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`UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`UNIFIED PATENTS, LLC
`Petitioner,
`
`v.
`
`TOGAIL TECHNOLOGIES, LTD.
`Patent Owner.
`
`
`IPR2023-00338
`
`Patent No. 10,791,502
`Filing Date: April 1, 2019
`Issue Date: September 29, 2020
`
`Title: ON-DEMAND SYSTEM INFORMATION REQUEST PROCEDURE AND
`ERROR HANDLING
`
`
`DECLARATION OF DR. ZYGMUNT J. HAAS
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`IPR2023-00338
`Dr. Haas Decl.
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`TABLE OF CONTENTS
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`Page
`I.
`INTRODUCTION.............................................................................. 9
`II. QUALIFICATIONS......................................................................... 12
`III. RELEVANT LEGAL STANDARDS ................................................. 16
`A. Anticipation ............................................................................ 16
`B. Obviousness ............................................................................ 18
`IV. OVERVIEW OF THE ’502 PATENT ............................................... 22
`A. Claimed Priority ..................................................................... 22
`B. Disclosure ............................................................................... 22
`C.
`Prosecution History ................................................................. 25
`V. CLAIM CONSTRUCTION .............................................................. 26
`VI. STATE OF THE ART ...................................................................... 27
`A. Level of Ordinary Skill in the Art ............................................ 27
`B.
`State of the Art and the General Knowledge of a POSA ............ 28
`1.
`The 3GPP Standards Body ............................................. 29
`2. Well Known 3GPP Concepts........................................... 30
`a.
`Radio Access Network ........................................... 30
`b.
`Radio Resource Control (RRC).............................. 33
`c.
`RRC STATES – IDLE, INACTIVE,
`CONNECTED ...................................................... 33
`RRC’s System Information Acquisition .................. 35
`“On-demand” System Information ........................ 37
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`d.
`e.
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`2
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`IPR2023-00338
`Dr. Haas Decl.
`VII. GROUND 1: CLAIMS 1, 4-7, 11, 14-17 ARE OBVIOUS OVER
`LEE ................................................................................................. 40
`A.
`Lee Is Pertinent, Analogous Prior Art ...................................... 40
`B. Overview of Lee ...................................................................... 41
`C. Detailed Application to the Claims ........................................... 43
`a.
`Claim 1 ................................................................. 43
`[Pre] A method of an on-demand system
`information (SI) request procedure
`performed by a user equipment (UE), the
`method comprising ........................................ 43
`[1a] transmitting a first SI request message to a
`base station (BS) after determining that the
`UE is in a connected state, the first SI
`request message including at least one
`requested system information block (SIB);....... 45
`[1a.1] transmitting a first SI request
`message to a base station (BS) after
`determining that the UE is in a
`connected state..................................... 45
`[1a.2] the first SI request message
`including at least one requested
`system information block (SIB); ............ 53
`[1b] activating a prohibit timer; and ......................... 55
`[1c] transmitting a second SI request message to
`the BS only when the at least one requested
`SIB is not received and the prohibit timer
`expires. ........................................................ 56
`Claim 4 ................................................................. 59
`4. The method of claim 1, wherein the first SI
`request message is transmitted on signaling
`radio bearer 1 (SRB1). ................................... 59
`
`b.
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`3
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`c.
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`d.
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`e.
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`f.
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`IPR2023-00338
`Dr. Haas Decl.
`Claim 5 ................................................................. 60
`5. The method of claim 1, further comprising:
`receiving, from the BS, the at least one
`requested SIB via dedicated signaling that
`is transmitted in response to the first SI
`request message. ........................................... 60
`Claim 6 ................................................................. 62
`6. The method of claim 1, further comprising:
`transmitting a fourth SI request message to
`the BS after determining that the UE is not
`in the connected state, the fourth SI
`request message including at least one
`requested SI message. .................................... 62
`[6a] transmitting a fourth SI request
`message to the BS after determining
`that the UE is not in the connected
`state .................................................... 62
`[6b] the fourth SI request message
`including at least one requested SI
`message............................................... 64
`Claim 7 ................................................................. 67
`7. The method of claim 6, wherein the fourth SI
`request message is transmitted on signaling
`radio bearer 0 (SRB0). ................................... 67
`Claim 11 ............................................................... 68
`[11pre] A user equipment (UE), comprising:............. 68
`[11a] one or more non-transitory computer-
`readable media having computer-
`executable instructions embodied thereon;
`and .............................................................. 68
`[11b] at least one processor coupled to the one or
`more non-transitory computer-readable
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`4
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`IPR2023-00338
`Dr. Haas Decl.
`media, and configured to execute the
`computer-executable instructions to
`perform operations for an on-demand
`system information (SI) request procedure,
`the operations comprising: ............................. 68
`[11c] transmitting a first SI request message to a
`base station (BS) after determining that the
`UE is in a connected state, the first SI
`request message including at least one
`requested system information block (SIB);....... 68
`[11d] activating a prohibit timer; and ....................... 68
`[11e] transmitting a second SI request message to
`the BS only when the at least one requested
`SIB is not received and the prohibit timer
`expires. ........................................................ 68
`[11a] one or more non-transitory computer-
`readable media having computer-
`executable instructions embodied thereon;
`and .............................................................. 69
`[11b] at least one processor coupled to the one or
`more non-transitory computer-readable
`media, and configured to execute the
`computer-executable instructions to
`perform operations for an on-demand
`system information (SI) request procedure,
`the operations comprising: ............................. 70
`Dependent Claims 14-17 ........................................ 72
`g.
`VIII. GROUNDS 2 AND 3: CLAIMS 1, 4-7, 11, 14-17 ARE OBVIOUS
`OVER OPPO; AND CLAIM 1 IS ANTICIPATED BY OPPO............. 72
`A. Oppo Is Pertinent, Analogous Prior Art .................................... 72
`B. Overview of Oppo .................................................................... 75
`C. Detailed Application to the Claims ........................................... 76
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`5
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`a.
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`b.
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`c.
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`IPR2023-00338
`Dr. Haas Decl.
`Claim 1 ................................................................. 76
`[Pre] A method of an on-demand system
`information (SI) request procedure
`performed by a user equipment (UE), the
`method comprising ........................................ 76
`[1a] transmitting a first SI request message to a
`base station (BS) after determining that the
`UE is in a connected state, the first SI
`request message including at least one
`requested system information block (SIB);....... 77
`[1a.1] transmitting a first SI request
`message to a base station (BS) after
`determining that the UE is in a
`connected state..................................... 77
`[1a.2] the first SI request message
`including at least one requested
`system information block (SIB); ............ 79
`[1b] activating a prohibit timer; and ......................... 81
`[1c] transmitting a second SI request message to
`the BS only when the at least one requested
`SIB is not received and the prohibit timer
`expires. ........................................................ 81
`Claim 4 ................................................................. 84
`4. The method of claim 1, wherein the first SI
`request message is transmitted on signaling
`radio bearer 1 (SRB1). ................................... 84
`Claim 5 ................................................................. 86
`5. The method of claim 1, further comprising:
`receiving, from the BS, the at least one
`requested SIB via dedicated signaling that
`is transmitted in response to the first SI
`request message. ........................................... 86
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`6
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`d.
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`e.
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`f.
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`IPR2023-00338
`Dr. Haas Decl.
`Claim 6 ................................................................. 87
`6. The method of claim 1, further comprising:
`transmitting a fourth SI request message to
`the BS after determining that the UE is not
`in the connected state, the fourth SI
`request message including at least one
`requested SI message. .................................... 87
`[6a] transmitting a fourth SI request
`message to the BS after determining
`that the UE is not in the connected
`state .................................................... 87
`[6b] the fourth SI request message
`including at least one requested SI
`message............................................... 91
`Claim 7 ................................................................. 92
`7. The method of claim 6, wherein the fourth SI
`request message is transmitted on signaling
`radio bearer 0 (SRB0). ................................... 92
`Claim 11 ............................................................... 93
`[11pre] A user equipment (UE), comprising:............. 93
`[11a] one or more non-transitory computer-
`readable media having computer-
`executable instructions embodied thereon;
`and .............................................................. 93
`[11b] at least one processor coupled to the one or
`more non-transitory computer-readable
`media, and configured to execute the
`computer-executable instructions to
`perform operations for an on-demand
`system information (SI) request procedure,
`the operations comprising: ............................. 93
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`IPR2023-00338
`Dr. Haas Decl.
`[11c] transmitting a first SI request message to a
`base station (BS) after determining that the
`UE is in a connected state, the first SI
`request message including at least one
`requested system information block (SIB);....... 93
`[11d] activating a prohibit timer; and ....................... 93
`[11e] transmitting a second SI request message to
`the BS only when the at least one requested
`SIB is not received and the prohibit timer
`expires. ........................................................ 93
`[11a] one or more non-transitory computer-
`readable media having computer-
`executable instructions embodied thereon;
`and .............................................................. 93
`[11b] at least one processor coupled to the one or
`more non-transitory computer-readable
`media, and configured to execute the
`computer-executable instructions to
`perform operations for an on-demand
`system information (SI) request procedure,
`the operations comprising: ............................. 94
`
`Dependent Claims 14-17 ........................................ 95
`g.
`CONCLUSION AND DECLARATION ..................................................... 97
`APPENDIX A – MATERIALS RELIED UPON ......................................... 99
`APPENDIX B – CURRICULUM VITAE ................................................. 103
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`IPR2023-00338
`Dr. Haas Decl.
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`I, Dr. Zygmunt Haas, declare as follows:
`
`I.
`
`INTRODUCTION
`I am over the age of eighteen (18) and otherwise competent to make
`1.
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`this Declaration.
`
`2.
`
`I have been retained by Unified Patents LLC (“Unified” or “Petitioner”)
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`as an independent, technical expert consultant in this proceeding before the United
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`States Patent and Trademark Office. I am being compensated at my rate of $500 per
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`hour for my services. No part of my compensation is dependent on my opinions or
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`on the outcome of this proceeding. I have no financial interest in any of the parties
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`to this proceeding.
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`3. This Declaration is in support of the petition (“Petition”) for inter partes
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`review IPR2023-00338 involving U.S. Patent No. 10,791,502 (the “’502 Patent” or
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`“the Patent”) (Ex-1001), entitled “On-Demand System Information Request
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`Procedure And Error Handling” and listing Hung-Chen Chen, Chie-Ming Chou,
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`and Yung-Lan Tseng as the inventors.
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`4.
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`For the purposes of this inter partes review as I discuss later, I have
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`been instructed to assume that the effective filing date of the Claims of the ’502
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`Patent challenged by the Petitioner in this inter partes review is no earlier than April
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`2, 2018.
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`IPR2023-00338
`Dr. Haas Decl.
`5. I understand that, according to USPTO records, the ’502 Patent is
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`currently assigned to Togail Technologies, Ltd. (“Togail” or “Patent Owner”). I
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`assume for purposes of this proceeding that Togail is the Patent Owner.
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`6. The ’502 Patent is generally directed to wireless communications. More
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`particularly, the invention relates to providing an error handling procedure
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`involving storing system information request, or “SI request,” failure information.
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`The Challenged Claims (as defined in paragraph 8 below) are directed to system
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`information acquisition procedures of user equipment such as a mobile phone. . I
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`have been instructed to assume, for the purposes of this proceeding, that the
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`priority date is April 2, 2018 (“Priority Date”). I am familiar with the technology
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`described in the ’502 Patent as of the Priority Date.
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`7. In preparing this Declaration, I have reviewed the ’502 Patent (Ex-1001)
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`and its prosecution history (Ex-1002), as well as the patents and documents cited
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`herein, and I have considered these documents in light of the general knowledge of
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`a person of ordinary skill in the art (“POSA”), who I describe below (§VI.A), as of
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`April 2, 2018. In formulating my opinions, I have relied upon my experience in
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`the relevant art, and I have considered the viewpoint of a POSA in the field, as of
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`April 2, 2018. For convenience, the materials I considered in arriving at my
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`opinions are listed in Appendix A.
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`IPR2023-00338
`Dr. Haas Decl.
`I have been asked to provide my technical expertise, analysis, insights,
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`8.
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`and opinions regarding the ’502 Patent and relevant references that form the basis of
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`the Grounds of unpatentability set forth in the accompanying Petition for inter partes
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`review of the ’502 Patent. As described in detail below, I offer the following
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`opinions in this Declaration regarding Claims 1, 4-7, 11, 14-17 (the “Challenged
`
`Claims”) of the ’502 Patent:
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`•
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`A POSA would have found Claims 1, 4-7, 11, and 14-17 of the ’502
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`Patent to be obvious over Lee in view of the knowledge, skill, and
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`creativity of a POSA. Lee, in view of the knowledge, skill, and
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`creativity of a POSA, teaches each element of these claims to a
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`POSA;
`
`•
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`A POSA would have found Claims 1, 4-7, 11, and 14-17 of the ’502
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`Patent to be obvious over Oppo in view of the knowledge, skill, and
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`creativity of a POSA. Oppo in view of the knowledge, skill, and
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`creativity of a POSA, teaches each element of these claims to a
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`POSA;
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`•
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`A POSA would have found Claim 1 of the ’502 Patent to be
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`anticipated by Oppo. Oppo discloses each element of this claim.
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`9.
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`Unless otherwise indicated, in this Declaration, the emphasis, including
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`coloring and bolding, in quoted material has been added.
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`11
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`IPR2023-00338
`Dr. Haas Decl.
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`II. QUALIFICATIONS
`
`10.
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`I am the Professor and Distinguished Chair in Computer Science at the
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`University of Texas at Dallas and Professor Emeritus of Electrical and Computer
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`Engineering at Cornell University.
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`11.
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`I received my Doctor of Philosophy (Ph.D.) degree in the field of
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`Electrical Engineering from Stanford University in 1988. As part of my Ph.D.
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`research, I authored the thesis titled “Packet Switching in Fiber–Optic Networks.”
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`In 1979, I received my Bachelor of Science (B.Sc.) degree in Electrical Engineering,
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`summa cum laude, from the Technion, and in 1985, I received my Masters of Science
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`(M.Sc.) degree in Electrical Engineering, summa cum laude, from Tel-Aviv
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`University.
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`12. After receiving my Ph.D. degree from Stanford University, I worked as
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`a member of the technical staff at AT&T Bell Laboratories from 1988 to 1995,
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`initially in the Network Research Department in Holmdel, New Jersey. There, I
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`performed research in the fields of wireless communications, mobility management,
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`fast protocols, optical networks, and optical switching. During my tenure at AT&T,
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`I also worked for the AT&T Wireless Center of Excellence, in Whippany, NJ. There,
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`I studied various aspects of wireless and mobile networks.
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`13. After my work at AT&T Bell Laboratories, I joined the faculty of
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`Electrical & Computer Engineering at Cornell University in 1995, and over time I
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`IPR2023-00338
`Dr. Haas Decl.
`was promoted to Tenured Full Professor. While at Cornell, I headed my research
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`group − the Wireless Networks Lab − which has had extensive contributions in the
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`area of wireless communication systems and networks. I retired from Cornell
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`University with the title of Emeritus Professor in 2013, and subsequently I joined
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`the Computer Science Department at the University of Texas at Dallas with the title
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`of Professor and Distinguished Chair in Computer Science. I have taught numerous
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`courses related to computer networking and wireless communications both, at
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`Cornell University as well at the University of Texas at Dallas. As part of my
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`academic career, I have also served on numerous and various committees for the
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`benefit of the scientific community.
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`14.
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`I have served on the editorial board of a number of professional journals
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`including Wireless Communications and Mobile Computing, Wireless Networks
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`Journal, and the Journal of High Speed Networks. I have served as guest editor for
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`the IEEE Journal on Selected Areas in Communications on several occasions.
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`15.
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`I have worked for about 35 years in the fields of Electrical Engineering
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`and Computer Science. The primary focus of my work has been, in general, on
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`communication and networking systems, with an emphasis on wireless
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`communication and wireless and mobile networks. I have authored and co-authored
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`about 300 journal papers, conference papers, magazine articles, and book chapters.
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`Also, I am named as an inventor or co-inventor on about twenty patents in the fields
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`IPR2023-00338
`Dr. Haas Decl.
`of high-speed networking, wireless networks, optical switching, etc. Examples of
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`some of my publications and articles that I have contributed to include:
`
`•
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`•
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`•
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`•
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`•
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`•
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`“How 5G Technology May Improve and Impact Our Lives”
`Authority Magazine Interview, June 4, 2021
`“5 Things to Know About 5G” UT Dallas Magazine, October 14,
`2019
`J. Huang, C.C Xing, Y. Qian, and Z.J. Haas, “Resource
`Allocation for Multi-cell Device-to-Device Communications
`Underlying 5G Networks: A Game-Theoretic Mechanism with
`Incomplete Information,” IEEE Transactions on Vehicular
`Technology, vol. PP, no. 99, October 23, 2017, DOI:
`10.1109/TVT.2017.2765208
`Z.J. Haas and M. Nikolov, “Towards Optimal Broadcast in
`Wireless Networks,” IEEE Transactions on Mobile Computing,
`vol. 14, no. 7, pp. 1530−1544, July 2015, DOI:
`10.1109/TMC.2014.2356466
`J. Oh and Z.J. Haas, “Personal Environment Service based on the
`Integration of Mobile Communications and Wireless Personal
`Area Networks,” IEEE Communications Magazine, vol. 48, no.
`6, June 2010, pp. 66−72; DOI: 10.1109/MCOM.2010.5473866
`Z. J. Haas, “The Multiply-Detected Macrodiversity Scheme for
`Wireless Cellular Systems,” EE Colloquium, School of
`Electrical Eng., Cornell University, April 22, 1997
`
`I have received numerous accolades for my work. Among other
`
`
`16.
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`organizations, I am a Fellow of the IEEE (Institute of Electrical and Electronics
`
`Engineers) and a Fellow of the ACM (Association for Computing Machinery), both
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`well-known distinctions. For example, the total number of IEEE Fellows which are
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`selected in any given year does not exceed 0.1% of the total number of voting
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`members of IEEE. Alike, “ACM's most prestigious member grade recognizes the
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`top 1% of ACM members for their outstanding accomplishments in computing and
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`IPR2023-00338
`Dr. Haas Decl.
`information technology and/or outstanding service to ACM and the larger computing
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`community.” (available from https://awards.acm.org/fellows). In 2016, I received
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`the IEEE ComSoc AHSN Recognition Award for “outstanding contribution to
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`securing ad hoc and sensor networks” from the IEEE Communication Society in
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`2016. In 2012, I received the IEEE ComSoc WTC1 Recognition Award, which
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`recognizes individuals for outstanding technical contributions in the field for their
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`service to the scientific and engineering communities. As another example, I
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`received the “Best Paper Award” for the paper “Optimal Resource Allocation for
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`UWB Wireless Ad Hoc Networks” from the IEEE International Symposium on
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`Personal Indoor and Mobile Radio Communications (PIMRC) conference in 2005.
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`Finally, in 2003, I received the “Highly Commended Paper Award” for co-authoring
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`“Performance Evaluation of the Modified IEEE 802.11 MAC for Multi-Channel
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`Multi-Hop Ad Hoc Network,” directed at advanced information networking and
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`applications. Furthermore, many of my papers have been extensively cited by other
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`authors, as indicated by various citation indices. For example, my paper on “Securing
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`Ad Hoc Networks,” co-authored with a Ph.D. student at the time, has been cited over
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`4000 times by other publications according to the Google Scholar index. I have also
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`taught courses that cover wireless communications and networking technologies, at
`
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`1 Wireless Communications Technical Committee.
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`IPR2023-00338
`Dr. Haas Decl.
`the graduate and undergraduate levels. In addition, I have been invited to many
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`international conferences to make keynote speeches regarding wireless and mobile
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`networks.
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`17.
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`I have previously testified in multiple IPR cases, including those
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`concerning wireless networks.
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`III. RELEVANT LEGAL STANDARDS
`
`18.
`
`I am not a lawyer, I do not opine on matters of law, and I do not provide
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`any legal opinions in this Declaration. Although I am not a lawyer, I have been
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`informed by counsel that certain legal standards are to be applied by technical
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`experts in forming opinions regarding the meaning and validity of patent claims. I
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`have been asked by counsel to provide my opinions regarding whether the claims of
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`the ’502 Patent would have been anticipated or would have been obvious to a person
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`having ordinary skill in the art at the ’502 Patent’s effective filing date, in light of
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`the prior art. I have been instructed to assume for the purposes of this proceeding
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`that the Priority Date (defined above) is the effective filing date of the Challenged
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`Claims.
`
`A. Anticipation
`I have been informed by counsel that a patent claim is unpatentable if
`19.
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`the claimed invention is not new. For a challenged claim to be unpatentable because
`
`it is not new, all of its requirements must have been described in a single previous
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`IPR2023-00338
`Dr. Haas Decl.
`publication or patent that predates the effective filing date of the challenged claim.
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`In patent law, these previous publications or patents are called “prior art references.”
`
`If a patent claim is not new, then it is “anticipated” by a prior art reference.
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`20.
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`I have been informed by counsel that to anticipate a challenged claim,
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`the prior art does not have to use the same words as the claim, but all of the
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`requirements of the claim must have been disclosed, either stated expressly or
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`necessarily implied (i.e., “inherent”) such that one skilled in the art would
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`reasonably understand or infer from the reference that every claim element is
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`disclosed in that reference. In considering the disclosure of a reference, I am
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`informed that it is proper to consider not only specific teachings of the reference, but
`
`also the inferences which one skilled in the art would reasonably be expected to draw
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`therefrom. I have been informed by counsel that a claim element is inherently
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`present in a prior art reference if the element must necessarily be present, and a
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`skilled artisan would have recognized that the element must necessarily be present.
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`21.
`
`I have been informed by counsel that if the prior art necessarily
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`functions in accordance with, or includes, the claimed limitations, it anticipates the
`
`limitations. I have been informed by counsel that if the disclosure of a prior art
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`reference is sufficient to show that the natural result flowing from the operation as
`
`taught would result in the performance of the questioned function, the disclosure is
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`regarded as sufficient to anticipate.
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`17
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`IPR2023-00338
`Dr. Haas Decl.
`I have been informed by counsel that a reference need not state a
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`22.
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`feature’s absence in order to disclose a negative limitation of a challenged claim.
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`23.
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`In addition, I have been informed by counsel that for anticipation, the
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`description provided in the reference must enable a person of ordinary skill in the art
`
`in the field of the invention to practice the invention without undue experimentation.
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`Prior art patents are presumed to be enabled, unless the owner of the challenged
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`patent, who bears the burden of showing prior art is not enabled, shows otherwise.
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`A showing by the patent owner regarding the enablement of any prior art may be
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`rebutted.
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`24.
`
`I have been informed by counsel that I may consider additional
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`evidence not explicitly contained in a single prior art references for certain purposes,
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`including:
`
`•
`•
`
`to show that the reference is enabled;
`to explain, but not expand, the meaning of terms and phrases used in
`the reference; and
`to show that something is inherent in the reference.
`•
`B. Obviousness
`25. Further, I have been informed by counsel that a patent claim is not
`
`patentable as obvious (a requirement I have been informed by counsel to be governed
`
`by a statute, 35 U.S.C. § 103), if the differences between the patent claim and the
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`prior art are such that the claimed subject matter as a whole would have been obvious
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`18
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`IPR2023-00338
`Dr. Haas Decl.
`at the time the claimed invention was made to a person having ordinary skill in the
`
`relevant art. Obviousness, as I have been informed by counsel, is based on the scope
`
`and content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art, and, to the extent that they exist, certain objective
`
`indicia of non-obviousness.
`
`26.
`
` I have been informed by counsel that objective indicia can be important
`
`evidence regarding whether a patent is obvious or nonobvious, if it has an
`
`appropriate nexus to the claimed invention, i.e., is a result of the merits of a claimed
`
`invention (rather than the result of design needs or market-pressure advertising or
`
`similar activities). Such indicia include: commercial success of products covered by
`
`the patent claims; a long-felt need for the invention; failed attempts by others to
`
`make the invention; copying of the invention by others in the field; unexpected
`
`results achieved by the invention as compared to the closest prior art; praise of the
`
`invention by the infringer or others in the field; the taking of licenses under the patent
`
`by others; expressions of surprise by experts and those skilled in the art at the making
`
`of the invention; the patentee proceeding contrary to the accepted wisdom of the
`
`prior art, and, the contemporaneous development of the subject matter claimed by
`
`others.
`
`27.
`
` I have been informed by counsel that whether there are any relevant
`
`differences between the prior art and the claimed invention is to be analyzed from
`
`
`
`
`19
`
`
`
`IPR2023-00338
`Dr. Haas Decl.
`the view of a person of ordinary skill in the relevant art at the effective filing date.
`
`As such, my opinions below as to a person of ordinary skill in the art are as of the
`
`effective filing date, even if not expressly stated as such; for example, even if stated
`
`in the present tense.
`
`28.
`
` In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I have been informed by counsel that I must consider the
`
`impact, if any, of such differences on the obviousness or non-obviousness of the
`
`invention as a whole, not merely some portion of it. I have been informed by counsel
`
`that the person of ordinary skill faced with a problem is able to apply his or her
`
`experience and ability to solve the problem and also look to any available prior art
`
`to help solve the problem.
`
`29.
`
`I have been informed by counsel that if the prior art sometimes, but not
`
`always, embodies a claim limitation then the prior art nonetheless teaches that
`
`limitation.
`
`30.
`
`I have been informed by counsel that a precise teaching in the prior art
`
`directed to the subject matter of the claimed invention is not needed. I have been
`
`informed by counsel that one may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would have employed in reviewing the prior
`
`art at the effective filing date. For example, if the claimed invention combined
`
`elements known in the prior art and the combination yielded results that were
`
`
`
`
`20
`
`
`
`IPR2023-00338
`Dr. Haas Decl.
`predictable to a person of ordinary skill in the art at the effective filing date, then this
`
`evidence would make it more likely that the claim was obvious. On the other hand,
`
`if the combination of known elements yielded unexpected or unpredictable results,
`
`or if the prior art teaches away from combining the known elements, then this
`
`evidence would make it more likely that the claim that successfully combined those
`
`elements was not obvious.
`
`31.
`
`I have been informed by counsel that there are recognized, exemplary,
`
`rationales for combining or modifying references to show obviousness of claimed
`
`subject matter. Some of the rationales include the following: combining prior art
`
`elements according to known methods to yield predictable results; simple
`
`substitution of one known element for another to yield predictable results; use of a
`
`known technique to improve a similar device (method or product) in the same way;
`
`applying a known technique to a known device (method or product) ready for
`
`improvement to yield predictable results; choosing from a finite number of
`
`identified, predictable solutions, with a reasonable expectation of success; known
`
`work in one field of endeavor may prompt variations of it for use in either the same
`
`field or a different one based on design incentives or other market forces if the
`
`variations are predictable to one of ordinary skill in the art; and some teaching,
`
`suggestion, or motivation in the prior art that would have led one of ordinary skill to
`
`
`
`
`21
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`
`
`IPR2023-00338
`Dr. Haas Decl.
`modify the prior art reference or to combine prior art teachings to arrive at the
`
`claimed invention.
`
`IV. OVERVIEW OF THE ’502 PATENT
`A. Claimed Priority
`32. The ’502 Patent issued from U.S. Application 16/372,389, filed on
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`April 1, 2019, and claims priority to Provisional Application 62/651,312, filed on
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`April 2, 2018. Ex-1001 Cover, 1:8-14. I have been instructed to assume, for the
`
`purpose of this proceeding, that the Priority Date is April 2, 2018. I have also been
`
`instructed to assume for the purpose of this proceeding that this Priority Date is the
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`“effective filing date” of the Challenged Claims.
`
`B. Disclosure
`33. The ’502 Patent is directed to an “on-demand system i
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