throbber
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

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket