Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`Google LLC,
`Petitioner
`
`v.
`
`WAG Acquisition, L.L.C.
`Patent Owner
`
`
`
`IPR2022-01413
`
`U.S. Patent No. 9,762,636 B2
`Issue Date: September 12, 2017
`
`Title: STREAMING MEDIA DELIVERY SYSTEM
`
`
`
`
`DECLARATION OF NATHANIEL POLISH, Ph.D.
`
`
`
`
`
`
`
`
`
`Petitioners' Exhibit 1002
`Page 0001
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`TABLE OF CONTENTS
`
`
`I. 
`
`II. 
`III. 
`
`Page
`INTRODUCTION AND QUALIFICATIONS .............................................. 6 
`A.  Qualifications and Experience ............................................................. 6 
`B.  Materials Considered .......................................................................... 10 
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 14 
`STATEMENT OF LEGAL PRINCIPLES ................................................... 16 
`A. 
`Claim Construction ............................................................................ 16 
`B. 
`Obviousness ........................................................................................ 18 
`IV.  TECHNOLOGY BACKGROUND .............................................................. 24 
`A. 
`Streaming Media Data over the Internet ............................................ 24 
`B. 
`Internet Transfer Protocols ................................................................. 27 
`C. 
`Digital Audio and Video .................................................................... 28 
`D. 
`Pull-Based Streaming Systems ........................................................... 30 
`THE ’636 PATENT ...................................................................................... 32 
`A.  Overview of the Specification ............................................................ 32 
`B. 
`Prosecution History ............................................................................ 35 
`C. 
`Related Inter Partes Review Proceedings .......................................... 37 
`D. 
`The Challenged Claims ...................................................................... 41 
`VI.  APPLICATION OF THE PRIOR ART TO CHALLENGED
`CLAIMS ....................................................................................................... 43 
`A. 
`Brief Summary of Prior Art ............................................................... 44 
`1. 
`Carmel [EX1003] ..................................................................... 44 
`2. 
`Narayan [EX1005] ................................................................... 47 
`3. 
`Ravi [EX1004] ......................................................................... 48 
`Ground 1: Claims 1-12 Are Obvious Over Carmel .......................... 51 
`1. 
`Claim 1 (Independent) ............................................................. 51 
`2
`
`
`V. 
`
`B. 
`
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`Petitioners' Exhibit 1002
`Page 0002
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`

`

`(a) 
`
`(b) 
`
`(c) 
`
`(d) 
`
`(e) 
`
`(f) 
`
`(g) 
`
`(h) 
`
`(i) 
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`“receiving at the server system a continuous
`digitally encoded stream for the audio or video
`program, via a data connection from a live source,
`in real time, the server system comprising at least
`one computer;” (claim 1[a]) .......................................... 55 
`“upon receipt of the stream by the server system,”
`(claim 1[b]) .................................................................... 59 
`“supplying, at the server system, media data
`elements representing the program, each media
`data element comprising a digitally encoded
`portion of the program and having a playback
`rate,” (claim 1[b(i)])....................................................... 60 
`“serially identifying the media data elements, said
`serial identification indicating a time sequence of
`the media data elements, and” (claim 1[b(ii)]) .............. 65 
`“storing the media data elements in a data structure
`under the control of the server system;” (claim
`1[b(iii)]) ......................................................................... 68 
`“receiving requests at the server system via one or
`more data connections over the Internet, for one or
`more of the media data elements stored in the data
`structure,” (claim 1[c]) .................................................. 69 
`“each received request specifying one or more
`serial identifiers of the requested one or more
`media data elements,” (claim 1[c(i)]) ............................ 71 
`“each received request originating from a
`requesting user system of a plurality of user
`systems;” (claim 1[c(ii)]) ............................................... 74 
`“responsive to the requests, sending, by the server
`system, the one or more media data elements
`having the one or more specified serial identifiers,
`to the requesting user systems corresponding to the
`requests; wherein” (claim 1[d]) ..................................... 78 
`
`-3-
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`Petitioners' Exhibit 1002
`Page 0003
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`(j) 
`
`(k) 
`
`(l) 
`
`“the data connection between the server system
`and each requesting user system has a data rate
`more rapid than the playback rate of the one or
`more media data elements sent via that
`connection;” (claim 1[d(i)]) ........................................... 80 
`“each sending is at a transmission rate as fast as
`the data connection between the server system and
`each requesting user system allows;” (claim
`1[d(ii)]) .......................................................................... 90 
`“the one or more media data elements sent are
`selected without depending on the server system
`maintaining a record of the last media data element
`sent to the requesting user systems;” (claim
`1[d(iii)]) ......................................................................... 94 
`“all of the media data elements that are sent by the
`server system to the plurality of user systems are
`sent in response to the requests; and” (claim
`1[d(iv)]) .......................................................................... 98 
`“all of the media data elements that are sent by the
`server system to the requesting user systems are
`sent from the data structure under the control of
`the server system as the media data elements were
`first stored therein.” (claim 1[d(v)]) .............................. 99 
`Claim 2: “The method of claim 1 wherein the serial
`identifiers are sequential.” ..................................................... 103 
`Claim 3: “The method of claim 1, wherein the sending is
`via a reliable transmission protocol.” .................................... 104 
`Claim 4: “The method of claim 3, wherein the reliable
`transmission protocol is TCP.” .............................................. 105 
`Claim 5 (Independent) ........................................................... 105 
`Dependent Claims 6-8 ............................................................ 112 
`Claim 9 (Independent) ........................................................... 114 
`
`(m) 
`
`(n) 
`
`-4-
`
`
`
`
`
`
`
`
`
`2. 
`
`3. 
`
`4. 
`
`5. 
`6. 
`7. 
`
`Petitioners' Exhibit 1002
`Page 0004
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`C. 
`
`E. 
`
`Dependent claims 10-12 ........................................................ 117 
`8. 
`Ground 2: Claims 1-12 Are Obvious Over Carmel in view of
`Narayan. ........................................................................................... 119 
`D.  Ground 3: Claims 1-12 Are Obvious Over Carmel in view of
`Ravi. .................................................................................................. 124 
`Ground 4: Claims 1-12 Are Obvious Over Carmel in view of
`Narayan and Ravi. ............................................................................ 129 
`VII.  NO SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS ...... 131 
`VIII.  CONCLUSION ........................................................................................... 132 
`
`
`
`
`
`-5-
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`Petitioners' Exhibit 1002
`Page 0005
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`I, Nathaniel Polish, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by Google LLC (“Petitioner”) as an independent
`
`expert consultant in this proceeding before the United States Patent and Trademark
`
`Office (“USPTO”).
`
`2.
`
`I am being compensated at a rate of $700/hour for my services in this
`
`proceeding, which is my regular and customary rate.
`
`3. My compensation is in no way contingent on the nature of my findings,
`
`the presentation of my findings in testimony or this declaration, or the outcome of
`
`this or any other proceeding. I have no other interest in this proceeding.
`
`A. Qualifications and Experience
`
`4. My Curriculum Vitae is attached as Exhibit 1067.
`
`5.
`
`6.
`
`I reside in New York City, NY.
`
`I am an independent consultant. All of my opinions stated in this
`
`declaration are based on my own personal knowledge and professional judgment. In
`
`forming my opinions, I have relied on my knowledge and experience in streaming
`
`media, signal processing, computer network design, and video processing.
`
`7.
`
`I am over 18 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein. A copy of my current
`
`
`
`6
`
`Petitioners' Exhibit 1002
`Page 0006
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`curriculum vitae, which details my education and professional and academic
`
`experience, is included as EX1067 in this proceeding. The following provides an
`
`overview of some of my experience that is relevant to the matters set forth in this
`
`declaration.
`
`8.
`
`I expect to testify regarding my background, qualifications, and
`
`experience relevant to the issues in this litigation. I have a Ph.D. in Computer
`
`Science from Columbia University. I hold the following four degrees from
`
`Columbia, spanning the years 1980 to 1993:
`
` Ph.D. in Computer Science, May 1993, Thesis: Mixed Distance
`Measures for the Optimization of Concatenative Vocabularies in Speech
`Synthesis;
` M.Phil. in Computer Science, December 1989;
` M.S. in Computer Science, December 1987; and
` B.A. in Physics, Columbia College, May 1984.
`
`9.
`
`For over thirty-five years, I have run a computer technology
`
`development firm that I co-founded, called Daedalus Technology Group. My
`
`primary business activity is the development of computer-related products. This
`
`activity involves understanding the business objectives of customers, designing
`
`products to suit their needs, and supervising the building, testing, and deployment of
`
`these products. I develop hardware and software as well as supervise others who do
`
`
`
`7
`
`Petitioners' Exhibit 1002
`Page 0007
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`so.
`
`10. Also, from time to time I found other companies in order to pursue
`
`particular product opportunities. I develop and ultimately sell these companies.
`
`Most of my business activity, however, is as a consulting product developer. From
`
`time to time I have also served as an expert witness on computer and software related
`
`cases. I am a named inventor on ten United States patents and am a member of
`
`several professional societies, including the IEEE and ACM.
`
`11.
`
`I have extensive experience in several areas relevant to this case. My
`
`doctoral work was in the area of computer speech. As part of that work, I developed
`
`signal processing systems and algorithms to filter and manipulate sound, especially
`
`speech. That work gave me strong practical insight into such topics as the
`
`management and transport of streaming media.
`
`12. Much of my professional work over the past thirty-five years has been
`
`as a computer technology product developer. Several of those products involved
`
`technologies closely related to the topics in the patent at issue in the current matter,
`
`including streaming audio and video systems and associated networking. One
`
`product in particular was for a company called Instant Video Technologies (IVT) in
`
`the mid-1990s. This company later changed its name to Burst.com. The products
`
`that I developed for IVT included a family of digital media servers to deliver high
`
`
`
`8
`
`Petitioners' Exhibit 1002
`Page 0008
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`quality media over a variety of network connection including Internet connections.
`
`The work resulted in a patent (U.S. Patent No. 5,963,202) on our server technology.
`
`13.
`
`In addition to this work for IVT, my firm also designed and developed,
`
`under my supervision, a number of products or systems for delivering digital audio
`
`and performing associated signal processing. Between 1982-1991, the firm designed
`
`and built, under my supervision, all parts of four generations of interactive voice
`
`editing systems for The Dun & Bradstreet Corporation. These editing systems
`
`produced output used in an extensive, high quality speech synthesis system that was
`
`part of a larger information delivery system. The systems were built on networks of
`
`computers in a variety of programming languages and systems. The systems
`
`involved interactive user interfaces, screen windows, signal processing, and voice
`
`file systems.
`
`14.
`
`In 2000, I also supervised the development, design, and deployment of
`
`an industrial strength interactive voice response (IVR) system that allows users to
`
`access streaming media via their cell phones. This system supported up to 96
`
`streams on a single chassis and was designed for a company called Savos. Under
`
`my supervision, the firm developed for this system the web-based content
`
`management system and interface for customizable user preferences.
`
`15.
`
`In addition to the products and systems described above, I have also
`
`
`
`9
`
`Petitioners' Exhibit 1002
`Page 0009
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`developed many other systems that utilize various networking techniques for moving
`
`data around the Internet in a timely way taking into account spontaneous changes in
`
`network capacity and usage.
`
`16. Through these and other experiences, I am very familiar with the
`
`technologies at issue in this matter.
`
`B. Materials Considered
`
`17. The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered. In forming
`
`my opinions, I have read and considered U.S. Patent No. 9,762,636 B2 (“’636
`
`patent”) [EX1001] and its prosecution history. I have cited to or considered the
`
`following documents in my analysis below:
`
`Description of Document
`
`Exhibit
`No.
`1001 U.S. Patent No. 9,762,636 B2 to Harold Edward Price (filed October
`3, 2016, issued September 12, 2017)
`1003 U.S. Patent No. 6,389,473 to Sharon Carmel et al. (filed March 24,
`1999, issued May 14, 2002) (“Carmel”)
`1004 U.S. Patent No. 6,292,834 to Hemanth Srinivas Ravi et al. (filed March
`14, 1997, issued September 18, 2001) (“Ravi”)
`1005 U.S. Patent No. 6,008,853 to Ajai Narayan et al. (filed November 12,
`1997, issued December 28, 1999) (“Narayan”)
`
`
`
`10
`
`Petitioners' Exhibit 1002
`Page 0010
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1009 U.S. Patent No. 5,867,230 to Feng Chi Wang et al. (filed June 30, 1997,
`issued February 2, 1999)
`1010 U.S. Patent No. 6,637,031 B1 to Phillip A. Chou (filed December 4,
`1998, issued October 21, 2003)
`
`1011
`
`Shanwei Cen et al., Flow and Congestion Control for Internet Media
`Streaming Applications (1997)
`
`1012
`
`Jian Lu, Signal Processing for Internet Video Streaming: A Review
`(2000)
`1013 H. Schulzrinne et al., Network Working Group Request for Comments:
`2326, Real Time Streaming Protocol (RTSP) (1998)
`1014 U.S. Patent No. 7,529,806 B1 to Yevgeniy Eugene Shteyn (filed
`November 4, 1999, issued May 5, 2009)
`1015 U.S. Patent No. 5,721,878 to Hal Hjalmar Ottesen et al. (filed June 7,
`1995, issued February 24, 1998
`1016 R. Fielding et al., Hypertext Transfer Protocol -- HTTP/1.1 (1999)
`1017
`
`Sam Iren and Paul D. Amer, The Transport Layer: Tutorial and Survey
`(1999)
`1018 U.S. Patent No. 5,793,980 to Robert D. Glaser et al. (filed November
`30, 1994, issued August 11, 1998)
`1019 M.H. Willebeek-Lemair et al., Bamba – Audio and video streaming over
`the Internet (1998)
`1020 Excerpts from David Austerberry, The Technology of Video and Audio
`Streaming (2004)
`
`
`
`11
`
`Petitioners' Exhibit 1002
`Page 0011
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1021 Cannon DV Format,
`https://web.archive.org/web/19991013131445/http://canondv.com:80/s
`hared/dvinfo/dvinfo2.html (1999)
`1022 Alan T. Wetzel and Michael R. Schell, Consumer Applications of the
`IEEE 1394 Serial Bus, and a 1394/DV Video Editing System (1996)
`1023 U.S. Patent No. 5,568,192 to Eric C. Hannah (filed August 30, 1995,
`issued October 22, 1996)
`1024 U.S. Patent No. 5,402,170 to Kenneth A. Parulski et al. (filed August
`31, 1992, issued March 28, 1995)
`
`1025
`
`Jean-Phillipe Martin-Flatin, Push vs. Pull in Web-Based Network
`Management (1999)
`1026 Lixin Gao et al., Catching and Selective Catching: Efficient Latency
`Reduction Techniques for Delivering Continuous Multimedia Streams
`(1999)
`1027 U.S. Patent No. 5,822,524 to Huey-Shiang Chen et al. (filed July 21,
`1995, issued October 13, 1998)
`
`1028
`
`Sriram S. Rao et al., Comparative Evaluation of Server-push and Client-
`pull Architectures for Multimedia Servers (1996)
`
`1029
`’636 Patent Prosecution History File
`1032 U.S. Patent No. 7,237,254 B1 to Nosakhare D. Omoigui (filed March
`29, 2000, issued June 26, 2007)
`1033 WAG Acquisition, L.L.C.’s Proposed Claim Constructions from WAG
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), dated February 18, 2022
`1034 U.S. Patent No. 5,488,433 to Kinya Washino et al. (filed March 1, 1995,
`issued January 30, 1996)
`
`
`
`12
`
`Petitioners' Exhibit 1002
`Page 0012
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1035
`
`Panasonic DV-PV910,
`https://web.archive.org/web/19990505044020/http://www.panasonic.c
`om:80/consumer_electronics/video/pv_dv910.htm (archived May 5,
`1999)
`1036 Canon Elura,
`https://web.archive.org/web/19990424171105/http://www.canondv.co
`m:80/elura/index.html (archived April 24, 1999)
`1037 Canon XL1
`https://web.archive.org/web/19990420230845/http://canondv.com:80/
`xl1/index2.html (archived April 20, 1994)
`1038 Anthony D. Mercando, Multimedia Mania (1994)
`1039 Brad Hansen, The Dictionary of Multimedia (1997)
`1040 Defendants Google LLC and YouTube, LLC’s Opening Claim
`Construction Brief from WAG Acquisition, L.L.C. v. Google LLC, No.
`6:21-cv-00816-ADA (W.D. Tex.), Dkt. No. 37, filed March 14, 2022
`1041 Declaration of Keith J. Teruya from WAG Acquisition, L.L.C. v. Google
`LLC, No. 6:21-cv-00816-ADA (W.D. Tex.), filed April 1, 2022
`
`1042
`1043
`
`Jonathan C. Soo, Live Multimedia over HTTP (1994)
`
`from WAG
`Plaintiff’s Responsive Claim Construction Brief
`Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA (W.D.
`Tex.), filed April 1, 2022
`1044 Defendants Google LLC and YouTube, LLC’s Reply Claim
`Construction Brief from WAG Acquisition, L.L.C. v. Google LLC, No.
`6:21-cv-00816-ADA (W.D. Tex.), Dkt. No. 43, filed April 15, 2022
`
`1045
`
`Phil Karn and Craig Partridge, Improving Round-Trip Time Estimates
`in Reliable Transport Protocols (1988)
`
`
`
`13
`
`Petitioners' Exhibit 1002
`Page 0013
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1046 Hari Balakrishnan et al., Improving TCP/IP Performance over Wireless
`Networks (1995)
`1047 WAG Acquisition, L.L.C.’s Preliminary Infringement Contentions
`from WAG Acquisition, L.L.C. v. Google LLC, No. 6:21-cv-00816-ADA
`(W.D. Tex.), dated November 15, 2021
`1061 U.S. Patent No. 8,122,141 to Harold Edward Price (filed May 10, 2010,
`issued February 21, 2012)
`
`1063
`
`’636 YouTube Amended Infringement Contentions from WAG
`Acquisition, L.L.C. v. Amazon.com, Inc., No. 6:21-cv-00815-ADA
`(W.D. Tex.), served February 8, 1022
`1067 Curriculum Vitae of Dr. Nathaniel Polish
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`18.
`I am informed by counsel that, under the patent laws in effect before
`
`the America Invents Act (“AIA”) of 2011, an assessment of claims of a patent filed
`
`before the AIA took effect should be undertaken from the perspective of a person of
`
`ordinary skill in the art as of the earliest claimed priority date (i.e., the “time the
`
`invention was made”). I understand November 11, 1999 is the priority date asserted
`
`by Patent Owner in the concurrent district court litigation. (EX1047, 1.) I do not
`
`take a position as to whether any of the claims of the ’636 patent are entitled to that
`
`priority date.
`
`19.
`
`I have been advised that to determine the appropriate level of a person
`
`
`
`14
`
`Petitioners' Exhibit 1002
`Page 0014
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`having ordinary skill in the art, I may consider the following factors: (1) the types of
`
`problems encountered by those working in the field and prior art solutions thereto;
`
`(2) the sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (3) the educational level of active workers in the field;
`
`and (4) the educational level of the inventor. I am also informed that a person of
`
`ordinary skill in the art is presumed to be aware of all of the pertinent prior art.
`
`20. The ’636 patent purports to disclose methods and systems for
`
`distributing live multimedia data over the Internet.
`
`21.
`
`In my opinion and based on the subject matter of the ’636 patent, a
`
`person of ordinary skill in the art at the time of the alleged invention would have had
`
`a bachelor’s degree in computer science, computer engineering, or electrical
`
`engineering, or the equivalent, and at least two years of work experience in
`
`networking or streaming media systems, particularly audio and video, over the
`
`Internet. Additional education could have substituted for professional experience,
`
`and significant work experience could have substituted for formal education.
`
`22. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my more than 40 years of experience in the field of computer
`
`science and data streaming technologies, my understanding of the basic
`
`qualifications that would be relevant to an engineer or scientist tasked with
`
`
`
`15
`
`Petitioners' Exhibit 1002
`Page 0015
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`investigating methods and systems in the relevant area, and my familiarity with the
`
`backgrounds of colleagues, co-workers, students, and employees, both past and
`
`present.
`
`23. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, I qualify as a
`
`person of ordinary skill in the art as of the alleged priority date of November 11,
`
`1999. In addition to being a person of ordinary skill in the art, I have worked closely
`
`with many such persons over the course of my career.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`
`24.
`
`I understand that a purpose of claim construction is to determine what
`
`a person of ordinary skill in the art would have understood the claim terms to mean.
`
`Claim terms are generally given their ordinary and customary meaning, which is the
`
`meaning that the term would have to a person of ordinary skill in the art in question
`
`as of the critical date (i.e., either the earliest claimed priority date (pre-AIA) or the
`
`effective filing date (AIA)).
`
`25.
`
`I understand that the person of ordinary skill in the art is deemed to read
`
`the claim term not only in the context of the particular claim in which the disputed
`
`term appears, but in the context of the entire patent, including the specification. I
`
`
`
`16
`
`Petitioners' Exhibit 1002
`Page 0016
`
`

`

`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
`
`understand that the patent specification, under the legal principles, has been
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`described as the single best guide to the meaning of a claim term, and is thus highly
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`relevant to the interpretation of claim terms. Also, I understand for terms that do not
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`have a customary meaning within the art, the specification usually supplies the best
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`context of understanding the meaning of those terms.
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`26.
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`I further understand that other claims of the patent in question, both
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`asserted and unasserted, can be valuable sources of information as to the meaning of
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`a claim term. Because the claim terms are normally used consistently throughout
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`the patent, the usage of a term in one claim can often illuminate the meaning of the
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`same term in other claims. Differences among claims can also be a useful guide in
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`understanding the meaning of particular claim terms.
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`27.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence, such as
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`dictionaries, may also be consulted in construing the claim terms.
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`28.
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`I understand that, in Inter Partes Review (IPR) proceedings, a claim of
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`a patent shall be construed using the same claim construction standard that would be
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`used to construe the claim in a civil action filed in a U.S. district court (which I
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`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
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`understand is called the “Phillips” claim construction standard), including
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`construing the claim in accordance with the ordinary and customary meaning of such
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`claim as understood by one of ordinary skill in the art and the prosecution history
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`pertaining to the patent.
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`29.
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`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips” standard
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`as provided to me by counsel.
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`B.
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`Obviousness
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`30.
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`I understand that a patent claim is obvious if, as of the critical date (i.e.,
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`either the earliest claimed priority date (pre-AIA) or the effective filing date (AIA),
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`it would have been obvious to a person having ordinary skill in the field of the
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`technology (the “art”) to which the claimed subject matter belongs.
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`31.
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`I understand that the following factors should be considered in
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`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
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`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
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`art. I also understand that certain other facts known as “secondary considerations”
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`such as commercial success, unexplained results, long felt but unsolved need,
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`
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`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
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`industry acclaim, simultaneous invention, copying by others, skepticism by experts
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`in the field, and failure of others may be utilized as indicia of nonobviousness. I
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`understand, however, that secondary considerations should be connected, or have a
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`“nexus,” with the invention claimed in the patent at issue.
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`32.
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`I understand that a reference qualifies as prior art for obviousness
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`purposes when it is analogous to the claimed invention. The test for determining
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`what art is analogous is: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addressed, and (2) if the reference is not within the field
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.
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`33.
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`I understand that a person of ordinary skill in the art is assumed to have
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`knowledge of all prior art. I understand that one skilled in the art can combine
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`various prior art references based on the teachings of those prior art references, the
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`general knowledge present in the art, or common sense. I understand that a
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`motivation to combine references may be implicit in the prior art, and there is no
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`requirement that there be an actual or explicit teaching to combine two references.
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`Thus, one may take into account the inferences and creative steps that a person of
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`ordinary skill in the art would employ to combine the known elements in the prior
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`art in the manner claimed by the patent at issue. I understand that one should avoid
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`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
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`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
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`this does not mean that a person of ordinary skill in the art for purposes of the
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`obviousness inquiry does not have recourse to common sense.
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`34.
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`I understand that when determining whether a patent claim is obvious
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`in light of the prior art, neither the particular motivation for the patent nor the stated
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`purpose of the patentee is controlling. The primary inquiry has to do with the
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`objective reach of the claims, and that if those claims extend to something that is
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`obvious, then the entire patent claim is invalid.
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`35.
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`I understand one way that a patent can be found obvious is if there
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`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`understand that a person of ordinary skill is also a person of at least ordinary
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`
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`20
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`Declaration of Nathaniel Polish in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,762,636 B2
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`creativity. I understand when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp. If this finite number of predictable solutions leads to the anticipated
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`success, I understand that the invention is likely the product of ordinary skill and
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`common sense, and not of any sort of innovation. I understand that the fact that a
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`combination was obvious to try might also show that it was obvious, and hence
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`invalid, under the patent laws. I understand that if a patent claims a combination of
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`familiar elements according to known methods, the combination is likely to be
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`obvious when it does not more than yield predictable results. Thus, if a person of
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`ordinary skill in th