IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Raman K. Rao, et al.
`In re Patent of:
`U.S. Patent No.:
`9,019,946
`April 28, 2015
`Issue Date:
`Appl. Serial No.: 14/480,584
`Filing Date:
`September 8, 2014
`Title:
`WIRELESS AND CELLULAR VOICE AND DATA TRANSMIS-
`SION WITH MULTIPLE PATHS OF COMMUNICATION
`
` Attorney Docket No.: 39843-0126IP1
`
`DECLARATION OF DR. MICHAEL ALLEN JENSEN
`
`1
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`SAMSUNG 1003
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`

`

`
`
`TABLE OF CONTENTS
`
`I. ASSIGNMENT .................................................................................................... 4
`II. QUALIFICATIONS AND BACKGROUND INFORMATION ........................ 5
`III. OVERVIEW OF CONCLUSIONS FORMED ................................................. 10
`IV. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 16
`V. LEGAL STANDARDS ..................................................................................... 17
`A. Claim Construction ......................................................................................... 17
`B. Legal Standards for Obviousness ................................................................... 18
`VI. The ’946 Patent .................................................................................................. 23
`A. Overview of the ’946 Patent ........................................................................... 23
`B. File History of the ’946 Patent ....................................................................... 24
`VII. SUMMARY OF THE CITED PRIOR ART .................................................... 25
`A. Overview of Yegoshin .................................................................................... 25
`B. Overview of Johnston ..................................................................................... 27
`C. Overview of Billström .................................................................................... 28
`D. Overview of Bernard ...................................................................................... 28
`E. Overview of WO748 ...................................................................................... 30
`F. Overview of Sainton ....................................................................................... 32
`G. Overview of Preiss.......................................................................................... 33
`VIII. GROUND 1A .................................................................................................. 34
`A. Claim 14 ......................................................................................................... 34
`B. Claim 15 ......................................................................................................... 58
`IX. GROUND 1B ..................................................................................................... 63
`A. Claim 1 ........................................................................................................... 63
`B. Claim 2 ........................................................................................................... 87
`C. Claim 3 ........................................................................................................... 89
`D. Claim 4 ........................................................................................................... 90
`E. Claim 5 ........................................................................................................... 94
`F. Claim 6 ........................................................................................................... 94
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`G. Claim 7 ........................................................................................................... 95
`H. Claim 8 ........................................................................................................... 95
`I. Claim 9 ........................................................................................................... 97
`J. Claim 10 ......................................................................................................... 97
`K. Claim 11 ......................................................................................................... 98
`L. Claim 16 .......................................................................................................100
`M. Claim 17 .......................................................................................................101
`N. Claim 18 .......................................................................................................106
`O. Claim 19 .......................................................................................................106
`P. Claim 20 .......................................................................................................107
`Q. Claim 21 .......................................................................................................108
`X. GROUND 1C ...................................................................................................109
`A. Claim 12 .......................................................................................................109
`XI. GROUND 1D ..................................................................................................117
`A. Claim 13 .......................................................................................................117
`B. Claim 26 .......................................................................................................123
`XII. GROUND 1E ..................................................................................................124
`A. Claim 27 .......................................................................................................124
`B. Claim 28 .......................................................................................................137
`C. Claim 29 .......................................................................................................138
`D. Claim 30 .......................................................................................................138
`XIII. CONCLUSION .............................................................................................140
`
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`3
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`I, Michael A. Jensen, declare as follows:
`
`I.
`
`ASSIGNMENT
`1.
`I have been retained as a technical expert by counsel on behalf of
`
`Samsung Electronics Co., Ltd. (“Petitioner”). I understand that Petitioner is re-
`
`questing that the Patent Trial and Appeal Board institute an inter partes review
`
`(“IPR”) proceeding with respect to U.S. Patent No. 9,019,946 (“the ’946 patent”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’946 pa-
`
`tent in light of the prior art publications cited in Section VII below.
`
`3.
`
`I am not, and never have been, an employee of Petitioner. I received
`
`no compensation for this Declaration beyond my normal hourly compensation
`
`based on my time actually spent analyzing the ’946 patent, the prior art publica-
`
`tions cited in Section VII below, and issues related thereto, and I will not receive
`
`any added compensation based on the outcome of any IPR or other proceeding in-
`
`volving the ’946 patent.
`
`4. My analysis here is based on my years of education, research and ex-
`
`perience, as well as my investigation and study of relevant materials, including
`
`those cited here. I may rely upon these materials, my knowledge and experience,
`
`and/or additional materials to rebut arguments raised by the Patent Owner. Further,
`
`I may also consider additional documents and information in forming any neces-
`
`sary opinions, including documents that may not yet have been provided to me.
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`4
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`

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`5. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
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`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 Appendix A. Below is a short
`
`summary of my professional qualifications.
`
`8.
`
`I earned a Bachelor of Science (B.S.) degree and a Master of Science
`
`(M.S.) degree in Electrical Engineering from Brigham Young University in 1990
`
`and 1991, respectively, and a Doctor of Philosophy (Ph.D.) degree in Electrical
`
`Engineering from the University of California, Los Angeles in 1994.
`
`5
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`

`

`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 elec-
`
`tromagnetic field theory, antenna design and analysis, radio frequency circuit de-
`
`sign, signal processing, and communications systems. Additionally, I have super-
`
`vised twenty-five graduate student theses and dissertations within these subject ar-
`
`eas.
`
`10.
`
`I am Dean of the Ira A. Fulton College of Engineering at Brigham
`
`Young University and a Fellow of the Institute of Electrical and Electronics Engi-
`
`neers (IEEE). I was previously the President of the IEEE Antennas and Propaga-
`
`tion Society, an elected member of the Administrative Committee for the IEEE
`
`Antennas and Propagation Society, Editor-in-Chief of the IEEE Transactions on
`
`Antennas and Propagation, and associate editor for the IEEE Transactions on An-
`
`tennas and Propagation and the IEEE Antennas and Wireless Propagation Letters.
`
`I was Chair of the Department of Electrical and Computer Engineering at Brigham
`
`Young University from 2006 through 2012.
`
`11.
`
`I was recognized for my research and teaching at Brigham Young
`
`University by being awarded University Professor status in 2013. I also received
`
`the Karl G. Maeser Research and Creative Arts Award at Brigham Young Univer-
`
`sity in 2005, the Outstanding Faculty Award from the Electrical and Computer En-
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`6
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`

`

`gineering Department at Brigham Young University in 1998, and the student-se-
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`lected Outstanding Faculty Award for the Electrical and Computer Engineering
`
`Department at Brigham Young University in 2002, 2003, and 2007.
`
`12.
`
`I have 31 years of experience in the design and analysis of communi-
`
`cations systems that convey information over the air (wireless) or over transmis-
`
`sion lines (cable, power lines, and optical fiber). My experience includes work with
`
`antennas and radio frequency (RF) circuitry for both wireless and hard-wired sys-
`
`tems, as well as with algorithm design and implementation for wireless communi-
`
`cation systems. Over much of my career, a particular area of focus has been on
`
`wireless communication systems that use multiple antennas to increase throughput
`
`and/or reliability of the communication. From time to time, I have consulted with
`
`various corporations, such as Symmetry Wireless, SDRC Inc., and SAIC, to create
`
`system designs and evaluate algorithms for various wireless communication sys-
`
`tems.
`
`13.
`
`I have authored or co-authored over 290 technical articles and book
`
`chapters in the areas of antenna design, wireless communications, optical fiber
`
`communications, and radar systems. I received the Harold A. Wheeler Applica-
`
`tions Prize Paper Award for an article in the IEEE Transactions on Antennas and
`
`Propagation in 2002, the Overall Best Paper Award in the 2004 International Te-
`
`lemetry Conference, and the Best Student Paper Award in the 1993 IEEE Antennas
`
`7
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`and Propagation Society International Symposium. Forty of my publications have
`
`been solicited from journal editors or conference organizers, and I have delivered
`
`ten keynote addresses at technical symposia at the request of the symposia organiz-
`
`ers.
`
`14.
`
`I have extensive research experience and expertise in the area of an-
`
`tenna technology for cellular and wireless local area network systems. A non-ex-
`
`haustive list of examples of papers that I have co-authored related to cellular an-
`
`tenna technology is:
`
` “Impact of array mutual coupling on multi-antenna propagation-based key
`
`establishment,” IEEE Trans. Antennas and Propagation, 2015.
`
` “Key establishment employing reconfigurable antennas: impact of antenna
`
`complexity,” IEEE Trans. Wireless Communications, November 2014.
`
` “Near-optimal radiation patterns for antenna diversity,” IEEE Trans. An-
`
`tennas and Propagation, November 2010.
`
` “Uncoupled matching for active and passive impedances of coupled arrays
`
`in MIMO systems,” IEEE Trans. Antennas Propagation, October 2010.
`
` “Optimal antenna radiation characteristics for diversity and MIMO sys-
`
`tems,” IEEE Trans. Antennas Propagation, November 2009.
`
` “Antenna design for mobile MIMO systems,” IEICE Trans. on Communi-
`
`cations, June 2008.
`
`8
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`

`

` “Evaluation of personal communications dual-antenna handset diversity
`
`performance,” IEEE Transactions on Vehicular Technology, August 1998.
`
`15. My experience includes practical engineering design and analysis in
`
`connection with companies that I have created. In 1998, I co-founded a company
`
`named AJ Design Group, Inc. that developed software for radio frequency circuit
`
`design. These tools, commercially marketed by Keysight Technologies, Inc., syn-
`
`thesize and/or analyze radio frequency filters, matching networks, couplers, ampli-
`
`fiers, and other electronic components used in radio frequency circuits for wireless
`
`communication and radar. In 2000, I co-founded Wavetronix, LLC that designs
`
`and manufactures microwave and millimeter wave radar products for the vehicular
`
`traffic industry. In recognition for the success of this company, I was recognized as
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`an Ernst and Young Entrepreneur of the Year for the Utah region in 2020.
`
`16. My experience in the field has enabled me to work on interesting
`
`problems related to multichannel wireless communications. For example, my work
`
`on understanding the capabilities of multi-antenna communication networks –
`
`known as multiple-input multiple-output (MIMO) systems – in realistic operational
`
`environments has received considerable attention. This work demonstrated how ef-
`
`fectively a radio system could use these multiple antennas to transmit different in-
`
`formation in parallel across a single-frequency wireless channel. The impact of this
`
`work is one of the reasons the IEEE elevated me to the grade of Fellow.
`
`9
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`

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`17. As another example, I worked with personnel testing military aircraft
`
`to solve a problem where their telemetry of data from the aircraft to the ground
`
`would be interrupted as the plane made aggressive maneuvers due to the airframe
`
`blocking the transmission. The solution attempted by these personnel was to place
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`multiple antennas on the aircraft, but this created new problems as the antennas in-
`
`terfered with each other under a wide range of aircraft attitudes. I developed a
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`transmission scheme that used the multiple antennas but solved their interference
`
`problem, a technique that has been adopted in commercial products.
`
`18.
`
`I have worked as an expert in several legal matters, as a consulting ex-
`
`pert and as an expert witness. I have written expert reports and had my deposition
`
`taken.
`
`
`
`III. OVERVIEW OF CONCLUSIONS FORMED
`19. The analysis and conclusions set forth in this Declaration are informed
`
`by my educational background and experiences in the field (see Section II).
`
`20. Additionally, as part of my independent analysis for this Declaration, I
`
`have considered the following: the background knowledge/technologies that were
`
`commonly known to a person of ordinary skill in the art at the time of alleged in-
`
`vention (“POSITA”) before the earliest claimed priority date for the ’653 patent;
`
`my own knowledge and experiences gained from my work experience in the field
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`10
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`and related disciplines; and my experience in working with others involved in this
`
`field and related disciplines.
`
`21.
`
`In addition, I have reviewed the ’946 patent (EX-1001), relevant ex-
`
`cerpts of the prosecution history of the ’946 patent (EX-1002). I have also re-
`
`viewed at least the following prior art references:
`
` U.S. Patent No. 6,711,146 to Leonid A. Yegoshin (“Yegoshin”) (EX-
`
`1004)
`
` U.S. Patent No. 5,784,032 to Ronald H. Johnston, et al. (“Johnston”)
`
`(EX-1005)
`
` U.S. Patent No. 5,590,133 to Lars Billström, et al. (“Billström”) (EX-
`
`1006)
`
` U.S. Patent No. 5,497,339 to Marc A. Bernard (“Bernard”) (EX-1007)
`
` International Patent Publication No. WO 98/27748 (“WO748”) (EX-
`
`1008)
`
` U.S. Patent No. 5,854,985 to Joseph B. Sainton, et al. (“Sainton”) (EX-
`
`1009)
`
` U.S. Patent No. 6,031,503 to Joseph A. Preiss, II, et al. (“Preiss”) (EX-
`
`1010)
`
`11
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`

`

` Larry L. Peterson and Bruce S. Davie, Computer Networks: A Systems
`
`Approach, Morgan Kaufmann Publishers, Inc., San Francisco, CA, 1996
`
`(EX-1011)
`
` Andrew S. Tanenbaum, Computer Networks, Third Edition, Prentice Hall
`
`PTR, Upper Saddle River, NJ, 1996 (EX-1012)
`
` Merilee Ford, H. Kim Lew, Steve Spanier, and Tim Stevenson, Internet-
`
`working Technologies Handbook, New Riders Publishing, Indianapolis,
`
`IN, 1997 (EX-1013)
`
` William Stallings, Data and Computer Communications, 5th Edition,
`
`Prentice Hall, Upper Saddle River, NJ, 1996 (EX-1014)
`
` Dictionary Definition of “time division multiplex” (Newton’s Telecom
`
`Dictionary, 1998) (EX-1015)
`
` U.S. Patent No. 6,115,615 to Takeshi Ota, et al. (EX-1016)
`
` U.S. Patent No. 6,366,622 to Stephen Joseph Brown, et al. (EX-1017)
`
` U.S. Patent No. 6,560,443 to Ari Vaisanen, et al. (EX-1018)
`
` U.S. Patent No. 5,680,633 to Steven E. Koenck, et al. (EX-1019)
`
` U.S. Patent No. 6,047,322 to Aseem Vaid, et al. (EX-1020)
`
` Excerpts from Theodore S. Rappaport, Wireless Communications Princi-
`
`ples & Practice, Prentice Hall, 1996 (EX-1021)
`
`12
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`

`

` 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-1022)
`
` S. M. Alamouti, A simple transmit diversity technique for wireless com-
`
`munications, in IEEE Journal on Selected Areas in Communications, vol.
`
`16, no. 8, pp. 1451-1458, Oct. 1998 (EX-1023)
`
` Excerpts from Douglas E. Comer, Internetworking with TCP/IP Volume
`
`One, Third Edition, 1995 (EX-1024)
`
` U.S. Patent No. 5,768,691 to Jorma Matero, et al. (EX-1025)
`
` U.S. Patent No. 5,960,344 to Ronald L. Mahany (EX-1026)
`
` European Patent Application 0 660 626 A2 to John Daniel Byrne (EX-
`
`1027)
`
` Excerpts from William C. Jakes, Microwave Mobile Communications,
`
`IEEE Press, 1974 (EX-1028)
`
` Yi-Bing Lin, Cellular digital packet data, in IEEE Potentials, vol. 16, no.
`
`3, pp. 11-13, Aug.-Sept. 1997 (EX-1030)
`
` A. K. Salkintzis, Packet data over cellular networks: the CDPD approach,
`
`in IEEE Communications Magazine, vol. 37, no. 6, pp. 152-159, June
`
`1999 (EX-1031)
`
`13
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`

`

` C. E. Perkins et al., A mobile networking system based on Internet proto-
`
`col, in IEEE Personal Communications, vol. 1, no. 1, pp. 32-41, 1st Qtr.
`
`1994 (EX-1032)
`
` K. C. Budka, H. Jiang and S. E. Sommars, Cellular digital packet data
`
`networks, in Bell Labs Technical Journal, vol. 2, no. 3, pp. 164-181,
`
`Summer 1997 (EX-1033)
`
` U.S. Patent No. 6,353,443 to Zhinong Ying (EX-1035)
`
` U.S. Patent No. 5,790,176 to Bernard Jeff Craig (EX-1036)
`
` U.S. Patent No. 6,230,194 to Jean-Marc Frailong et al. (EX-1037)
`
` U.S. Patent No. 6,600,734 to Alex Gernert, et al. (EX-1038)
`
` Jon D. Brady, Virtual Private Networking – The Flexible Approach, In-
`
`stitution of Electrical Engineers, 1997 (EX-1039)
`
` U.S. Patent No. 6,055,575 to Gaige B. Paulsen, et al. (EX-1040)
`
` U.S. Patent No. 4,989,230 to Steven F. Gillig, et al. (EX-1045)
`
` Excerpts from Constantine A. Balanis, Antenna Theory Analysis and De-
`
`sign, Harper & Row, 1982 (EX-1048)
`
`22.
`
`I have also reviewed some cited supporting references and documen-
`
`tation in forming my opinions below.
`
`23. Counsel has informed me that I should consider these materials
`
`through the lens of one of ordinary skill in the art related to the ’946 patent at the
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`14
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`

`time of the earliest possible priority date of the ’946 patent, and I have done so dur-
`
`ing my review of these materials. Counsel has informed me that the earliest possi-
`
`ble priority date to which the challenged claims of ’946 patent are entitled is June
`
`4, 1999 (“Critical Date”), and I have therefore used that Critical Date in my analy-
`
`sis below.
`
`24. Any figures that appear within this document have been prepared with
`
`the assistance of Counsel and reflect my understanding of the ’946 patent and the
`
`prior art discussed below.
`
`25. Although this Declaration refers to certain portions of the cited refer-
`
`ences for the sake of brevity, it should be understood that these citations are exam-
`
`ples, and that one of ordinary skill in the art would have viewed the references
`
`cited herein in their entireties and, for reasons detailed later, in combination with
`
`other references cited herein or cited within those references themselves. The refer-
`
`ences used in this Declaration, therefore, should be viewed as being cited and ana-
`
`lyzed herein in their entireties.
`
`26. This declaration explains the conclusions that I have formed based on
`
`my analysis. To summarize those conclusions, based upon my knowledge and ex-
`
`perience and my review of the prior art publications listed above, I believe that:
`
` Claims 14 and 15 are rendered obvious by Yegoshin in view of Johnston
`
`and Billström (Ground 1A)
`
`15
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`

` Claims 1-11 and 16-21 are rendered obvious by Yegoshin in view of
`
`Johnston, Billström, and Bernard (Ground 1B)
`
` Claim 12 is rendered obvious by Yegoshin in view of Johnston, Bill-
`
`ström, Bernard, and WO748 (Ground 1C)
`
` Claims 13 and 26 are rendered obvious by Yegoshin in view of Johnston,
`
`Billström, Bernard, and Sainton (Ground 1D)
`
` Claims 27-30 are rendered obvious by Yegoshin in view of Johnston,
`
`Billström, Bernard, and Preiss (Ground 1E)
`
`
`
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`27. Based on my knowledge and experience in the field and my review of
`
`the ’946 patent and its file history, I believe that a person of ordinary skill in the art
`
`at the time of alleged invention (“POSITA”) would have had a Bachelor’s degree
`
`in electrical engineering, computer engineering, computer science, or a related
`
`field, and at least two years of experience related to the design or development of
`
`wireless communication systems, or the equivalent. Additional graduate education
`
`could substitute for professional experience, or significant experience in the field
`
`could substitute for formal education.
`
`28. Based on my experiences, I have a good understanding of the capabil-
`
`ities of one of ordinary skill. Indeed, I have taught and worked closely with many
`
`16
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`

`

`such persons over the course of my career. Based on my knowledge, skill, and ex-
`
`perience, I have an understanding of the capabilities of one of ordinary skill. For
`
`example, from teaching and supervising my students, I have an understanding of
`
`the knowledge that a person with this academic experience possesses. Furthermore,
`
`I possess those capabilities myself.
`
`
`
`V. LEGAL STANDARDS
`29.
`I have been informed by counsel of certain legal principles applicable
`
`to a patentability analysis and I have applied these principles as listed below.
`
`A. Claim Construction
`30.
`I have been informed by Counsel and understand that the best indica-
`
`tor of claim meaning is its usage in the context of the patent specification as under-
`
`stood by one of ordinary skill. I further understand that the words of the claims
`
`should be given their plain meaning unless that meaning is inconsistent with the
`
`patent specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). Because I do not know at what
`
`date the invention as claimed was made, I have used the earliest priority date of the
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`17
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`’946 patent as the point in time for claim interpretation purposes. That date was
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`June 4, 1999.
`
`B.
`31.
`
`Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as obvi-
`
`ous. I am informed by Counsel and understand that all prior art references are to be
`
`looked at from the viewpoint of a person of ordinary skill in the art at the time of
`
`the invention, and that this viewpoint prevents one from using his or her own in-
`
`sight or hindsight in deciding whether a claim is obvious.
`
`32.
`
`I have been informed by Counsel and understand that a claim is un-
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`patentable for obviousness under 35 U.S.C. § 103 “if the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject mat-
`
`ter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.” I am
`
`informed by Counsel and understand that obviousness may be based upon a combi-
`
`nation of references. I am informed by Counsel and understand that the combina-
`
`tion of familiar elements according to known methods is likely to be obvious when
`
`it does no more than yield predictable results. However, I am informed by Counsel
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`18
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`and understand that a patent claim composed of several elements is not proved ob-
`
`vious merely by demonstrating that each of its elements was, independently,
`
`known in the prior art.
`
`33.
`
`I am informed by Counsel and understand that when a patented inven-
`
`tion is a combination of known elements, a court must determine whether there
`
`was an apparent reason to combine the known elements in the fashion claimed by
`
`the patent at issue by considering the teachings of prior art references, the effects
`
`of demands known to people working in the field or present in the marketplace,
`
`and the background knowledge possessed by a person having ordinary skill in the
`
`art.
`
`34.
`
`I am informed by Counsel and understand that a patent claim com-
`
`posed of several limitations is not proved obvious merely by demonstrating that
`
`each of its limitations was independently known in the prior art. I am informed by
`
`counsel for the Patent Owner and understand that identifying a reason those ele-
`
`ments would be combined can be important because inventions in many instances
`
`rely upon building blocks long since uncovered, and claimed discoveries almost of
`
`necessity will be combinations of what, in some sense, is already known. I am in-
`
`formed by Counsel and understand that it is improper to use hindsight in an obvi-
`
`ousness analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`19
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`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
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`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
`
`such as commercial success, long-felt but unresolved need, failure of others, indus-
`
`try recognition, copying, and unexpected results. I understand that the foregoing
`
`factors are sometimes referred to as the “Graham factors.”
`
`36.
`
`I have been informed by Counsel and understand that an obviousness
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`evaluation can be based on a combination of multiple prior art references. I under-
`
`stand that the prior art references themselves may provide a suggestion, motiva-
`
`tion, or reason to combine, but that the nexus linking two or more prior art refer-
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`ences is sometimes simple common sense. I have been informed by Counsel and
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`understand that obviousness analysis recognizes that market demand, rather than
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`scientific literature, often drives innovation, and that a motivation to combine ref-
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`erences may be supplied by the direction of the marketplace.
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`37.
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`I have been informed by Counsel and understand that if a technique
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`has been used to improve one device, and a person of ordinary skill at the time of
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`invention would have recognized that it would improve similar devices in the same
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`way, using the technique is obvious unless its actual application is beyond his or
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`her skill.
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`20
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`38.
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`I have been informed by Counsel and understand that practical and
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`common sense considerations should guide a proper obviousness analysis, because
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`familiar items may have obvious uses beyond their primary purposes. I have been
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`informed by Counsel and understand that a person of ordinary skill looking to
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`overcome a problem will often be able to fit together the teachings of multiple
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`prior art references. I have been informed by Counsel and understand that obvious-
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`ness analysis therefore takes into account the inferences and creative steps that a
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`person of ordinary skill would have employed at the time of invention.
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`39.
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`I have been informed by Counsel and understand that a proper obvi-
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`ousness analysis focuses on what was known or obvious to a person of ordinary
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`skill at the time of invention, not just the patentee. Accordingly, I understand that
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`any need or problem known in the field of endeavor at the time of invention and
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`addressed by the patent can provide a reason for combining the elements in the
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`manner claimed.
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`40.
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`I have been informed by Counsel and understand that a claim can be
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`obvious in light of a single reference, without the need to combine references, if
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`the elements of the claim that are not found explicitly or inherently in the reference
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`can be supplied by the common sense of one of skill in the art.
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`41.
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`I have been informed by Counsel and understand that secondary indi-
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`cia of non-obviousness may include (1) a long felt but unmet need in the prior art
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`21
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`that was satisfied by the invention of the patent; (2) commercial success of pro-
`
`cesses covered by the patent; (3) unexpected results achieved by the invention; (4)
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`praise of the invention by others skilled in the art; (5) taking of licenses under the
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`patent by others; (6) deliberate copying of the invention; (7) failure of others to
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`find a solution to the long felt need; and (8) skepticism by experts. I understand
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`that evidence of secondary indicia of non-obviousness, if available, should be con-
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`sidered as part of the obviousness analysis.
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`42.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`43.
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`In sum, my understanding is that prior art teachings are properly com-
`
`bined where one of ordinary skill having the understanding and knowledge re-
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`flected in the prior art and motivated by the general problem facing the inventor,
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`would have been led to make the combination of elements recited in the claims.
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`Under this analysis, the prior art references themselves, or any need or problem
`
`known in the field of endeavor at the time of the invention, can provide a reason
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`for combining the elements of multiple prior art references in the claimed manner.
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`22
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`44.
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`I have been informed by Counsel and understand that in an inter
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`partes review, “the petitioner shall have the burden of proving a proposition of un-
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`patentability,” including a proposition of obviousness, “by a preponderance of the
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`evidence.” 35 U.S.C. §316(e).
`
`
`
`VI. THE ’946 PATENT
`A. Overview of the ’946 Patent
`45. The ’946 patent generally relates to “multiple Internet Protocol (IP)
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`based wireless data transmissions” that “are simultaneously provided between a
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`wireless device and a server, including providing multiple antennas, multiple T/R
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`units, multiple processors and multiple I/O ports on the wireless device.” EX-1001,
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`Abstract. In particular, referring to Figure 10 (below), the ’946 patent describes
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`that the wireless device (e.g.