IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Attorney Docket No. 50095-0107IP1
`
`Billhartz et al.
`In re Patent of:
`U.S. Patent No.:
`7,321,777
`January 22, 2008
`Issue Date:
`Appl. Serial No.: 11/531,487
`Filing Date:
`September 13, 2006
`Title:
`WIRELESS COMMUNICATIONS SYSTEM INCLUDING
`A WIRELESS DEVICE LOCATOR AND RELATED
`METHODS
`
`DECLARATION OF DR. ZHI DING
`
`1
`
`APPLE 1003
`
`

`

`Table of Contents
`Introduction ...................................................................................................... 5(cid:3)
`I.(cid:3)
`Background and Qualifications ....................................................................... 6(cid:3)
`II.(cid:3)
`III.(cid:3) Level of Ordinary Skill in the Art ................................................................. 12(cid:3)
`IV.(cid:3) Summary of Opinions and Materials Considered/Relied Upon .................... 13(cid:3)
`V.(cid:3)
`Legal Standards ............................................................................................. 16(cid:3)
`A.(cid:3) Legal Standards for Claim Construction ................................................ 16(cid:3)
`B.(cid:3) Legal Standard for Obviousness ............................................................. 17(cid:3)
`VI.(cid:3) Overview of the ’777 Patent .......................................................................... 20(cid:3)
`A.(cid:3) Subject Matter Overview ........................................................................ 20(cid:3)
`B.(cid:3) File History of the ’777 Patent ................................................................ 24(cid:3)
`Interpretation of the ’777 Patent Claims at Issue .......................................... 25(cid:3)
`VII.(cid:3)
`VIII.(cid:3) Overview of the Cited References ................................................................. 26(cid:3)
`A.(cid:3) McCrady (APPLE-1005) ........................................................................ 26(cid:3)
`B.(cid:3) Raphaeli (APPLE-1006) ......................................................................... 32(cid:3)
`C.(cid:3) Kuwahara (APPLE-1007) ....................................................................... 38(cid:3)
`D.(cid:3) Rofheart (APPLE-1009) ......................................................................... 41(cid:3)
`IX.(cid:3) McCrady in view of Raphaeli renders obvious claims 1-2, 5-7, 9-10, 12-13,
`15-17, 19-21, 23, 25 (GROUND 1) ............................................................... 45(cid:3)
`A.(cid:3) McCrady-Raphaeli Combination ............................................................ 45(cid:3)
`B.(cid:3) Claims 1, 10, 12, 20 ................................................................................ 59(cid:3)
`1.(cid:3)
`Claim 1 .......................................................................................... 59(cid:3)
`2.(cid:3)
`Claim 10 ........................................................................................ 79(cid:3)
`3.(cid:3)
`Claim 12 ........................................................................................ 82(cid:3)
`4.(cid:3)
`Claim 20 ........................................................................................ 83(cid:3)
`C.(cid:3) Claims 2, 13, 21 ...................................................................................... 85(cid:3)
`D.(cid:3) Claims 5, 15 ............................................................................................ 85(cid:3)
`E.(cid:3) Claims 6, 16 ............................................................................................ 88(cid:3)
`F.(cid:3) Claims 7, 17, 23 ...................................................................................... 89(cid:3)
`G.(cid:3) Claims 9, 19, 25 ...................................................................................... 92(cid:3)
`Claims 3-4, 11, 14, and 22 are Rendered Obvious by McCrady, Raphaeli,
`and Kuwahara (GROUND 2) ........................................................................ 94(cid:3)
`A.(cid:3) McCrady-Raphaeli-Kuwahara Combination .......................................... 94(cid:3)
`B.(cid:3) Claims 3, 11, 14 ....................................................................................100(cid:3)
`1.(cid:3)
`Claim 3 ........................................................................................100(cid:3)
`2.(cid:3)
`Claim 11 ......................................................................................110(cid:3)
`
`X.(cid:3)
`
`2
`
`

`

`Claim 14 ......................................................................................110(cid:3)
`3.(cid:3)
`C.(cid:3) Claim 4 ..................................................................................................111(cid:3)
`D.(cid:3) Claim 22 ................................................................................................112(cid:3)
`XI.(cid:3) Claims 7-8, 10-11, 17-18, 23-24 are Rendered Obvious by McCrady,
`Raphaeli, and Rofheart (GROUND 3) ........................................................112(cid:3)
`A.(cid:3) McCrady-Raphaeli-Rofheart Combination ..........................................112(cid:3)
`B.(cid:3) Claims 7, 17, 23 ....................................................................................114(cid:3)
`C.(cid:3) Claims 8, 18, 24 ....................................................................................115(cid:3)
`D.(cid:3) Claim 10 ................................................................................................117(cid:3)
`E.(cid:3) Claim 11 ................................................................................................119(cid:3)
`XII.(cid:3) Claims 1-3, 5-25 are Rendered Obvious by Rofheart and Raphaeli
`(GROUND 4) ...............................................................................................121(cid:3)
`A.(cid:3) Rofheart-Raphaeli Combination ...........................................................121(cid:3)
`B.(cid:3) Claims 1, 10, 12, 20 ..............................................................................128(cid:3)
`1.(cid:3)
`Claim 1 ........................................................................................128(cid:3)
`2.(cid:3)
`Claim 10 ......................................................................................146(cid:3)
`3.(cid:3)
`Claim 12 ......................................................................................148(cid:3)
`4.(cid:3)
`Claim 20 ......................................................................................150(cid:3)
`C.(cid:3) Claims 2, 13, 21 ....................................................................................151(cid:3)
`D.(cid:3) Claims 3, 11, 14 ....................................................................................152(cid:3)
`1.(cid:3)
`Claim 3 ........................................................................................152(cid:3)
`2.(cid:3)
`Claim 11 ......................................................................................154(cid:3)
`3.(cid:3)
`Claim 14 ......................................................................................155(cid:3)
`E.(cid:3) Claims 5, 15 ..........................................................................................155(cid:3)
`F.(cid:3) Claims 6, 16 ..........................................................................................157(cid:3)
`G.(cid:3) Claims 7, 17, 23 ....................................................................................159(cid:3)
`H.(cid:3) Claims 8, 18, 24 ....................................................................................160(cid:3)
`I.(cid:3) Claims 9, 19, 25 ....................................................................................162(cid:3)
`J.(cid:3) Claim 22 ................................................................................................163(cid:3)
`XIII.(cid:3) Claims 3-4, 11, 14, and 22 are Rendered Obvious by Rofheart, Raphaeli, and
`Kuwahara (GROUND 5) .............................................................................163(cid:3)
`A.(cid:3) Rofheart-Raphaeli-Kuwahara Combination .........................................163(cid:3)
`B.(cid:3) Claims 3, 11, 14 ....................................................................................167(cid:3)
`1.(cid:3)
`Claim 3 ........................................................................................168(cid:3)
`2.(cid:3)
`Claim 11 ......................................................................................168(cid:3)
`3.(cid:3)
`Claim 14 ......................................................................................169(cid:3)
`C.(cid:3) Claim 4 ..................................................................................................170(cid:3)
`D.(cid:3) Claim 22 ................................................................................................170(cid:3)
`
`3
`
`

`

`XIV.(cid:3) Additional Remarks .....................................................................................170(cid:3)
`
`
`4
`
`

`

`I, Zhi Ding, Ph.D., declare that:
`
`I.
`
`Introduction
`
`1. My name is Zhi Ding, and I have been retained by counsel for Petitioner
`
`Apple, Inc. (“Apple” or “Petitioner”) as an expert witness to provide assistance
`
`regarding U.S. Patent 7,321,777 (“the ’777 Patent”). Specifically, I have been asked
`
`to consider the validity of claims 1-25 of the ’777 Patent (the “Challenged Claims”)
`
`in view of prior art, anticipation and obviousness considerations, and understanding
`
`of a person of ordinary skill in the art (“POSITA”) at the time of the invention, i.e.,
`
`as of the effective filing date of the patent application as it relates to the ’777 Patent.
`
`I have personal knowledge of the facts and opinions set forth in this declaration and
`
`believe them to be true. If called upon to do so, I would testify competently thereto.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study, the substance of
`
`my opinions, or the outcome of any proceeding involving the challenged claims. I
`
`have no financial interest in the outcome of this matter or on the pending litigation
`
`between Petitioner and Patent Owner.
`
`3. My analysis here is based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
`
`5
`
`

`

`4.
`
`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 necessary
`
`opinions, including documents that may not yet have been provided to me.
`
`5. My analysis of the materials produced in this proceeding is ongoing and
`
`I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`II. Background and Qualifications
`
`6.
`
`I presently hold the title of Distinguished Professor in the Department
`
`of Electrical and Computer Engineering at the University of California, Davis. Since
`
`my appointment on July 1, 2020, I have held the position of professor for the past
`
`22 years and have served as a faculty member at several US universities for over 30
`
`years. I am also a private technical consultant on various technologies related to
`
`information systems. I have more than three decades of research experience on a
`
`wide range of topics related to data communications and signal processing.
`
`7.
`
`I earned my Bachelor of Science degree in 1982 in wireless engineering
`
`from the Nanjing Institute of Technology (later renamed as Southeast University) in
`
`Nanjing, China. I earned my Master of Science degree in 1987 in electrical
`
`6
`
`

`

`engineering from the University of Toronto in Toronto, Canada. I earned my Ph.D.
`
`in 1990 in electrical engineering from Cornell University in Ithaca, New York.
`
`8. My responsibilities as a Professor at University of California, Davis,
`
`include classroom instruction on various topics of communication systems and
`
`signal analysis, as well as mentoring undergraduate students and supervising
`
`graduate students in their research and development efforts on various topics related
`
`to digital communications. I have directly supervised such research and development
`
`works ranging from signal detection to wireless networking. As the chief academic
`
`advisor, I have also directly supervised the completion of over 20 Masters theses and
`
`30 Ph.D. dissertations on various topics related to digital communications. I have
`
`served full time as a faculty member at three major research universities in the
`
`United States over the past 30 years, including Auburn University from 1990 to 1998,
`
`University of Iowa from 1999 to 2000, and University of California, Davis, from
`
`2000 to present.
`
`9.
`
`Since 1990, I have been selected as the principal investigator of
`
`multiple highly competitive federal and local research grants, including more than
`
`twenty major research projects supported by the National Science Foundation and
`
`two research projects funded by the U.S. Army Research Office. These competitive
`
`research projects focused on developing more efficient and effective digital
`
`communication transceivers, networks, and signal processing tools. I have also
`
`7
`
`

`

`participated in several large-scale projects supported by the Defense Advanced
`
`Research Projects Agency (DARPA) with teams of researchers. I have applied for,
`
`and received support from, other federal, state, and industry sponsors.
`
`10.
`
`I have published over 210 peer-reviewed research articles in premier
`
`international journals, in addition to over 240 refereed technical articles at top
`
`international conferences on communications and information technologies.
`
`According to Google Scholar, my published works have been cited by over 13,000
`
`times by peers. I also authored two books on communications technologies. My most
`
`recent book, coauthored with B.P. Lathi, is entitled, “Modern Digital and Analog
`
`Communication Systems,” 5th edition, and was published by the Oxford University
`
`Press in 2018. The 4th edition of this book (published in 2009) had been widely
`
`adopted as an introductory textbook to communication systems.
`
`11.
`
`In addition to the over 450 published technical papers that have been
`
`cited over 14,000 times according to Google Scholar, I am also co-inventor of 4
`
`issued U.S. patents on communication technologies.
`
`12.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE) and was elevated to the grade of Fellow in January 2003 for contributions
`
`made in signal processing for communication. The IEEE is the world’s largest
`
`professional society of engineers, with over 400,000 members in more than 160
`
`countries. The IEEE has led the development of many standards for modern digital
`
`8
`
`

`

`communications and networking, most notably, the IEEE 802 series of network
`
`standards. The IEEE Grade of Fellow is conferred by the Boards of Directors upon
`
`a person with an extraordinary record of accomplishments in any of the IEEE fields
`
`of interest. The total number selected in any one year does not exceed one-tenth of
`
`one percent of the total voting Institute membership.
`
`13.
`
`I have served the IEEE in the following capacities:
`
`(cid:120) Chief Information Officer of the IEEE Communications Society from
`
`Jan. 2018 to present.
`
`(cid:120) Chief Marketing Officer of the IEEE Communications Society from
`
`Jan. 2020 to present.
`
`(cid:120) General Chair of the 2016 IEEE International Conference on Acoustics,
`
`Speech, and Signal Processing, the flagship conference of the IEEE
`
`Signal Processing Society.
`
`(cid:120) Chair of the Steering Committee for the IEEE Transactions on Wireless
`
`Communications from 2008 to 2010.
`
`(cid:120) Distinguished Lecturer of the IEEE Communications Society from
`
`January 2008 to December 2009.
`
`(cid:120) Technical Program Chair of the 2006 IEEE Globecom, one of two
`
`flagship annual IEEE Communication Society conferences.
`
`9
`
`

`

`(cid:120) Distinguished Lecturer of the IEEE Circuits and Systems Society from
`
`2004 to 2005.
`
`(cid:120) Associate Editor of the IEEE Transactions on Signal Processing from
`
`1994 to 1997 and from 2001 to 2004.
`
`(cid:120) Member of the IEEE Statistical Signal and Array Processing for
`
`Communications Technical Committee from 1993 to 1998.
`
`(cid:120) Member of the IEEE Signal Processing for Communications Technical
`
`Committee from 1998 to 2004.
`
`14.
`
`In 2012, I received the Wireless Communications Technical Committee
`
`Recognition Award from the IEEE Communications Society, an award given to a
`
`person with a high degree of visibility and contribution in the field of “Wireless and
`
`Mobile Communications Theory, Systems, and Networks.” I received the 2020
`
`Education Award from the IEEE Communications Society. According to the Society,
`
`this award “recognizes distinguished and significant contributions to education
`
`within the Society’s technical scope.”
`
`15.
`
`I have also served as a technical consultant for the telecommunication
`
`industry. For example, in 1995 I consulted for Analog Devices, Inc., on the
`
`development of the first generation DOCSIS cable modem systems. I have also
`
`consulted for other companies, including Nortel Networks and NEC US
`
`Laboratories. I worked as a visiting faculty research fellow at NASA Glenn Research
`
`10
`
`

`

`Center in 1992 and at U.S. Air Force Wright Laboratory in 1993. I have served on
`
`multiple review panels of the National Science Foundation to evaluate competitive
`
`research proposals in the field of communication. I have also reviewed a large
`
`number of research proposals at the request of the National Science and Engineering
`
`Research Council (NSERC) of Canada as an expert panelist from 2010 to 2013, and
`
`also at the request of the Research Grant Council (RGC) of Hong Kong as an external
`
`reviewer.
`
`16.
`
`I have served as an expert witness or consulting expert on a number of
`
`matters related to intellectual property, mostly in the arena of telecommunications,
`
`including cellular communications, Wi-Fi technologies, Bluetooth, and optical
`
`communications. For example, since 2007, I have been engaged to work on various
`
`litigations involving cellular, WiFi, Bluetooth, and optical communication networks.
`
`17. Further experience and a complete list of my publications are presented
`
`in my curriculum vitae. I understand that a copy of my curriculum vitae is attached
`
`as APPLE-1004.
`
`18. Based on my above-described near three decades of experience in
`
`communications technologies, and the acceptance of my publications and
`
`professional recognition by societies in my field, I believe that I am qualified to be
`
`an expert in wireless communication systems, communication networks, and signal
`
`processing.
`
`11
`
`

`

`19. Based on my experiences described above, and as indicated in my
`
`Curriculum Vitae, I am qualified to provide the following opinions with respect to
`
`the patents in this case. Additionally, I was at least a person having ordinary skill in
`
`the art as of January 29, 2004 (“Critical Date”).
`
`III. Level of Ordinary Skill in the Art
`
`20.
`
`In rendering the opinions set forth in this declaration, I was asked to
`
`consider the patent claims and the prior art through the eyes of one of ordinary skill
`
`at the time of the alleged invention, which I understand is asserted to be January 29,
`
`2004—the filing date of an earlier priority patent application. I understand that the
`
`factors considered in determining the ordinary level of skill in a field of art include
`
`the level of education and experience of persons working in the field; the types of
`
`problems encountered in the field; the teachings of the prior art, and the
`
`sophistication of the technology at the time of the alleged invention. I understand
`
`that one of ordinary skill is not a specific real individual, but rather is a hypothetical
`
`individual having the qualities reflected by the factors above. I understand that one
`
`of ordinary skill would also have knowledge from the teachings of the prior art,
`
`including the art cited below.
`
`21. Taking these factors into consideration, on or before January 29, 2004,
`
`one of ordinary skill relating to the technology of the ’777 Patent would have had a
`
`Bachelor’s degree in electrical engineering, computer engineering, computer science,
`
`12
`
`

`

`or a related field, and 2-3 years of experience in design or development of wireless
`
`communication systems/networks including ranging/positioning systems, or the
`
`equivalent. Additional graduate education could substitute for professional
`
`experience, or significant experience in the field could substitute for formal
`
`education.
`
`22. Before January 29, 2004, my level of skill in the art was at least that of
`
`one of ordinary skill. I am qualified to provide opinions concerning what one of
`
`ordinary skill would have known and understood at that time, and my analysis and
`
`conclusions herein are from the perspective of one of ordinary skill as of that date.
`
`IV. Summary of Opinions and Materials Considered/Relied Upon
`
`23.
`
`In reaching the conclusions described in this declaration, I have relied
`
`on the documents and materials cited herein as well as those identified in this
`
`declaration, including the ’777 Patent, the prosecution history of the ’777 Patent, and
`
`prior art references cited herein. These materials comprise patents, related
`
`documents, and printed publications. Each of these materials is a type of document
`
`that experts in my field would have reasonably relied upon when forming their
`
`opinions.
`
`24.
`
`I have also relied on my education, training, research, knowledge, and
`
`personal and professional experience in the relevant technologies and systems that
`
`were already in use prior to, and within the timeframe of the earliest proclaimed
`
`13
`
`

`

`priority date of the claimed subject matter in the ’777 Patent, which is January 29,
`
`2004 (“Critical Date”).
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`APPLE-1001: U.S. Patent 7,321,777 to Thomas Jay Billhartz, et al.
`(“the ’777 Patent”)
`
`APPLE-1002: Excerpts from the Prosecution History of the ’777 Patent
`(“the Prosecution History”)
`
`APPLE-1005: U.S. Patent 6,453,168 to McCrady (“McCrady”)
`
`APPLE-1006: U.S. Patent 7,511,604 to Raphaeli, et al. (“Raphaeli”)
`
`APPLE-1007: U.S. Patent 6,070,079 to Kuwahara (“Kuwahara”)
`
`APPLE-1008: WO2003098528 to Raphaeli, et al. (“Raphaeli”)
`
`APPLE-1009: U.S. Patent 7,058,414 to Rofheart (“Rofheart”)
`
`APPLE-1010: Hargrave’s Communications Dictionary, 2001 (excerpts)
`
`APPLE-1011: The Authoritative Dictionary of IEEE Standards Terms,
`2000 (excerpts)
`
`APPLE-1014: Complaint for Patent Infringement Against Apple Inc.,
`Speir Technologies Ltd. v. Apple Inc., Case 6:22-cv-00077-ADA
`(WDTX)
`
`APPLE-1015: Amended Complaint for Patent Infringement Against
`Apple Inc., Speir Technologies Ltd. v. Apple Inc., Case 6:22-cv-00077-
`ADA (WDTX)
`
`
`APPLE-1016: Preliminary Disclosure of Asserted Claims and
`Infringement Contentions to Defendant Apple Inc., Speir Technologies
`Ltd. v. Apple Inc., Case 6:22-cv-00077-ADA (WDTX)
`
`APPLE-1017: Apple’s Opening Claim Construction Brief, Speir
`Technologies Ltd. v. Apple Inc., Case 6:22-cv-00077-ADA (WDTX)
`
`APPLE-1018: Speir’s Responsive Claim Construction Brief, Speir
`Technologies Ltd. v. Apple Inc., Case 6:22-cv-00077-ADA (WDTX)
`
`14
`
`

`

`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`(cid:120)
`
`25.
`
`APPLE-1019: U.S. Patent 6,181,944 to Uebayashi et al. (“Uebayashi”)
`
`APPLE-1020: U.S. Patent 5,945,948 to Buford et al. (“Buford”)
`
`APPLE-1021: U.S. Patent 5,929,806 to Birchler et al. (“Birchler”)
`
`APPLE-1022: U.S. Patent 5,365,516 to Jandrell (“Jandrell”)
`
`APPLE-1023: U.S. Patent 6,760,882 to Gesbert et al. (“Gesbert”)
`
`APPLE-1024: U.S. Patent App. Pub. 2006/0234725 to Litwin
`(“Litwin”)
`
`APPLE-1025: U.S. Patent 6,760,882 to Christoffel et al. (“Christoffel”)
`
`APPLE-1026: C. Eisenhart, “Realistic Evaluation of the Precision and
`Accuracy of Instrument Calibration Systems,” JOURNAL OF
`RESEARCH of the National Bureau of Standards-C. Engineering and
`Instrumentation, Vol. 67C, No.2, April-June 1963 (“Eisenhart”).
`In my opinion, the Challenged Claims of the ’777 Patent are
`
`unpatentable because they are rendered obvious by the combinations of prior art
`
`references cited in this report and explained herein. The following table summarizes
`
`my opinions.
`
`’777 Patent Claims
`1-2, 5-7, 9-10, 12-13,
`15-17, 19-21, 23, 25
`
`3-4, 11, 14, 22
`
`7-8, 10-11, 17-18, 23-
`24
`1-3, 5-25
`
`3-4, 11, 14, 22
`
`
`Prior Art Invalidity
`Obvious over McCrady and Raphaeli (Ground 1)
`
`Obvious over McCrady, Raphaeli, and Kuwahara
`(Ground 2)
`Obvious over McCrady, Raphaeli, and Rofheart
`(Ground 3)
`Obvious over Rofheart and Raphaeli (Ground 4)
`Obvious over Rofheart, Raphaeli, and Kuwahara
`(Ground 5)
`
`15
`
`

`

`V. Legal Standards
`
`26.
`
`I am not a lawyer and do not provide any legal opinions, but I have
`
`been advised that certain legal standards are to be applied by technical experts in
`
`forming opinions regarding meaning and validity of patent claims. I have applied
`
`the legal standards described below, which were provided to me by counsel for the
`
`Petitioner.
`
`27.
`
`It is my understanding that assessing the validity of a U.S. patent based
`
`on a prior art analysis requires two steps. First, one must construe the terms of the
`
`patent claims to understand what meaning one of ordinary skill in the art would have
`
`given the terms. Second, after the claim terms have been construed, one may then
`
`assess validity by comparing a patent claim to the “prior art.” I understand that the
`
`teaching of the prior art is viewed through the eyes of one of ordinary skill at the
`
`time of the invention, i.e., as of the effective filing date of the patent application. My
`
`analysis as to what constitutes a relevant POSITA is set forth above.
`
`A. Legal Standards for Claim Construction
`
`28.
`
`I understand that, for purposes of my analysis in this IPR, the terms
`
`appearing in the patent claims should be interpreted according to their “ordinary and
`
`customary meaning.” In determining the ordinary and custom meaning, I understand
`
`that the words of a claim are first given the plain meaning that those words would
`
`have had to a person of ordinary skill in the art (“POSITA”) at the time of the
`
`16
`
`

`

`invention, i.e., as of the effective filing date of the patent application. I also
`
`understand that the structure of the claims, the specification, and file history also
`
`may be used to better construe a claim insofar as the plain meaning of the claims
`
`cannot be understood. Moreover, I understand that even treatises and dictionaries
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`may be used, albeit under limited circumstances, to determine the meaning attributed
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`by a POSITA to a claim term at the time of the invention.
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`29.
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`I also understand that the words of the claims should be interpreted as
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`they would have been interpreted by a POSITA at the time of the invention (not
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`today).
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`30.
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`I have followed these guidelines in my analysis, and, unless otherwise
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`indicated, I have applied the plain and ordinary meaning of the claim terms.
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`B.
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`Legal Standard for Obviousness
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`31. My understanding is that a patent claim is invalid as obvious only if the
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`subject matter of the claimed invention “as a whole” would have been obvious to
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`one of ordinary skill at the time of the invention, i.e., as of the effective filing date
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`of the patent application. To determine the differences between a prior art reference
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`(or a proposed combination of prior art references) and the claims, the question of
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`obviousness is not whether the differences themselves would have been obvious, but
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`whether the claimed invention as a whole would have been obvious. Also,
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`obviousness grounds cannot be sustained by mere conclusory statements. Rather, it
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`is necessary to provide some articulated reasoning with rational underpinning to
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`support the legal conclusion of obviousness.
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`32.
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`I understand that a patent claim that comprises several elements is not
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`proved obvious by simply showing that each of its elements was independently
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`known in the prior art. In my evaluation of whether any claim of the ’777 Patent
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`would have been obvious, I considered whether the Petition, or any evidence
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`submitted in this proceeding, presented an articulated reason with a rational basis
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`that would have motivated one of ordinary skill to combine the elements or concepts
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`from the prior art in the same way as in the claimed invention.
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`33.
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`It is my understanding that there is no single way to define the line
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`between true inventiveness on one hand—which is patentable—and the application
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`of common sense and ordinary skill to solve a problem on the other hand—which is
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`not patentable. For instance, factors such as market forces or other design incentives
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`may be the source of what produced a change, rather than true inventiveness.
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`34.
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`I understand that the decision-maker may consider whether the change
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`was merely the predictable result of using prior art elements according to their
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`known functions, or whether it was the result of true inventiveness. And, the
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`decision-maker may also consider whether there is some teaching or suggestion in
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`the prior art to make the modification or combination of elements recited in the claim
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`at issue. Also, the decision-maker may consider whether the innovation applies a
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`known technique that had been used to improve a similar device or method in a
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`similar way. The decision-maker may also consider whether the claimed invention
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`would have been obvious to try, meaning that the claimed innovation was one of a
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`relatively small number of possible approaches to the problem with a reasonable
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`expectation of success by those skilled in the art.
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`35.
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`I have been instructed by counsel that if any of these considerations are
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`relied upon to reach a conclusion of obviousness, the law requires that the analysis
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`of such a consideration must be made explicit. I understand that the decision-maker
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`must be careful not to determine obviousness using the benefit of hindsight and that
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`many true inventions might seem obvious after the fact. I understand that the
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`decision-maker should consider obviousness from the position of one of ordinary
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`skill at the time of the invention and that the decision-maker should not consider
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`what is known today or what is learned from the teaching of the patent.
`
`36.
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`I understand that in order to determine whether a patent claim is
`
`obvious, one must make certain factual findings regarding the claimed invention and
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`the prior art. Specifically, I understand that the following factors must be evaluated
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`to determine whether a claim is obvious: the scope and content of the prior art; the
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`difference or differences, if any, between the claim of the patent and the prior art;
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`the level of ordinary skill in the art at the time of the invention; and, if available, the
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`objective indicia of non-obviousness, also known as “secondary considerations.”
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`37.
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`I understand that the secondary considerations include: commercial
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`success of a product due to the merits of the claimed invention; a long felt need for
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`the solution provided by the claimed invention; unsuccessful attempts by others to
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`find the solution provided by the claimed invention; copying of the claimed
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`invention by others; unexpected and superior results from the claimed invention;
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`acceptance by others of the claimed invention as shown by praise from others in the
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`field or from the licensing of the claimed invention; teaching away from the
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`conventional wisdom in the art at the time of the invention; independent invention
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`of the claimed invention by others before or at about the same time as the named
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`inventor thought of it; and other evidence tending to show obviousness.
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`38.
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`I understand that, to establish a secondary consideration, the evidence
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`must demonstrate a nexus between that seco