). My experience includes
`
`work with antennas and radio frequency (RF) circuitry for both wireless and hard-
`
`wired systems, as well as with algorithm design and implementation for wireless
`
`communication systems. Over much of my career, a particular area of focus has
`
`been on wireless communication systems that use multiple antennas to increase
`
`throughput and/or reliability of the communication. From time to time, I have
`
`consulted with various corporations, such as Symmetry Wireless, SDRC Inc., and
`
`SAIC, to create system designs and evaluate algorithms for various wireless
`
`communication systems.
`
`13.
`
`I have authored or co-authored over 290 technical articles and book
`
`chapters in the areas of antenna design, wireless communications, optical fiber
`
`communications, and radar systems. I received the Harold A. Wheeler
`
`Applications Prize Paper Award for an article in the IEEE Transactions on
`
`Antennas and Propagation in 2002, the Overall Best Paper Award in the 2004
`
`International Telemetry Conference, and the Best Student Paper Award in the 1993
`
`IEEE Antennas and Propagation Society International Symposium. Forty of my
`
`6
`
`Ex.1003
`APPLE INC. / Page 6 of 77
`
`

`

`publications have been solicited from journal editors or conference organizers, and
`
`I have delivered ten keynote addresses at technical symposia at the request of the
`
`symposia organizers.
`
`14.
`
`I have extensive research experience and expertise in the area of
`
`antenna technology for cellular and wireless local area network systems. A non-
`
`exhaustive list of examples of papers that I have co-authored related to cellular
`
`antenna technology is:
`
`• “Impact of array mutual coupling on multi-antenna propagation-based key
`
`establishment,” IEEE Trans. Antennas and Propagation, 2015.
`
`• “Key establishment employing reconfigurable antennas: impact of antenna
`
`complexity,” IEEE Trans. Wireless Communications, November 2014.
`
`• “Near-optimal radiation patterns for antenna diversity,” IEEE Trans.
`
`Antennas and Propagation, November 2010.
`
`• “Uncoupled matching for active and passive impedances of coupled arrays
`
`in MIMO systems,” IEEE Trans. Antennas Propagation, October 2010.
`
`• “Optimal antenna radiation characteristics for diversity and MIMO
`
`systems,” IEEE Trans. Antennas Propagation, November 2009.
`
`• “Antenna design for mobile MIMO systems,” IEICE Trans. on
`
`Communications, June 2008.
`
`7
`
`Ex.1003
`APPLE INC. / Page 7 of 77
`
`

`

`• “Evaluation of personal communications dual-antenna handset diversity
`
`performance,” IEEE Transactions on Vehicular Technology, August 1998.
`
`15. My experience includes practical engineering design and analysis in
`
`connection with companies that I have created. In 1998, I co-founded a company
`
`named AJ Design Group, Inc. that developed software for radio frequency circuit
`
`design. These tools, commercially marketed by Keysight Technologies, Inc.,
`
`synthesize and/or analyze radio frequency filters, matching networks, couplers,
`
`amplifiers, and other electronic components used in radio frequency circuits for
`
`wireless communication and radar. In 2000, I co-founded Wavetronix, LLC that
`
`designs and manufactures microwave and millimeter wave radar products for the
`
`vehicular traffic industry. In recognition for the success of this company, I was
`
`recognized as an Ernst and Young Entrepreneur of the Year for the Utah region in
`
`2020.
`
`16. My experience in the field has enabled me to work on interesting
`
`problems related to multichannel wireless communications. For example, my work
`
`on understanding the capabilities of multi-antenna communication networks –
`
`known as multiple-input multiple-output (MIMO) systems – in realistic operational
`
`environments has received considerable attention. This work demonstrated how
`
`effectively a radio system could use these multiple antennas to transmit different
`
`8
`
`Ex.1003
`APPLE INC. / Page 8 of 77
`
`

`

`information in parallel across a single-frequency wireless channel. The impact of
`
`this work is one of the reasons the IEEE elevated me to the grade of Fellow.
`
`17. As another example, I worked with personnel testing military aircraft
`
`to solve a problem where their telemetry of data from the aircraft to the ground
`
`would be interrupted as the plane made aggressive maneuvers due to the airframe
`
`blocking the transmission. The solution attempted by these personnel was to place
`
`multiple antennas on the aircraft, but this created new problems as the antennas
`
`interfered with each other under a wide range of aircraft attitudes. I developed a
`
`transmission scheme that used the multiple antennas but solved their interference
`
`problem, a technique that has been adopted in commercial products.
`
`18.
`
`I have worked as an expert in several legal matters, as a consulting
`
`expert and as an expert witness. I have written expert reports and had my
`
`deposition taken.
`
`
`
`III. OVERVIEW OF CONCLUSIONS FORMED
`
`19. The analysis and conclusions set forth in this Declaration are informed
`
`by my educational background and experiences in the field (see Section II).
`
`20. Additionally, as part of my independent analysis for this Declaration, I
`
`have considered the following: the background knowledge/technologies that were
`
`commonly known to a person of ordinary skill in the art at the time of alleged
`
`9
`
`Ex.1003
`APPLE INC. / Page 9 of 77
`
`

`

`invention (“POSITA”) before the earliest claimed priority date for the ’075 patent;
`
`my own knowledge and experiences gained from my work experience in the field
`
`and related disciplines; and my experience in working with others involved in this
`
`field and related disciplines.
`
`21.
`
`In addition, I have reviewed the ’075 patent (Ex.1001), relevant
`
`excerpts of the prosecution history of the ’075 patent (Ex.1002). I have also
`
`reviewed at least the following prior art references:
`
`• U.S. Patent No. 6,711,146 to Leonid A. Yegoshin (“Yegoshin”)
`
`(Ex.1005)
`
`• U.S. Patent No. 5,784,032 to Ronald H. Johnston, et al. (“Johnston”)
`
`(Ex.1006)
`
`• U.S. Patent No. 5,497,339 to Marc A. Bernard (“Bernard”) (Ex.1007)
`
`• U.S. Patent No. 6,031,503 to Joseph A. Preiss, II, et al. (“Preiss”) (Ex.08
`
`• U.S. Patent No. 5,590,133 to Lars Billström, et al. (“Billström”)
`
`(Ex.1009)
`
`• Larry L. Peterson and Bruce S. Davie, Computer Networks: A Systems
`
`Approach, Morgan Kaufmann Publishers, Inc., San Francisco, CA, 1996
`
`(Ex.1010)
`
`• Andrew S. Tanenbaum, Computer Networks, Third Edition, Prentice Hall
`
`PTR, Upper Saddle River, NJ, 1996 (Ex.1011)
`
`10
`
`Ex.1003
`APPLE INC. / Page 10 of 77
`
`

`

`• Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson,
`
`Internetworking Technologies Handbook, New Riders Publishing,
`
`Indianapolis, IN, 1997 (Ex.1012)
`
`• William Stallings, Data and Computer Communications, 5th Edition,
`
`Prentice Hall, Upper Saddle River, NJ, 1996 (Ex.1013)
`
`• Dictionary Definition of “time division multiplex” (Newton’s Telecom
`
`Dictionary, 1998) (Ex.1014)
`
`• U.S. Patent No. 6,115,615 to Takeshi Ota, et al. (Ex.1015)
`
`• U.S. Patent No. 6,366,622 Stephen Joseph Brown (Ex.1016)
`
`• U.S. Patent No. 6,144,711 to Ari Vaisanen, et al. (Ex.1017)
`
`• U.S. Patent No. 6,047,322 to Aseem Vaid, et al. (Ex.1018)
`
`• Excerpts from Theodore S. Rappaport, Wireless Communications
`
`Principles & Practice, Prentice Hall, 1996 (Ex.1019)
`
`• R. G. Vaughan, et al., Antenna diversity in mobile communications, in
`
`IEEE Transactions on Vehicular Technology, vol. 36, no. 4, pp. 149-172,
`
`Nov. 1987 (Ex.1020)
`
`• S. M. Alamouti, A simple transmit diversity technique for wireless
`
`communications, in IEEE Journal on Selected Areas in Communications,
`
`vol. 16, no. 8, pp. 1451-1458, Oct. 1998 (Ex.1021)
`
`11
`
`Ex.1003
`APPLE INC. / Page 11 of 77
`
`

`

`• Excerpts from Douglas E. Comer, Internetworking with TCP/IP Volume
`
`One, Third Edition, 1995 (Ex.1022)
`
`• U.S. Patent No. 5,768,691 to Jorma Matero, et al. (Ex.1023)
`
`• U.S. Patent No. 5,960,344 to Ronald L. Mahany (Ex.1024)
`
`• European Patent Application 0 660 626 A2 to John Daniel Byrne
`
`(Ex.1025)
`
`• Excerpts from William C. Jakes, Microwave Mobile Communications,
`
`IEEE Press, 1974 (Ex.1026)
`
`• Excerpts from Constantine A. Balanis, Antenna Theory Analysis and
`
`Design, Harper & Row, 1982 (Ex.1027)
`
`• U.S. Patent No. 6,353,443 to Zhinong Ying (Ex.1028)
`
`• U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al. (Ex.1029)
`
`22.
`
`I have also reviewed some cited supporting references and
`
`documentation in forming my opinions below.
`
`23. Counsel has informed me that I should consider these materials
`
`through the lens of one of ordinary skill in the art related to the ’075 patent at the
`
`time of the earliest possible priority date of the ’075 patent, and I have done so
`
`during my review of these materials. Counsel has informed me that the earliest
`
`possible priority date to which the challenged claims of ’075 patent are entitled is
`
`12
`
`Ex.1003
`APPLE INC. / Page 12 of 77
`
`

`

`June 4, 1999 (“Critical Date”), and I have therefore used that Critical Date in my
`
`analysis below.
`
`24. Any figures that appear within this document have been prepared with
`
`the assistance of Counsel and reflect my understanding of the ’075 patent and the
`
`prior art discussed below.
`
`25. Although this Declaration refers to certain portions of the cited
`
`references for the sake of brevity, it should be understood that these citations are
`
`examples, and that one of ordinary skill in the art would have viewed the
`
`references cited herein in their entireties and, for reasons detailed later, in
`
`combination with other references cited herein or cited within those references
`
`themselves. The references used in this Declaration, therefore, should be viewed as
`
`being cited and analyzed herein in their entireties.
`
`26. This declaration explains the conclusions that I have formed based on
`
`my analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art publications listed above, I believe that:
`
`• Claims 1-3 and 5 are rendered obvious by Yegoshin in view of Johnston,
`
`Bernard, and Preiss (Ground I).
`
`
`
`13
`
`Ex.1003
`APPLE INC. / Page 13 of 77
`
`

`

`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`27. Based on my knowledge and experience in the field and my review of
`
`the ’075 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 experience, I have a good understanding of the
`
`capabilities of one of ordinary skill. Indeed, I have taught and worked closely with
`
`many such persons over the course of my career. Based on my knowledge, skill,
`
`and experience, I have an understanding of the capabilities of one of ordinary skill.
`
`For example, from teaching and supervising my students, I have an understanding
`
`of the knowledge that a person with this academic experience possesses.
`
`Furthermore, I possess those capabilities myself.
`
`
`
`V. LEGAL STANDARDS
`
`29.
`
`I have been informed by counsel of certain legal principles applicable
`
`to a patentability analysis and I have applied these principles as listed below.
`
`14
`
`Ex.1003
`APPLE INC. / Page 14 of 77
`
`

`

`A. Claim Construction
`
`30.
`
`I have been informed by Counsel and understand that the best
`
`indicator of claim meaning is its usage in the context of the patent specification as
`
`understood by one of ordinary skill. I further understand that the words of the
`
`claims should be given their plain meaning unless that meaning is inconsistent with
`
`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 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 ’075 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
`
`obvious. 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 insight or hindsight in deciding whether a claim is obvious.
`
`15
`
`Ex.1003
`APPLE INC. / Page 15 of 77
`
`

`

`32.
`
`I have been informed by Counsel and understand that a claim is
`
`unpatentable 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
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.” I am
`
`informed by Counsel and understand that obviousness may be based upon a
`
`combination of references. I am informed by Counsel and understand that the
`
`combination 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 obvious 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
`
`invention 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.
`
`16
`
`Ex.1003
`APPLE INC. / Page 16 of 77
`
`

`

`34.
`
`I am informed by Counsel and understand that a patent claim
`
`composed 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 and understand that identifying a reason those elements 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 informed by
`
`Counsel and understand that it is improper to use hindsight in an obviousness
`
`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,
`
`industry 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
`
`understand that the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two or more prior art
`
`17
`
`Ex.1003
`APPLE INC. / Page 17 of 77
`
`

`

`references 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
`
`references 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
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill would have employed at the time of invention.
`
`39.
`
`I have been informed by Counsel and understand that a proper
`
`obviousness analysis focuses on what was known or obvious to a person of
`
`ordinary skill at the time of invention, not just the patentee. Accordingly, I
`
`18
`
`Ex.1003
`APPLE INC. / Page 18 of 77
`
`

`

`understand that any need or problem known in the field of endeavor at the time of
`
`invention and addressed by the patent can provide a reason for combining the
`
`elements in the manner claimed.
`
`40.
`
`I have been informed by Counsel and understand that a claim can be
`
`obvious in light of a single reference, without the need to combine references, if
`
`the elements of the claim that are not found explicitly or inherently in the reference
`
`can be supplied by the common sense of one of skill in the art.
`
`41.
`
`I have been informed by Counsel and understand that secondary
`
`indicia of non-obviousness may include (1) a long felt but unmet need in the prior
`
`art that was satisfied by the invention of the patent; (2) commercial success of
`
`processes covered by the patent; (3) unexpected results achieved by the invention;
`
`(4) praise of the invention by others skilled in the art; (5) taking of licenses under
`
`the patent by others; (6) deliberate copying of the invention; (7) failure of others to
`
`find a solution to the long felt need; and (8) skepticism by experts. I understand
`
`that evidence of secondary indicia of non-obviousness, if available, should be
`
`considered as part of the obviousness analysis.
`
`42.
`
`I have been informed by Counsel and understand that there must be a
`
`relationship between any such secondary considerations and the invention, and that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`19
`
`Ex.1003
`APPLE INC. / Page 19 of 77
`
`

`

`43.
`
`In summary, my understanding is that prior art teachings are properly
`
`combined where one of ordinary skill having the understanding and knowledge
`
`reflected in the prior art and motivated by the general problem facing the inventor,
`
`would have been led to make the combination of elements recited in the claims.
`
`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
`
`for combining the elements of multiple prior art references in the claimed manner.
`
`44.
`
`I have been informed by Counsel and understand that in an inter
`
`partes review, “the petitioner shall have the burden of proving a proposition of
`
`unpatentability,” including a proposition of obviousness, “by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e).
`
`
`
`VI. THE ’075 PATENT
`
`A. Overview of the ’075 Patent
`
`45. The ’075 patent generally describes “multiple Internet Protocol (IP)
`
`based wireless data transmissions” that “are simultaneously provided between a
`
`wireless device and a server, including providing multiple antennas, multiple T/R
`
`units, multiple processors and multiple I/O ports on the wireless device.” Ex.1001,
`
`Abstract. In particular, referring to Figure 10 (below), the ’075 patent describes
`
`that the wireless device (e.g., “cellular telephone/mobile wireless device
`
`20
`
`Ex.1003
`APPLE INC. / Page 20 of 77
`
`

`

`(CT/MD)”) is equipped with “three wireless T/R units 1008, 1010, and 1012” that
`
`process “three data streams 1002, 1004, and 1006,” which are then “converted by
`
`converters 1014, 1016, and 1018, and presented to processors 1020, 1022, and
`
`1024 under the control of controller 1026.” Id., 3:35-36, 7:30-37; see also id., 7:57-
`
`64; 10:18-28. “The data streams may be interfaced separately with server C 1030
`
`or combined into data stream 1028 and interfaced to Server C 1030.” Id., 7:37-39;
`
`see also id., 7:64-66. The ’075 patent describes that its techniques achieve
`
`“improvement in speed by providing multiple data paths.” Id., 7:39-42.
`
`
`
`Ex.1001, Figure 10
`
`B.
`
`File History of the ’075 Patent
`
`46. As part of my preparation of this Declaration, I reviewed the file
`
`history of the ’075 patent (Ex.1002). I understand that the application that led to
`
`the ’075 patent was filed in the United States on April 13, 2015, and the patent
`
`issued on April 19, 2016. Ex.1001, cover page. The application was allowed
`
`21
`
`Ex.1003
`APPLE INC. / Page 21 of 77
`
`

`

`without any rejections. The Examiner’s reasons for allowance recited the entirety
`
`of the independent claims. Ex.1002, 12-13.
`
`47. Based on my knowledge and experience in the field and my review of
`
`the ’075 patent, it would have been clear to a POSITA that the ’075 patent
`
`describes no more than conventional technologies in or before 1999. A POSITA
`
`would have understood that the advanced state of the prior art renders claims 1-3
`
`and 5 obvious as discussed below. In addition, based on my review of the record,
`
`the pertinent references listed above were never analyzed in any remarks or
`
`rejection in an office action during prosecution. Based upon my knowledge and
`
`experience in this field and my review of the publications cited here, it is clear
`
`from a meaningful analysis of these references that at least claims 1-3 and 5 of the
`
`’075 patent are not patentable over the prior art. If the examiner had been aware of
`
`the prior art advanced in this Petition, the application would not have been
`
`allowed.
`
`
`
`VII. SUMMARY OF THE CITED PRIOR ART
`
`A. Overview of Yegoshin
`
`48. Yegoshin describes “a dual-mode device capable of both cell phone
`
`communication and telephone communication on a local area network (LAN).”
`
`Ex.1005, Abstract. For example, Yegoshin describes “cellular phone 9” “capable
`
`22
`
`Ex.1003
`APPLE INC. / Page 22 of 77
`
`

`

`of communication over a well-known pulse-code modulated/global system for
`
`mobile communication (PCM/GSM) cellular network and also capable of
`
`communicating on an IP data network in either a wired or wireless form.” Id.,
`
`4:59-5:3. A “normal cellular phone” or “any type of wireless communication
`
`device” is an example of Yegoshin’s dual-mode device, which “becomes a multi-
`
`purpose device” “through additional circuitry and software” such as “client
`
`software suite 19.” Id., 5:4-54.
`
`Ex.1005, Figure 2
`
`
`
`49.
`
` Yegoshin’s “[c]lient software 19 may be provided by a plug-in
`
`smart card, or may be pre-loaded into a suitable built-in memory provided and
`
`adapted for the purpose.” Ex.1005, 5:33-54. Yegoshin’s phone includes “[a] series
`
`of selection buttons such as 15 and 17” that “allow a user to switch modes from
`
`23
`
`Ex.1003
`APPLE INC. / Page 23 of 77
`
`

`

`cellular to IP communication, and perhaps to switch from differing types of
`
`networks using known protocols that are made available via client software 19.”
`
`Id. “Alternatively, the program may be given a series of preferences by the user,
`
`and then may negotiate the best possible connection accordingly.” Id., 5:49-54.
`
`Further, Yegoshin’s phone is “capable of taking some calls via cellular path while
`
`receiving other calls via IP path.” Id., 5:55-65. Further, Yegoshin’s phone is
`
`capable of “taking all cellular calls in IP format.” Id., 8:47-56.
`
`B. Overview of Bernard
`
`50. As illustrated in Figures 2-3 below, Bernard relates to a “portable
`
`multiple integrated communication device” that cradles a “palm computer” like
`
`PDA and connects to it using a single serial/power connector. Ex.1007, 1:10-17,
`
`1:39-52, 3:8-58