UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`UNIFIED PATENTS, LLC,
`
`Petitioner,
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`v.
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`DYNAPASS IP HOLDINGS LLC,
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`Patent Owner
`__________________
`
`IPR2023-00425
`U.S. Patent No. 6,993,658
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`__________________
`
`DECLARATION OF RAJEEV SURATI, IN SUPPORT OF
`DYNAPASS IP HOLDINGS LLC’S PATENT OWNER RESPONSE
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`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
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`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`UNIFIED PATENTS, LLC,
`
`Petitioner,
`
`v.
`
`DYNAPASS IP HOLDINGS LLC,
`
`Patent Owner
`__________________
`
`IPR2023-00425
`U.S. Patent No. 6,993,658
`
`__________________
`
`DECLARATION OF RAJEEV SURATI, IN SUPPORT OF
`DYNAPASS IP HOLDINGS LLC’S PATENT OWNER RESPONSE
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`I, Rajeev Surati, declare as follows:
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`1.
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`I make this declaration based upon my own personal knowledge and, if
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`called upon to testify, would testify competently to the matters contained herein.
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`2.
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`I have been asked to render opinions in inter partes review proceeding
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`IPR2023-00425, regarding claims 1 and 3-6 (the “Challenged Claims”) of U.S.
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`Patent No. 6,993,658 (Ex. 1001, the “’658 Patent”).
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`3.
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`This declaration is a statement of my opinions on issues related to the
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`patentability of the Challenged Claims.
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`4.
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`I am being compensated at my usual rate. My compensation is in no
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`way related to the outcome of this case.
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`I.
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`BACKGROUND AND QUALIFICATIONS
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`5.
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`I, Rajeev Surati, have been retained by counsel for Dynapass IP
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`Holdings LLC (“Patent Owner”) as an expert in Unified Patents, LLC v. Dynapass
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`IP Holdings LLC, IPR2023-00425.
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`6.
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`In formulating my opinions, I have relied on my knowledge, training,
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`and experience in the relevant field, which I will summarize briefly here. In addition,
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`my curriculum vitae (CV) is attached to this declaration (Ex. 2004).
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`7.
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`I hold a Doctor of Philosophy in Electrical Engineering and Computer
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`Science from the Massachusetts Institute of Technology (awarded in 1999) with a
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`Grade Point Average of 5.0/5.0. I obtained a Master of Science in Electrical
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`Engineering and Computer Science from the Massachusetts Institute of Technology
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`(awarded in 1995) with a Grade Point Average of 5.0/5.0. I have a Bachelor of
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`Science in Electrical Engineering from the Massachusetts Institute of Technology
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`(awarded 1992) and graduated with a Grade Point Average of 4.9/5.0.
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`8. My Ph.D. thesis was entitled “Scalable Self-Calibrating Technology for
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`Large Scale Displays.” My master’s thesis was entitled “Practical Partial
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`Evaluation.” My undergraduate thesis, which I received the MIT EECS’s William
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`A. Martin thesis prize for best undergraduate thesis, was entitled “A Parallelizing
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`Compiler based on Partial Evaluation.” Lastly, I was awarded the highly selective
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`Department of Energy’s Computational Science Fellowship in 1995, which funded
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`my Ph.D. studies.
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`9.
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`Between 1989 and 1999 I was employed as a researcher/programmer at
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`the MIT Artificial Intelligence Lab. At the lab, I worked for Thomas F. Knight Jr.,
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`Ph.D. He is one of the noted inventors of the first bit-mapped displays for
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`computers, a core programmer on the ITS (intelligent time-sharing operating
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`system), creator of several innovations in VLSI, and most recently noted as being
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`one of the grandfathers of synthetic biology. I also worked for Professor Anant
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`Agarwal on parallel computing and Professors Hal Abelson and Gerald J. Sussman
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`on parallel and scientific computing.
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`In 1990 I learned and used EPROM’s for the first time in a Computer
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`10.
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`Architecture course and learned the labor-intensive process used to erase and
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`reprogram them using UV and EPROM programmers.
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`11.
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`In 1996, I began working on a Ph.D. thesis related to the display of
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`multimedia across large displays. My Ph.D. thesis system was a special kind of
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`display allowing one to create ultra-high-resolution displays composed of multiple
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`projectors tiled with a slight overlap. A camera-based feedback system is used to
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`create an inverse map to drive the system such that a person would only see a
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`continuous, seamless display with no bezel or overlap. What content and how to
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`drive it onto the display was a topic I became familiar with. Also, at this time, several
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`interactive TV projects were going on at MIT, which I had exposure to from this
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`vantage, especially concerning the idea that these large displays would be in the
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`living rooms of the future. Thus, I became familiar with content encoding/decoding,
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`user interfaces for driving large displays, multimedia content storage, high-
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`resolution imagery, networks, recording, GPUs, storage of content, etc.
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`12.
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`In 2002, MIT was awarded U.S. Patent 6,456,339, entitled “Super-
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`resolution Display,” for my Ph.D. work. Today this technology is better known as
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`automatic calibration for projection mapping. My experience, along with a patent I
`
`developed and licensed based on my Ph.D. thesis, were used to create a new startup
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`company called Scalable Display Technologies that works with a variety of Pro AV
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`display companies’ products.
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`13. While at MIT pursuing my doctorate, I started a company called Flash
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`Communications in 1997, which invented an instant messaging platform focused on
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`enterprise needs. It had its basis from my having observed the popularity at MIT of
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`the Zephyr Instant Messaging Service from 1988 onwards. Given this enterprise
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`focus, Microsoft soon acquired the company in 1998. We built both a client and
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`server product, and the basic protocol we invented became the basis of the well-
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`known XMPP protocol that was widely used in the mid-2000s among instant
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`messaging providers. I worked on developing both the client and server products
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`and particularly dealt with many, if not all, of the issues one might have to face when
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`implementing contact lists. Notably I implemented the login authorization system
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`for this system.
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`14. Upon graduation, I joined Microsoft (as was required by Microsoft in
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`the acquisition of Flash Communications) and worked on both client and server
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`technologies related to instant messaging, covering both the Microsoft Exchange
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`Instant Messaging product that was released in 2000 and MSN Messenger. At
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`Microsoft, I also worked on the client and server side of the products.
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`15. At Microsoft, I participated in development of the Instant Messaging
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`and Presence Protocol (IMPP), which was at least partially derived from a similar
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`protocol that I worked on at Flash. The IMPP protocol was later incorporated into
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`the Extensible Messaging and Presence Protocol (XMPP) protocol that was used
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`widely for instant messaging by Microsoft, Google, Cisco, Jabber, and several
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`others.
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`16. As this XMPP adoption was going on, there was further internal
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`discussion regarding the Session Initiation Protocol (SIP) protocol, which was
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`eventually adopted more broadly by Microsoft for Instant Messaging. The SIP
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`protocol is used for signaling and controlling multimedia communication sessions
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`in applications of Internet telephony for voice and video calls, instant messaging
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`over Internet Protocol (IP) networks, as well as mobile phone calling over LTE
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`(VoLTE). While working at Flash and Microsoft, I was personally responsible for
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`developing source code for parsing and processing input messages and generating
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`output messages in accordance with the above-described protocols, and thus I have
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`an extensive working knowledge of many different protocols used in multimedia
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`communications systems. Furthermore, I worked on an SDK integrating the
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`Exchange Servers with the MSN Servers.
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`17.
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`In 2002, I served as a technical consultant for Cordant Communication,
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`which was founded for the purpose of archiving instant messages. During this time,
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`I also served as an informal adviser to IMLogic, which also worked on message
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`archiving. Later in 2007, I served as a technical adviser to Unify Square, which built
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`software to manage Microsoft telephony and messaging solutions deployed in
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`Fortune 500 companies. Unify Square was recently sold to Unisys.
`
`18. From 2000 to 2007, I cofounded, led, and sold a business called
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`photo.net to Namemedia, which is now part of GoDaddy.com. In 2000, while
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`running the site, I worked on many features including a chat feature, a WAP interface
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`to photo.net, and a rich user interface based on JavaScript. Photo.net for a time in
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`early 2000 was considered a top 1,000 website so it received large amounts of traffic.
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`Having built the site from running on a single computer that I installed in a datacenter
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`to a full rack of computers in that data center, I became very familiar with the careful
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`design and programming one needs to employ in building and maintaining such
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`systems. I became intimately familiar with implementing file systems for use with
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`multimedia and super high performance image encoding/decoding systems as well
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`as real time delivery of high bandwidth content.
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`19. At photo.net, we prototyped many fundamental Internet community
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`features such as photo sharing, social networking, and memberships in the late 1990s
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`and early 2000s. This system was written on top of Oracle SQL Database and had
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`to serve up many millions of web pages a day (corresponding to millions of records),
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`with high volume inserts and also incorporated an ecommerce system used for
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`billing of subscriptions, tracking users etc. I spent seven years running the site both
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`writing new features driven by the Oracle SQL database and maintaining tables with
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`many millions of records being generated. I also served as the database
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`administrator for seven years, which provided me with personal and extensive
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`operational experience running such a system, dealing with database query speed-
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`up and more mundane day-to-day issues regarding maintaining relational databases
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`such as backups, etc.
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`20. Again at photo.net I maintained and implemented the login system.
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`21.
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`I also worked with the team at ArsDigita including Dr. Philip
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`Greenspun, who created the photo.net site as a hobby in 1993 while we were at MIT,
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`and who asked me to cofound the business with him in 1999 when I came back from
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`Microsoft. ArsDigita built public open source community web site creation tools
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`similar to what people today call Drupal on which many thousands of websites were
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`built, including both enterprise and consumer web sites. ArsDigita’s product came
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`out of the work to develop photo.net, and photo.net served as a prime example site
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`of one using the ArsDigita System as its underlying content management system.
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`22. The photo sharing system on photo.net was built on top of a photo
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`database engine called PhotoDB including features like key word tagging, folder,
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`and even making custom fields that users could customize for making their own
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`personal tables. I rebuilt and maintained much of the user interface for this in 2001
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`until the site was sold.
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`23. Because photo.net was focused on high-end amateur photographers, I
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`worked with many consumer electronics manufacturers in the digital camera
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`business. There, I implemented a photo sharing system involving the delivery of
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`multimedia content. Additionally, I worked on e-commerce capabilities that
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`involved some product configuration options. In running photo.net, I became
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`intimately familiar with implementing file systems for use with multimedia and
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`super high performance image encoding/decoding systems as well as real time
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`delivery of high bandwidth content.
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`24. Messaging and broadcasting content were a core part of the offering of
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`the site, and I managed the implementation and hosting aspect of setting up and
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`running various SMTP, MTA, WAP, and SMS servers to enable communication
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`with our user base. In that regard, WAP PUSH, which is a relevant protocol to
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`messaging, was something I worked on as well at the time.
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`25.
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`In 2001, I became involved with helping a rich user interface (UI) web
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`company, Nexaweb, as both an investor and advisor. In that role, I worked on the
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`underlying infrastructure for a device independent (mobile device, PC, etc.) way to
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`write UIs for web application utilizing Java as a rendering engine backed by web
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`server backend. Underlying that technology required providing server pushes over
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`HTTP. At that time JavaScript could provide a UI but it was not standardized across
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`browsers, which made it hard to implement reliable systems that worked across
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`browsers—especially ones that required server push underneath it.
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`26.
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`In 2004, I founded Scalable Display Technologies (SDT) and I have
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`been the President and Chairman of the company since the founding. Among its
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`operations, SDT operates in the Audio Video domain and has licensed software and
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`firmware to various companies including Hitachi and NEC. I also wrote a network
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`synchronized media playback system involving encoding and decoding of video and
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`audio content as well as real time recording and video capture, a product known as
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`“ScalablePlayer.” I was also involved in building a network architecture using both
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`broadcast and point-to-point communication mechanisms.
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`27. Also, as detailed in my attached CV, I am an inventor of subject matter
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`in approximately 10 U.S. Patents. I have also received additional patents, including:
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`U.S. Patent No. 8,817,111, entitled “System and method of calibrating a display
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`system free of variation in system input resolution”; U.S. Patent No. 8,994,757,
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`“System and method for providing improved display quality by display adjustment
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`and image processing using optical feedback”; U.S. Patent No. 9,215,455, “System
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`and method of calibrating a display system free of variation in system input
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`resolution”; U.S. Patent No. 9,369,683, “System and method for calibrating a display
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`system using manual and semi-manual techniques”; and U.S. Patent No. 9,497,447,
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`“System and method for color and intensity calibrating of a display system for
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`practical usage.”
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`28.
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`I am co-inventor of patented technology related to instant messaging
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`upon I which focused on technology related to U.S. Patent No. 5,943,478 and
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`associated technology that I had developed related to pop-up, two-way messaging
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`over the Internet. While at Microsoft, I was an inventor on several patents including:
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`U.S. Patent No. 6,260,148 relating to methods and systems for message forwarding
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`and property notifications using electronic subscriptions; and U.S. Patent Nos.
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`6,415,318 and 6,604,133 relating to inter-enterprise messaging systems using
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`bridgehead servers. Aspects of these patents relate specifically to messaging and
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`notification technology in telecommunications systems.
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`29.
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`I am on the advisory boards of several technology companies,
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`including: Paneve, which develops general purpose ASICs coupled with compiler
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`technology; Nexaweb, which develops real-time web application frameworks using
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`HTTPS; Antix Labs, which develops compiler technology for a universal gaming
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`platform; and Permabit, which develops content addressable storage.
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`30.
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`I have received several awards for my contributions as an inventor and
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`entrepreneur, including the Global Indus. Technovator Award 2009 and Laureate of
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`2009 Computer World Honors Program.
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`In parallel with my work at SDT, I lectured at MIT on many subjects
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`31.
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`including the Android operating system, and I worked with a group of students on
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`developing mobile applications for Android in 2008 with Rich Miner, who is a co-
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`founder of Android. Many students created applications involving Google Maps
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`and localization, so I was familiar with these. I also served as a lecturer and mentor
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`at MIT Play Labs, which was an incubator for augmented reality (AR) and virtual
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`reality (VR) software for mobile handsets and headset applications. Notably in
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`addition to mobile handsets, Android runs on the Oculus headset. As part of that
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`program, I worked with several startup companies on mobile applications including
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`one that developed applications for Telegram, which is a cross-platform, cloud-
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`based instant messaging system.
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`32. Since 2014, I have been working as an independent consultant for
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`several companies including NEC, Hitachi, Hi Marley, and Estee Lauder.
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`33.
`
`In 2018, I became a senior partner at nCent Labs. In this role, I
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`consulted on the development of an incentive market-based platform for block
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`chains and cryptocurrency. Part of my work at nCent Labs focused on the
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`development of SMS messaging applications for the nCent platform. In my role
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`there I also implemented an OTP based user authorization system.
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`34. Between 2019 and 2020, I served as a Technical Lead of the
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`Skunkworks at Hydrow, which is a startup company that develops indoor rowing
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`machines. In this role, I worked on special projects including development of a
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`virtual reality experience using Magic Leap and Oculus to immerse users in a world
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`of team-based rowing crew on a scull based on virtual reality (VR) cinematography.
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`35.
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`I have published numerous papers on subjects relating to computing
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`systems, computer network communications, databases, and other subjects within
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`the realm of electrical and computer engineering.
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`36.
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`In 2020, I started a company called Skyline Nav AI Inc. that develops
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`technology using visual location (using skyline) to geo-locate the place a picture was
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`taken as an alternative to GPS. There I have built and maintained a login
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`authentication system for our app skyline nav for Android Tactical Assault Kit
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`(ATAK) a US Military program for GIS based collaboration in the field. I
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`implemented an OTP based authentication system.
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`37. Over the past decade, I have served as a technical consultant and expert
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`witness on matters relating to numerous patent infringement cases. In the course of
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`this work, I have provided consulting services to a wide variety of technology
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`companies including BritishTelecom, Apple, IBM, Philips, Shopify, Zillow, Polaris
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`Powered Technologies, Amazon, Salesforce, Hitachi, Slack, Harris Teeter, and
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`others.
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` I have been teaching a Big Data class at Harvard Medical School one
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`38.
`
`month of every year since 2018. The name of the class is “Computationally Enabled
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`Medicine.”
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`39. Finally, for the last 10 years I have served as an angel investor and also
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`as a mentor for startup companies as part of different programs at MIT.
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`40. Lastly over the last 35 years as a practicing computer scientist and
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`engineer I have regularly interacted with login authentication systems including OTP
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`based ones. RSA authentication based ones as well as other public and private key
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`based ones.
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`41. As such, I am qualified to provide opinions regarding the state of the
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`art at the effective filing date of the ’658 Patent (which I understand to be March 6,
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`2000) and how a person of ordinary skill in the art (“POSITA”) at that time would
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`have interpreted and understood the ’658 Patent.
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`42.
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`I am being compensated for my work and any travel expenses in
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`connection with this proceeding at my standard consulting rates. My compensation
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`is in no way dependent on or contingent on the outcome of my analysis or opinions
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`rendered in this proceeding and is in no way dependent on or contingent on the
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`results of these or any other proceedings relating to the above-captioned patent.
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`43. Although I am not rendering an opinion about the level of skill of a
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`POSITA proffered by Petitioner, based on my professional experience, I have an
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`understanding of the capabilities of a POSITA (as such a POSITA is defined by
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`Petitioner). Over the course of my career, I have supervised and directed many such
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`persons. Additionally, I myself, at the time the ’658 Patent was filed and at its
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`priority date, qualified as at least a POSITA.
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`II. MATERIALS CONSIDERED
`
`44.
`
`In preparing this declaration, I reviewed the ’658 Patent, including its
`
`claims in view of its specification, the prosecution history of the ’658 Patent, and
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`various prior art and technical references from the time of the invention.
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`45.
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`In addition, in preparing this declaration, I have reviewed all of the
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`papers and exhibits in the record for inter partes review proceeding IPR2023-00425.
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`III. LEGAL UNDERSTANDING
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`46.
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`I have worked with counsel for Patent Owner in the preparation of this
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`Declaration. Nevertheless, the opinions, statements, and conclusions offered in this
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`Declaration are purely my own and were neither suggested nor indicated in any way
`
`by counsel or anyone other than myself. I confirmed with counsel my understanding
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`that the term “obvious,” as used in the Petitions addressed herein and as a general
`
`matter under United States law, refers to subject matter that would have occurred to
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`a POSITA to which the ’658 Patent is directed without inventive or creative thought.
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`That which is obvious, it is my understanding, flows naturally from the art and the
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`education one of skill practicing in that art would have had in the relevant time
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`frame, which for the ’658 Patent is 2000.
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`A. Obviousness
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`47.
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`I understand that a patent claim can be invalid under 35 U.S.C. § 103 if
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`the claimed subject matter would have been “obvious” to a person of ordinary skill
`
`in the art as of the priority date of the patent based upon one or more prior art
`
`references. I understand that an obviousness analysis should consider each of the
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`following so-called “Graham factors”: (1) the scope and content of the prior art; (2)
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`the differences between the claims and the prior art; (3) the level of ordinary skill in
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`the pertinent art; and (4) secondary considerations, if any (such as unexpected
`
`results, commercial success, long-felt but unsolved needs, failure of others, copying
`
`by others, licensing, and skepticism of experts).
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`48.
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`I understand that a conclusion of obviousness may be based upon either
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`a single prior art reference or a combination of prior art references. However, I
`
`understand that merely demonstrating that each of the claim elements was,
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`independently, known in the prior art does not prove that a claim composed of
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`several known elements is obvious. In other words, I have been informed that
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`obviousness requires more than a mere showing that the prior art includes separate
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`references covering each limitation in a claim. Rather, obviousness requires the
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`additional showing that a person of ordinary skill at the time of the invention would
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`have selected and combined those elements in the normal course of research and
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`development to yield the claimed invention.
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`49. Moreover, I understand that it can be important to identify a reason that
`
`would have prompted a person of ordinary skill in the relevant field to combine the
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`elements in a way the claimed new invention does.
`
`50.
`
`I further understand that, to determine obviousness, courts look to the
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`interrelated teachings of multiple patents or other prior art references, the effects of
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`demands known to the design community or present in the marketplace, and the
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`background knowledge possessed by a person having ordinary skill in the art.
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`51.
`
`I also understand that, in determining whether a combination of prior
`
`art references renders a claim obvious, it may be helpful to consider whether there
`
`is some teaching, suggestion, or motivation to combine the references and a
`
`reasonable expectation of success in doing so. I understand, however, that the
`
`teaching, suggestion, or motivation to combine inquiry is not required and may not
`
`be relied upon in lieu of the obviousness analysis outlined above.
`
`52.
`
`I understand that the following exemplary rationales may lead to a
`
`conclusion of obviousness: the combination of prior art elements according to
`
`known methods to yield predictable results; the substitution of one known element
`
`for another to obtain predictable results; and the use of known techniques to improve
`
`similar devices in the same way.
`
`
`
`17
`
`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
`
`
`
`IPR2023-00425
`Patent 6,993,658
`53. However, a claim is not obvious if the improvement is more than the
`
`predictable use of prior art elements according to their established functions.
`
`Similarly, a claim is not obvious if the application of a known technique is beyond
`
`the level of ordinary skill in the art.
`
`54. Further, when the prior art teaches away from combining certain known
`
`elements, discovery of successful means of combining them is not obvious. I
`
`understand that similar subject matter may not be sufficient motivation for a person
`
`of skill in the art to combine references if the references have conflicting elements.
`
`55.
`
`I understand that, in order to be used in an obviousness combination, a
`
`prior art reference must be “analogous.” I understand that two separate tests define
`
`the scope of analogous 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 inventor’s endeavor, whether the reference still is reasonably
`
`pertinent to the particular problem with which the inventor is involved. In regard to
`
`test (2), the problems to which both the reference and the claimed invention relate
`
`must be identified and compared. I also understand that Petitioner has the burden of
`
`showing a cited reference is analogous art.
`
`56.
`
`I understand that obviousness of a patent claim cannot properly be
`
`established through hindsight, and that elements from different prior art references,
`
`or different embodiments of a single prior art reference, cannot be selected to create
`
`
`
`18
`
`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
`
`
`
`IPR2023-00425
`Patent 6,993,658
`the claimed invention using the invention itself as a roadmap. I understand that the
`
`claimed invention as a whole must be compared to the prior art as a whole, and courts
`
`must avoid aggregating pieces of prior art through hindsight that would not have
`
`been combined absent the inventors’ insight.
`
`57.
`
`I understand that obviousness is not established by simply combining
`
`previously known elements from the prior art. A patent composed of several
`
`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art. An invention is unpatentable as obvious
`
`if the differences between the patented subject matter and the prior art would have
`
`been obvious at the time of invention to a person of ordinary skill in the art.
`
`58.
`
`I understand that obviousness of a patent cannot properly be established
`
`by mere conclusory statements. Instead, there must be some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.
`
`When an expert opines that all the elements of a claim disparately exist in the prior
`
`art, the expert should provide the rationale to combine the disparate references. A
`
`reason for combining disparate prior art references is a critical component of an
`
`obviousness analysis. The obviousness analysis should be made explicit and needs
`
`to provide an articulated reasoning with some rational underpinning to identify the
`
`reason that would have prompted a person of ordinary skill in the relevant field to
`
`combine the elements in the way the claimed invention does.
`
`
`
`19
`
`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
`
`
`
`IPR2023-00425
`Patent 6,993,658
`I also understand that inventions in most, if not all, instances rely upon
`
`59.
`
`building blocks long since uncovered, and claimed discoveries almost of necessity
`
`will be combinations of what, in some sense, is already known. This is another
`
`reason why merely pointing to the elements being known in the art in separate
`
`locations is not the end of the obviousness inquiry.
`
`60.
`
`I understand that technical experts may testify to matters like the level
`
`of skill in the art at the time of the invention and what a POSITA might find obvious
`
`in light of the prior art without addressing objective indicia of non-obviousness.
`
`However, where an expert purports to testify not just to certain factual components
`
`underlying the obviousness inquiry, but to the ultimate question of obviousness, the
`
`expert must consider all factors relevant to that ultimate question, including all
`
`objective evidence of non-obviousness. Accordingly, I have undertaken such
`
`considerations here.
`
`61.
`
`I understand that, to render obvious a patent claim the prior art
`
`references must be enabling. That is, the references must provide sufficient
`
`information to allow one skilled in the art to practice what is disclosed without undue
`
`experimentation. I understand that, while a prior art reference may support any
`
`finding apparent to a person of ordinary skill in the art, prior art references that
`
`address different problems may not, depending on the art and circumstances, support
`
`an inference that the POSITA would consult both of them simultaneously.
`
`
`
`20
`
`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
`
`
`
`IPR2023-00425
`Patent 6,993,658
`
`B.
`
`Secondary Considerations
`
`62.
`
`I understand that one of the so-called Graham factors that must be
`
`considered in determining obviousness is the existence of any secondary
`
`considerations, which tend to show that a patent claim is not obvious. Such
`
`secondary considerations of non-obviousness of a patent include (1) long-felt and
`
`unmet need in the art that was satisfied by the claimed invention of the patent; (2)
`
`failure of others to achieve the results of the claimed invention; (3) commercial
`
`success or lack thereof of the products and processes covered by the claimed
`
`invention; (4) deliberate copying of the claimed invention by others in the field; (5)
`
`taking of licenses under the patent by others; (6) whether the claimed invention was
`
`contrary to the accepted wisdom of the prior art; (7) expression of disbelief or
`
`skepticism by those skilled in the art upon learning of the claimed invention; (8)
`
`unexpected results achieved by the claimed invention; (9) praise of the claimed
`
`invention by others skilled in the art; and (10) lack of contemporaneous and
`
`independent invention by others.
`
`63.
`
`I understand that each of these considerations may form an independent
`
`basis for non-obviousness of a patent. I also understand that the fact that another
`
`person simultaneously and independently created the same invention claimed in an
`
`asserted patent can serve as an indication that the invention was obvious.
`
`
`
`21
`
`Ex. 2003
`Unified Patents, LLC v. Dynapass IP Holdings LLC, IPR2023-00425
`
`
`
`IPR2023-00425
`Patent 6,993,658
`I also have been informed by counsel that there must be a nexus
`
`64.
`
`between any such secondary
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