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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`VALTRUS INNOVATIONS LTD.,
`Patent Owner.
`________________
`
`Case No. TBD
`Patent No. 7,748,005
`________________
`
`
`DECLARATION OF VIJAY K. MADISETTI, Ph.D.
`IN SUPPORT OF PETITION FOR INTER PARTES
`REVIEW OF U.S. PATENT NO. 7,748,005
`
`
`
`
`Google Exhibit 1003
`Google v. Valtrus
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`A. Engagement ................................................................................................. 1
`B. Background and Qualifications ................................................................... 2
`C. Bases of My Opinions and Materials Considered .....................................13
`D. MY UNDERSTANDING OF PATENT LAW .........................................14
`1. Anticipation .........................................................................................16
`2. Obviousness .........................................................................................17
`3. Priority And Written Description ........................................................23
`4. Claim Interpretation ............................................................................24
`II. DESCRIPTION OF THE RELEVANT FIELD AND THE RELEVANT
`TIME FRAME .................................................................................................26
`III. PERSON HAVING ORDINARY SKILL IN THE ART ...............................27
`IV. THE ’005 PATENT .........................................................................................31
`A. Embodiments .............................................................................................31
`B. Challenged Claims .....................................................................................33
`V. THE CHALLENGED CLAIMS ARE UNPATENTABLE WHEN
`COMPARED TO THE PRIOR ART IDENTIFIED IN THE PETITION. .....37
`VI. GROUND 1: MCCARTHY+GIEN RENDERS OBVIOUS CLAIMS 1-20. 38
`VII. GROUND 1A: MCCARTHY+GIEN RENDERS OBVIOUS
`DEPENDENT CLAIMS 2-5, 9-14, AND 16-18 (THE “VM CLAIMS”). .....38
`A. The earliest effective filing date for the VM Claims is September
`10, 2004. ....................................................................................................38
`1. The VM Claims are not entitled to a priority date before
`September 10, 2004. ............................................................................43
`2. Like the VM Claims, the VSL Claims are not entitled to
`priority before September 10, 2004.....................................................62
`3. The Host OS Claims are not entitled to priority before
`September 10, 2004. ............................................................................68
`
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`

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`B. References and motivation to combine. ....................................................70
`1. McCarthy. ............................................................................................70
`2. Gien. ....................................................................................................71
`3. McCarthy+Gien. ..................................................................................76
`C. Claim-by-Claim Analysis. .........................................................................90
`1. McCarthy meets claim 8 and McCarthy+Gien renders obvious
`method claims 9-14. ............................................................................90
`2. McCarthy+Gien renders obvious system claims 2-5. .......................118
`3. McCarthy+Gien renders obvious CRM claims 16-18. .....................124
`VIII. GROUND 1B: MCCARTHY+GIEN RENDERS OBVIOUS CLAIMS 1,
`6-8, 15, AND 19-20. ......................................................................................130
`A. No Parent Application Provides Written Description Supporting
`The Full Scope of “computing domains.” ...............................................130
`1. The Full Scope of “computing domains” Includes VMs. .................131
`2. No Parent Application Describes VMs. ............................................132
`3. No Parent Application Describes A “computing domains”
`Genus. ................................................................................................132
`B. McCarthy+Gien renders obvious method claim 8. .................................135
`C. McCarthy+Gien renders obvious system claims 1 & 6-7. ......................136
`1. Claim 1. .............................................................................................136
`2. Claim 6: The computing system of claim 1 wherein said
`plurality of resources comprise at least one processor. .....................136
`3. Claim 7: The computing system of claim 6 wherein said first
`manager allocates time slices of said at least one processor
`between multiple computing domains of said plurality of
`computing domains. ..........................................................................136
`D. McCarthy+Gien renders obvious CRM claims 15 & 19-20. ..................137
`1. Claim 15. ...........................................................................................137
`2. Claim 19: The computer readable storage medium of claim 15
`wherein said resources comprise processors. ....................................137
`3. Claim 20: The computer readable storage medium of claim 19
`wherein said code for dynamically allocating reassigns time
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`slices of said processors between said plurality of computing
`domains. ............................................................................................137
`IX. GROUND 2: MCCARTHY ANTICIPATES OR RENDERS OBVIOUS
`CLAIMS 1, 6, AND 8. ...................................................................................138
`A. Method claim 8. .......................................................................................138
`B. System claims 1 and 6. ............................................................................138
`1. Claim 1. .............................................................................................138
`2. Claim 6: The computing system of claim 1 wherein said
`plurality of resources comprise at least one processor. .....................139
`X. RELATION TO PETITION FOR IPR OF U.S. PATENT NO. 7,523,454 ..139
`XI. CONCLUSION ..............................................................................................145
`APPENDIX A: MATERIALS CONSIDERED ....................................................146
`
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`iii
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`I, Vijay K. Madisetti, declare:
`
`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained on behalf of Google LLC (“Google” or the
`1.
`
`“Petitioner”) as an independent technical expert in the above-captioned IPR
`
`proceeding (“the IPR”). This document provides certain of my opinions
`
`concerning the patentability of all claims in U.S. Patent No. 7,748,005 (Ex.1001,
`
`“the ’005 patent”), specifically claims 1-20 (the “Challenged Claims”). I make this
`
`Declaration in support of Google’s petition in the IPR.
`
`2.
`
`For my work as an expert in this matter, I am being compensated for
`
`my services at my standard rate, plus actual expenses. My hourly compensation is
`
`based solely on the amount of time that I devote to activity related to this case and
`
`is in no way contingent on the nature of my findings, the presentation of my
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`findings in testimony, or the outcome of this or any other proceeding. I have no
`
`other personal or financial stake or interest in the outcome of the present
`
`proceeding. I do not have any expectation or promise of additional business with
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`the Petitioner in exchange for the positions explained herein.
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`3.
`
`I make this Declaration based on my personal knowledge, including
`
`my education, training, research, and professional experience.
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`

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`Background and Qualifications
`B.
`4. My curriculum vitae (“CV”) detailing my educational background,
`
`professional experience, and list of publications is provided as Exhibit 1004. Some
`
`of my background and experience that qualifies me to offer the opinions in this
`
`Declaration as an expert in the technical issues in this case are as follows.
`
`5.
`
`I have over thirty years of experience as an electrical and computer
`
`engineer in industry, education, and consulting.
`
`6.
`
`I am a Professor in the Schools of Electrical & Computer Engineering
`
`and Cybersecurity & Privacy at the Georgia Institute of Technology (Georgia
`
`Tech). I have worked extensively in the field of digital communications and have
`
`studied telecommunications and systems engineering since 1981. I also have over
`
`20 years of industry experience in computer engineering, distributed computer
`
`systems, networking, software engineering, signal processing, and
`
`telecommunications, including wireless communications and signal processing.
`
`Throughout this time, I have designed, implemented, and tested various products in
`
`the fields of electronics, computer engineering, and communications.
`
`7.
`
`In 1984, I received a Bachelor of Technology in Electronics and
`
`Electrical Communications Engineering from the Indian Institute of Technology
`
`(IIT). In 1989, I received my Ph.D. in Electrical Engineering and Computer
`
`Sciences (EECS) from the University of California, Berkeley. That year, I also
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`- 2 -
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`received the Demetri Angelakos Outstanding Graduate Student Award from the
`
`University of California, Berkeley, and the IEEE/ACM Ira M. Kay Memorial
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`Paper Prize.
`
`8.
`
`In 1989, I also joined the faculty of Georgia Tech. I began working at
`
`Georgia Tech as an assistant professor, became an associate professor in 1995, and
`
`have held my current position since 1998. As a member of the faculty at Georgia
`
`Tech, I have been active in, among other technologies, cloud computing,
`
`distributed computing, image and video processing, computer engineering,
`
`embedded systems, chip design, software systems, wireless networks and cellular
`
`communications.
`
`9.
`
`I have been involved in research and technology in the area of
`
`computing and digital signal processing since the late 1980s, and I am the Editor-
`
`in-Chief the IEEE Press/CRC Press’s 3-volume Digital Signal Processing
`
`Handbook (Editions 1 & 2) (1998, 2010).
`
`10. Over the past three decades, I studied, used, and designed hardware
`
`and software systems and infrastructure that enable various aspects of distributed
`
`computing, ranging from parallel processing for scientific computation to
`
`implementation of various tracking and management applications including fleet
`
`tracking and management, intelligent transportation system management to name a
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`- 3 -
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`few. Prior to or around the timeframe of the filing the ’005 patent, some of my
`
`significant work in the area of distributed computing include the following:
`
`11. For example, I developed and presented on a novel cloud based IT
`
`framework, CloudTrack, for distributed data driven intelligent transportation
`
`systems. I describe how the proposed framework can be leveraged for real-time
`
`fresh food supply tracking and monitoring. CloudTrack allows efficient storage,
`
`processing and analysis of real-time location and sensor data collected from fresh
`
`food supply vehicles. This paper describes the architecture, design, and
`
`implementation of CloudTrack, and how the pro- posed cloud-based IT framework
`
`leverages the parallel and distributed computing capability of a computing cloud
`
`based on a large-scale distributed batch processing infrastructure. A dynamic
`
`vehicle routing approach is adopted where the alerts trigger the generation of new
`
`routes. CloudTrack provides the global information of the entire fleet of food
`
`supply vehicles and can be used to track and monitor a large number of vehicles in
`
`real-time. Our approach leverages the advantages of the IT capabilities of a
`
`computing cloud into the operations and supply chain.
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`12. Further, I developed a fleet management application with
`
`
`
`heterogeneity of devices and data, database synchronization, group transactions,
`
`peer-to-peer computing, and mobility support. This involved simulating a delivery
`
`service's fleet of trucks with PCs and hand-held devices, and describing how the
`
`system works together. To send messages between devices, the Simple Object
`
`Access Protocol (SOAP) was used, allowing heterogeneous devices to
`
`communicate as peers. The ad-hoc nature of the solutions based on the existing
`
`technologies has led to designing a comprehensive middleware, namely, System on
`
`Devices (SyD). SyD enables rapid development of collaborative applications, such
`
`as a fleet system, over heterogeneous, independent, data stores, devices, and wired
`
`and wireless networks, including those involving the web services.
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`- 5 -
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`13. Additionally, I developed a collaborative application running on a
`
`
`
`collection of heterogeneous, possibly mobile, devices, each potentially hosting data
`
`stores. Using existing middleware technologies such as JXTA, BREW,
`
`compact .NET and J2ME requires too many ad-hoc techniques as well as
`
`cumbersome and time-consuming programming. Our System on Mobile Devices
`
`(SyD) middleware, on the other hand, has a modular architecture that makes such
`
`application development very systematic and streamlined. The architecture
`
`supports transactions over mobile data stores, with a range of remote group
`
`invocation options and embedded interdependencies among such data store
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`objects. The architecture further provides a persistent uniform object view, group
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`transaction with Quality of Service (QoS) specifications, and XML vocabulary for
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`interdevice communication. SyD is the first comprehensive working prototype of
`
`its kind, with a small code footprint of 112 KB with 76 KB being device-resident,
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`and has a good potential for incorporating many ideas for performance extensions,
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`scalability, QoS, workflows and security.
`
`14.
`
`I also have significant experience in designing and implementing
`
`electronic equipment using various source code languages, including C, assembly
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`code, VHDL, and Verilog. In 2000, I published a book entitled “VHDL:
`
`Electronics Systems Design Methodologies.” In 1997, I was awarded the VHDL
`
`International Best PhD Dissertation Advisor for my contributions in the area of
`
`rapid prototyping.
`
`15.
`
`I have designed and implemented multiple processor computing
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`systems that perform multimedia tasks (e.g., speech and audio recognition) and
`
`also avionics/embedded guidance systems since the mid-1990s, and I have also
`
`implemented real-time operating systems in the same time frame. Representative
`
`publications of my work in these areas include, The Georgia Tech Digital Signal
`
`Multiprocessor (DSMP), IEEE Transactions on Signal Processing, Vol. 41, Issue
`
`7, 1993, and “Task Scheduling on the Georgia Tech Digital Signal
`
`Multiprocessor”, Proc. IEEE ICASSP 1992. More recent work that is related to
`
`multimedia processing on multiprocessor systems can be found in “A Dynamic
`
`Resource Management and Scheduling Environment for Embedded Multimedia
`
`and Communications Platforms”, IEEE Embedded Systems Letters, Vol. 3, Issue
`
`1, 2011. Three generations of Digital Signal Multiprocessors (DSMP’s) (listed in
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`the table below) were designed at Georgia Tech as part of my research and
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`education efforts. Technologies including multiprocessor systems, task scheduling,
`
`distributed computing, and resource management are fundamental to cloud
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`computing infrastructure.
`
`
`
`
`In collaboration with the US Air Force, Lockheed Martin, and Hughes
`
`16.
`
`Corporation, I designed and implemented a 192-processor multiprocessor system
`
`for processing real-time avionics data (infrared search and track applications –
`
`IRST), and this represented one of the largest multiprocessor systems used in the
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`mid-1990s timeframe on aircraft. See my publications, “Virtual Prototyping of
`
`- 8 -
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`Embedded Microcontroller-Based DSP Systems”, IEEE Micro, 1995, and also
`
`“VHDL Token-Based Performance Modeling for 2D and 3D Infrared Search and
`
`Track”, Proc. SPIE VIUF, 1998.
`
`
`17. Since 1995, I have authored, co-authored, or edited several books in
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`the areas of communications, signal processing, chip design, software engineering,
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`and cloud-based computing including VLSI Digital Signal Processors (1995),
`
`Quick-Turnaround ASIC Design in VHDL (1996), The Digital Signal Processing
`
`Handbook (1997 & 2010), Cloud Computing: A Hands-On Approach (2013),
`
`Internet of Things: A Hands-On Approach (2014), Big Data Science & Analytics
`
`(2016).
`
`18.
`
`I have authored several published articles related to operating system
`
`design, performance optimization, and virtualization, including:
`
`- 9 -
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`

`

`•
`
`V. K. Madisetti and T. W. Egolf, “Virtual prototyping of embedded
`
`microcontroller-based DSP systems,” IEEE Micro, vol. 15, no. 5, pp. 9-21,
`
`Oct. 1995.
`
`•
`
`V.K. Madisetti, D.A. Hardaker, and R.J. Fujimoto, “The MIMDEX
`
`Environment for Parallel Simulation,” Journal of Parallel and Distributed
`
`Computing, vol. 18, no. 4, pp. 473-483, Aug. 1993.
`
`•
`
`P. Kuacharoen, T. Akgul, V. J. Mooney and V. K. Madisetti,
`
`“Adaptability, extensibility and flexibility in real-time operating systems,”
`
`Proceedings Euromicro Symposium on Digital Systems Design, pp. 400-405,
`
`2001.
`
`•
`
`T. Akgul, P. Kuacharoen, V.J. Mooney, and V.K. Madisetti, “A
`
`debugger RTOS for embedded systems,” Proceedings 27th EUROMICRO
`
`Conference. 2001: A Net Odyssey, pp. 264-269, 2001.
`
`•
`
`V. K. Madisetti. “System-Level Synthesis and Simulation in VHDL –
`
`A Taxonomy and Proposal Towards Standardization.” VHDL International
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`Users Forum, Spring 1995 Proceedings, pp. 8.1-8.14, 1995.
`
`•
`
`S. Famorzadeh, V. Madisetti, T. Egolf and T. Nguyen, “BEEHIVE: an
`
`adaptive, distributed, embedded signal processing environment,” 1997 IEEE
`
`International Conference on Acoustics, Speech, and Signal Processing, vol.
`
`1, pp. 663-666, 1997.
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`- 10 -
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`19. As part of the Beehive project in the mid to late 1990s at Georgia
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`Tech, I collaborated with the US Army Research Laboratories and Lockheed
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`Martin to develop a distributed computing environment for signal processing that
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`distributed virtual machines on servers distributed at multiple geographical sites,
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`that collaboratively executed sophisticated processing of sensor data. A common
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`operating environment (COE) kept track of performance and resource consumption
`
`and adaptively managed resources and performance.
`
`20. A brokered computation model allowed optimization of performance
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`and resource usage as shown below.
`
`
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`
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`21.
`
`I have authored over 100 articles, reports, and other publications
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`pertaining to electrical engineering, and in the areas of computer engineering,
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`communications signal processing, and communications. All of my publications,
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`including the ones identified above, are set forth in my attached CV. I have also
`
`authored several books in cloud computing, virtualization, data analytics and IoT.
`
`22.
`
`In addition to co-authoring a book on cloud computing, I authored
`
`several publications on cloud computing, I am also the first inventor on over 30
`
`issued US patents and have several other pending applications in the area of cloud
`
`computing, blockchain and distributed computing.
`
`23.
`
`I have been elected a Fellow of the Institute of Electrical and
`
`Electronics Engineers (“IEEE”) in recognition of my contributions to embedded
`
`computing systems. The IEEE is a worldwide professional body consisting of more
`
`than 300,000 electrical and electronic engineers. Fellow is the highest grade of
`
`membership of the IEEE, with only one-tenth of one percent of the IEEE
`
`membership being elected to the Fellow grade each year.
`
`24.
`
`In 2006, I was awarded the Frederick Emmons Terman Medal from
`
`the American Society of Engineering Education (ASEE) and HP Corporation for
`
`my contribution to electrical engineering while under the age of 45.
`
`C. Bases of My Opinions and Materials Considered
`I have reviewed the ’005 patent, its prosecution history, and the prior
`25.
`
`art and other documents and materials cited herein. For ease of reference, the full
`
`list of documents that I have considered is included in Appendix A. I have also
`
`considered the documents cited and referenced herein, even if not included in
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`Appendix A. Each of these materials is a type of document that experts in my field
`
`would have reasonably relied upon when forming their opinions and would have
`
`had access to either through the applicable patent office and/or well-known
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`libraries, conferences, publications, organizations, and websites in the field as
`
`further discussed herein.
`
`26. My opinions in this Declaration are based on my review of these
`
`documents, as well as upon my education, training, research, knowledge, and
`
`experience. When developing the opinions set forth in this declaration, I assumed
`
`the perspective of a person having ordinary skill in the art, as set forth in Section
`
`III below.
`
`27. The opinions and comments formulated during this assessment are
`
`based on observations and information available at the time of this investigation.
`
`D. MY UNDERSTANDING OF PATENT LAW
`In developing my opinions, I discussed various relevant legal
`28.
`
`principles with Petitioner’s attorneys. I have relied upon such legal principles, as
`
`explained to me, while forming the opinions set forth in this declaration. My
`
`understanding in this respect is as follows:
`
`29.
`
`I understand that “inter partes review” (IPR) is a proceeding before
`
`the United States Patent & Trademark Office for evaluating the patentability of an
`
`issued patent’s claims based on prior-art patents and printed publications.
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`30.
`
`I understand that, in this proceeding, Petitioner has the burden of
`
`proving that the challenged claims of the ’005 patent are unpatentable by a
`
`preponderance of the evidence. I understand that a “preponderance of the
`
`evidence” means that the evidence establishes that a fact or conclusion is more
`
`likely true than not true.
`
`31.
`
`I understand that patent claims can be independent or dependent. I
`
`understand that a dependent claim must reference a claim previously set forth, and
`
`then must specify a further limitation of the claimed subject matter. I also
`
`understand that a dependent claim is treated as incorporating by reference all
`
`limitations of the previously recited claim that it references. I understand than an
`
`independent claim does not reference or incorporate limitations from a previously
`
`disclosed claim.
`
`32.
`
`I understand that, in IPR proceedings, claim terms in a patent are
`
`given their ordinary and customary meaning as understood by a person of ordinary
`
`skill in the art (“POSA”) in the context of the entire patent and the prosecution
`
`history pertaining to the patent. If the specification provides a special definition
`
`for a claim term that differs from the meaning the term would otherwise possess,
`
`the specification’s special definition takes precedence. I have applied these
`
`standards in preparing the opinions in this declaration.
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`33.
`
`I understand that for an invention claimed in a patent to be patentable,
`
`it must be, among other things, new (and consequently not anticipated) and not
`
`obvious from the prior art. My understanding of these two legal standards is set
`
`forth below.
`
`Anticipation
`1.
`I understand that, for a patent claim to be “anticipated” by the prior art
`
`34.
`
`(and therefore not novel), each and every claim limitation must be disclosed,
`
`expressly or inherently, in the subject matter provided by a single prior-art
`
`reference. I understand that anticipation requires that all of the elements of a claim
`
`have to be arranged in the same manner as in the claims or can be immediately
`
`envisaged. I understand that a claim limitation is disclosed for the purpose of
`
`anticipation if a POSA would have understood the reference to disclose the
`
`limitation based on inferences that a POSA would reasonably be expected to draw
`
`from the explicit teachings in the reference when read in the context provided by
`
`the POSA’s knowledge and experience.
`
`35.
`
`I understand that a claim limitation is inherent in a prior art reference
`
`if that limitation is necessarily present when practicing the teachings of the
`
`reference, regardless of whether a POSA recognized the presence of that limitation
`
`in the prior art.
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`2. Obviousness
`I understand that a patent claim may be unpatentable if it would have
`
`36.
`
`been obvious to a POSA in view of a single prior-art reference or a combination of
`
`prior-art references. I have been informed that obviousness is determined from the
`
`perspective of a hypothetical person of ordinary skill in the art and that the asserted
`
`claims of the patent should be read from the point of view of such a person at the
`
`time the alleged invention was made. I have been informed that a hypothetical
`
`person of ordinary skill in the art is assumed to know and to have all relevant prior
`
`art in the field of endeavor covered by the ’005 patent and would thus have been
`
`familiar with each of the references cited herein, as well as the background
`
`knowledge in the art discussed and the full range of teachings they contain.
`
`37.
`
`I have been informed that there are two criteria for determining
`
`whether prior art is analogous and thus can be considered prior art: (1) whether the
`
`art is from the same field of endeavor, regardless of the problem addressed, and (2)
`
`if the reference is not within the field of the patentee’s endeavor, whether the
`
`reference still is reasonably pertinent to the particular problem with which the
`
`patentee is involved. I have also been informed that the field of endeavor of a
`
`patent is not limited to the specific point of novelty, the narrowest possible
`
`conception of the field, or the particular focus within a given field. I have also been
`
`informed that a reference is reasonably pertinent if, even though it may be in a
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`different field from that of the patentee’s endeavor, it is one which, because of the
`
`matter with which it deals, logically would have commended itself to a patentee’s
`
`attention in considering his problem.
`
`38.
`
`I understand that a patent claim is obvious if the differences between
`
`the subject matter of the claim and the prior art are such that the claimed subject
`
`matter, as a whole, would have been obvious to a POSA at the time the invention
`
`was made. I have been informed as well that a prior art reference should be
`
`viewed as a whole. Specifically, I understand that the obviousness question
`
`involves a consideration of: the scope and content of the prior art; the differences
`
`between the prior art and the claims at issue; the knowledge of a POSA; and any
`
`“secondary considerations” of non-obviousness
`
`39.
`
`I have been informed that certain factors called “secondary
`
`considerations” can include (1) the invention’s commercial success, (2) long felt
`
`but unresolved needs, (3) the failure of others, (4) skepticism by experts, (5) praise
`
`by others, (6) teaching away by others, (7) recognition of a problem, (8) copying of
`
`the invention by competitors, and (9) other relevant factors. I have been informed,
`
`however, that for such objective evidence to be relevant to the obviousness of a
`
`claim, there must be a causal relationship (called a “nexus”) between the claim and
`
`the evidence and that this nexus must be based on what is claimed and novel in the
`
`claim rather than something in the prior art. I also have been informed that even
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`when they are present, secondary considerations may be unable to overcome
`
`primary evidence of obviousness (e.g., motivation to combine with predictable
`
`results) that is sufficiently strong.
`
`40.
`
`I am not aware of any such “secondary considerations” applicable to
`
`the Challenged Claims. To my knowledge, the Patent Owner has not asserted any
`
`such secondary considerations with respect to the ’005 patent. However, should
`
`any be presented, I reserve the right to address those unknown factors if asked by
`
`the Petitioner to do so.
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`41.
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`I understand that for a claimed invention to be considered obvious, a
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`POSA must have had a reason for combining teachings from multiple prior-art
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`references (or for altering a single prior-art reference, in the case of obviousness in
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`view of a single reference) in the fashion proposed.
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`42.
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`I have also been informed that in considering whether an invention for
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`a claimed combination would have been obvious, I may assess whether there are
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`apparent reasons to combine known elements in the prior art in the manner claimed
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`in view of interrelated teachings of multiple prior art references, the effects of
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`demands known to the design community or present in the marketplace, and/or the
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`background knowledge possessed by a person having ordinary skill in the art. I
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`have been informed that other principles may be relied on in evaluating whether an
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`alleged invention would have been obvious, and that these principles include the
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`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
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`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 person of
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`ordinary skill in the art can implement a predictable variation, the
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`variation is likely obvious;
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`• If a technique has been used to improve one device, and a person of
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`ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique is obvious unless its
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`actual application 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
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`on, or require, showing a teaching, suggestion, or motivation to
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`combine;
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`- 20 -
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`• Market demand, rather than scientific literature, can drive design
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`trends and may show obviousness;
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`• In determining whether the subject matter of a patent claim would
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`have been obvious, neither the particular motivation nor the avowed
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`purpose 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 person of
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`ordinary skill in the art will be able to fit the teachings of multiple
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`patents together like pieces of a puzzle;
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`• A person of ordinary skill in the art is also a person of ordinary
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`creativity, and is not an 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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`- 21 -
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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 person of
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`ordinary skill in the art would have had good reason to pursue the
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`known options within his or her technical grasp; and
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`• One should be cautious of using hindsight in evaluating whether an
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`alleged invention would have been obvious.
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`43.
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`I understand that a POSA must have a reasonable expectation of
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`success in combining the references. I understand that a reasonable expectation of
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`success refers to the likelihood of success in combining references to meet the
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`limitations of the claimed invention. I understand that in evaluating a combination,
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`a predictable result means not only that the prior art elements are capable of being
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`physically combined, but also that the combination would have worked for its
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`intended purpose.
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`44.
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`I have b