Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS CO., LTD AND SAMSUNG ELECTRONICS
`AMERICA, INC.,
`Petitioners,
`v.
`MANUFACTURING RESOURCES INTERNATIONAL, INC.,
`Patent Owner.
`
`IPR2023-00199
`U.S. Patent No. 8,854,595
`Issue Date: October 7, 2014
`Title: CONSTRICTED CONVECTION COOLING SYSTEM FOR AN ELECTRONIC DISPLAY
`
`DECLARATION OF ROBERT SMITH-GILLESPIE IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,854,595
`
`SEC et al. v. MRI
`SEC Exhibit 1002.001
`IPR 2023-00199
`
`

`

`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page i
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A.
`Introduction .......................................................................................... 1
`B. Qualifications and Experience ............................................................. 2
`C. Materials Considered ............................................................................ 7
`LEGAL PRINCIPLES .................................................................................. 10
`A.
`Prior Art .............................................................................................. 10
`B.
`Claim Construction ............................................................................ 10
`C. Anticipation ........................................................................................ 12
`D. Obviousness ........................................................................................ 13
`III. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 14
`IV. KNOWLEDGE IN THE ART AT THE TIME OF THE ALLEGED
`INVENTION OF THE ʼ595 PATENT ......................................................... 16
`THE ’595 PATENT ...................................................................................... 28
`A. Overview of the ’595 Patent ............................................................... 28
`B.
`Prosecution History ............................................................................ 32
`C.
`The Challenged Claims ...................................................................... 33
`D.
`Claim Construction ............................................................................ 35
`VI. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 37
`A.
`Brief Summary of Prior Art ............................................................... 38
`1.
`Takeuchi [Ex. 1004] ................................................................. 38
`2.
`Kim [Ex. 1005] ........................................................................ 41
`3.
`Na [Exs. 1009-1010] ................................................................ 46
`4.
`Hong [Ex. 1006] ....................................................................... 48
`5.
`Takahashi [Exs. 1007-1008] .................................................... 51
`VII. GROUND 1: CLAIM 1 IS OBVIOUS OVER TAKEUCHI ....................... 55
`A.
`Independent Claim 1 .......................................................................... 55
`
`V.
`
`
`
`
`
`-i-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.002
`IPR 2023-00199
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page ii
`
`
`
`1.
`
`2.
`
`3.
`
`4.
`
`“A system for cooling an electronic display having a
`posterior display surface and contained within a housing,
`the system comprising:” (Claim Element 1[pre]) .................... 55
`“a constricted convection plate placed posterior to the
`posterior display surface;” (Claim Element 1[a]) .................... 57
`“two side panels placed adjacent to the constricted
`convection plate and the posterior display surface,
`defining a constricted convection channel having an
`entrance and an exit; and” (Claim Element 1[b]) .................... 60
`“a fan placed to draw air from outside of the housing
`through the constricted convection channel.” (Claim
`Element 1[c]) ............................................................................ 63
`VIII. GROUND 2: CLAIM 1 IS OBVIOUS OVER KIM .................................... 65
`A.
`Independent Claim 1 .......................................................................... 65
`1.
`“A system for cooling an electronic display having a
`posterior display surface and contained within a housing,
`the system comprising:” (Claim Element 1[pre]) .................... 65
`“a constricted convection plate placed posterior to the
`posterior display surface;” (Claim Element 1[a]) .................... 69
`“two side panels placed adjacent to the constricted
`convection plate and the posterior display surface,
`defining a constricted convection channel having an
`entrance and an exit; and” (Claim Element 1[b]) .................... 71
`“a fan placed to draw air from outside of the housing
`through the constricted convection channel.” (Claim
`Element 1[c]) ............................................................................ 75
`IX. GROUND 3: THE COMBINATION OF KIM AND HONG
`RENDERS OBVIOUS CLAIMS 4 AND 7 ................................................. 77
`A.
`Independent Claim 4 .......................................................................... 77
`1.
`“A liquid crystal display (LCD) comprising:” (Claim
`Element 4[pre]) ........................................................................ 78
`“a liquid crystal stack;” (Claim Element 4[a])......................... 79
`
`2.
`
`3.
`
`4.
`
`2.
`
`
`
`
`
`-ii-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.003
`IPR 2023-00199
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page iii
`
`
`
`3.
`
`“a backlight assembly behind the liquid crystal stack and
`comprising: a metal core printed circuit board (PCB)
`having front and back sides; a plurality of LEDs mounted
`on the front side of the PCB; a posterior surface on the
`rear side of the PCB;” (Claim Element 4[b]) ........................... 80
`“a constricted convection plate placed behind the
`posterior surface of the PCB, defining a constricted
`convection channel having an entrance and an exit; and”
`(Claim Element 4[c]) ............................................................... 87
`“a fan positioned to draw air through the constricted
`convection channel.” (Claim Element 4[d]) ............................ 88
`“The LCD from claim 4 wherein: the fan is placed near
`the exit of the constricted convection channel;” (Claim 7) ..... 89
`7. Motivation to Combine Kim and Hong ................................... 90
`X. GROUND 4: THE COMBINATION OF KIM, HONG, AND
`TAKAHASHI RENDERS OBVIOUS CLAIM 8 ........................................ 93
`A.
`“The LCD from claim 4 further comprising: a plurality of
`access apertures through the constricted convection plate;”
`(Claim 8) ............................................................................................. 93
`B. Motivation to Combine Kim and Hong with Takahashi .................... 97
`XI. GROUND 5: THE COMBINATION OF NA AND KIM RENDERS
`CLAIM 1 OBVIOUS .................................................................................... 99
`A.
`Independent Claim 1 .......................................................................... 99
`1.
`“A system for cooling an electronic display having a
`posterior display surface and contained within a housing,
`the system comprising:” (Claim Element 1[pre]) .................... 99
`“a constricted convection plate placed posterior to the
`posterior display surface;” (Claim Element 1[a]) .................. 104
`“two side panels placed adjacent to the constricted
`convection plate and the posterior display surface,
`defining a constricted convection channel having an
`entrance and an exit; and” (Claim Element 1[b]) .................. 107
`
`4.
`
`5.
`
`6.
`
`2.
`
`3.
`
`
`
`
`
`-iii-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.004
`IPR 2023-00199
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page iv
`
`
`
`4.
`
`2.
`3.
`
`4.
`
`“a fan placed to draw air from outside of the housing
`through the constricted convection channel.” (Claim
`Element 1[c]) .......................................................................... 110
`5. Motivation to Combine Na and Kim ..................................... 112
`XII. GROUND 6: THE COMBINATION OF NA AND HONG
`RENDERS CLAIMS 4, 7 AND 8 OBVIOUS ........................................... 115
`A.
`Independent Claim 4 ........................................................................ 115
`1.
`“A liquid crystal display (LCD) comprising:” (Claim
`Element 4[pre]) ...................................................................... 115
`“a liquid crystal stack;” (Claim Element 4[a])....................... 116
`“a backlight assembly behind the liquid crystal stack and
`comprising: a metal core printed circuit board (PCB)
`having front and back sides; a plurality of LEDs mounted
`on the front side of the PCB; a posterior surface on the
`rear side of the PCB;” (Claim Element 4[b]) ......................... 118
`“a constricted convection plate placed behind the
`posterior surface of the PCB, defining a constricted
`convection channel having an entrance and an exit; and”
`(Claim Element 4[c]) ............................................................. 127
`“the fan positioned to draw air through the constricted
`convection channel.” (Claim Element 4[d]) .......................... 128
`“The LCD from claim 4 wherein: the fan is placed near
`the exit of the constricted convection channel;” (Claim 7) ... 128
`“The LCD from claim 4 further comprising: a plurality of
`access apertures through the constricted convection
`plate;” (Claim 8) ..................................................................... 130
`8. Motivation to Combine Na and Hong .................................... 132
`XIII. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .... 136
`XIV. CONCLUSION ........................................................................................... 139
`
`5.
`
`6.
`
`7.
`
`
`
`
`
`-iv-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.005
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`I, Robert Smith-Gillespie, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A.
`Introduction
`
`I have been retained by Petitioners Samsung Electronics Co., Ltd. and
`
`Samsung Electronics America, Inc. (collectively, “Samsung” or “Petitioners”) as a
`
`technical expert witness in connection with the Petition for Inter Partes Review of
`
`U.S. Patent No. 8,854,595 (“’595 patent”). The statements set forth in this
`
`declaration are based on my own personal knowledge. I am being compensated at
`
`my usual rate, which is $350 per hour, for the time spent preparing this declaration,
`
`and my compensation is not contingent on the outcome of any matter or any of the
`
`opinions provided below. I have no financial interest in this matter.
`
`
`
`I understand that the ’595 patent issued on October 7, 2014 from U.S.
`
`Application No. 12/411,925, naming William Dunn as inventor. I have been advised
`
`and it is my understanding that the earliest provisional priority date of the ’595 patent
`
`is March 3, 2008, the filing date of Provisional Application No. 61/033,064, to which
`
`the ’595 patent claims priority. For purposes of my analysis herein, I have used this
`
`date as the relevant time period.
`
`
`
`I have been asked by Petitioners to offer opinions regarding the state
`
`of the art in the field of cooling electronic display equipment prior to March 3, 2008.
`
`
`
`
`
`-1-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.006
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`I have been asked to provide my opinion concerning the question of whether the
`
`
`
`devices described in claims 1, 4 and 7-8 of the ’595 patent were novel and/or would
`
`have been unobvious to a person of ordinary skill in the art (“POSITA”) by March
`
`3, 2008.
`
`
`
`In preparing this Declaration, I have reviewed the ’595 patent, its
`
`prosecution history, and each of the documents I reference herein. In reaching my
`
`opinions, I have relied upon my experience in the field and have also considered the
`
`viewpoint of a POSITA at the time of the ’595 patent’s priority date. As explained
`
`below, I am familiar with the level of skill of a POSITA regarding the technology at
`
`issue as of that time frame.
`
`
`
`I would and could competently testify to the matters set forth in this
`
`Declaration if called upon to do so.
`
`B. Qualifications and Experience
` My background includes roughly 35 years of professional experience
`
`in the field of illuminated products including LCD displays and backlighting, LED
`
`illuminated consumer products, LED general lighting devices and large area LED
`
`display products. I am currently working in a consulting role as a manufacturing
`
`systems engineer for Alveo Technologies providing process development expertise
`
`for micro-fluidic diagnostic product manufacturing.
`
`
`
`
`
`-2-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.007
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`
`
`
`
`
`I received a B.A. in Physics in 1981 from the State University of New
`
`York, Plattsburgh, and a B.S. in Mechanical Engineering from Arizona State
`
`University in 1989. More recently, I received a Master of Systems Engineering
`
`degree from Embry-Riddle Aeronautical University (Oct. 2021). Additionally, I
`
`completed several continuing education courses related to optical illuminated
`
`systems. These include a UCLA Extension Short Course in 1993 or 1994 on
`
`Photometry and Colorimetry & Flat Panel Displays, Optical System Analysis with
`
`ASAP optical analysis software by Breault Research Organization in 1996, and a
`
`short course on LCD physics and materials at the Kent State University in 1998.
`
` My first role involving display products was as a Manufacturing
`
`Engineer for Sperry Aerospace Corporation from 1985 through 1987. Sperry was
`
`purchased by Honeywell Inc., and I continued at Honeywell’s Air Transport Systems
`
`Division until 1989. In 1989, I moved into the Flight Deck Packaging group as a Sr.
`
`Project Engineer where I was responsible for illuminated controls (switches, lighted
`
`panels, LED annunciators and numeric LCD modules). I continued at Honeywell
`
`through 1997 working as a Principal Engineer where I was responsible for
`
`mechanical and optical designs of the primary displays on the Boeing 777 aircrafts.
`
`
`
`From 1997 through 1999, I worked as Technical Specialist, Displays at
`
`Three-Five Systems, Inc., an original design manufacturer of handheld and small
`
`
`
`
`
`-3-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.008
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`equipment LCD displays. My role focused on integrating LCD cells with backlights
`
`
`
`and mechanical structures for various custom LCDs into consumer products, and
`
`provided guidance for LED backlight design, materials and photometry and
`
`colorimetry. While there, I developed novel backlight designs and manufacturing
`
`processes for both die-on-board and chip-on-board backlights.
`
` From 1999 through 2002, I worked as Technical Staff Engineer at
`
`Rosen Products LLC, and I was responsible for management of LCD display
`
`technology, strategic planning and product benchmarking for automotive and
`
`aircraft entertainment systems.
`
` After leaving Rosen Products LLC, I established and served as
`
`president of FPD Design & Consulting LLC, a display product design and
`
`development consulting company specializing in integration of ruggedized display
`
`components into customer specified products. I have worked at FPD Design &
`
`Consulting LLC from 2002 to the present. Projects I have worked on include direct-
`
`view backlight designs for aviation simulators, CCFL to LED backlight conversions,
`
`commercial-off-the-shelf LCD display ruggedization and optical enhancement.
`
`During this time, I prepared a number of technical papers on display ruggedization,
`
`optical enhancement and backlight thermal design, the later as a “how-to” workshop
`
`for a local chapter of the Society for Information Display (SID).
`
`
`
`
`
`-4-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.009
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`
` From 2011 to 2013, I was employed as the Chief Technologist by E3
`
`
`
`Displays, LLC.
`
` My responsibilities included materials development and
`
`qualification (adhesives, EMI shielding, touch panels, LCD backlights & films) as
`
`well as supporting sales and design teams in developing technical solutions for
`
`display system’s optical, mechanical, electrical, and lighting components, including
`
`enhanced LED backlight systems and night-vision compatible backlight designs.
`
`Key projects at E3 Displays include the development of an etched-nickel micro-
`
`mesh for EMI shielding of display screens, the optical design of light guides for high
`
`luminance backlights, and the complete re-packaging of a 19-inch mono-chrome
`
`LCD panel to meet military ground-vehicle mechanical, thermal, and optical
`
`requirements.
`
` From 2013 to September 2018, I worked at Riverwood Solutions, Inc.
`
`(“RWS”) as the Sr. Technical Specialist. RWS provides electronic manufacturing
`
`services management for leading product development companies worldwide. As
`
`the Sr. Technical Specialist, I provided technical expertise on technology, materials,
`
`design, and manufacturability for product applications including medical products,
`
`solar powered devices, LED lamps, and LED illumination in electronic consumer
`
`products.
`
`
`
`I received the Honeywell Technical Achievement Award in 1997. The
`
`
`
`
`
`-5-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.010
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`award recognized my outstanding technical contribution in the field of flat panel
`
`
`
`display backlighting.
`
`
`
`I have served on professional committees, groups, and organizations.
`
`Between 2001 and 2004, I was a member of the conference organizing committee
`
`of Society for Information Display (“SID”). My responsibilities focused on planning
`
`annual display symposia including technical paper review and selection and session
`
`chair.
`
`
`
`I am an inventor of U.S. Patent No. 7,660,040, entitled “Diffuse
`
`reflective article.” I am the author or co-author of 15 scientific and engineering
`
`publications, including articles, conference presentations, technical & scientific
`
`reports and tutorials. These publications cover a wide variety of topics, including
`
`but not limited to flat panel display backlighting techniques, LED backlights,
`
`thermal design principles and analysis, design requirements for automotive
`
`entertainment displays, development of a high luminance, high contrast fixed format
`
`LCD and other areas.
`
` A more detailed description of my educational and professional
`
`background is set forth in my curriculum vitae, attached hereto as Ex. 1003 to this
`
`Declaration.
`
`
`
`
`
`
`
`
`
`-6-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.011
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`
`C. Materials Considered
` The analysis that I provide in this Declaration is based on my education
`
`
`
`and experience in the field of electronic display design and integration, as well as
`
`the documents I have considered, including the ’595 patent (Ex. 1001) and its
`
`prosecution history (Ex. 1030). The ’595 patent states on its face that it issued from
`
`U.S. Application Ser. No. 12/411,925, which was filed on March 26, 2009 and is a
`
`Continuation-in-Part of each of the following applications: (a) No. 12/234/307, filed
`
`on September 19, 2008; (b) No. 12/234,360, filed on September 19, 2008; (c) No.
`
`12/237,365, filed on September 24, 2008; and (d) No. 12/235,200, filed on
`
`September 22, 2008. The ’595 patent also claims priority to ten (10) different
`
`provisional applications as part of its priority chain, the earliest of which is
`
`Provisional Application No. 61/033,064, filed on March 3, 2008. (See Ex. 1001,
`
`1:7-42). For the purposes of this Declaration, I have assumed March 3, 2008 as the
`
`effective filing date for the ’595 patent. I have cited to the following documents in
`
`my analysis below:
`
`Exhibit No.
`
`Description
`
`Ex. 1001
`Ex. 1003
`
`Ex. 1004
`
`Ex. 1005
`
`
`
`
`
`U.S. Patent No. 8,854,595 (“’595 Patent”)
`Curriculum Vitae of Robert Smith-Gillespie
`U.S. Patent Application Publication No. 2003/0043091 to
`Takeuchi et al. (“Takeuchi”)
`U.S. Patent No. 7,800,706 to Kim et al. (“Kim”)
`
`-7-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.012
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`
`Exhibit No.
`
`Description
`
`
`
`Ex. 1006
`
`Ex. 1007
`
`Ex. 1008
`
`Ex. 1009
`
`Ex. 1010
`
`Ex. 1011
`
`Ex. 1012
`
`Ex. 1013
`
`Ex. 1014
`
`Ex. 1015
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1018
`
`
`
`
`
`U.S. Patent Application Publication No. 2007/0171353 to Hong
`(“Hong”)
`Japanese Unexamined Patent Application Publication No. H11-
`68363 to Takahashi (“Takahashi”)
`Certified Translation of
`Japanese Unexamined Patent
`Application Publication No. H11-68363
`to Takahashi
`(“Takahashi”)
`Korean Unexamined Patent Application Publication No. 10-
`2006-0016469 to Na (“Na”)
`Certified Translation of Korean Unexamined Patent Application
`Publication No. 10-2006-0016469 to Na (“Na”)
`Claim Construction Order (D.I. 153) dated October 3, 2018 in
`Manufacturing Resources Int’l, Inc. v. Civiq Smartscapes, LLC,
`et al., Civil Action No. 17-269-RGA (D. Del.)
`Memorandum Opinion (D.I. 150) dated September 27, 2018 in
`Manufacturing Resources Int’l, Inc. v. Civiq Smartscapes, LLC,
`et al., Civil Action No. 17-269-RGA (D. Del.)
`U.S. Patent No. 6,825,828 to Burke, et al. (“Burke”)
`E. Fred Schubert & Jong Kyu Kim, Solid-State Light Sources
`Getting Smart, 308 Science 1274 (2005) (“Schubert”)
`U.S. Patent Application Publication No. 2004/0223299 to Ghosh
`(“Ghosh”)
`Military Handbook: Reliability Prediction of Electronic
`Equipment, DEPARTMENT OF DEFENSE, MIL-HDBK-217F (1991)
`(“MIL-HDBK-217F”)
`Allan Webber, Calculating Useful Lifetimes of Embedded
`Processors, TEXAS INSTRUMENTS INCORPORATED, SPRABX4
`(Nov. 2014) (“Webber”)
`LIAN-TUU YEH & RICHARD C. CHU, THERMAL MANAGEMENT OF
`MICROELECTRONIC EQUIPMENT: HEAT TRANSFER THEORY,
`
`-8-
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.013
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
`
`
`Exhibit No.
`
`Description
`
`
`
`ANALYSIS METHODS, AND DESIGN PRACTICES (Dereje Agonafer
`ed., 2002) (“Yeh & Chu”)
`ALLAN W. SCOTT, COOLING OF ELECTRONIC EQUIPMENT (John
`Wiley & Sons, 1974) (“Scott”)
`DAVE S. STEINBERG, COOLING TECHNIQUES FOR ELECTRONIC
`EQUIPMENT (John Wiley & Sons, 1980) (“Steinberg”)
`U.S. Patent No. 5,748,269 to Harris et al. (“Harris”)
`U.S. Patent Application Publication No. 2002/0122134 to Kalua
`(“Kalua”)
`Custom Luxeon Design Guide, LUMILEDS FUTURE ELECTRONICS,
`Application Brief AB12 (Nov. 2004) (“Lumileds AB12”)
`Thermal Design Using: Luxeon Power Light Sources, PHILLIPS
`LUMILEDS LIGHTING COMPANY, Application Brief AB05 (June
`2006) (“Lumileds AB05”)
`U.S. Patent Application Publication No. 2006/0177587 to
`Ishizuka et al. (“Ishizuka”)
`U.S. Patent Application Publication No. 2006/0092348 to Park
`(“Park”)
`U.S. Patent No. 6,493,440 to Gromatzky et al. (“Gromatzky”)
`U.S. Patent No. 5,991,153 to Heady et al. (“Heady”)
`U.S. Patent No. 6,428,198 to Saccomanno et al. (“Saccomanno”)
`File History for U.S. Patent Application No. 12/411,925
`MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY (11th ed. 2007)
`(“Webster”)
`THE OXFORD ENGLISH DICTIONARY (J. A. Simpson & E. S. C.
`Weiner eds., 2d ed. 1989) (“Oxford”)
`RANDOM HOUSE WEBSTER’S COLLEGIATE DICTIONARY (2d ed.
`2000) (“Random House”)
`
`-9-
`
`
`
`Ex. 1019
`
`Ex. 1020
`
`Ex. 1021
`
`Ex. 1022
`
`Ex. 1023
`
`Ex. 1024
`
`Ex. 1025
`
`Ex. 1026
`
`Ex. 1027
`Ex. 1028
`Ex. 1029
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`
`
`
`
`
`
`SEC et al. v. MRI
`SEC Exhibit 1002.014
`IPR 2023-00199
`
`

`

`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
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`II. LEGAL PRINCIPLES
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`I am not an attorney. For purposes of this declaration, I have been
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`informed by counsel for Samsung about certain aspects of the law that are relevant
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`to my analysis and opinions, as set forth below.
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`A.
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`Prior Art
`I understand that the “prior art” to the ’595 patent includes patents and
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`“printed publications” in the relevant art that predate the ’595 patent’s priority date.
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`As I explained previously, I have been instructed to assume for purposes of my
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`analysis that March 3, 2008 is the relevant date for determining what is “prior art.”
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`In other words, I should consider as “prior art” anything publicly available prior to
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`March 3, 2008. I further understand that, for purposes of this proceeding in the
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`United States Patent Trial and Appeal Board, only patents and documents that have
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`the legal status of a “printed publication” may be relied on as prior art.
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`B. Claim Construction
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`I understand that under the legal principles, claim terms are generally
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`given their ordinary and customary meaning, which is the meaning that the term
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`would have to a POSITA at the time of the invention, i.e., as of the effective filing
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`date of the patent application. I further understand that the POSITA is deemed to
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`read the claim term not only in the context of the particular claim in which a claim
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`term appears, but in the context of the entire patent, including the specification.
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`-10-
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`SEC et al. v. MRI
`SEC Exhibit 1002.015
`IPR 2023-00199
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`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
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`I am informed by counsel that the patent specification, under the legal
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`principles, has been described as the single best guide to the meaning of a claim
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`term, and is thus highly relevant to the interpretation of claim terms. I understand
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`for terms that do not have a customary meaning within the art, the specification
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`usually supplies the best context of understanding the meaning of those terms.
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`I am further informed by counsel that other claims of the patent in
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`question, both asserted and unasserted, can be valuable sources of information as to
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`the meaning of a claim term. Because the claim terms are normally used consistently
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`throughout the patent, the usage of a term in one claim can often illuminate the
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`meaning of the same term in other claims. Differences among claims can also be a
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`useful guide in understanding the meaning of particular claim terms.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence, such as
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`my expert testimony, may also be consulted in construing the claim terms.
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`I have been informed by counsel that, in inter partes review (IPR)
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`proceedings, a claim of a patent shall be construed using the same claim construction
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`standard that would be used to construe the claim in a civil action filed in a U.S.
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`SEC et al. v. MRI
`SEC Exhibit 1002.016
`IPR 2023-00199
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`

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`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
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`district court (which I understand is called the “Phillips” claim construction
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`standard), including construing the claim in accordance with the ordinary and
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`customary meaning of such claim as understood by a POSITA and the prosecution
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`history pertaining to the patent.
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`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips” standard
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`as provided to me by counsel.
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`I understand that some claims are independent, and that these claims
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`are complete by themselves. Other claims refer to these independent claims and are
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`“dependent” from those independent claims. The dependent claims include all of
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`the limitations of the claims on which they depend.
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`C. Anticipation
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`I understand that a patent claim is anticipated if a single prior art
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`document describes every element of the claim such that a POSITA could practice
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`the claim without undue experimentation.
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`I understand that anticipation may be by express disclosure in the prior
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`art reference. I also understand that if the prior art reference does not expressly set
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`-12-
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`SEC et al. v. MRI
`SEC Exhibit 1002.017
`IPR 2023-00199
`
`

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`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
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`forth a particular claim element, the prior art reference may still anticipate a patent
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`claim if that element is “inherent” in its disclosure—that is, if it is necessarily found
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`in the reference. A property is inherent even if a POSITA would not have
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`appreciated that property as of the date of that prior art reference.
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`D. Obviousness
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`I understand that obviousness is a determination of law based on
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`various underlying determinations of fact. In particular, these underlying factual
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`determinations include: (1) the scope and content of the prior art; (2) the level of
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`ordinary skill in the art at the time the claimed invention was made; (3) the
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`differences between the claimed invention and the prior art; and (4) the extent of any
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`proffered objective indicia of non-obviousness. I understand that the objective
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`indicia which may be considered in such an analysis include commercial success of
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`the patented invention (including evidence of industry recognition or awards),
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`whether the invention fills a long-felt but unsolved need in the field, the failure of
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`others to arrive at the invention, industry acquiescence and recognition, initial
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`skepticism of others in the field, whether the inventors proceeded in a direction
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`contrary to the accepted wisdom of those of ordinary skill in the art, and the taking
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`of licenses under the patent by others, among other factors.
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` To ascertain the scope and content of the prior art, it is necessary to first
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`-13-
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`SEC et al. v. MRI
`SEC Exhibit 1002.018
`IPR 2023-00199
`
`

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`Declaration of Robert Smith-Gillespie in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,854,595
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`examine the field of the inventor’s endeavor and the particular problem for which
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`the invention was made. The relevant prior art includes prior art in the field of the
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`invention, and also prior art from other fields that a POSITA would look to when
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`attempting to solve the problem.
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`I understand that a determination of obviousness cannot be based on the
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`hindsight combination of components selectively culled from the prior art to fit the
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`parameters of the patented invention. Instead, it is my understanding that in order
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`to render a patent claim invalid as being obvious from a combination of references,
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`there must be some evidence within the prior art as a whole to suggest the
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`desirability, and thus the obviousness, of making the combination in a way that
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`would produce the patented invention.
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`I further understand that in an obviousness analysis, neither the
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`motivation nor the purpose of the patentee dictates. Rather, any problem known in
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`the field can provide a reason for combining the prior art in the manner claimed.
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`III. LEVEL OF ORDINARY SKILL IN THE ART
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`I understand that an assessment of claims of the ’595 patent should be
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`undertaken from the perspective of a POSITA as of the earliest claimed priority date,
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`which, as I explained above, I assumed to be March 3, 2008.
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`I understand that a POSITA is a hypothetical