UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`
`__________
`
`Case IPR2023-00581
`Patent 8,886,772
`
`DECLARATION OF REGIS J. “BUD” BATES JR.
`IN SUPPORT OF PATENT OWNER’S RESPONSE
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 1 of 113
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`__________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________
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`ERICSSON INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`
`__________
`
`Case IPR2023-00581
`Patent 8,886,772
`
`DECLARATION OF REGIS J. “BUD” BATES JR.
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 1 of 113
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`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
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`TABLE OF CONTENTS
`LIST OF REFERENCED EXHIBITS..……………………………….…………..iii
`I. INTRODUCTION……………….………………………………….…………..1
`II. BACKGROUND AND QUALIFICATIONS……………………...…………..2
`III. MATERIALS CONSIDERED...……………………………………………..11
`IV. MY UNDERSTANDING OF CERTAIN LEGAL STANDARDS………….12
`a. Ordinary Skill in the Art……..………………………………………….13
`b. Anticipation (35 U.S.C. § 102)………………………………..………..14
`c. Obviousness (35 U.S.C. § 103) ….…………………………….……….15
`d. Level of ordinary skill in the art….…………………………….……….18
`V. THE ’772 PATENT….……………………………………………….……….19
`VI. THE CHALLENGED CLAIMS...…………………………………..……….28
`a. Claims 2, 11, 14, and 16…..…………………………………………….28
`b. Claims 3-6…………….………………………………………..……….30
`VII. CLAIM CONSTRUCTION…………..…………………………….……….31
`VIII. ANALYSIS OF THE REFERENCES….………………………….……….39
`a. Angelot…………………………….…………………………...……….39
`b. Zakurdaev……….………………………………………………...…….47
`IX. GROUND 1: ANGELOT DOES NOT ANTICIPATE THE CHALLENGED
`CLAIMS…..……………………………………………………….……….48
`a. Angelot does not disclose “wherein the ACSMD is further configured to
`identify the type of the manageable electronic device by comparing a
`network address of the manageable electronic device in the request with a
`predetermined plurality of network addresses in the at least one database”
`recited in Claim 3……………………………………………………….49
`b. Angelot uses the terms “forward” and “redirect” interchangeably and
`never refers to “relay” even once……………………………………….52
`c. Angelot’s use of “process” in paragraph [0054] does not support
`Petitioner……………………….……………………………………….56
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`d. Angelot does not disclose “wherein the ACSMD is further configured to
`receive a reply from the identified ACS, and relay the reply to the
`manageable electronic device” recited in Claim 2...……………...…….63
`X. GROUND 2: ANGELOT DOES NOT RENDER OBVIOUS THE
`CHALLENGED CLAIMS…………………………………………...……….89
`a. Petitioner fails to provide proper motivation to modify Angelot to use
`“relaying” instead of “forwarding” ……………………………………..89
`b. Ground 2 does not cure Angelot’s deficiencies as to Claim 3...………..95
`XI. GROUND 3: ANGELOT IN VIEW OF ZAKURDAEV DOES NOT
`RENDER OBVIOUS THE CHALLENGED CLAIMS …………………….96
`a. Zakurdaev does not teach “relay”...……………………………………..96
`b. Petitioner fails to provide proper motivation to modify Angelot with
`Zakurdaev……………………………………………………....………..99
`c. Ground 3 does not cure Angelot’s deficiencies as to Claim 3....………102
`XII. ALL GROUNDS: ANGELOT DOES NOT DISCLOSE, TEACH, OR
`SUGGEST LIMITATION [1G], WHICH IS RECITED IN CLAIMS 2-6, 11,
`14, AND 16.………………………………………………………………...103
`XIII. CONCLUSION……………………………………………………………108
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`ii
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`LIST OF EXHIBITS REFERENCED IN DECLARATION
`
`Description
`Exhibit
`1001 U.S. Patent No. 8,886,772 (“the ’772 Patent”)
`1002 Declaration of Daniel J. Blumenthal, Ph.D.
`1004
`Prosecution History of the ’772 Patent
`1005 Markman Order from Koninklijke KPN NV v. Samsung Electronics
`America, Inc. et al., 2-14-cv-01165-JRG (E.D. Tex.)
`1006 U.S. Patent Publication No. 2009/0201830 (“Angelot”)
`1007 U.S. Patent Publication No. 2002/0073182 (“Zakurdaev”)
`
`1012 RFC 2131 (“Dynamic Host Configuration Protocol”, R. Droms, March
`1997)
`Prosecution History of U.S. Patent No. 9,838,256
`1019
`2001 Declaration of Mr. Regis J. (Bud) Bates, Jr. in Support of Patent
`Owner dated June 15, 2013
`2002 Curriculum Vitae of Regis J. (Bud) Bates, Jr.
`2011 Updated Curriculum Vitae of Regis J. (Bud) Bates, Jr.
`2012 Claim Construction Order in
`Koninklijke KPN N.V. v. Telefonaktiebolaget LM Ericsson,
`22-cv-00282-JGR, Dkt. No. 176 (E.D. Tex. Oct. 13, 2023)
`2013 Order in Koninklijke KPN N.V. v. Telefonaktiebolaget LM Ericsson,
`22-cv-00282-JGR, Dkt. No. 195 (E.D. Tex. Nov. 2, 2023)
`2014 Transcript of Markman Hearing October 3, 2023 in
`Koninklijke KPN N.V. v. Telefonaktiebolaget LM Ericsson,
`22-cv-00282-JGR (E.D. Tex.)
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`iii
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`I, Regis J. (Bud) Bates Jr., declare as follows:
`INTRODUCTION
`I.
`1.
`I have been retained as an expert witness by Patent Owner
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`Koninklijke KPN N.V. (“Patent Owner” or “KPN”) to provide my independent
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`opinions in connection the Petition for Inter Partes Review (“IPR”) of Claims 2-6,
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`11, 14, and 16 (the “Challenged Claims”) of U.S. Patent No. 8,886,772 (EX1001,
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`“the ’772 Patent”) in the above-captioned proceeding (IPR2023-00581) before the
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`Patent Trial and Appeal Board (“Board”). More specifically, I have been asked to
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`render my opinions regarding the validity of the ’772 Patent with respect to the
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`Petition for Inter Partes Review (“Petition”) filed by Ericsson, Inc. (“Petitioner” or
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`“Ericsson”).
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`2.
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`I understand that the Board on September 7, 2023 instituted this IPR
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`as to the Challenged Claims of the ’772 Patent.
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`3.
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`I further understand that the references relied on by the Board in
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`instituting this IPR include: (1) U.S. Patent Publication No. 2009/0201830
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`(EX1006, “Angelot”), and (2) U.S. Patent Publication No. 2002/0073182) (EX1007,
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`“Zakurdaev”). In forming my opinions in this matter, I considered these papers, as
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`well as the other documents discussed and referenced in this Declaration.
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`4.
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`I have been asked by KPN to consider whether certain references
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`disclose, teach, or suggest the features recited in the Challenged Claims.
`1
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`5.
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`I submit this Declaration to offer my expert opinion that the
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`
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`Challenged Claims are novel and nonobvious in light of the prior art at the time of
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`the invention and thus, patentable.
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`6.
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`I am being compensated at my standard hourly consulting rate of $350
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`for my time spent in this matter. My compensation is not contingent on the
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`outcome of the IPR or on the substance of my opinions.
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`7.
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`I have no financial interest in KPN or Ericsson. I am not an employee
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`of KPN, Ericsson, or any affiliate or subsidiary thereof.
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`8.
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`This Declaration contains statements of my opinions formed to date
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`and the bases and reasons for those opinions. I may offer additional opinions
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`based on further review of materials in this case, including opinions and/or
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`testimony of other expert witnesses.
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`II. BACKGROUND AND QUALIFICATIONS
`This section summarizes my career history, education, publications,
`9.
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`and other relevant qualifications. My full curriculum vitae (“CV”) is included as
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`EX2011. An earlier version of my CV was submitted as EX2002.
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`10.
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`I am the founder and President of TC International Consulting, Inc.
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`(“TCIC”). Our offices are located at 3413 Ponderosa Loop, Heber, AZ 85928. At
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`TCIC, I have consulted and worked with the telecommunications industry since
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`1989.
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`11.
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`I earned a bachelor’s degree in Business Management (BSBM) in
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`1979 from Stonehill College in Easton, Massachusetts, and I completed
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`coursework towards a Masters of Business Administration (“MBA”) degree at
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`Lehigh University in Bethlehem, Pennsylvania and St. Joseph’s College in
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`Philadelphia, Pennsylvania.
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`12.
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`I completed all the coursework but not a thesis required for the MBA
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`degree.
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`13.
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`Since 1966, I have been involved in designing, building, optimizing
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`and training others in many aspects of telecommunications systems, including
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`multiuser cellular and cable-based systems as well as Private Branch Exchange
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`(“PBX”) and computer networks. In that time, I have had an active role in the
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`growth of the telecommunication industry and have personally witnessed, and
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`contributed to, the industry’s growth in terms of various technologies,
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`infrastructure, and legal, regulatory and technical services.
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`14. My experience spans all layers of Open Systems Interconnection
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`(“OSI”) model, including the physical, data-link (including media access control)
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`and network layers. For example, in my various professional roles, described
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`3
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`below, I have been responsible for implementing telecommunications systems up
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`to the application layer.
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`15.
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`I have written numerous books on telecommunications technology,
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`many of which have been best sellers for publisher McGraw-Hill. My textbook
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`titled “Voice and Data Communications Handbook” led McGraw-Hill’s sales for
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`three consecutive years and has been used by over 166 colleges and universities
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`around the world. Other books that I have written include “Wireless Networked
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`Communications,” “Wireless Broadband Communications,” “cdmaOne and
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`cdma2000,” “General Packet Radio Services (GPRS),” “Principles of Voice and
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`Data,” “Broadband Telecommunications Handbook” and “Optical Networking and
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`Switching.” I am the co-author of a book entitled “Wireless Networks Dictionary”
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`published by Althos Publishing.
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`16.
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`I have personally developed curricula and taught telecommunications
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`classes on-site with many of the world’s leading manufacturers and providers of
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`telecommunications equipment and services. These have included classes titled or
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`on the following topics: “Introduction to Voice Communications,” “Hands on
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`Telephony, “Installing and implementing a PBX solution,” “Hands on Voice over
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`IP,” “Implementing VoIP,” “Securing VoIP,” “IP PBX Solutions,” “Call Center
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`Convergence,” “Introduction to Data Communications ,” “Hands on Data
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`4
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`Communications,” “LAN and WAN communications,” “Introduction to T1 and
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`T3,” “Optical Networking and SONET,” “Data and Internet Communications, a
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`How to Course for implementing solutions,” “Ethernet and Gigabit Ethernet,”
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`“Asynchronous Transfer Mode (ATM),” “Frame Relay a Data Communications
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`design,” “Wireless Communications,” “Hands on Securing Wireless Networks,”
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`“Hands on Integrating Wireless Networks,” “TCP/IP,” “Linking LANs and WANs
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`with Bridging and Routing,” “GPRS,” “GSM (including WAP and MMS),” “Next
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`Generation Wireless,” “Cisco RF Design” and “Cisco Wireless Mesh.” As
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`indicated by these names and titles, I have deep experience teaching others about
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`the implementation of use of telecommunications networks at varying levels of
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`generality and at most layers of OSI protocol stack.
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`17.
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`I have also been personally involved in developing curricula and
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`teaching courses on the certification of products and services with various
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`technical specifications and standards, including Wi-Fi Certifications (CWNA),
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`Wi-Fi Security Certification (CWSP), and CompTIA courses on WiMAX
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`certification (Wi-MAX RF Engineer), RFID Certification (RFID+) and
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`Convergence Technologies Professional (CTP) Certification.
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`18. Through my decades of involvement with the telecommunications
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`industry, I have first-hand knowledge regarding the relationship between service
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`5
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`providers and carriers on one hand, and their equipment vendors, on the other,
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`including on the extent to which providers and carriers dictate and require that
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`equipment be certified to, or otherwise comply with, standards specifications and
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`other technical requirements. I am also familiar with the extent to, and manner in
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`which, providers and carriers evaluate vendor equipment on technical and business
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`grounds, select certain equipment for use in their network, evaluate the
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`equipment’s performance and determine whether to upgrade such equipment or its
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`associated software. I am also familiar with the criteria and methodologies that
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`providers and carriers use to monitor data activities on their network and the extent
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`to which providers and carriers disallow certain types of network activities or
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`traffic patterns.
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`19. From 1966 to 1972, I served as a Captain of the United States Army
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`Signal Corps. In this role, I was immersed in telecommunications technology. I
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`performed communications systems and signal analysis on an almost daily basis
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`and worked in communications system algorithm design, modulation and
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`demodulation techniques and other technical issues often in the context of rapidly
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`changing and unpredictable network deployment scenarios. For example, while in
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`Vietnam, I worked with mobile and fixed location radio-based systems and
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`installed a system that spanned over 400 miles for military tactical forces. I was
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`responsible for the operation and control of the Automatic Voice Network
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`(AUTOVON) system in Donnersberg, Germany, and I had operational
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`responsibility for the Pirmasens, Germany Satellite terminal. At Ft. Devens, I ran
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`the Communications Center, which facilitated telex, Teletype and facsimile
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`services for the military. I also participated in a six-month program on
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`communications systems and RF basics. I worked in and with fixed and mobile
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`Radio relay VHF systems, satellite systems, long haul troposcatter and various
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`two-way communications models. Based on my work on these and other projects, I
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`received significant telecommunications system training while working for the
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`Army.
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`20. From 1972 to 1974, I was a Telecommunications and Facilities
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`Manager for Damon Corporation. My responsibilities included overseeing voice
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`and data (limited analog dial up) communications for locations across the country.
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`The corporate communications budget was approximately $2.5 million annually.
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`21. From 1974 to 1977, I was Manager of Administrative Services for
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`Hills Department Stores in Canton, MA. In this role, my responsibilities included
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`analyzing, selecting, and implementing major communications projects in 50 stores
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`spread throughout the east and mid-west of the United States.
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`7
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`22. From 1977 to 1979, I was Telecommunications Manager for
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`
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`Manufacturing and International Sites for Data General Corporation in Westboro,
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`MA. In this role, I was responsible for selecting equipment (from Bell and
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`competitors) for 100 sites across the world, selecting services (voice, data and fax
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`traffic) from the common carriers and selecting the appropriate means and
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`protocols to use these goods and services. I installed a T1 network from coast to
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`coast. I was also responsible for the installation of 30 PBXs and 40 key telephone
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`systems.
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`23. From 1979 to 1986, I was Telecommunications Manager for Air
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`Products and Chemicals, Inc., with an annual budget of $50 million. In this role, I
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`designed, selected, analyzed, and implemented all communications projects for the
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`use of voice and data communications at the corporation’s 440 sites around the US
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`and 35 international sites. This included the use of telephone systems, dial up
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`telephony and data, leased lines for voice and data and analog and digital circuits
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`(including T1, T3 and fiber optics). I was also responsible for research, selection,
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`and installation of over 250 telephone systems (PBX and Key Systems along with
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`integration systems).
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`24.
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`I also worked on a project to integrate the company’s voice, data, TV-
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`video and local area network (LAN) services into what is now known as a Campus
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`8
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`Area Network (CAN). The CAN was on a broadband cable television (CATV)
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`system and implemented a “triple play” service on campus well before CATV
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`companies started offering such services. In connection with this work, I worked
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`with major cable providers on various Data Over Cable Service Interface
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`Specification (DOCSIS) services. I understand that the CAN system was studied
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`and written up as a Harvard Business School case related to the integration scheme
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`and other business aspects.
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`25. From 1986 to 1989, I was Chief Information Officer (CIO) for the law
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`firm, Pepper, Hamilton and Scheetz, in Philadelphia, PA. In that role, I performed
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`complete automation of the firm’s multiple offices around the country. I was also
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`responsible for the selection and installation of 10 PBX systems, all with major
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`integration services, and the design, final installation and testing of local area
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`networks (LANs). I also created the WAN access and usage through a network of
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`digital circuits using T1 services from many of the common carriers and new
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`competitors in the industry.
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`26. As noted above, I am President and Founder of TCIC, where I have
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`worked since 1989. At TCIC, I have consulted and worked with many of the
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`leaders in the telecommunications industry. I have provided analyses and findings
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`to clients regarding the selection of vendors or products and directly provided
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`9
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`training in various technologies including Voice, Telephone Systems, Data
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`Networks, Video, Internet, Wireless, Wireless LAN Technologies, VoIP systems
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`and services, Fiber Optics and Infrastructure. My company has been responsible
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`for selecting and implementing over 100 PBX systems for client companies.
`
`27. At TCIC, I develop and conduct training for corporate users,
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`manufacturers, and telecommunications carriers. I have personally trained
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`individuals at all of the Regional Bell Operating Companies (“RBOCs”), over 150
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`Competitive Local Exchange Carriers (“CLECs”), LTE carriers, including AT&T,
`
`MCI/WorldCom (now Verizon), Sprint (now T-Mobile), MetroPCS and Cellular
`
`One, and most of the large telecommunications equipment manufacturers (Nortel-
`
`Networks, Lucent (now Nokia), Avaya, Mitel, Siemens, Alcatel (now Nokia),
`
`Newbridge, Marconi and Cisco), the United States government and other Fortune
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`500 companies. I was a badged-contractor for Cisco systems on their Wi-Fi
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`products and the integration of VoIP over wireless technologies.
`
`28.
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`I have authored approximately 20 books, published numerous articles
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`and papers in magazines, and taught courses and seminars in telecommunications
`
`and computers in over a dozen countries globally. I have been a technical editor for
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`IPTV Magazine since 2016. I am a Senior member of the IEEE. I have also been a
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`keynote speaker at conferences, events and meetings, including Comdex, the
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`International Communications Association, BICSI, RBOC and annual meetings for
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`Ameritech and PacBell. I have also been the keynote speaker at Disaster Recovery
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`Journal Annual seminars regarding DR Planning for Telecommunication
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`Networks.
`
`29. Additional information regarding my background, qualifications,
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`publications, and presentations is included as part of my curriculum vitae (“CV”),
`
`which is included in EX2011. See also EX2002.
`
`30.
`
`I have served as an expert witness in several IPR proceedings, district
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`court patent infringement cases, and International Trade Commission (“ITC”)
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`investigations in the field of telecommunications, as shown in my CV.
`
`31. Based on my experiences described above, and as indicated in my
`
`CV, I am qualified to provide the following opinions regarding the ’772 Patent.
`
`III. MATERIALS CONSIDERED
`I have considered information from various sources in forming my
`32.
`
`opinions herein, including:
`
`• the ’772 Patent and its prosecution history;
`
`• Petitioner’s Petition (Paper 1), as well as the references cited therein;
`
`• the declaration of Dr. Daniel J. Blumenthal, submitted by Petitioner as
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`Exhibit 1002; and
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`11
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`• Patent Owner’s Preliminary Response (Paper 5), as well as the
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`exhibits cited therein;
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`• The Board’s Decision Granting Institution of Inter Partes Review
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`dated September 7, 2023 (Paper 8);
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`• The Board’s Decision Denying Patent Owner’s Request for Rehearing
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`dated October 25, 2023 (Paper 12); and
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`• all documents and other materials cited to herein.
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`33.
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`I have reviewed Patent Owner’s Response, to which this Declaration
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`is being submitted as EX2010, and I agree with both its analysis and conclusions. I
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`have also reviewed and considered each of the exhibits to the Response in forming
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`my opinions.
`
`IV. MY UNDERSTANDING OF CERTAIN LEGAL STANDARDS
`I am not a legal expert and offer no opinions on the law. However, I
`34.
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`have been informed by counsel of the various legal standards that apply, some of
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`which I have set forth my understanding below, and I have applied these standards
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`in arriving at my conclusions.
`
`35.
`
`I understand that for a claim to be found unpatentable in this
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`proceeding, Petitioner must prove that the claim is unpatentable by a
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`
`
`12
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 16 of 113
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`
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`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
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`preponderance of the evidence. Put another way, Petitioner must show the claim is
`
`more likely than not anticipated or obvious in light of prior art.
`
`a. Ordinary Skill in the Art
`36. My opinions in this Declaration are based on an understanding of a
`
`person of ordinary skill in the art, which I understand is sometimes referred to by
`
`the acronym “POSITA,” as of the time of the invention.
`
`37.
`
`I understand that claims, including the Challenged Claims, are
`
`generally interpreted according to their ordinary and customary meaning taking
`
`into consideration the so-called “intrinsic evidence” of the patent consisting of (1)
`
`the claim language; (2) the specification and drawings; and (3) the prosecution
`
`history. I understand that the Board has discretion to take into consideration so-
`
`called “extrinsic evidence” including references (prior art and non-prior art) as well
`
`as definitions from dictionaries and treatises.
`
`38.
`
`I understand that claim terms may be explicitly defined in the patent
`
`specification or they may be implicitly defined through consistent usage in the
`
`specification. I also understand that the scope of claim terms may be limited by
`
`statements in the specification or prosecution history where the application clearly
`
`disavows or disclaims subject matter in a clear and unmistakable manner.
`
`13
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 17 of 113
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`
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`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
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`39.
`
`I understand that for purposes of this IPR, the standards for claim
`
`
`
`construction are the same as the standards used in the federal district courts.
`
`b. Anticipation (35 U.S.C. § 102)
`I understand that a claim is unpatentable as anticipated if all
`40.
`
`limitations of that claim are (1) present in a single prior art device, system, or
`
`method or (2) described in a single prior art reference.
`
`41. To anticipate the claim, the prior art does not have to use the same
`
`words as the claim, but all of the limitations of the claim must have been present or
`
`described, either expressly or inherently, as arranged in the claim.
`
`42.
`
`I understand that for prior art to inherently have or disclose a
`
`limitation of the claim, the prior art must necessarily include the claim limitation
`
`that is not expressly present or disclosed. I understand that inherency may not be
`
`established by probabilities or possibilities.
`
`43.
`
`I understand that to prove anticipation, it is not enough that a prior art
`
`reference discloses distinct teachings that a POSITA might somehow combine to
`
`achieve the claimed invention. I understand that when the prior art reference
`
`purportedly discloses elements in different locations in the reference, anticipation
`
`can be established if the reference is sufficiently clear in disclosing the
`
`
`
`14
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 18 of 113
`
`
`
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`combinability of those elements such that a POSITA would “at once envisage” the
`
`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
`
`claimed combination.
`
`44.
`
`I understand that where a claim lists limitations separately, the clear
`
`implication of the claim language is that those limitations are distinct components
`
`of the claimed invention. I also understand that a single element in the prior art
`
`cannot serve as two different claim limitations.
`
`c. Obviousness (35 U.S.C. § 103)
`I understand that a claim is unpatentable as obvious if the claimed
`45.
`
`subject matter as a whole would have been obvious to a POSITA at the time the
`
`invention was made in light of the teachings of a single prior art device, system,
`
`method, or reference, or in light of a combination of prior art.
`
`46.
`
`I understand that obviousness is a question of law based on underlying
`
`factual issues including the level of ordinary skill in the art at the time of the
`
`patent’s alleged invention, the scope and content of the prior art, any differences
`
`between the prior art and the claimed invention, and any objective indicia of non-
`
`obviousness (if available), also known as “secondary considerations.”
`
`47.
`
`I understand that the scope and content of prior art for deciding
`
`whether the invention was obvious includes at least prior art in the same field as
`
`the claimed invention. The prior art can also come from different fields that a
`
`
`
`15
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 19 of 113
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`
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`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
`
`POSITA would have considered when trying to solve the problem that is addressed
`
`by the invention.
`
`48.
`
`I understand that the existence of each and every limitation of the
`
`claimed invention in the prior art does not necessarily prove obviousness. Most, if
`
`not all, inventions rely on building blocks of prior art. But, in considering whether
`
`a claimed invention is obvious, I understand that one may find obviousness if, at
`
`the time of the patent’s alleged invention, there was a reason that would have
`
`prompted a POSITA to combine the known elements in a way the claimed
`
`invention does, taking into account such factors as (1) whether the claimed
`
`invention was merely the predictable result of using prior art elements according to
`
`their known function(s); (2) whether the claimed invention provides an obvious
`
`solution to a known problem in the relevant field; (3) whether the prior art teaches
`
`or suggests the desirability of combining elements claimed in the invention; (4)
`
`whether the prior art teaches away from combining elements in the claimed
`
`invention; (5) whether it would have been obvious to try the combinations of
`
`elements, such as when there is a design need or market pressure to solve a
`
`problem and there are a finite number of identified, predictable solutions; and (6)
`
`whether the change resulted more from design incentives or other market forces.
`
`16
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 20 of 113
`
`
`
`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
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`49.
`
`I understand that in order for a claim to be rendered obvious by a
`
`
`
`combination or modification of prior art, it must be shown that a POSITA would
`
`have had a motivation to combine or modify the prior art with a reasonable
`
`expectation of success that the combination of prior art would result in the claimed
`
`invention.
`
`50.
`
`I understand that inherency may be used in an obviousness analysis. I
`
`understand that for prior art to inherently disclose a limitation of the claim, the
`
`prior art must necessarily include the claim limitation that is not expressly present
`
`or disclosed. I understand that inherency may not be established by probabilities
`
`or possibilities.
`
`51.
`
`In assessing obviousness, I have been instructed to consider both the
`
`ordinary creativity and common sense of a POSITA. However, I also understand
`
`that it is impermissible to find obviousness based on hindsight reasoning, i.e.,
`
`combining prior art using the claimed invention as a template, without establishing
`
`that, as of the date of the invention, there exists a motivation to combine or
`
`apparent reason to combine and/or modify the prior art.
`
`52.
`
`I understand secondary considerations include commercial success of
`
`a product due to the merits of the claimed invention, unexpected results from the
`
`claimed invention, a long-felt need that the claimed invention satisfies, failure of
`
`
`
`17
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v. Koninklijke KPN NV PTAB-IPR2023-00581
`Page 21 of 113
`
`
`
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`others to achieve the claimed invention, skepticism for the claimed invention, and
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`Case IPR2023-00581
`Patent 8,886,772
`Declaration of Regis J. “Bud” Bates Jr.
`
`copying of the claimed invention.
`
`d. Level of ordinary skill in the art
`53. With respect to the ’772 patent, a person of ordinary skill in the art at
`
`the time of the invention (which I take to be July 2008) would have at least a
`
`bachelor’s degree in electrical engineering, computer science, or a related field, as
`
`well as at least 2-3 years of experience with computer networks. A person with
`
`less formal education, but more practical experience, may also be of “ordinary skill
`
`in the art.”
`
`54.
`
`In this case, Dr. Blumenthal has asserted in his declaration that a
`
`POSITA at “the claimed priority date of the ’772 patent would have had a . . . B.S.
`
`in Electrical Engineering or a related field with at least five years of experience in
`
`designing communications systems” and “[m]ore education can supplement
`
`practical experience and vice versa.” EX1002, ¶36. Dr. Blumenthal treated “late
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`2008” as “the relevant time frame” for a POSITA. Id. ¶39.
`
`55.
`
`In its Decision to Institute Review, the Board adopted Dr.
`
`Blumenthal’s definition of a POSITA. Paper 8 (“Inst. Decision”), at 16.
`
`56.
`
`I was at the time of invention, and am, one of more than ordinary skill
`
`in the art through my background and experience, regardless of whether my
`
`
`
`18
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`Koninklijke KPN NV - Exhibit 2010
`Ericsson Inc. v
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