UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`APPLE, INC.
`Petitioner
`
`v.
`
`RFCYBER CORP.,
`Patent Owner
`_________________
`
`Inter Partes Review Case No. IPR2022-01239
`U.S. Patent No. 10,600,046
`
`DECLARATION OF GERALD W. SMITH
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF U.S.
`PATENT NO. 10,600,046
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 11
`A. Educational Background ............................................................................. 12
`B. Professional Experience .............................................................................. 12
`II. METHODOLOGY; MATERIALS CONSIDERED ...................................... 16
`III. OVERVIEW AND LEGAL STANDARDS .................................................. 18
`A. Person of Ordinary Skill in the Art ............................................................. 18
`B. Obviousness ................................................................................................ 19
`C. Analogous Art ............................................................................................. 24
`D. Claim Construction ..................................................................................... 25
`IV. Level of a Person of Ordinary Skill ................................................................ 25
`V. OVERVIEW OF THE TECHNOLOGY ........................................................ 27
`A. Smart Cards ................................................................................................ 27
`B. Smart Card Security .................................................................................... 34
`C. Mobile Payments ........................................................................................ 36
`VI. OVERVIEW OF THE ’218 PATENT ........................................................... 44
`VII. Claim Construction for the ’046 Patent .......................................................... 46
`VIII.OPINIONS REGARDING THE COMBINATION OF LARACEY AND
`JOGU ...................................................................................................................... 47
`A. Overview of Laracey .................................................................................. 47
`B. Overview of Jogu ........................................................................................ 49
`IX. OPINIONS REGARDING GROUND 1—THE COMBINATION OF
`LARACEY AND JOGU ......................................................................................... 50
`A. Claim 1 ........................................................................................................ 50
`1. Claim 1(a): “causing a mobile device to capture data directly from a tag
`physically presented thereto,” ......................................................................... 50
`2. Claim 1(c): “the data embedded in the tag includes an electronic invoice
`and settlement information with a merchant associated with the POS device,”
`
`60
`3. Claim 1(d): “extracting the electronic invoice from the captured data in the
`mobile device;” ................................................................................................ 62
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`4. Claim 1(h): “calculating a total amount by adding the additional amount to
`the amount in the electronic invoice;” ............................................................... 63
`5. Claim 1(i): “generating a payment request in the mobile device in response
`to the electronic invoice after the user has chosen an electronic purse (e-purse)
`maintained locally in the mobile device;” .......................................................... 65
`6. Claim 1(k): “verifying the total amount with a balance in the e-purse,
`wherein said verifying the total amount with a balance in the e-purse is
`performed within the mobile device without sending a payment request to a
`payment gateway;” ......................................................................................... 73
`7. Claim 1(m): “sending the payment request from the mobile device to the
`payment gateway, wherein the balance is sufficient to honor the payment
`request;” .......................................................................................................... 84
`8. Claim 1(o): “displaying a confirmation in the mobile device that the
`balance in the e-purse has been reduced by the total amount” ....................... 84
`C. Claim 2: “The method recited in claim 1, wherein said causing a mobile
`device to capture data directly from a tag physically presented thereto includes
`placing the mobile device near the tag.” ............................................................. 89
`D. Claim 3: “The method as recited in claim 2, wherein the POS device
`provides security and authentication to generate the electronic bill and transfer
`the data to the tag.” ............................................................................................. 90
`E. Claim 5: “The method as recited in claim 1, further comprising: causing the
`mobile device to execute an installed module upon detecting the POS device in a
`near field of the mobile device, wherein the installed module is executed to
`receive the data directly from the tag carrying the electronic invoice and the
`settlement information.” ..................................................................................... 92
`X. OPINIONS REGARDING THE COMBINATION OF LARACEY, JOGU,
`AND TANG ............................................................................................................ 93
`A. Overview of Tang ....................................................................................... 93
`B. Claim 17: “The method as recited in claim 12, wherein data exchange
`between the mobile device and the payment gateway is conducted in a secured
`channel established between the mobile device and the payment gateway.” ..... 94
`XI. OPINIONS REGARDING THE COMBINATION OF LARACEY, JOGU,
`AND DORSEY ....................................................................................................... 99
`A. Overview of Dorsey .................................................................................... 99
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`B. Claim 18(f): “the additional amount is added optionally by the user, after
`the user of the mobile device verifies the electronic invoice displayed on the
`mobile device and authorizes a payment to the electronic invoice,” ................ 100
`XII. CONCLUSION ............................................................................................. 107
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`CHALLENGED CLAIMS LISTING
`
`
`Claim 1:
`
`
`Claim 1[Pre] A method for mobile payment, the method comprising:
`
`1(a) causing a mobile device to capture data directly from a tag physically
`
`presented thereto,
`
`1(b) wherein the tag receives the data directly from a POS device and allows
`
`the mobile device to capture the data,
`
`1(c) the data embedded in the tag includes an electronic invoice and
`
`settlement information with a merchant associated with the POS device,
`
`1(d) extracting the electronic invoice from the captured data in the mobile
`
`device;
`
`1(e) displaying the electronic invoice on a display of the mobile device to
`
`show an amount to be paid by a user of the mobile device,
`
`1(f) wherein the mobile device is configured to execute an installed
`
`application therein to capture the data from the tag;
`
`1(g) receiving an entry by the mobile device, the entry including the amount
`
`for the invoice and optionally an additional amount from the user;
`
`1(h) calculating a total amount by adding the additional amount to the
`
`amount in the electronic invoice;
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`1(i) generating a payment request in the mobile device in response to the
`
`electronic invoice after the user has chosen an electronic purse (e-purse)
`
`maintained locally in the mobile device;
`
`1(j) displaying the electronic invoice on the display of the mobile device for
`
`the user to verify the payment request;
`
`1(k) verifying the total amount with a balance in the e-purse, wherein said
`
`verifying the total amount with a balance in the e-purse is performed within the
`
`mobile device without sending the payment request to a payment gateway;
`
`1(l) displaying a denial of the payment request when the balance is less than
`
`the total amount;
`
`1(m) sending the payment request from the mobile device to the payment
`
`gateway, wherein the balance is sufficient to honor the payment request;
`
`1(n) the payment gateway sends a message directly to the POS device that a
`
`monetary transaction per the payment request sent from the mobile device has been
`
`successfully completed; and
`
`1(o) displaying a confirmation in the mobile device that the balance in the e-
`
`purse has been reduced by the total amount.
`
`Claim 2:
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`The method as recited in claim 1, wherein said causing a mobile device to
`
`capture data directly from a tag physically presented thereto includes placing the
`
`mobile device near the tag.
`
`
`Claim 3:
`
`
`The method as recited in claim 2, wherein the POS device provides security
`
`and authentication to generate the electronic bill and transfer the data to the tag.
`
`
`Claim 4:
`
`
`The method as recited in claim 1, wherein said displaying the electronic
`
`invoice on the display of the mobile device comprises: allowing the user to verify
`
`the amount in the electronic invoice and make a change to the amount when
`
`needed; and paying the total amount with the e-purse.
`
`
`Claim 5:
`
`
`The method as recited in claim 1 further comprising: causing the mobile
`
`device to execute an installed module upon detecting the POS device in a near field
`
`of the mobile device, wherein the installed module is executed to receive the data
`
`directly from the tag carrying the electronic invoice and the settlement information.
`
`Claim 12:
`
`
`12(pre) A method for mobile payment, the method comprising:
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`12(a) generating a set of data in a point of sale (POS) device, the data
`
`including an electric invoice and settlement information with a merchant
`
`associated with the POS device;
`
`12(b) embedding the data directly to the tag;
`
`12(c) presenting the tag to a mobile device;
`
`12(d) causing the mobile device to capture the data from the tag;
`
`12(e) wherein the mobile device executes an installed application therein to
`
`retrieve an amount in the electronic invoice from the data and generate a payment
`
`request in response to the captured data,
`
`12(f) the payment request is denied in the mobile device when the amount is
`
`more than a balance of an electronic purse (e-purse) maintained locally in the
`
`mobile device,
`
`12(g) the payment request is sent to a payment gateway when the amount is
`
`less than a balance of an electronic purse (e-purse) maintained locally in the mobile
`
`device; and
`
`12(h) receiving a message in the POS device directly from the payment
`
`gateway that the electronic invoice has been settled,
`
`12(i) wherein the payment gateway is configured to cause the balance in the
`
`e-purse reduced by the amount.
`
`Claim 13:
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`The method as recited in claim 12, wherein the tag is presented near the
`
`mobile device to allow a user of the mobile device to use the mobile device to
`
`capture the data.
`
`Claim 14:
`
`
`The method as recited in claim 13, wherein the POS device is provided with
`
`security and authentication to generate the electronic invoice.
`
`
`Claim 17:
`
`
`The method as recited in claim 12, wherein data exchange between the
`
`mobile device and the payment gateway is conducted in a secured channel
`
`established between the mobile device and the payment gateway.
`
`Claim 18:
`
`
`18(pre) A system for mobile payment, the system comprising:
`
`18(a) a point of sale (POS) device provided to generate a set of data
`
`including an electronic invoice upon receiving an entry,
`
`18(b) wherein the data including the electronic invoice and settlement
`
`information is transferred to a tag,
`
`18(c) a mobile device is executing a module configured to capture the data
`
`directly from the tag physically presented thereto,
`
`18(d) extract an amount expressed in the electronic invoice and display the
`
`amount in the mobile device; and wherein
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`18(e) the POS device receives an electronic notification directly from a
`
`payment gateway that the electronic invoice has been settled for a total amount
`
`including an additional amount and the amount expressed in the electronic invoice,
`
`18(f) the additional amount is added optionally by the user, after the user of
`
`the mobile devices verifies the electronic invoice displayed on the mobile device
`
`and authorizes a payment to the electronic invoice,
`
`18(g) the mobile device is configured to generate a payment request,
`
`wherein the payment request is denied within the mobile device without sending
`
`the payment request to the payment gateway when the amount is less than a
`
`balance of an electronic purse (e-purse) maintained locally in the mobile device;
`
`18(h) the payment request is sent to the payment gateway to proceed with a
`
`payment according to the payment request when the amount is more than the
`
`balance of the e-purse.
`
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`
`I, Gerald Smith, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`I am over the age of 21 and am competent to make this declaration. I
`
`am a resident of the Commonwealth of Virginia and reside at 10485 Whirlaway
`
`Lane, Ruther Glen, VA 22546.
`
`2.
`
`I have been retained as an expert witness on behalf of Petitioner Apple
`
`Inc. (“Apple” or “Petitioner”) to provide my opinions regarding the validity of
`
`certain claims of U.S. Patent No. 10,600,046 (Ex. 1001, “the ʼ046 Patent”). I submit
`
`this Declaration based on my personal knowledge and experience, as well as the
`
`materials I reviewed and considered in formulating my opinions.
`
`3.
`
`I am a Subject Matter Expert (SME) specializing in biometrics and
`
`smart card technology and solutions at Identification Technology Partners, Inc.
`
`(IDTP). I am also the founder of Generic Smart Cards LLC. Exhibit 1027 to this
`
`Declaration is a true and correct copy of my Curriculum Vitae, which provides
`
`further details about my background and experience.
`
`4.
`
`I am not currently, and never have been, an employee of Apple. I
`
`received no compensation for preparing this declaration beyond my normal hourly
`
`compensation based on my time actually spent in analyzing the issues and preparing
`
`this declaration. Nor will I receive any added compensation based on my opinions
`
`or the outcome of this proceeding.
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`Below I summarize my educational background, career history, and
`
`5.
`
`other qualifications relevant to this matter.
`
`A. Educational Background
`6.
`I obtained a Bachelor of Science in Electrical Engineering (cum laude)
`
`from the Rose-Hulman Institute of Technology (Terre Haute, IN) in 1978. I
`
`furthered my education by attending courses for a Master’s of Science in Electrical
`
`Engineering from Rutgers University (New Brunswick, NJ) from 1979 to 1983.
`
`B.
`7.
`
`Professional Experience
`I have worked extensively with smart cards, terminals, and transaction
`
`solutions since 1983. I have worked in a wide range of technologies relating to smart
`
`cards, including, but not limited to, silicon, operating systems, card applications,
`
`packaging, printing technologies, edge interfaces, terminals, and host system
`
`applications.
`
`8.
`
`For more than 20 years, I have focused on security and identity
`
`attributes of smart cards and smart card enabled solutions. I have served as an
`
`International Standards Organization (ISO) project editor and as a contributor to a
`
`number of major smart card standards, including, and not limited to, ISO/IEC 7816,
`
`ISO/IEC 14443, ISO/IEC 24727, FIPS 201, and FIPS 140. I have actively
`
`participated in the Java Card Forum, PC/SC implementations, MULTOS smart card
`
`O/S application development, and Microsoft Windows Smart Card O/S evaluations.
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`In addition, I have in-depth knowledge and experience with proprietary O/S smart
`
`card implementations, including but not limited to ORGA Micardo, Siemens
`
`CardOS, Schlumberger MultiFlex, Gemplus MPCOS, and G&D StarCOS.
`
`9.
`
`From 1978 to 1983, I was an Officer in the United States Army Signal
`
`Corps attached to the Communications Electronics Command at Fort Monmouth,
`
`New Jersey. The Signal Corps is a division of the U.S. Army that develops, tests,
`
`provides, and manages communications and information systems support for the
`
`command and control of combined armed forces. In the Signal Corps, I actively
`
`participated in the research and development of software intensive terminals and
`
`peripherals encompassing device mechanisms, microprocessor
`
`technologies
`
`(HW/SW) and system integration. I was part of a high level research team exploring
`
`distributed processing configurations. I achieved the rank of Captain prior to leaving
`
`the U.S. Army for private industry.
`
`10.
`
`In 1983, I began work as a technologist at Mars Electronics
`
`International, a company directed to unattended payment systems. I was promoted
`
`to product line manager for all of the company’s North American coin mechanisms,
`
`the core product for the business at that time.
`
`11. From 1989-1990, I was employed at Zenith Data Systems where I
`
`assisted in the development of the initial release of the Microsoft PC/SC interface
`
`for smart card reader technology, which is still used to this day.
`
`
`
`13
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`12. From 1990-1993, I was employed at VeriFone where I served as the
`
`Director of Engineering in a unit that developed food service and vending industry
`
`applications implemented through computer software and hardware. During this
`
`time at VeriFone, I worked on development of the Valu-Card™ Stored Value card
`
`system to complement the company’s Point of Sales (POS) business.
`
`13. From 1993-1996, I was employed at Schlumberger where I competed
`
`for, obtained, and developed technology business relating to smart card pilot projects
`
`for VISA and smart card applications for MasterCard.
`
`14. From 1996-1999, I served as Director of New Business Development
`
`for ORGA Card Systems Inc., where I was responsible for managing the company’s
`
`Americas region and coordinating with international business units in Germany,
`
`Latin America, and the Far East. In this position, I worked as Project Leader on the
`
`MasterCard Smart Card Access project using the MULTOS platform for secure card
`
`transactions.
`
`15.
`
`In 1999, I joined American Express as a Development Leader for the
`
`“Blue from American Express” Smart Card product development initiative. In that
`
`position, I served as Advanced Card Technology leader on IP Management, chip
`
`card specifications, security models using smart cards, and external standards. I was
`
`promoted to Vice President in 2001. Among other duties at American Express, I
`
`served as Product Manager, Business and Technical Architect of the “Summer
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`Concerts in Blue” product launch (summer of 2000), served as a Board Member of
`
`the GlobalPlatform governance body from 2000-2002, was a contributing member
`
`to GlobalPlatform Card and Card Management System specifications, was a
`
`JavaCard Forum representative, and a technical representative to ISO/IEC JTC1
`
`SC17 International Standard body including contact card, contactless card, and test
`
`methods.
`
`16. From 2003-2007, I worked at SHARP Microelectronics of the
`
`Americas, a world leader in LCD, Integrated Circuits, RF, Imaging, and
`
`Optoelectronics technology, where I served as the Senior Smart Card Business
`
`Development Manager / Senior Field Technical Manager. Among other duties, I
`
`served as a subject matter expert in the area of Smart Card technologies working as
`
`a development leader for integration of smart card technology into identity, payment,
`
`and telecommunication solutions.
`
`17. Since 2007, I have been employed with ID Technology Partners as a
`
`subject matter expert for a diverse range of engagements related to smart cards,
`
`biometrics and other high assurance identification verification initiatives and
`
`technologies. My projects have included government and non-government
`
`credentialing programs as well as one-off enterprise solutions.
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`In 2012, I founded Generic Smart Cards LLC to develop various
`
`18.
`
`credentialing solutions for clients with a focus on diagnostic and analysis tools for
`
`smart card issuers, smart card relying parties and cardholders.
`
`II. METHODOLOGY; MATERIALS CONSIDERED
`
`19.
`
`I have relied upon my education, knowledge and experience with smart
`
`cards, secure smart card transactions and payment systems more generally, as well
`
`as the other materials as discussed in this declaration in forming my opinions.
`
`20. For this work, I have been asked to review the ’046 Patent including
`
`the specification and claims, and the ’046 Patent’s prosecution history (file history).
`
`In developing my opinions relating to the ’046 Patent, I have considered the
`
`materials cited or discussed herein, including those itemized in the Exhibit Table
`
`below.
`
`Description
`Exhibit
`Exhibit 1001 U.S. Patent No. 10,600,046 (the “’046 Patent”)
`Exhibit 1002 File History for U.S. Patent 10,600,046 (“’046 File History”)
`Exhibit 1004 U.S. Patent Publication No. 2011/0251892 to Laracey (“Laracey”)
`Exhibit 1005 Certified English Translation of Japanese Patent No. JP4901053 to
`Makoto Jogu (“Jogu”)
`Exhibit 1006 PCT Application No. WO 2009/116954 to Tang (“Tang”)
`Exhibit 1007 U.S. Patent No. 9,916,581 to Dorsey et al. (“Dorsey”)
`Exhibit 1008 U.S. Patent Application No. 2008/0166997 to Sun et al. (“Sun”)
`Exhibit 1009 U.S. Patent Application No. 2006/0287004 to Fuqua (“Fuqua”)
`Exhibit 1010 PCT Publication No. 2004/066228 to Keena et al. (“Keena”)
`Exhibit 1011 UK Patent Application GB2390211 to Stanford (“Stanford”)
`Exhibit 1012 Proton Prisma Guide Multi-Application Smart Card Technology
`and Solutions from Proton World (“Proton Prisma Guide”)
`Exhibit 1013 U.S. Patent No. 5,671,279 to Elgamal (“Elgamal”)
`
`
`
`16
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`the
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`Exhibit 1021
`
`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`Exhibit 1014 Declaration of Nathaniel E Frank-White (“Frank-White Dec.”)
`Exhibit 1015 PCT Application No. WO 2010/039337 to Lin et al. (“Lin”)
`Exhibit 1016 Joint Markman Chart
`Exhibit 1017 Japanese Patent No. JP4901053 to Makoto Jogu
`Exhibit 1018 Timothy Jurgensen and Scott Guthery, Smart Cards
`Developer’s Toolkit, Prentice Hall PTR 2002 (“Jurgensen”)
`Exhibit 1019 U.S. Patent No. 3,702,464 to Castrucci (“Castrucci”)
`Exhibit 1020 Zhiqun Chen Java Card™ Technology for Smart Cards, Sun
`Microsystems, 2000 (“Chen”)
`International Publication No. WO 02/41236 A2 to Hanseen
`(“Hanseen”)
`Exhibit 1022 Vesna Hassler et al. Java Card for E-Payment Application, Artech
`House, 2002 (“Hassler”)
`Exhibit 1023 Proton World Internet (“Internet”)
`Exhibit 1024 Proton Prisma Mobile Profile (“Proton Prisma MP”)
`Exhibit 1025 GlobalPlatform Card Specification Version 2.1.1 (March 2003)
`(“GlobalPlatform”)
`Exhibit 1026 Dennis, Fenech, Merrilees (2005), e-Retailing (“e-Retailing”)
`
`21.
`
`I have considered these materials from the viewpoint of a POSITA as
`
`of the priority date of the ʼ046 Patent. For the purposes of this declaration, I have
`
`been asked to assume that the priority date for Claim 1 and its dependents is March
`
`29, 2013. I have been asked to assume that the priority date for Claims 12, 18 and
`
`their dependents is April 1, 2012. I note that my opinions provided in this
`
`Declaration are made from the perspective of a POSITA as of these priority dates,
`
`unless expressly stated otherwise. To the extent that I use any verb tense in this
`
`Declaration that is present tense (e.g., “a POSITA would understand” instead of “a
`
`POSITA would have understood”), such verb tense should be understood to be my
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`opinion as of the ’046 Patent’s priority date (again, unless expressly stated
`
`otherwise). I merely use the present verb tense for ease of reading.
`
`III. OVERVIEW AND LEGAL STANDARDS
`
`22.
`
`In formulating my opinions, I have been instructed to apply certain
`
`legal standards. I am not a lawyer. I do not expect to offer any testimony regarding
`
`what the law is. Instead, the following sections summarize the law as I have been
`
`instructed to apply it in formulating and rendering my opinions found later in this
`
`declaration. I understand that, in an inter partes review proceeding, patent claims
`
`may be deemed unpatentable if it is shown that they were anticipated or rendered
`
`obvious in view of the prior art. I understand that prior art in an inter partes review
`
`is limited to patents or printed publications that predate the priority date of the patent
`
`at issue. I understand that questions of claim clarity (definiteness) and enablement
`
`cannot be considered as a ground for considering the patentability of a claim in these
`
`proceedings.
`
`A.
`23.
`
`Person of Ordinary Skill in the Art
`I understand that the ’046 Patent, the record of proceedings at the Patent
`
`Office (which I understand is called the “File History” or “Prosecution History”),
`
`and the teachings of the prior art are evaluated from the perspective of a person of
`
`ordinary skill in the art (“POSITA”). I understand that the factors considered in
`
`determining the ordinary level of skill in the art include: (i) the levels of education
`
`
`
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`and experience of persons working in the field; (ii) the types of problems
`
`encountered in the field; and (iii) the sophistication of the technology. I may also
`
`consider, if available, the education level of the inventor, prior art solutions to the
`
`problems encountered in the art, the rapidity with which innovations are made in the
`
`relevant art.
`
`24.
`
`I understand that a person of ordinary skill in the art is not a specific
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`real individual, but rather a hypothetical individual having the qualities reflected by
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`the factors above. This hypothetical person has knowledge of all prior art in the
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`relevant field as if it were arranged on a workshop wall and takes from each reference
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`what it would teach to a person having the skills of a POSITA.
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`B. Obviousness
`25.
`I understand that a claim may be invalid under § 103(a) if the subject
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`matter described by the claim as a whole would have been “obvious” to a
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`hypothetical POSITA in view of a single prior art reference or in view of a
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`combination of references at the time the claimed invention was made. Therefore, I
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`understand that obviousness is determined from the perspective of a hypothetical
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`POSITA. I further understand that a hypothetical POSITA is assumed to know and
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`to have all relevant prior art in the field of endeavor covered by the patent in suit and
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`all analogous prior art. I understand that obviousness in an inter partes review
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`proceeding is evaluated using a preponderance of the evidence standard, which
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`means that the claims must be more likely obvious than nonobvious.
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`26.
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`I also understand that an analysis of whether a claimed invention would
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`have been obvious should be considered in light of the scope and content of the prior
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`art, the differences (if any) between the prior art and the claimed invention, and the
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`level of ordinary skill in the pertinent art involved. I understand as well that a prior
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`art reference should be viewed as a whole. I understand that in considering whether
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`an invention for a claimed combination would have been obvious, I may assess
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`whether there are apparent reasons to combine known elements in the prior art in the
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`manner claimed in view of interrelated teachings of multiple prior art references, the
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`effects of demands known to the design community or present in the marketplace,
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`and/or the background knowledge possessed by a POSITA. I also understand that
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`other principles may be relied on in evaluating whether a claimed invention would
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`have been obvious, and that these principles include the following:
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`• A combination of familiar elements according to known methods is
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`likely to be obvious when it does no more than yield predictable results;
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`• When a device or technology is available in one field of endeavor,
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`design incentives and other market forces can prompt variations of it,
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`either in the same field or in a different one, so that if a POSITA can
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`implement a predictable variation, the variation is likely obvious;
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`Declaration of Gerald W. Smith
`Patent No. 10,600,046
`• If a technique has been used to improve one device, and a POSITA
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`would have recognized that it would improve similar devices in the
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`same way, using the technique is obvious unless its actual application
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`is beyond his or her skill;
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`• An explicit or implicit teaching, suggestion, or motivation to combine
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`two prior art references to form the claimed combination may
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`demonstrate obviousness, but proof of obviousness does not depend on
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`or require showing a teaching, suggestion, or motivation to combine;
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`• Market demand, rather than scientific literature, can drive design trends
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`and may show obviousness;
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`• In determining whether the subject matter of a patent claim would have
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`been obvious, neither the particular motivation nor the avowed purpose
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`of the named inventor controls;
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`• One of the ways in which a patent’s subject can be proved obvious is
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`by noting that there existed at the time of invention a known problem
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`for which there was an obvious solution encompassed by the patent’s
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`claims;
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`• Any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed;
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`• “Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a POSITA will be
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`able to fit the teachings of multiple patents together like pieces of a
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`puzzle;
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`• A POSITA is also a person of ordinary creativity, and is not an
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`automaton;
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`• A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there
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`is a design need or market pressure to solve a problem and there are a
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`finite number of identified, predictable solutions such that a POSITA
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`would have had good reason to pursue the known options within his or
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`her technical grasp; and
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`• One should not use hindsight in evaluating whether a claimed invention
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`would have been obvious.
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`27.
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`I also understand that an obviousness determination includes the
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`consideration of various factors such as: (1) the scope and content of the prior art,
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`(2) the differences