U.S. Patent No. 8,495,242
`IPR2023-00330
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`AKAMAI TECHNOLOGIES, INC.,
`
`Petitioner,
`
`v.
`
`EQUIL IP HOLDINGS LLC,
`
`Patent Owner.
`
`____________
`
`Case IPR2023-00330
`
`U.S. Patent No. 8,495,242
`
`____________
`
`DECLARATION OF VIJAY K. MADISETTI IN SUPPORT OF PETITION
`
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,495,242
`
`Akamai Ex. 1003
`Akamai Techs. v. Equil IP Holdings
`IPR2023-00330
`Page 00001
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`TABLE OF CONTENTS
`
`I.
`II.
`III.
`
`Page
`INTRODUCTION ................................................................................. 1
`QUALIFICATIONS .............................................................................. 3
`LEGAL UNDERSTANDING.............................................................11
`A. My Understanding of Claim Construction................................11
`B. My Understanding of Anticipation ...........................................13
`C. My Understanding of Obviousness ...........................................16
`IV. BACKGROUND OF THE TECHNOLOGY .....................................21
`V.
`THE ’242 PATENT AND PROSECUTION HISTORY ....................25
`A.
`’242 Patent Overview ...............................................................25
`B.
`Prosecution History of the ’242 Patent .....................................26
`THE ’242 PATENT PRIORITY DATE .............................................27
`VI.
`VII. LEVEL OF ORDINARY SKILL IN THE ART ................................28
`VIII. CLAIM CONSTRUCTION ................................................................30
`A.
`Preambles ..................................................................................30
`IX. GROUNDS OF UNPATENTABILITY .............................................31
`A.
`Ground 1: Tso in view of Huang Renders Obvious Claim
`9 .................................................................................................32
`1.
`U.S. 6,421,733 (“Tso”) Overview ..................................33
`2.
`U.S. 6,438,576 (“Huang”) Overview and
`Motivation to Modify Tso with Huang’s Teachings ......39
`Invalidity of Claim 9 Over Tso in view of Huang .........51
`(a) Element [9.pre] .......................................................51
`(b) Element [9.a] ...........................................................52
`(c) Element [9.b] ..........................................................59
`(d) Element [9.c] ...........................................................64
`(e) Element [9.d] ..........................................................67
`(f) Element [9.e] ...........................................................77
`(g) Element [9.f] ...........................................................87
`i
`
`3.
`
`IPR2023-00330 Page 00002
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`B.
`
`(h) Element [9.g] ..........................................................92
`Grounds 2 and 3: Samaniego Anticipates and Renders
`Obvious Claim 9 .......................................................................94
`1.
`Overview of Samaniego .................................................94
`2.
`Invalidity of Claim 9 in View of Samaniego..................95
`(a) Element [9.pre] .......................................................95
`(b) Element [9.a] ...........................................................96
`(c) Element [9.b] ..........................................................99
`(d) Element [9.c] .........................................................100
`(e) Elements [9.d]-[9.f]...............................................103
`(f) Element [9.g] ........................................................107
`Ground 4: Samaniego in View of Tso Renders Obvious
`Claim 9 ....................................................................................108
`SECONDARY CONSIDERATIONS ...............................................112
`X.
`XI. CONCLUSION .................................................................................112
`
`C.
`
`ii
`
`IPR2023-00330 Page 00003
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`I.
`
`INTRODUCTION
`1.
`I have been retained by Akamai Technologies, Inc. (I will refer to them
`
`as “Akamai”) to provide my opinions on certain issues related to U.S. Patent No.
`
`8,495,242 (the “’242 patent,” which I understand has been designated as Exhibit
`
`1001) in connection with the above-captioned inter partes review (IPR) proceeding.
`
`In particular, I have been asked to provide my insights, analysis, and opinions
`
`regarding whether claim 9 of the ’242 patent (the “Challenged Claim”) is disclosed
`
`by and/or obvious in view of the prior art references identified below.
`
`2.
`
`I understand the ’242 patent is titled “Automated Media Delivery
`
`System,” identifies as its named inventors Sean Barger, Steve Johnson, Matt Butler,
`
`Jerry Destremps, David Pochron, and Trent Brown, and is currently owned by Equil
`
`IP Holdings LLC. I have considered the ’242 patent.
`
`3.
`
`I understand that the file history of the ’242 patent has been designated
`
`as Exhibit 1002. I have considered this file history, and I will refer to it as the “’242
`
`File History” or by its exhibit number.
`
`4.
`
`I understand that the ’242 patent was filed as U.S. Patent Application
`
`12/713,637 on February 26, 2010.
`
`5.
`
`I have considered the prior art cited in my declaration, including:
`
`1
`
`IPR2023-00330 Page 00004
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`a. U.S. Patent No. 6,421,733 to Tso (“Tso”), titled “System for
`
`Dynamically
`
`Transcoding Data
`
`Transmitted Between
`
`Computers,” filed September 8, 1997 and issued July 16, 2002. I
`
`understand that a copy of this patent has been designated as Exhibit
`
`1004.
`
`b. U.S. Patent No. 6,438,576 to Huang (“Huang”), titled “Method
`
`and Apparatus of a Collaborative Proxy System for Distributed
`
`Deployment of Object Rendering,” filed on March 29, 1999, and
`
`issued August 20, 2002. I understand that a copy of this publication
`
`has been designated as Exhibit 1005.
`
`c. U.S. Publication No.
`
`2002/0078093
`
`to
`
`Samaniego
`
`(“Samaniego”), titled “Automated Media Delivery System,” filed
`
`August 14, 2001, and published June 20, 2002. I understand that a
`
`copy of this publication has been designated as Exhibit 1007.
`
`6.
`
`I am being compensated by Akamai at my standard hourly consulting
`
`rate of $650 for my time on this matter. My compensation is not dependent on the
`
`outcome of this proceeding.
`
`7.
`
`In forming my opinions, I relied on the documents cited in this
`
`declaration and the documents identified in the attached Appendix B. These
`
`2
`
`IPR2023-00330 Page 00005
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`documents comprise patents, file histories, printed publications, and other related
`
`documents. As discussed below, each document is a type that experts in my field
`
`would have reasonably relied upon when forming their opinions. Further, experts in
`
`my field would have had access to each document either through the applicable
`
`patent offices and/or well-known libraries, conferences, or publications in the field.
`
`My opinions are also based upon my personal and professional experience.
`II. QUALIFICATIONS
`I received my Bachelor of Technology (Honors) in Electronics and
`8.
`
`Electrical Communication Engineering at the Indian Institute of Technology (IIT) in
`
`Kharagpur, India in 1984. I obtained my Ph.D. in Electrical Engineering and
`
`Computer Science at the University of California, Berkeley, in 1989. I received the
`
`Demetri Angelakos Outstanding Graduate Student Award from the University of
`
`California, Berkeley and the IEEE/ACM Ira M. Kay Memorial Paper Prize in 1989.
`
`9.
`
`I am a tenured Full Professor in the Colleges of Computing and
`
`Engineering at Georgia Tech. I am knowledgeable and familiar with software
`
`engineering, web applications, cloud computing, data analytics, wireless
`
`communications, microprocessor architecture, hardware, RF, cellular networks,
`
`ASIC design, computer engineering, embedded systems, digital signal processing,
`
`and associated software and firmware design. I have created and taught
`
`3
`
`IPR2023-00330 Page 00006
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`undergraduate and graduate courses in hardware and software design for computer
`
`science and engineering applications at Georgia Tech for the past thirty years.
`
`Additionally, I have been active in the areas of wireless communications, digital
`
`signal processing, integrated circuit design (analog & digital), software engineering,
`
`system‐level design methodologies and tools, and software systems. I have been the
`
`principal investigator (“PI”) or co‐PI in several active research programs in these
`
`areas, including DARPA’s Rapid Prototyping of Application Specific Signal
`
`Processors, the State of Georgia’s Yamacraw Initiative, the United States Army’s
`
`Federated Sensors Laboratory Program, and the United States Air Force Electronics
`
`Parts Obsolescence Initiative. I have received an IBM Faculty Award and NSF’s
`
`Research Initiation Award.
`
`10.
`
`I have designed several specialized computer and communication
`
`systems over the past two decades at Georgia Tech for tasks such as wireless audio
`
`and video processing and protocol processing for portable platforms, such as cell
`
`phones and PDAs. I have worked on designing systems that are efficient from
`
`performance, size, weight, area, and thermal considerations. I have developed
`
`courses and classes for the industry on these topics, and many of my lectures in
`
`advanced computer system design, developed under the sponsorship of the United
`
`States Department of Defense in the late 1990s, are available for educational use at
`
`4
`
`IPR2023-00330 Page 00007
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`“http://www.eda.org/rassp” and have been used by several U.S. and international
`
`universities as part of their course work. Some of my recent publications in the area
`
`of design of wireless communications systems and associated protocols are listed in
`
`Appendix A. I graduated more than 20 Ph.D. students that now work as professors
`
`or in technical positions around the world.
`
`11.
`
`I have been active in research in the area of the World Wide Web and
`
`some of my peer-reviewed publications in this area include (i) Arshdeep Bahga and
`
`Vijay K. Madisetti, Performance Evaluation Approach for Multi-Tier Cloud
`
`Applications, Journal of Software Engineering and Applications 74-83 (2013); (ii)
`
`Arshdeep Bahga and Vijay K. Madisetti, Synthetic Workload Generation for Cloud
`
`Computing Applications, Journal of Software Engineering and Applications 396-
`
`410 (2011); (iii) Venu Dasigi and Vijay Madisetti, A Web-Based Interface for a
`
`Digital Broadband Home, Yamacraw IAB Workshop (2000); and (iv) Arshdeep
`
`Bahga and Vijay K. Madisetti, Rapid Prototyping of Multitier Cloud-Based Services
`
`and Systems, Computer, vol. 46, no. 11, pp. 76-83 (Nov. 2013).
`
`12.
`
`I have been an active consultant to industry and various research
`
`laboratories (including Massachusetts Institute of Technology Lincoln Labs and
`
`Johns Hopkins University Applied Physics Laboratory). My consulting work for
`
`MIT Lincoln Labs involved high resolution imaging for defense applications, where
`
`5
`
`IPR2023-00330 Page 00008
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`I worked in the area of prototyping complex and specialized computing systems. My
`
`consulting work for the Johns Hopkins Applied Physics Lab (“APL”) mainly
`
`involved localization of objects in image fields, where I worked on identifying
`
`targets in video and other sensor fields and identifying computer architectures and
`
`circuits for power and space‐efficient designs.
`
`13.
`
`I have founded three companies in the areas of embedded software,
`
`military chipsets involving imaging technology, and wireless communications. I
`
`have supervised the Ph.D. dissertations of over twenty engineers in the areas of
`
`computer engineering, signal processing, communications, rapid prototyping, and
`
`system‐level design methodology, of which five have resulted in thesis prizes or
`
`paper awards. The first of the companies I founded, VP Technologies, offers
`
`products in the area of semiconductor integrated circuits, including building
`
`computing systems for imaging systems for avionics electronics for the United
`
`States Air Force and the US Navy, since 1995. I remain a director of VP
`
`Technologies. The second of these companies, Soft Networks, LLC, offers software
`
`for multimedia and wireless computing platforms, including the development of a
`
`set‐top box for Intel that decodes MPEG‐2 video streams, wireless protocol stacks,
`
`and imaging codecs for multimedia phones. The technology involved with the
`
`design, development, and implementation of the Intel set‐top box included parsing
`
`6
`
`IPR2023-00330 Page 00009
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`the bit streams, decoding communications protocols, extracting image and video
`
`data, and then processing for subsequent display or storage. The third of these
`
`companies, Elastic Video, uses region of interest based video encoding or decoding
`
`for capturing high quality video at very low bit rates, with primary application for
`
`wireless video systems.
`
`14.
`
`I have authored more than sixty refereed journal publications and
`
`around forty peer reviewed conference publications. I have been active in research
`
`in the area of wireless and mobile communications and some of my recent peer‐
`
`reviewed publications in this area include: (i) Mustafa Turkboylari & Vijay K.
`
`Madisetti, Effect of Handoff Delay on the System Performance of TDMA Cellular
`
`Systems, Proceedings of the Fourth IEEE Conference on Mobile and Wireless
`
`Communications Network 411‐15 (Sept. 9‐11, 2002); (ii) Loran A. Jatunov & Vijay
`
`K. Madisetti, Computationally‐Efficient SNR Estimation for Bandlimited Wideband
`
`CDMA Systems, 5 IEEE Transactions on Wireless Communications, no. 12 (2006)
`
`at 3480‐91; and (iii) Nimish Radio, Ying Zhang, Mallik Tatipamula & Vijay K.
`
`Madisetti, Next Generation Applications on Cellular Networks: Trends, Challenges,
`
`and Solutions, 100 Proceedings of the IEEE, no. 4 (April 2012) at 841‐54. I have
`
`extensive experience analyzing, designing, and testing systems based on 3GPP
`
`Technical Specifications, including specifications describing WCDMA and HSDPA
`
`7
`
`IPR2023-00330 Page 00010
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`technologies. I have been active in the area of location‐based services and wireless
`
`localization techniques since the mid‐1990s, and have authored several papers on
`
`location‐based services, including, Vijay K. Madisetti et al., Mobile Fleet
`
`Application Using SOAP and System on Devices (SyD) Middleware Technologies,
`
`Communications, Internet, and Information Technology (2002) at 426‐31. I have
`
`served as associate editor or on the editorial board for technical journals, including
`
`IEEE Transactions on Circuits & Systems II, International Journal in Computer
`
`Simulation, and International Journal in VLSI Signal Processing.
`
`15.
`
`I have authored or co‐authored several books, including VLSI Digital
`
`Signal Processors (IEEE Press 1995) and the Digital Signal Processing Handbook
`
`(CRC Press, 1998, 2010). I co‐authored Quick‐Turnaround ASIC Design in VHDL
`
`(Kluwer Academic Press 1996) and Platform‐Centric Approach to System‐on‐Chip
`
`(SoC) Design (Springer 2004). I am also the editor of several books, including the
`
`three‐volume DSP Handbook set: Volume 1: Digital Signal Processing
`
`Fundamentals, Volume 2: Video, Speech, and Audio Signal Processing and
`
`Associated Standards, and Volume 3: Wireless, Networking, Radar, Sensory Array
`
`Processing, and Nonlinear Signal Processing, published in 2010 by CRC Press, Boca
`
`Raton, Florida. More recently I have authored Cloud Computing (2014, CreateSpace
`
`Press), and Internet of Things (2014, CreateSpace), and the book, Cloud Computing,
`
`8
`
`IPR2023-00330 Page 00011
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`was nominated as a Notable Book of 2014 by the Association of Computing
`
`Machinery (ACM) in July 2015.
`
`16. My experience is relevant to this case. In addition to authoring
`
`textbooks and research papers in the area of cloud computing, virtualization, web-
`
`services, and web-based applications, I have developed web-based document
`
`management systems and also web-based fintech applications. I am listed as an
`
`inventor on over a dozen patents on web-based applications. I also invented a new
`
`protocol that replaces the HTTP protocol for token-based networks, called VTTP,
`
`that is a subject of a few issued US patents.
`
`17.
`
`I have been extensively involved in the activities of one of the premier
`
`standard setting organizations in the world, the IEEE, since the 1980s, and I have
`
`participated in the development of standards for hardware design and description
`
`languages, such as VHDL, used in design of computer chips – IEEE 1076.6. I was
`
`also a member of the IEEE Press Board from 1995-1997. I was the Technical
`
`Program Chair of IEEE ICASSP in 1996. I was also the Associate Editor of IEEE
`
`Transactions on Circuits & Systems II from 1994 to 1997. I am also the director of
`
`the IEEE Atlanta Chapter, and the author of several drafts of IETF proposals.
`
`18.
`
`I have served as associate editor or on the editorial board for technical
`
`journals, including IEEE Transactions on Circuits & Systems II, International
`
`9
`
`IPR2023-00330 Page 00012
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`Journal in Computer Simulation, and International Journal in VLSI Signal
`
`Processing. I have been elected a Fellow of the IEEE, for contributions to embedded
`
`computing systems. The Fellow is the highest grade of membership of the IEEE, a
`
`world professional body consisting of over 300,000 electrical and electronics
`
`engineers, with only one tenth of one percent (0.1%) of the IEEE membership being
`
`elected to the Fellow grade each year. Election to Fellow is based upon votes cast
`
`by existing Fellows in IEEE.
`
`19.
`
`I have also been awarded the 2006 Frederick Emmons Terman Medal
`
`by the American Society of Engineering Education for contributions to Electrical
`
`Engineering, including authoring a widely used textbook in the design of VLSI
`
`digital signal processors. I was awarded VHDL International Best PhD Dissertation
`
`Advisor Award in 1997 and the NSF RI Award in 1990. I was Technical Program
`
`Chair for both the IEEE MASCOTS in 1994 and the IEEE Workshop on Parallel
`
`and Distributed Simulation in 1990. In 1989, I was recognized with the Ira Kay
`
`IEEE/ACM Best Paper Award for Best Paper presented at the IEEE Annual
`
`Simulation Symposium.
`
`20.
`
`I have submitted approximately 100 invention disclosures and
`
`provisional patents over the past ten years. I am listed as a first inventor on over
`
`thirty issued US patents.
`
`10
`
`IPR2023-00330 Page 00013
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`I have testified as an expert witness before. Over the past two years,
`
`21.
`
`I’ve testified as an expert in more than 20 proceedings, and several of these were in
`
`the area of enterprise, cloud and web-based software applications.
`
`I have attached a more detailed list of my qualifications as Appendix A.
`22.
`III. LEGAL UNDERSTANDING
`A. My Understanding of Claim Construction
`I have been informed that patent claims are construed from the
`23.
`
`viewpoint of a person having ordinary skill in the art of the patent at the time of the
`
`invention. I have been informed that patent claims generally should be interpreted
`
`consistent with their plain and ordinary meaning as understood by a person having
`
`ordinary skill in the art in the relevant time period (i.e., at the time of the purported
`
`invention, or the so called “effective filing date” of the patent application), after
`
`reviewing the patent claim language, the specification, and the prosecution history
`
`(i.e., the intrinsic record).
`
`24.
`
`I have further been informed that a person having ordinary skill in the
`
`art must read the claim terms in the context of the claim itself, as well as in the
`
`context of the entire patent specification. I understand that in the specification and
`
`prosecution history, the patentee may specifically define a claim term in a way that
`
`differs from the plain and ordinary meaning. I understand that the prosecution
`
`history of the patent is a record of the proceedings before the U.S. Patent and
`
`11
`
`IPR2023-00330 Page 00014
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`Trademark Office, and may contain explicit representations or definitions made
`
`during prosecution that affect the scope of the patent claims. I understand that an
`
`applicant may, during the course of prosecuting the patent application, limit the
`
`scope of the claims to overcome prior art or to overcome an examiner’s rejection, by
`
`clearly and unambiguously arguing to overcome or distinguish a prior art reference,
`
`or clearly and unambiguously disavowing claim coverage.
`
`25.
`
`In interpreting the meaning of the claim language, I understand that a
`
`person having ordinary skill in the art may also consider “extrinsic” evidence,
`
`including expert testimony, inventor testimony, dictionaries, technical treatises,
`
`other patents, and scholarly publications. I understand this evidence is considered to
`
`ensure that a claim is construed in a way that is consistent with the understanding of
`
`those of ordinary skill in the art at the time of the claimed invention. For example,
`
`this can be useful for a technical term whose meaning may differ from its ordinary
`
`English meaning. I understand that extrinsic evidence may not be relied on if it
`
`contradicts or varies the meaning of claim language provided by the intrinsic
`
`evidence, particularly if the applicant has explicitly defined a term in the intrinsic
`
`record.
`
`12
`
`IPR2023-00330 Page 00015
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`
`B. My Understanding of Anticipation
`I understand that a patent claim is invalid as “anticipated” if all of the
`26.
`
`limitations of the claim are present, either expressly or inherently, in a single
`
`pervious device, or described, either expressly or inherently, in a single prior art
`
`publication or patent. I understand that, in the relevant time period, 35 U.S.C. § 102
`
`stated that a person shall be entitled to a patent unless:
`
`• The invention was known or used by others in this country, or
`
`patented or described in a printed publication in this or a
`
`foreign country, before the invention thereof by the applicant
`
`for patent, or
`
`• The invention was patented or described in a printed
`
`publication in this or a foreign country or in public use or on
`
`sale in this country, more than one year prior to the date of the
`
`application for patent in the United States, or
`
`• He has abandoned the invention, or
`
`• The invention was first patented or caused to be patented, or
`
`was the subject of an inventor’s certificate, by the applicant or
`
`his legal representatives or assigns in a foreign country prior to
`
`the date of the application for patent in this country on an
`
`13
`
`IPR2023-00330 Page 00016
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`application for patent or inventor’s certificate filed more than
`
`twelve months before the filing of the application in the United
`
`States, or
`
`• The invention was described in—(1) an application for patent,
`
`published under section 122(b), by another filed in the United
`
`States before the invention by the applicant for patent or (2) a
`
`patent granted on an application for patent by another filed in
`
`the United States before the invention by the applicant for
`
`patent, except that an international application filed under the
`
`treaty defined in section 351(a) shall have the effects for the
`
`purposes of this subsection of an application filed in the United
`
`States only if the international application designated the
`
`United States and was published under Article 21(2) of such
`
`treaty in the English language; or
`
`• He did not himself invent the subject matter sought to be
`
`patented, or
`
`• (1) during the course of an interference conducted under section
`
`135 or section 291, another inventor involved therein
`
`establishes, to the extent permitted in section 104, that before
`
`14
`
`IPR2023-00330 Page 00017
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`such person’s invention thereof the invention was made by
`
`such other inventor and not abandoned, suppressed, or
`
`concealed, or (2) before such person’s invention thereof, the
`
`invention was made in this country by another inventor who
`
`had not abandoned, suppressed, or concealed it. In determining
`
`priority of invention under this subsection, there shall be
`
`considered not only the respective dates of conception and
`
`reduction to practice of the invention, but also the reasonable
`
`diligence of one who was first to conceive and last to reduce to
`
`practice, from a time prior to conception by the other.
`
`27.
`
`I also understand that a prior art reference can disclose a claimed feature
`
`because the feature is expressly described or because the feature is inherent in the
`
`disclosure. I understand that something is inherent in a prior art reference if the
`
`missing descriptive matter must necessarily be present, not merely probably or
`
`possibly present, and it would be so recognized by a person of ordinary skill in the
`
`art as of the priority date of the patent.
`
`28. Claim limitations that are not expressly found in a prior art reference
`
`are inherent if the prior art necessarily functions in accordance with, or includes, the
`
`claim limitations. I understand that it is acceptable to examine evidence outside of
`
`15
`
`IPR2023-00330 Page 00018
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`the prior art reference (i.e., extrinsic evidence) in determining whether a feature,
`
`while not expressly discussed in the reference, is necessarily present in it.
`C. My Understanding of Obviousness
`I understand that a claim may be invalid if the subject matter described
`29.
`
`by the claim as a whole would have been obvious to a hypothetical person of
`
`ordinary skill in the art in view of a prior art reference or in view of a combination
`
`of references at the time the claimed invention was made. Therefore, I understand
`
`that obviousness is determined from the perspective of a hypothetical person of
`
`ordinary skill in the art and that the asserted claims of the patent should be read from
`
`the point of view of such a person at the time the claimed invention was made. I
`
`further understand that a hypothetical person of ordinary skill in the art is assumed
`
`to know and to have all relevant prior art in the field of endeavor covered by the
`
`patent in suit.
`
`30.
`
`I have been informed that there are two criteria for determining whether
`
`prior art is analogous and thus can be considered prior art: (1) whether the art is from
`
`the same field of endeavor, regardless of the problem addressed, and (2) if the
`
`reference is not within the field of the patentee’s endeavor, whether the reference
`
`still is reasonably pertinent to the particular problem with which the patentee is
`
`involved. I have also been informed that the field of endeavor of a patent is not
`
`16
`
`IPR2023-00330 Page 00019
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`limited to the specific point of novelty, the narrowest possible conception of the
`
`field, or the particular focus within a given field. I have also been informed that a
`
`reference is reasonably pertinent if, even though it may be in a different field from
`
`that of the patentee’s endeavor, it is one which, because of the matter with which it
`
`deals, logically would have commended itself to a patentee’s attention in considering
`
`their problem.
`
`31.
`
`I have also been advised that an analysis of whether a claimed invention
`
`would have been obvious should be considered in light of the scope and content of
`
`the prior art, the differences (if any) between the prior art and the claimed invention,
`
`and the level of ordinary skill in the pertinent art involved. I understand as well that
`
`a prior art reference should be viewed as a whole.
`
`32.
`
`I have also been advised that in considering whether a claimed
`
`invention could be obvious over a combination of prior art references, I may assess
`
`whether there are apparent reasons to combine known elements in the prior art in the
`
`manner claimed in view of interrelated teachings of multiple prior art references, the
`
`effects of demands known to the design community or present in the marketplace,
`
`and/or the background knowledge possessed by a person having ordinary skill in the
`
`art. I understand that other principles may be relied on in evaluating whether a
`
`17
`
`IPR2023-00330 Page 00020
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`claimed invention would have been obvious, and that these principles include the
`
`following:
`
`• A combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield
`
`predictable results;
`
`• When a device or technology is available in one field of
`
`endeavor, design incentives and other market forces can
`
`prompt variations of it, either in the same field or in a different
`
`one, so that if a person having ordinary skill can implement a
`
`predictable variation, the variation is likely obvious;
`
`• If a technique has been used to improve one device, and a
`
`person having ordinary skill in the art would recognize that it
`
`would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond
`
`their skill;
`
`• An explicit or implicit teaching, suggestion, or motivation to
`
`combine two prior art references to form the claimed
`
`combination may demonstrate obviousness, but proof of
`
`18
`
`IPR2023-00330 Page 00021
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`obviousness does not depend on or require showing a teaching,
`
`suggestion, or motivation to combine;
`
`• Market demand, rather than scientific literature, can drive
`
`design trends and may show obviousness;
`
`• In determining whether the subject matter of a patent claim
`
`would have been obvious, neither the particular motivation nor
`
`the avowed purpose of the named inventor controls whether the
`
`claim is obvious;
`
`• One of the ways in which a patent’s subject can be proved
`
`obvious is by noting that there existed at the time of invention
`
`a known problem for which there was an obvious solution
`
`encompassed by the patent’s claims;
`
`• Any need or problem known in the field of endeavor at the time
`
`of invention and addressed by the patent can provide a reason
`
`for combining the elements in the manner claimed;
`
`• “Common sense” teaches that familiar items may have obvious
`
`uses beyond their primary purposes, and in many cases a person
`
`having ordinary skill will be able to fit the teachings of multiple
`
`patents together like pieces of a puzzle;
`
`19
`
`IPR2023-00330 Page 00022
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`• A person having ordinary skill in the art is also a person having
`
`ordinary creativity, and is not an automaton;
`
`• A patent claim can be proved obvious by showing that the
`
`claimed combination of elements was “obvious to try,”
`
`particularly when there is a design need or market pressure to
`
`solve a problem and there are a finite number of identified,
`
`predictable solutions such that a person having ordinary skill in
`
`the art would have had good reason to pursue the known
`
`options within his or her technical grasp; and
`
`• One should be cautious of using hindsight in evaluating
`
`whether a claimed invention would have been obvious.
`
`33.
`
`I further understand that, in making a determination as to whether the
`
`claimed invention would have been obvious to a person having ordinary skill, the
`
`Board may consider certain objective factors if they are present, such as: commercial
`
`success of products practicing the claimed invention; long-felt but unsolved need;
`
`teaching away; unexpected results; copying; and praise by others in the field. These
`
`factors are generally referred to as “secondary considerations” or “objective indicia”
`
`of nonobviousness. I understand, however, that for such objective evidence to be
`
`relevant to the obviousness of a claim, there must be a causal relationship (called a
`
`20
`
`IPR2023-00330 Page 00023
`
`

`

`U.S. Patent No. 8,495,242
`IPR2023-00330
`
`
`“nexus”) between t