UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`APPLE, INC.
`Petitioner
`v.
`
`MULLEN INDUSTRIES LLC
`Patent Owner
`
`
`
`
`
`Inter Partes Review for
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`Filing Date: July 12, 2006
`Issue Date: September 14, 2021
`
`
`DECLARATION OF DAVID H. WILLIAMS
`
`
`
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 1 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`
`TABLE OF CONTENTS
`
`I. 
`Introduction ...................................................................................................... 1 
`Information Considered ................................................................................... 4 
`II. 
`III.  Anticipation ..................................................................................................... 7 
`IV.  Obviousness ................................................................................................... 11 
`V. 
`Claim Construction ........................................................................................ 19 
`VI.  Level of Skill in the Art ................................................................................. 19 
`VII.  Challenged Patents’ Specification ................................................................. 21 
`VIII.  Prior Art ......................................................................................................... 33 
`A.  Overview ............................................................................................. 33 
`B. 
`The ’820 Patent to Sheha, et al. (Ex. 1041) ........................................ 34 
`C. 
`The ’630 Patent to Enzmann et. al (Ex. 1040) .................................... 36 
`D. 
`The ’934 Patent to Bectolsheim (Ex. 1043) ........................................ 38 
`E. 
`The ’604 Publication to Bedingfield (Ex. 1044) ................................. 39 
`F. 
`The ’793 Patent to Carey (Ex. 1045) .................................................. 40 
`G. 
`The ’801 Patent to Curbow (Ex. 1046) ............................................... 41 
`H. 
`The ’860 Publication to Degnbol (Ex. 1047) ...................................... 42 
`I. 
`The ’658 Patent to Engberg (Ex. 1048) .............................................. 44 
`J. 
`The ’148 Patent to Ganesh (Ex. 1049) ................................................ 46 
`K. 
`The ’034 Patent to Lee (Ex. 1050) ...................................................... 50 
`L. 
`The ’272 Publication to Lelievre (Ex. 1051) ...................................... 50 
`
`
`
`- i -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 2 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`M.  The ’498 Patent to Maruyama (Ex. 1052) ........................................... 51 
`N. 
`The ’499 Patent to McDonnell (Ex. 1053) .......................................... 52 
`O. 
`The ’407 Patent to McNulty (Ex. 1054) .............................................. 53 
`P. 
`The ’853 Patent to Obradovich (Ex. 1055) ......................................... 55 
`Q. 
`The ’652 Patent to Preston (Ex. 1056) ................................................ 57 
`R. 
`The ’795 Patent to Ryden (Ex. 1057) .................................................. 58 
`S. 
`The ’951 Patent to Smith (Ex. 1059) .................................................. 61 
`T. 
`The ’919 Patent to Tanaka (Ex. 1060) ................................................ 63 
`U. 
`The ’209 Publication to Tobin (Ex. 1061) .......................................... 65 
`V. 
`The ’224 Patent to Wako (Ex. 1062) .................................................. 66 
`IX.  Motivation to Combine .................................................................................. 67 
`A. 
`Background ......................................................................................... 67 
`B.  Motivation to Combine Sheha and Enzmann with Bectolsheim,
`Bedingfield, Carey, Degnbol, Engberg, Enzmann, Ganesh, Lee,
`Lelievre, McDonnell, McNulty, Obradovich, Preston, Ryden,
`Smith, Tanaka, Tobin, Von Scheele, and Wako ................................. 73 
`X.  Analysis and Identification of How the Claims are Unpatentable .............. 114 
`A.  Appendix 1 - U.S. Patent No. 8,374,575 to Mullen .......................... 114 
`B. 
`Appendix 2 - U.S. Patent No. 9,204,283 to Mullen .......................... 114 
`C.  Appendix 3 - U.S. Patent No. 9,635,540 to Mullen .......................... 114 
`D.  Appendix 4 - U.S. Patent No. 11,096,039 to Mullen ........................ 114 
`E. 
`Appendix 5 - U.S. Patent No. 11,109,218 to Mullen ........................ 114 
`F. 
`Appendix 6 - U.S. Patent No. 11,122,418 to Mullen ........................ 114 
`
`
`
`- ii -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 3 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`G.  Appendix 7 - U.S. Patent No. 11,234,117 to Mullen ........................ 114 
`H.  Appendix 8 - U.S. Patent No. 11,246,024 to Mullen ........................ 114 
`
`
`
`- iii -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 4 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`I, David H. Williams, declare as follows:
`
`Introduction
`I.
`1. My name is David H. Williams. I am the President of E911-LBS Consulting.
`
`Herein, I give my opinions as to how a hypothetical person of ordinary skill in the
`
`art (“POSITA”) would understand the scope of the claims and whether certain claims
`
`of U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`
`11,122,418; 11,234,117; and 11,246,024 are invalid. I provide technical bases for
`
`these opinions as appropriate.
`
`2.
`
`I am an independent consultant. I am over eighteen years of age, and I would
`
`otherwise be competent to testify as to the matters set forth herein if I am called upon
`
`to do so.
`
`3.
`
`I have prepared this Declaration for consideration by the Patent Trial and
`
`Appeal Board in the Inter Partes Review of U.S. Patent Nos. 8,374,575; 9,204,283;
`
`9,635,540; 11,096,039; 11,109,218; 11,122,418; 11,234,117; and 11,246,024 (the
`
`“Challenged Patents”).
`
`4.
`
`I provide this Declaration at the request of Apple, Inc. in connection with the
`
`above-captioned Inter Partes Reviews. I have been informed and understand that
`
`Apple, Inc. contends that all claims of the Challenged Patents are invalid.
`
`5.
`
`I have been asked to provide my opinions regarding whether the claims of the
`
`
`
`- 1 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 5 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`Challenged Patents are unpatentable because they would have been either anticipated
`
`or obvious to a POSITA at the time of the alleged invention, in light of the prior art.
`
`6.
`
`After careful analysis it is my opinion that all claims of the Challenged Patents
`
`are invalid over the prior art I considered during my analysis. The individual analysis
`
`of each of the Challenged Patents is set out in the exhibits to this Declaration.
`
`7.
`
`This declaration contains statements of my opinions formed to date and the
`
`bases and reasons for those opinions. I may offer additional opinions based on
`
`further review of materials in this case, including opinions and/or testimony of other
`
`expert witnesses. I make this declaration based upon my own personal knowledge
`
`and, if called upon to testify, would testify competently to the matters contained
`
`herein. For my efforts in connection with the preparation of this declaration I have
`
`been compensated at my standard rate for consulting. My compensation is in no way
`
`contingent on the results of these or any other proceedings in relation to the above
`
`captioned patents.
`
`8.
`
`I am being compensated at my standard hourly rate of $485 per hour. My
`
`compensation is not dependent on the outcome of, or any issue in relation to, the
`
`above captioned Inter Partes Reviews. I have no interest in either party.
`
`9.
`
`In forming my opinions, I relied on my knowledge and experience in the field
`
`and on documents and information referenced in this Declaration.
`
`
`
`- 2 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 6 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`10. My complete qualifications and professional experience are described in my
`
`Curriculum Vitae, a copy of which can be found in Exhibit 1008. The following is a
`
`brief summary of my relevant qualifications and professional experience.
`
`11.
`
`I am not an attorney. As shown in my curriculum vitae, I have extensive
`
`industry experience with location based services. Specifically, I have over thirty
`
`years of industry experience in the field of location based services in general,
`
`including experience designing, implementing, and managing numerous location
`
`based service (LBS) applications for mobile social networking, family tracking,
`
`local search, and mobile resource management.
`
`12.
`
`I have extensive expertise in all aspects of LBS delivery across the wireless
`
`location ecosystem, including enabling network, map data, geospatial platform,
`
`chipset, data management, device, and location determination infrastructure and
`
`integration providers. I am an expert in all related aspects of LBS, including data
`
`privacy and security management.
`
`13.
`
`I have particularly relevant qualifications and professional experience in the
`
`following:
`
` Providing geofencing accuracy compliance analysis for ride-sharing
`
`company;
`
` Providing technical guidance for mobile payments/wallet startup
`
`
`
`- 3 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 7 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`utilizing RFID, NFC and other technologies as key location enablers;
`
` Managing the design, collection, and analysis of E911 infrastructure
`
`deployment of major wireless carrier;
`
` Leading the development, implementation, and marketing of numerous
`
`enterprise location-based services across all sales, marketing and
`
`operational channels; and,
`
` Developing the site map and primary content for the NAVTEQ (now
`
`HERE) Network for Developers (N4D) LBS web ecosystem.
`
`II.
`14.
`
`Information Considered
`I have considered the following documents:
`
`a. Challenged Patents:
`
`• U.S. Patent No. 8,374,575 (“the ’575 Patent”) (Ex. 1001)
`
`• U.S. Patent No. 9,204,283 (“the ’283 Patent”) (Ex. 1002)
`
`• U.S. Patent No. 9,635,540 (“the ’540 Patent”) (Ex. 1003)
`
`• U.S. Patent No. 11,096,039 (“the ’039 Patent”) (Ex. 1004)
`
`• U.S. Patent No. 11,109,218 (“the ’218 Patent”) (Ex. 1005)
`
`• U.S. Patent No. 11,122,418 (“the ’418 Patent”) (Ex. 1006)
`
`• U.S. Patent No. 11,234,117 (“the ’117 Patent”) (Ex. 1007)
`
`• U.S. Patent No. 11,246,024 (“the ’024 Patent”) (Ex. 1008)
`
`
`
`- 4 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 8 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`b. Prosecution Histories:
`
`• Prosecution History for the ’575 Patent (Ex. 1011)
`
`• Prosecution History for the ’283 Patent (Ex. 1012)
`
`• Prosecution History for the ’540 Patent (Ex. 1013)
`
`• Prosecution History for the ’039 Patent (Ex. 1014)
`
`• Prosecution History for the ’218 Patent (Ex. 1015)
`
`• Prosecution History for the ’418 Patent (Ex. 1016)
`
`• Prosecution History for the ’117 Patent (Ex. 1017)
`
`• Prosecution History for the ’024 Patent (Ex. 1018)
`
`c. Prior Art:
`
`• U.S. Patent No. 7,130,630 to Enzmann et al (“Enzmann”) (Ex.
`
`1040);
`
`• U.S. Patent No. 7,333,820 to Sheha et al (“Sheha”) (Ex. 1041);
`
`• U.S. Provisional Patent Application 60/305,975 to Sheha et al
`
`(“Sheha Provisional”) (Ex. 1042);
`
`• U.S. Patent No. 6,208,934 to Bectolsheim et al
`
`(“Bectolsheim”) (Ex. 1043);
`
`• U.S. Patent Publication No. 2004/0260604 to Bedingfield (Ex.
`
`1044);
`
`
`
`- 5 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 9 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`• U.S. Patent No. 6,714,793 to Carey (Ex. 1045);
`
`• U.S. Patent No. 6,636,801 to Curbow (Ex. 1046);
`
`• WIPO Publication No. WO0022860 to Degnbol (“Degnbol”)
`
`(Ex. 1047);
`
`• U.S. Patent No. 6,993,658 to Engberg (Ex. 1048);
`
`• U.S. Patent No. 7,013,148 to Ganesh (“Ganesh”) (Ex. 1049);
`
`• U.S. Patent No. 7,681,034 to Lee (“Lee”) (Ex. 1050)
`
`• U.S. Patent Publication No. 2003/0040272 to Lelievre
`
`(“Lelievre”) (Ex. 1051)
`
`• U.S. Patent No. 6,430,498 to Maruyama (“Maruyama”) (Ex.
`
`1052);
`
`• U.S. Patent No. 6,813,499 (“McDonnell”) (Ex. 1053)
`
`• U.S. Patent No. 7,146,407 to McNulty (Ex. 1054);
`
`• U.S. Patent No. 6,133,853 to Obradovich (“Obradovich”) (Ex.
`
`1055);
`
`• U.S. Patent No. 6,236,652 to Preston (“Preston”) (Ex. 1056);
`
`• U.S. Patent No. 7,233,795 to Ryden (“Ryden”) (Ex. 1057);
`
`• U.S. Provisional Patent Application 60/277,117 to Ryden
`
`(“Ryden Provisional”) (Ex. 1058);
`
`
`
`- 6 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 10 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`• US 6,084,951 to Smith (“Smith”) (Ex. 1059);
`
`• U.S. Patent No. 6,819,919 to Tanaka (“Tanaka”) (Ex. 1060);
`
`• U.S. Patent Publication No. 2003/0074209 to Tobin (“Tobin”)
`
`(Ex. 1061);
`
`• U.S. Patent No. 6,415,224 to Wako (“Wako”) (Ex. 1062);
`
`15.
`
`In addition to the documents above, in forming the opinions expressed below,
`
`I have also considered:
`
`a. My own knowledge and experience based upon my work in the
`
`fields of optics and photography, as described above and in my CV;
`
`and
`
`b. The level of skill of a POSITA at the time of the alleged invention
`
`of the Challenged Patents.
`
`III. Anticipation
`16.
`I have been informed by counsel that a patent claim is deemed invalid as
`
`“anticipated” if every limitation in the claim is found, either expressly or inherently,
`
`in a single reference that is prior art to the claim. I have been informed by counsel
`
`that a claimed invention is anticipated if all of its limitations are in a single device
`
`or method that was publicly used, offered for sale, or sold in the United States more
`
`than one year before the patent application was filed, or described in a single
`
`
`
`- 7 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 11 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`publication or patent more than one year before the patent application was filed. In
`
`addition, a claimed invention is anticipated if it was known or used by others in the
`
`United States or described in a publication or patent before the invention date.
`
`Further, a claimed invention is anticipated if it was described in a United States
`
`patent granted on an application for patent by another filed in the United States
`
`before the invention by the applicant for the patent under examination.
`
`17.
`
`I have been informed by counsel that whether the single item of prior art
`
`anticipates every one of the elements is evaluated from the view of a person of
`
`ordinary skill in the art from his or her review of the particular piece of prior art. I
`
`have also been informed and understand that the description in the prior art reference
`
`does not have to be in the same words as the claim, but all the limitations must be
`
`present, either expressly or inherently, so that someone of ordinary skill in the art
`
`looking at the reference would have everything necessary to make and use the
`
`claimed invention. I also understand that something is inherent in an item of prior
`
`art if it is always present in the prior art, or always results from the practice of the
`
`prior art, and if a skilled person would understand that to be the case. A prior art
`
`reference without express reference to a claim limitation may nonetheless anticipate
`
`by inherency if the prior art necessarily functions in accordance with, or includes,
`
`the claim limitation, or if the missing element or feature would necessarily result
`
`
`
`- 8 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 12 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`from what the single item of prior art teaches to persons of ordinary skill in the art.
`
`18.
`
`I have been informed by counsel that a claim in a patent is invalid under 35
`
`U.S.C. § 102(a) if the alleged invention defined by that claim was known or used by
`
`others in this country, or patented or described in a printed publication in this or a
`
`foreign country, before it was invented.
`
`19.
`
`I have been informed by counsel that a patent claim is invalid under 35 U.S.C.
`
`§ 102(b) if the alleged invention recited in that claim was publicly known or used in
`
`the United States more than one year before the United States patent application was
`
`filed. Private or secret knowledge, such as knowledge confidentially disclosed
`
`within a small group, is not enough to invalidate a patent claim, nor is something
`
`that is only publicly known outside of the United States. I further understand that a
`
`prior public use may anticipate a patent claim, even if the use was accidental or was
`
`not appreciated by the user.
`
`20.
`
`I have also been informed by counsel that a patent claim is invalid under 35
`
`U.S.C. § 102(b) if the alleged invention recited in that claim was sold or offered for
`
`sale in the United States more than one year prior to the filing date of the United
`
`States patent application (the so called “critical date”). I understand that this “on
`
`sale” bar is triggered if the invention is both (1) the subject of a commercial offer
`
`for sale not primarily for experimental purposes and (2) ready for patenting. I also
`
`
`
`- 9 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 13 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`understand that the bar is triggered even if the sale or offer for sale is unknown to
`
`the public. I have been informed that factors relevant to determining whether a
`
`claimed invention was in public use include: the nature of the activity that occurred
`
`in public; public access to the use; confidentiality obligations imposed upon
`
`observers; commercial exploitation; and the circumstances surrounding any testing
`
`and experimentation. I also understand that the absence of affirmative steps to
`
`conceal the use of the invention is evidence of a public use. Secret use by a third
`
`party is not public, unless members of the public or employees of the third party
`
`have access to the invention. I understand that a claimed invention is ready for
`
`patenting when there is reason to believe it would work for its intended purpose. I
`
`further understand that an invention can be shown to be “ready for patenting” in at
`
`least two ways: (1) by proof of reduction to practice before the critical date; or (2)
`
`by proof that prior to the critical date the inventor had prepared drawings or other
`
`descriptions of the invention that were sufficiently specific to enable a person skilled
`
`in the art to practice the invention.
`
`21.
`
`I have been informed by counsel that a patent claim is also invalid under 35
`
`U.S.C. § 102(b) if the alleged invention defined by that claim was patented or
`
`described in a printed publication in this or a foreign country more than one year
`
`prior to the critical date. To be anticipating prior art, a printed publication must be
`
`
`
`- 10 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 14 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`reasonably accessible to those members of the public who would be interested in its
`
`contents. I understand that so long as the printed publication was available to the
`
`public, the form in which the information was recorded is unimportant. The
`
`information must, however, have been maintained in some permanent form, such as
`
`printed or typewritten pages, magnetic tape, microfilm, photographs, or photocopies.
`
`22.
`
`I also have been informed by counsel that under 35 U.S.C. § 102(e) a patent
`
`claim is invalid if the alleged invention was described in an application for patent by
`
`another in the United States before the alleged invention by the applicant.
`
`IV. Obviousness
`23.
`I understand that a patent claim is deemed invalid as “obvious” if it would
`
`have been obvious to a person of ordinary skill in the art at the time the invention
`
`was made. I also understand that under 35 U.S.C. § 103, a patent is invalid if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said subject
`
`matter pertains. Obviousness may be shown by considering more than one item of
`
`prior art in combination with others or based on a single prior art reference in
`
`combination with the general state of the art.
`
`24.
`
`I understand that a conclusion of obviousness may be based upon a
`
`
`
`- 11 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 15 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`combination of prior art references. However, I also understand that a patent
`
`composed of several elements may not be proved obvious merely by demonstrating
`
`that each of its elements was independently known in the art. I further understand
`
`that there must be an appropriate articulation of a reason to combine the elements
`
`from the prior art in the manner claimed, and obviousness cannot be based on a
`
`hindsight combination of components selected from the prior art using the patent
`
`claims as a roadmap.
`
`25.
`
`In determining whether an invention is obvious, I understand that obviousness
`
`is determined from the perspective of a person of ordinary skill in the art of the
`
`invention. In undertaking this analysis, it is important to consider four issues: (1) the
`
`scope and content of the prior art, (2) the differences between the prior art and the
`
`claim under consideration, (3) the level of ordinary skill in the art, and (4) any
`
`“secondary considerations” of non-obviousness.
`
`26.
`
`In evaluating the scope and content of the prior art, I understand that the
`
`inquiry is whether the prior art was reasonably relevant to the particular problem
`
`faced by the inventor(s) in making the invention covered by the patent claims. I
`
`understand that such relevant prior art includes prior art in the field of the invention
`
`and also prior art from other fields that a person of ordinary skill would look to when
`
`attempting to solve the problem. I further understand that, to determine obviousness,
`
`
`
`- 12 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 16 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`the courts look to the interrelated teachings of multiple patents, the effects of
`
`demands known to the design community or present in the marketplace, and the
`
`background knowledge possessed by a person having ordinary skill in the art.
`
`27.
`
`In determining the differences between the invention covered by the patent
`
`claims and the prior art, I understand that the prior art references are not looked at
`
`in isolation. Rather, the claimed invention as a whole must be considered, and it must
`
`be determined whether or not it would have been obvious in light of all of the prior
`
`art.
`
`28.
`
`I further understand that obviousness is determined from the perspective of a
`
`person of ordinary skill in the art, and that such a person is presumed to know all
`
`prior art, not just what the inventor may have known. The person of ordinary skill
`
`faced with a problem is able to apply his or her experience and ability to solve the
`
`problem and also look to any available prior art to help solve the problem.
`
`29.
`
`I understand that one rationale for determining obviousness of a claimed
`
`invention is that some reason within the prior art would have led one of ordinary
`
`skill to modify the prior art reference or to combine prior art teachings to arrive at
`
`the claimed invention. Such reasons include the following:
`
`a. combining prior art elements according to known methods to yield
`
`predictable results;
`
`
`
`- 13 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 17 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`
`b. simple substitution of one known element for another to obtain
`
`predictable results;
`
`c. use of a known technique to improve similar devices (methods or
`
`products) in the same way;
`
`d. applying a known technique to a known device (method or product)
`
`ready for improvement to yield predictable results;
`
`e. “obvious to try” – choosing from a finite number of identified,
`
`predictable solutions, with a reasonable expectation of success;
`
`f. known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on design
`
`incentives or other market forces if the variations would have been
`
`predicable to one of ordinary skill in the art; and
`
`g. some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior art reference or to
`
`combine prior art teachings to arrive at the claimed invention.
`
`30.
`
`In determining whether or not the invention would have been obvious to one
`
`of ordinary skill in the art at the time the invention was made, I understand that you
`
`must consider whether or not the combination is more than the predictable use of
`
`prior art elements according to their established functions. If a technique has been
`
`
`
`- 14 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 18 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`used to improve one device, and a person of ordinary skill in the art would recognize
`
`that it would improve similar devices in the same way, using the technique would
`
`have been obvious unless the actual application is beyond that person’s skill. In
`
`answering this question, I understand that it will often be necessary to consider: any
`
`apparent reason to combine the known elements in the manner of the patent claims;
`
`teachings of multiple references; the effects of demands that were known to the
`
`community or that were present in the marketplace; and the background knowledge
`
`possessed by persons of ordinary skill in the art.
`
`31.
`
`I understand that it is important to identify a reason that would have prompted
`
`a person of ordinary skill in the art to combine the elements as the invention does.
`
`Advances that would have occurred anyway in the ordinary course of development
`
`of the art may have been obvious, but consideration need not be limited to the same
`
`problem or same prior art elements, or same solution adopted by the inventor. I also
`
`understand that obviousness may not be shown if the proposed modification or
`
`combination would change the principle of operation of the prior art being modified,
`
`such as rendering the prior art unsatisfactory for its intended purpose.
`
`32.
`
`I further understand that it is appropriate to consider the level of common
`
`sense and creativity of persons of ordinary skill in the art, that familiar items may
`
`have obvious uses beyond their primary purposes, and that a person of ordinary skill
`
`
`
`- 15 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 19 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`in the art may be able to fit the teachings of multiple patents and/or references
`
`together like the pieces of a puzzle.
`
`33.
`
`I further understand that in certain circumstances, the fact that a combination
`
`was obvious to try might show that it was obvious under § 103. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp. If this leads to
`
`the anticipated success, it is likely, but not necessarily, the product not of innovation
`
`but of ordinary skill and common sense.
`
`34.
`
`I understand that the reason to select and combine features, the predictability
`
`of the results of doing so, and a reasonable expectation of success may be found in
`
`the teachings of the prior art references themselves, in the nature of any need or
`
`problem in the field that was addressed by the patent, in the knowledge of persons
`
`having ordinary skill in the field at the time, as well as in common sense or the level
`
`of creativity exhibited by persons of ordinary skill in the art. I further understand
`
`that there need not be an express or explicit suggestion to combine references.
`
`35.
`
`I further understand that if the combination of known elements yielded
`
`unexpected or unpredictable results, or if the prior art teaches away from combining
`
`the known elements, then this evidence would make it more likely that the claim that
`
`
`
`- 16 -
`
`
`
`Petitioner Apple, Inc.
`Exhibit 1021 - Page 20 of 1164
`
`

`

`Declaration of David H. Williams supporting Petitions for Inter Partes Review of
`U.S. Patent Nos. 8,374,575; 9,204,283; 9,635,540; 11,096,039; 11,109,218;
`11,122,418; 11,234,117; and 11,246,024
`
`successfully combined those elements was not obvious. I further understand that if
`
`a reference teaches away from the invention when it would have discouraged a
`
`person of ordinary skill in the art from practicing the claimed invention, or when
`
`such a person would be led in a different direction than practicing the claimed
`
`invention.
`
`36.
`
`I understand that a prior art reference must be considered in its entirety, i.e.,
`
`as a whole, including portions that would lead away from the claimed invention. I
`
`further understand that, when considering a disclosure or reference, it is proper to
`
`take into account not only specific teachings of the reference but also the inferences
`
`which one skilled in the art would reasonably be expected to draw from the
`
`reference.
`
`37.
`
`In addition, I understand that objective indications of non-ob