UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SONY GROUP CORPORATION (JAPAN), SONY CORPORATION OF
`AMERICA, SONY INTERACTIVE ENTERTAINMENT LLC, SONY
`PICTURES ENTERTAINMENT INC., SONY ELECTRONICS INC., and
`VERANCE CORPORATION
`Petitioners,
`
`v.
`
`MZ AUDIO SCIENCE, LLC,
`Patent Owner.
`_____________
`
`Case No. IPR2022-01544
`Patent No. 7,289,961
`_____________
`
`
`DECLARATION OF MICHAEL SCORDILIS, PH.D.
`
`
`
`
`
`
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`
`
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`
`
`
`
`
`
`Sony Exhibit 1003
`Sony v. MZ Audio
`
`
`
`
`
`
`
`
`
`

`

`I.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`A.
`Engagement ........................................................................................... 1
`B.
`Background and Qualifications ............................................................. 1
`II. MATERIALS REVIEWED AND CONSIDERED ........................................ 5
`III. MY UNDERSTANDING OF PATENT LAW ............................................... 8
`A. Anticipation .........................................................................................10
`B.
`Obviousness .........................................................................................10
`IV. PERSON OF ORDINARY SKILL IN THE ART ........................................13
`V.
`THE ‘961 PATENT (EX. 1001) ....................................................................15
`A. Overview of Embodiments ..................................................................17
`1.
`First embodiment ......................................................................17
`2.
`Second Embodiment .................................................................18
`The Challenged Claims .......................................................................22
`B.
`Prosecution History .............................................................................22
`C.
`VI. CLAIM INTERPRETATION .......................................................................23
`VII. PRIOR ART REFERENCES ........................................................................23
`A.
`Srinivasan (Ex. 1005) ..........................................................................23
`1.
`Phase Modulation Encoding .....................................................24
`2.
`Decoding ...................................................................................30
`Cabot (Ex. 1006) .................................................................................30
`B.
`Kudumakis (Ex. 1007) ........................................................................34
`C.
`Tilki (Ex. 1008) ...................................................................................36
`D.
`Consideration of Watermark Attributes ..............................................41
`E.
`VIII. THE CHALLENGED CLAIMS ARE UNPATENTABLE IN LIGHT
`OF THE PRIOR ART IDENTIFIED IN THE PETITION ...........................46
`IX. GROUND 1: SRINIVASAN, CABOT, AND KUDUMAKIS
`RENDER CLAIMS 1-10 OBVIOUS ............................................................47
`A.
`The Srinivasan, Cabot and Kudumakis Combination .........................47
`
`i
`
`

`

`1.
`
`B.
`
`ii.
`
`iv.
`
`v.
`
`vi.
`
`Reasons to Combine .................................................................47
`a. Maintain Low Visibility ................................................ 47
`b.
`Improved Security and Robustness ............................... 52
`c.
`Narrowband Voice Applications ................................... 55
`Reasonable Expectation of Success ..........................................57
`2.
`The Resulting System ...............................................................57
`3.
`Srinivasan, Cabot and Kudumakis Render Obvious Every
`Challenged Claim ................................................................................59
`1.
`Embedding Claims ....................................................................59
`a.
`Claim 1 ........................................................................... 59
`i.
`[1PRE]: “A method for embedding data in
`an audio signal, the method comprising:” ........... 59
`[1A]: “(a) dividing the audio signal into a
`plurality of time frames and, in each time
`frame, a plurality of frequency
`components;” ....................................................... 60
`[1B]: “(b) in each of at least some of the
`plurality of time frames, selecting at least
`two of the plurality of frequency
`components; and” ................................................ 62
`[1C]: “(c) altering a phase of at least one of
`the plurality of frequency components in
`accordance with the data to be embedded,
`wherein:” ............................................................. 64
`[1C-1]: “step (b) comprises selecting a
`fundamental tone and at least one overtone;” ..... 65
`[1C-2]: “and step (c) comprises quantizing a
`phase difference of the at least one overtone
`relative to the fundamental tone to embed at
`least one bit of the data to be embedded.” .......... 65
`Claim 2 ........................................................................... 66
`i.
`[2A]: “step (b) comprises selecting a
`plurality of said overtones; and” ......................... 66
`
`iii.
`
`b.
`
`ii
`
`

`

`c.
`
`2.
`
`ii.
`
`ii.
`
`iv.
`
`v.
`
`vi.
`
`[2B]: step (c) comprises quantizing the
`phase differences of the plurality of
`overtones selected in step (b) to embed a
`plurality of bits of the data to be embedded” ...... 70
`Claim 3 [3A]: wherein step (c) further comprises
`inverse transforming the plurality of frequency
`components with the quantized phase differences. ....... 71
`Claims 6-8 [see Appendix] ............................................ 71
`d.
`Extracting Claims ......................................................................76
`a.
`Claim 4 ........................................................................... 76
`i.
`[4PRE]: “A method for extracting embedded
`data from an audio signal, the method
`comprising:” ........................................................ 76
`[4A]: “(a) dividing the audio signal into a
`plurality of time frames and, in each time
`frame, a plurality of frequency
`components;” ....................................................... 76
`[4B]: “(b) in each of at least some of the
`plurality of time frames, selecting at least
`two of the plurality of frequency
`components;” ....................................................... 76
`[4C]: “(c) determining a phase shift which
`has been applied to at least one of the
`plurality of frequency components in
`accordance with the embedded data; and” .......... 77
`[4D]: “(d) from the phase shift determined
`in step (c), extracting the embedded data” .......... 77
`[4E]: “wherein step (b) comprises selecting
`a fundamental tone and at least one
`overtone.” ............................................................ 78
`Claim 5: wherein step (b) comprises selecting the
`fundamental tone and a plurality of overtones, and
`wherein step (c) comprises determining the phase
`shift in each of the plurality of overtones. ..................... 78
`Claims 9-10: See Appendix ........................................... 78
`
`iii.
`
`b.
`
`c.
`
`iii
`
`

`

`X. GROUND 2: SRINIVASAN, KUDUMAKIS, CABOT, AND
`HOBSON RENDER CLAIMS 2-3, 5, 7-8, AND 10 OBVIOUS .................82
`XI. GROUND 3: KUDUMAKIS, TILKI AND CABOT RENDER
`CLAIMS 1-10 OBVIOUS .............................................................................84
`A.
`The Kudumakis/Tilki/Cabot Combination ..........................................84
`1.
`Reasons to Combine .................................................................84
`a.
`Tilki’s Differential Phase Encoding Was a Known
`Alternative To Kudumakis’s Notch Encoding For
`Embedding a Watermark ............................................... 84
`Kudumakis and Cabot Motivated Use of the
`Fundamental and Third Harmonic for Differential
`Phase Encoding .............................................................. 86
`i.
`Robustness ........................................................... 86
`ii.
`Low Visibility (Inaudibility) ............................... 87
`iii. Data Rate ............................................................. 89
`Expectation of Success .............................................................90
`2.
`Resulting System.......................................................................90
`3.
`Embedding Claims ..............................................................................91
`1.
`Claim 1 ......................................................................................91
`a.
`[1PRE]: “A method for embedding data in an
`audio signal, the method comprising:” .......................... 91
`[1A]: “(a) dividing the audio signal into a plurality
`of time frames and, in each time frame, a plurality
`of frequency components;” ............................................ 91
`[1B]: “(b) in each of at least some of the plurality
`of time frames, selecting at least two of the
`plurality of frequency components; and” ...................... 91
`[1C]: “(c) altering a phase of at least one of the
`plurality of frequency components in accordance
`with the data to be embedded, wherein:” ...................... 92
`[1C-1]: “step (b) comprises selecting a
`fundamental tone and at least one overtone;”................ 92
`
`B.
`
`b.
`
`b.
`
`c.
`
`d.
`
`e.
`
`iv
`
`

`

`f.
`
`b.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`2.
`
`3.
`
`C.
`
`[1C-2]: “and step (c) comprises quantizing a phase
`difference of the at least one overtone relative to
`the fundamental tone to embed at least one bit of
`the data to be embedded.” .............................................. 93
`Claim 2 ......................................................................................93
`a.
`[2A]: “step (b) comprises selecting a plurality of
`said overtones; and” ....................................................... 93
`[2B]: “step (c) comprises quantizing the phase
`differences of the plurality of overtones selected in
`step (b) to embed a plurality of bits of the data to
`be embedded.” ............................................................... 95
`Claim 3: wherein step (c) further comprises inverse
`transforming the plurality of frequency components with
`the quantized phase differences. ...............................................95
`Claims 6-8: see Appendix. ........................................................96
`4.
`Extracting Claims ................................................................................99
`1.
`Claim 4 ......................................................................................99
`a.
`[4PRE]: “A method for extracting embedded data
`from an audio signal, the method comprising:” ............ 99
`[4A]: “(a) dividing the audio signal into a plurality
`of time frames and, in each time frame, a plurality
`of frequency components;” ............................................ 99
`[4B]: “(b) in each of at least some of the plurality
`of time frames, selecting at least two of the
`plurality of frequency components;” ........................... 100
`[4C]: “(c) determining a phase shift which has
`been applied to at least one of the plurality of
`frequency components in accordance with the
`embedded data;” .......................................................... 101
`[4D]: “(d) from the phase shift determined in step
`(c), extracting the embedded data,” ............................. 101
`[4E]: “wherein step (b) comprises selecting a
`fundamental tone and at least one overtone.” .............. 101
`Claim 5: wherein step (b) comprises selecting the
`fundamental tone and a plurality of overtones, and
`
`2.
`
`v
`
`

`

`wherein step (c) comprises determining the phase shift in
`each of the plurality of overtones............................................102
`Claims 9-10: see Appendix. ....................................................102
`3.
`XII. CONCLUSION ............................................................................................105
`
`
`vi
`
`

`

`I, Michael Scordilis, declare:
`
`I.
`
`INTRODUCTION
`A. Engagement
`I have been retained by Wolf Greenfield & Sacks, P.C. on behalf of
`1.
`
`the Sony Petitioners (“Sony” or the “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. 7,289,961 (Ex. 1001, “the ’961 patent”), specifically claims 1-10 (the
`
`“Challenged Claims”). I make this Declaration in support of Sony’s petition (the
`
`“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 of $350 per hour, 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 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
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`business with the Petitioner in exchange for the positions explained herein.
`
`B.
`3.
`
`Background and Qualifications
`I make this Declaration based on my personal knowledge, including
`
`my education, training, research, and professional experience.
`
`1
`
`

`

`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 30 years of experience as an electrical, computer, and
`
`communications engineer in industry, education, and consulting.
`
`6.
`
`I held the positions of Associate Professor, Research Associate
`
`Professor and Associate Professor of Practice of Electrical and Computer
`
`Engineering at the University of Miami (Florida) for 25 years, beginning in 1997.
`
`Prior to that, I was a tenured lecturer at the University of Melbourne in Melbourne,
`
`Australia, beginning in 1990. During that time, I also held positions as a Visiting
`
`Senior Scientist in the Speech Recognition Group and the Speech Analysis and
`
`Synthesis Group of Sun Microsystems Laboratories and Bell Communications
`
`Research, respectively. From 1984 until 1990 I was a graduate research fellow and
`
`teaching assistant at Clemson University.
`
`7.
`
`I earned a Bachelor of Engineering in Communications Engineering
`
`from the Royal Melbourne Institute of Technology in 1983. I earned a Master of
`
`Science (M.S.) degree in Electrical Engineering in 1986, and a Ph.D. in Electrical
`
`and Computer Engineering in 1990, both from Clemson University. Each of those
`
`degrees involved coursework in signal processing.
`
`2
`
`

`

`8.
`
`I currently serve as, or previously served as, a reviewer of several
`
`academic and research journals, some of which include: IEEE Transactions on
`
`Audio, Speech and Language Processing; IEEE Signal Processing Letters; Speech
`
`Communication; Signal Processing; Journal of the Franklin Institute (devoted to
`
`engineering and applied mathematics); the EURASIP Journal on Audio, Speech
`
`and Music Processing; the MIT Press Computer Music Journal; and the Journal of
`
`the Acoustical Society of America.
`
`9.
`
`I am or have been a member of several industry associations, some of
`
`which include IEEE (senior member since 2003), the International Speech
`
`Communication Association (since 1989), and the Audio Engineering Society
`
`(since 1998).
`
`10.
`
`I served on the Audio Technical Group of the MPEG Standards
`
`Committee. The MPEG Standards Committee develops standards for the coded
`
`representation of digital audio and video data.
`
`11.
`
`In my role as a professor at the University of Miami, I supervised
`
`several students pursuing Master’s and Ph.D. degrees in electrical and computer
`
`engineering. I also taught courses in, among other topics, acoustics, speech, audio
`
`and music processing, digital signal processing, communication systems, and
`
`computer networks, and interacted with students at the undergraduate and graduate
`
`levels in this capacity.
`
`3
`
`

`

`12.
`
`I published dozens of articles appearing in academic and research
`
`journals and conference proceedings, relating to audio coding, audio masking,
`
`digital signal processing, speech recognition, speech synthesis, and speech
`
`understanding.
`
`13.
`
`I published four articles on audio watermarking:
`
`a. He, X., Iliev, I.A., Scordilis, M.S., “A High Capacity Watermarking
`
`Technique for Stereo Audio,” Proceedings of the IEEE International
`
`Conference on Acoustics Speech and Signal Processing,
`
`ICASSP2004, Montreal, Canada, May 2004, vol. 5, pp. 393-396.
`
`b. He, X., Scordilis, M.S., “Improved Spread Spectrum Digital Audio
`
`Watermarking Based on a Modified Perceptual Entropy
`
`Psychoacoustic Model,” Proceedings of the IEEE Southeast
`
`Conference, Fort Lauderdale, FL, April 8-10, 2005, pp. 283-286
`
`c. Scordilis, M.S., He, X., “Spread Spectrum for Digital Audio
`
`Watermarking,” in Cvejic, N. and Seppanen, T. (eds.), Digital Audio
`
`Watermarking Techniques and Technologies: Applications and
`
`Benchmarks,” ISBN 978-1-59904-513-9, Information Science
`
`Reference, Hershey, PA, 2007, pp. 11-49;
`
`4
`
`

`

`d. He, X., Scordilis, M.S., “Efficiently Synchronized Spread Spectrum
`
`Audio Watermarking,” Research Letters in Signal Processing,
`
`Volume 2008, Article ID 251868, 5 pages.
`
`14.
`
`I have experience conducting and interpreting experiments on human
`
`hearing. For example, I conducted and interpreted experiments on phase masking
`
`to encode data in audio signals. (Iliev, I., Scordilis, M.S., “Binaural Phase
`
`Masking Experiments in Stereo Audio,” Proceedings of the First Pan-
`
`American/Iberian Meeting on Acoustics, Cancun, Mexico, December 2-6, 2002).
`
`15. From 2004-2005 I worked with SunnComm of Phoenix, Arizona on
`
`audio watermarking technology.
`
`16. From 2012-2013 I consulted to Soundmouse, a company which
`
`provides music usage reporting services to the broadcasting industry. In this role, I
`
`was involved in researching and developing imperceptible watermarking for digital
`
`audio.
`
`17.
`
`I am a listed inventor on multiple U.S. patents, including U.S.
`
`6,996,521 (Ex. 1027, “Iliev”) which was used to reject the ‘961 Patent during
`
`prosecution. Ex. 1002, pp. 84-89.
`
`II. MATERIALS REVIEWED AND CONSIDERED
`18. My findings, as explained below, are based on my years of education,
`
`research, experience, and background in the fields of electrical, computer, and
`
`5
`
`

`

`communications engineering, as well as my investigation and study of relevant
`
`materials for this Declaration. 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 IV below. In forming my opinions, I have studied and
`
`considered the materials identified in the list below.
`
`19.
`
`I have reviewed the ‘961 Patent, its prosecution history, and the prior
`
`art and other documents and materials cited herein. For ease of reference, the list
`
`of documents that I have considered is included below. 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 libraries, conferences, publications,
`
`organization, and websites in the field as further discussed below.
`
`20. The opinions and comments formulated during this assessment are
`
`based on observations and information available at the time of this investigation.
`
`Exhibit Description
`1001
`U.S. Patent No. 7,289,961 (“’961 Patent”)
`1002
`Prosecution History of U.S. Patent No. 7,289,961
`1003
`Declaration of Michael Scordilis, Ph.D.
`1004
`Curriculum Vitae of Michael Scordilis, Ph.D.
`1005
`U.S. Patent No. 6,272,176 (“Srinivasan”)
`1006
`Richard C. Cabot et al., Detection of phase shifts in harmonically
`related tones, 24(7) Journal of the Audio Engineering Society 568-571
`(1976) (“Cabot”)
`PCT Publication WO 01/58063 (“Kudumakis”)
`
`1007
`
`6
`
`

`

`1008
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`
`1021
`
`1022
`1023
`
`1024
`1027
`1028
`
`1029
`
`1031
`
`John F. Tilki et al., Encoding a hidden auxiliary channel onto a digital
`audio signal using psychoacoustic masking, Proceedings IEEE
`SOUTHEASTCON ’97 Engineering the New Century (1997) (“Tilki”)
`U.S. Patent No. 4,546,779
`Christine I. Podilchuk et al., Digital Watermarking: Algorithms and
`Applications, 18 IEEE Signal Processing Magazine 33, 33-46 (2001)
`(“Podilchuk”)
`Ingemar J. Cox et al., Review of Watermarking and the Importance of
`Perceptual Modeling, 3016 Proceedings of SPIE 92, 92-99 (1997)
`(“Cox-1997”)
`Mitchell D. Swanson et al., Robust Audio Watermarking Using
`Perceptual Masking, 66(3) Signal Processing 337, 337-355 (1998)
`(“Swanson”)
`U.S. Patent No. 3,845,391
`U.S. Patent No. 4,931,871
`U.S. Patent No. 3,004,104
`U.S. Patent No. 5,629,739
`U.S. Patent No. 5,745,604 (“’604 Patent”)
`U.S. Patent No. 5,579,124
`Ingemar J. Cox et al., Secure Spread Spectrum Watermarking for
`Multimedia, NEC Research Institute Technical Report 95-10 (1995)
`(“Cox-1995”)
`Chung-Ping Wu et al., Robust and efficient digital audio watermarking
`using audio content analysis, 3971 Proceedings of SPIE 382, 382-392
`(2000) (“Wu”)
`U.S. Patent No. 6,151,578
`Qiang Cheng et al., Spread Spectrum Signaling for Speech
`watermarking, Proceedings of 2001 IEEE Int'l Conference on Acoustics,
`Speech, and Signal Processing 1337-1340 (2001)
`U.S. Patent No. 6,061,793
`U.S. Patent No. 6,996,521
`Jean-Claude Risset, 113-169 The Psychology of Music, 113-169 (2nd ed.
`1999)
`Hideo Suzuki et al., On the Perception of Phase Distortion, 28(9)
`Journal of the Audio Engineering Society 570-574 (1980)
`Stanley P. Lipshitz, On the Audibility of Midrange Phase Distortion in
`Audio Systems, 30(9) Journal of the Audio Engineering Society 580-595
`(1982)
`
`7
`
`

`

`1032
`
`1033
`
`1035
`
`1042
`1043
`1044
`1045
`1046
`
`1053
`
`Wen-Nung Lie et al., Robust and High-Quality Time-Domain Audio
`Watermarking Subject to Psychoacoustic Masking, 2001 IEEE Int’l
`Symposium on Circuits and Sys. 45-48 (2001) (“Lie”)
`Kaliappan Gopalan et al., Data Embedding in Audio Signals, 2001 IEEE
`Aerospace Conference Proceedings, 2713-2720 (2001)
`Alessandro Piva et al., Managing Copyright in Open Networks, 6(3)
`IEEE Internet Computing, 18-26 (2002)
`U.S. Patent No. 6,633,653 (“Hobson”)
`U.S. Patent No. 6,298,322
`U.S. Patent No. 5,450,490 (“Jensen”)
`U.S. Patent No. 6,175,627 (“Petrovic”)
`Ingemar Cox et al, Some General Methods for Tampering with
`Watermarks, 4 IEEE Journal on Selected Areas in Communications
`587-593 (1998)
`Declaration of Rachel J. Watters re. Wu
`
`
`III. MY UNDERSTANDING OF PATENT LAW
`In developing my opinions, I discussed various relevant legal
`21.
`
`principles with Petitioner’s attorneys (“counsel”). Though I do not purport to have
`
`prior knowledge of such principles, I understood them when they were explained
`
`to me and have relied upon such legal principles, as explained to me, in the course
`
`of forming the opinions set forth in this declaration. My understanding in this
`
`respect is as follows:
`
`22.
`
`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.
`
`23.
`
`I understand that, in this proceeding, Petitioner has the burden of
`
`proving that the challenged claims of the ’961 Patent are unpatentable by a
`
`8
`
`

`

`preponderance of the evidence. I understand that “preponderance of the evidence”
`
`means that a fact or conclusion is more likely true than not true.
`
`24.
`
`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 controls. I have applied these standards in
`
`preparing the opinions in this Declaration.
`
`25.
`
`I understand that determining whether a particular patent or printed
`
`publication constitutes prior art to a challenged patent claim can require
`
`determining the effective filing date (also known as the priority date) to which the
`
`challenged claim is entitled. I understand that for a patent claim to be entitled to
`
`the benefit of the filing date of an earlier application to which the patent claims
`
`priority, the earlier application must have described the claimed invention in
`
`sufficient detail to convey with reasonable clarity to the POSA that the inventor
`
`had possession of the claimed invention as of the earlier application’s filing date. I
`
`understand that a disclosure that merely renders the claimed invention obvious is
`
`not sufficient written description for the claim to be entitled to the benefit of the
`
`filing date of the application containing that disclosure.
`
`9
`
`

`

`26.
`
`I understand that for an invention claimed in a patent to be patentable,
`
`it must be, among other things, new (novel—i.e., not anticipated) and not obvious
`
`from the prior art. My understanding of these two legal standards is set forth
`
`below.
`
`A. Anticipation
`I understand that, for a patent claim to be “anticipated” by the prior art
`27.
`
`(and therefore not novel), each and every limitation of the claim must be found,
`
`expressly or inherently, in a single prior art reference. 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 light of the POSA’s knowledge and experience.
`
`28.
`
`I understand that a claim limitation is inherent in a prior art reference
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`if that limitation is necessarily present when practicing the teachings of the
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`reference, regardless of whether a POSA recognized the presence of that limitation
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`in the prior art.
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`B. Obviousness
`I understand that a patent claim may be unpatentable if it would have
`29.
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`been obvious in view of a single prior art reference or a combination of prior art
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`references.
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`30.
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`I understand that a patent claim is obvious if the differences between
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`the subject matter of the claim and the prior art are such that the subject matter as a
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`whole would have been obvious to a person of ordinary skill in the relevant field at
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`the time the invention was made. Specifically, I understand that the obviousness
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`question involves a consideration of:
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`-
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`-
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`-
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`-
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`the scope and content of the prior art;
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`the differences between the prior art and the claims at issue;
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`the knowledge of a person of ordinary skill in the pertinent art; and
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`if present, objective factors indicative of non-obviousness, sometimes
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`referred to as “secondary considerations.” To my knowledge, the Patent
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`Owner has not asserted any such secondary considerations with respect to
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`the ’961 Patent.
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`31.
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`I understand that in order for a claimed invention to be considered
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`obvious, a POSA must have had a reason for combining teachings from multiple
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`prior art references (or for altering a single prior art reference, in the case of
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`obviousness in view of a single reference) in the fashion proposed.
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`32.
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`I further understand that in determining whether a prior art reference
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`would have been combined with other prior art or with other information within
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`the knowledge of a POSA, the following are examples of approaches and
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`rationales that may be considered:
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`- combining prior art elements according to known methods to yield
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`predictable results;
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`- simple substitution of one known element for another to obtain
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`predictable results;
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`- use of a known technique to improve similar devices in the same way;
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`- applying a known technique to a known device ready for improvement to
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`yield predictable results;
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`- applying a technique or approach that would have been “obvious to try,”
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`i.e., choosing from a finite number of identified, predictable solutions,
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`with a reasonable expectation of success;
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`- known work in one field of endeavor may prompt variations of it for use
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`in either the same field or a different one based on design incentives or
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`other market forces if the variations would have been predictable to one
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`of ordinary skill in the art;
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`- some teaching, suggestion, or motivation in the prior art that would have
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`led one of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings to arrive at the claimed invention. I
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`understand that this teaching, suggestion or motivation may come from a
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`prior art reference or from the knowledge or common sense of one of
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`ordinary skill in the art.
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`33.
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`I understand that for a single reference or a combination of references
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`to render the claimed invention obvious, a POSA must have been able to arrive at
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`the claimed invention by altering or combining the applied references.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`I have been informed and understand that for purposes of assessing
`34.
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`whether prior art references disclose every element of a patent claim (thus
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`“anticipating” the claim) and/or would have rendered the claim obvious, the patent
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`and the prior art references must be assessed from the perspective of a person
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`having ordinary skill in the art (“POSA”) to which the patent is related, based on
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`the understanding of that person at the time of the patent claim’s priority date. I
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`have been informed and understand that a POSA is presumed to be aware of all
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`pertinent prior art and the conventional wisdom in the art, and is a person of
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`ordinary creativity. I have applied this standard throughout my declaration.
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`35. The ’961 Patent involves technology in the field of signal processing.
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`I have been asked to provide my opinions as to the state of the art in this field by
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`June 2003. I use this timeframe because the face of the ’961 Patent indicates an
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`earliest claimed priority date of June 19, 2003. Whenever I offer an opinion in this
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`declaration about the knowledge of a POSA, the manner in which a POSA would
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`have understood the claims of the ’961 Patent or its description, the manner in
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`which a POSA would have understood the prior art, or what a POSA would have
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`been led to do based on the prior art, I am referencing the June 2003 timeframe,
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`even if I do not say so specifically in each case.
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`36.
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`I understand that the Patent Owner may attempt to prove that the
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`alleged invention recited in the challenged claims was conceived at some time
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`prior to the earliest claimed priority date on the face of the patent.
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`37.
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`In my opinion, a POSA in the June 2003 timeframe (“POSA”) would
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`have had a bachelor’s degree in electrical engineering or a related field with
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`coursework in signal processing, plus two years of academic and/or industry
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`experience in signal processing or a related field. More education could substitute
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`for experience, and vice versa. This person would have been capable of
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`understanding and applying the teachings of the ’961 Patent and the prior art
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`references discussed in this Declaration.
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`38. By 2003, I held a Ph.D. in Electrical and Computer Engineering, and I
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`had about thirteen years of experience as a lecturer and professor of Electrical and
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`Computer Engineering. As explained above in ¶¶ 6-7 and 11, by 2003 I had more
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`than two years’ worth of experience in signal processing and related topics, and in
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`fact closer to twenty years’ worth of experience in those topics.
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`39. Therefore, I was a person of more than ordinary skill in the art during
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`the relevant timeframe. However, I worked with many people who fit the
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`characteristics of the POSA, and I am familiar with their level of skill. When
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`developing the opinions set forth in this declaration, I assumed the perspective