UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________________
`
`COMMSCOPE TECHNOLOGIES LLC.
`Petitioner
`
`v.
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`DALI WIRELESS, INC.
`Patent Owner
`
`_____________________________
`
`Case IPR__________
`U.S. Patent No. 10,750,382
`Issued: August 18, 2020
`Filed: October 23, 2019
`______________________________
`
`DECLARATION OF DR. ANTHONY ACAMPORA
`
`In Support of Inter Partes Review of U.S. Patent No. 10,750,382
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`In Support of Inter Partes Review
`of U.S. Patent No. 10,045,358
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`Table of Contents
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`INTRODUCTION ........................................................................................... 1
`I.
`SUMMARY OF OPINIONS ........................................................................... 2
`II.
`III. QUALIFICATIONS ........................................................................................ 2
`IV. MATERIALS CONSIDERED ........................................................................ 8
`V.
`RELEVANT LEGAL PRINCIPLES ............................................................11
`A. Effective Filing Date ...............................................................................11
`B. Person of Ordinary Skill in the Art .........................................................11
`C. Claim Construction Standard ..................................................................12
`D. Construing Terms of ‘382 Patent ............................................................13
`E. Anticipation and Obviousness Law ........................................................14
`1. Anticipation ....................................................................................14
`2. Obviousness ...................................................................................14
`VI. The ‘382 Patent ..............................................................................................18
`A. Overview .................................................................................................18
`B. Claims ......................................................................................................26
`C. The ‘382 Prosecution History .................................................................28
`D. Prior IPR proceedings on the ‘454 patent ...............................................33
`VII. Summary of the Asserted Prior Art ...............................................................36
`A. Stapleton U.S. Patent App. Pub. No. 2012/00339254 ............................36
`B. Kummetz-464 ..........................................................................................37
`1. Kummetz-464 is prior art ...............................................................37
`2. Overview of Kummetz-464 ...........................................................81
`C. Wu: U.S. Patent Application Pub. No. 2010/0128676 ..........................94
`D. Prior art topologies commonly used to connect remote antenna units in a
`DAS .......................................................................................................100
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`VIII. GROUNDS ..................................................................................................103
`A. Ground 1: Stapleton anticipates all claims ...........................................103
`1.
`Independent Claim 1 ....................................................................103
`2.
`Independent Claim 10 ..................................................................172
`3. Dependent Claim 2 ......................................................................181
`4. Dependent Claim 3 ......................................................................184
`5. Dependent Claim 4 ......................................................................188
`6. Dependent Claim 5 ......................................................................189
`7. Dependent Claim 6 ......................................................................190
`8. Dependent Claim 7 ......................................................................193
`9. Dependent Claim 8 ......................................................................199
`10. Dependent Claim 9 ......................................................................201
`11. Dependent Claim 11 ....................................................................202
`12. Dependent Claim 12 ....................................................................206
`13. Dependent Claim 13 ....................................................................212
`14. Dependent Claim 14 ....................................................................213
`15. Dependent Claim 15 ....................................................................214
`16. Dependent Claim 16 ....................................................................216
`17. Dependent Claim 17 ....................................................................218
`18. Dependent Claim 18 ....................................................................219
`19. Dependent Claim 19 ....................................................................223
`B. Ground 2: Stapleton alone or in combination with Kummetz-464 renders
`all claims (1-19) obvious .......................................................................225
`1.
`Independent Claims 1 and 10 .......................................................225
`2. Dependent Claim 3 ......................................................................244
`3. Dependent Claim 17 ....................................................................256
`C. Ground 3: Kummetz-464 anticipates claims 1-2, 4-6, 8-17 and 19 (all
`claims except dependent claims 3, 7 and 18) ........................................264
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`1. Claim 1 .........................................................................................264
`2. Claim 2 .........................................................................................295
`3. Claim 4 .........................................................................................298
`4. Claim 5 .........................................................................................298
`5. Claim 6 .........................................................................................299
`6. Claim 8 .........................................................................................299
`7. Claim 9 .........................................................................................300
`8. Claim 10 .......................................................................................302
`9. Claim 11 .......................................................................................304
`10. Claim 12 .......................................................................................305
`11. Claim 13 .......................................................................................306
`12. Claim 14 .......................................................................................308
`13. Claim 15 .......................................................................................308
`14. Claim 16 .......................................................................................309
`15. Claim 17 .......................................................................................311
`16. Claim 19 .......................................................................................312
`D. Ground 4: Kummetz-464 alone or in view of Wu renders claims 1-19
`obvious. .................................................................................................312
`1.
`Independent claims 1 and 10........................................................312
`2. Claim 3 .........................................................................................317
`3. Claim 7 .........................................................................................323
`4. Claim 9 .........................................................................................327
`5. Claim 18 .......................................................................................331
`6. Claims 2, 4-6, 8, 11-17 and 19. ....................................................332
`E. Ground 5: Kummetz-464 in combination with Kummetz-579 renders
`claim 7 obvious .....................................................................................333
`APPENDIX - LISTING OF CHALLENGED CLAIMS.......................................338
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`I.
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`INTRODUCTION
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`In Support of Inter Partes Review
`of U.S. Patent No. 9,197,358
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`1.
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`I have been retained by Petitioner, CommScope Technologies LLC,
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`(“CommScope” or “Petitioner”) to provide expert opinions in connection with a
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`petition for inter partes review before the United States Patent and Trademark
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`Office. I understand that this declaration involves my expert opinions and expert
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`knowledge related to U.S. Patent No. 10,750,382 (“the ‘382 Patent”), titled
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`“Optimization of Traffic Load in a Distributed Antenna System,” and its field of
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`endeavor.
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`2.
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`I have been asked to provide my independent technical review,
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`analysis, insights, and opinions regarding the ‘382 Patent and the references that
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`form the basis for the grounds of unpatentability set forth in the Petition for Inter
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`Partes Review of the ‘382 Patent. The statements made herein are based on my
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`own knowledge and opinions.
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`1
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`II.
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`SUMMARY OF OPINIONS
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`In Support of Inter Partes Review
`of U.S. Patent No. 10,045,358
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`3.
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`To summarize the opinions stated herein, it is my opinion that the
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`claims of the ‘382 patent are invalid based on the following grounds:
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`Grounds
`Ground 1: Stapleton (EX. 1006) anticipates:
`Ground 2: Stapleton alone or in combination with
`Kummetz-464 (EX1005) renders obvious:
`Ground 3: Kummetz-464 anticipates:
`Ground 4: Kummetz-464 alone or in combination
`with Wu (EX1007) renders obvious:
`Ground 5: Kummetz-464 in combination with
`Kummetz-579 (EX1008) renders obvious:
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`claims 1-19
`1-19
`1-19
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`1-2, 4-6, 8-17 and 19
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`1-19
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`7
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`III. QUALIFICATIONS
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`4.
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`I received my Bachelor of Science, Master of Science, and Doctor of
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`Philosophy degrees, all in Electrical Engineering, from the Polytechnic Institute of
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`Brooklyn in 1968, 1970, and 1973, respectively. Both my Master’s thesis and my
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`Ph.D. dissertation involved theoretical aspects of electromagnetic wave
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`propagation in plasma and gaseous media. From June 1968 through September
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`1988, I was employed at AT&T Bell Laboratories in various engineering, research,
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`and managerial positions, all in the general area of telecommunications.
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`5. My initial work at Bell Laboratories (1968-1974) involved high power
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`radar design and development, and signal design and processing for extraction of
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`pertinent information from radar target returns, both focused on anti-ballistic
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`missile defense applications. A modern radar system operates by transmitting
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`carefully designed radio signals toward a target, and processing the reflected radio
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`signals arriving back at the radar, to determine target location, velocity, and key
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`features. For ballistic missile defense applications, it is also important to
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`distinguish real warheads from decoys.
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`6. My next assignment at Bell Laboratories (1974-1981) was in the
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`Radio Research Laboratory, an organization responsible for basic research, where I
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`was involved in new discovery and proposals involving novel approaches for
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`communication satellite systems. Communication satellites are radio systems,
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`often world-wide in scope, intended to enable wireless communications among
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`terrestrial users from a platform of one or more Earth-orbiting satellites. My
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`contributions to the communication satellite state-of-the-art included (1) strategies
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`to efficiently encode and recover digital information sent to and from the satellites
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`via high capacity radio beams; (2) novel systems and on-board satellite switching
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`approaches that use multiple radio beams (so-called spot beams), each focused on a
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`small portion of Earth, to vastly increase the capacity of a communication satellite
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`by enabling the radio spectrum to be re-used among the spot beams; (3) strategies
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`to acquire and maintain synchronization of radio signals sent to and from a
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`satellite; and (4) a novel approach to overcome the effects of rain-induced
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`attenuation of the radio beams that dynamically assigns available radio resources to
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`those spots on Earth where rain attenuation is instantaneously most severe.
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`7.
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`I was promoted to Supervisor of the Data Theory Group at Bell
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`Laboratories in 1981, with responsibility for exploratory development of local area
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`data networks. These are packet-switching networks intended to enable very high
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`speed computer, voice, and video communications via on-demand capture of a
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`shared transmission channel. Several new approaches were suggested and studied.
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`8.
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`In 1984, I was promoted to Head of the Network Systems Research
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`Department (one of several departments within the Radio Research Laboratory,
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`later to become the Communications Systems Research Laboratory, at Bell
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`Laboratories) with responsibility for new architectures for packet switching and
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`multiwavelength optical networks, wireless networks for broadband local access,
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`and integrated voice/data wireless networks. Contributions included (1) a system
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`architecture for using a raster of focused radio beams to deliver broadband service
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`to a large number of buildings from a central location within a city; (2) a novel
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`packet switching architecture for Internet-like wide area packet networks; and (3) a
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`wide area multimedia networking strategy to enable access to the enormous
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`information-bearing capacity potential of optical fiber cabling.
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`9.
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`I was promoted to Director of the Transmission Technology
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`Laboratory in 1987, a group of approximately 80 people with broad charter for
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`exploratory development of (1) transmission and switching systems for next-
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`generation Internet-like packet-based networks and (2) applications for digital
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`signal processing in telecommunications.
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`10.
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`I left AT&T Bell Laboratories in September 1988 to become
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`Professor of Electrical Engineering and Director of the Center for
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`Telecommunications Research at Columbia University. Here, my responsibilities
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`were three-fold: (1) education of students in the field of telecommunications, (2)
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`pursuit of a program of independent research in the area of telecommunications,
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`and (3) management of a National Science Foundation Engineering Research
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`Center devoted to many aspects of telecommunications and founded for the
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`express purpose of improving American economic competitiveness through
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`research, education, and transfer of relevant technical findings from academia to
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`the telecommunications industry. Research programs at the Center for
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`Telecommunications Research were focused on multiwavelength fiber optical
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`networks, wireless communications, image and video communications, network
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`management and control, and underlying photonic and electronic devices and
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`materials. Contributions included (1) laboratory implementation and feasibility
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`demonstration of the world’s first multiwavelength packet switched optical
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`network; (2) new approaches for randomly accessing a shared radio channel; (3)
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`strategies for enabling rapid handoff among radio cells in a high capacity cellular
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`network; (4) a rigorous understanding of multiwavelength optical network
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`capabilities and limitations; and (5) algorithms for the efficient resource
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`management and control of packet based multimedia networks.
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`11.
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`In August 1995, I left Columbia University to become Professor of
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`Electrical and Computer Engineering and Director of the Center for Wireless
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`Communications at the University of California, San Diego (UCSD). Again, my
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`responsibilities were threefold: (1) education of students in the field of wireless
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`communications, (2) pursuit of a program of independent research in the area of
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`wireless communications, and (3) management of an industrially funded research
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`center devoted exclusively to wireless communications. Contributions included (1)
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`strategies for allowing the use of so-called “smart” antennas in cellular-based
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`packet radio networks; (2) a proposal for a new city-wide network based on a
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`wireless mesh-based approach using either focused wireless beams of light or
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`focused radio beams, intended to deliver broadband services to buildings and/or to
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`connect wireless radio cells with the world-wide fiber-optic backbone network;
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`and (3) mobility management strategies for high speed packet-based wireless
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`networks. The second of these contributions has served as the technical foundation
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`for at least two new venture-backed telecommunications equipment companies,
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`one of which I co-founded.
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`12.
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`In December 1999, I resigned as Director of the Center for Wireless
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`Communications to pursue full-time research and education as a Professor of
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`Electrical and Computer Engineering at UCSD, and on January 1, 2008, I became
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`Professor of Electrical and Computer Engineering, Emeritus, Recalled to Research,
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`maintaining an active research program.
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`13. At UCSD, I have taught courses on (1) probability, (2) random
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`processes, and (3) wireless networks. My current research is focused on (1)
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`broadband wireless networks for local access to homes, schools, and businesses;
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`(2) wireless spaces to enable ubiquitous voice, data, and video wireless
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`communications within buildings, and (3) so-called ad-hoc (self-organizing)
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`networks of wireless sensor nodes for business and homeland security applications.
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`14. Over the course of my career, I have published (individually or with
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`collaborators) over 170 original papers in scholarly journals and professional
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`conference proceedings, and I am the named inventor or co-inventor on 40 U.S.
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`patents.
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`15.
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`I wrote one of the world’s first textbooks devoted to broadband
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`telecommunications, entitled An Introduction to Broadband Networks. I have
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`lectured extensively on telecommunications in general and wireless
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`communications in particular, and I have regularly attended, and continue to
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`attend, numerous world-wide professional conferences. I have chaired several
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`major telecommunications conferences, and I have chaired numerous professional
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`conference technical sessions. I read the technical literature extensively, and
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`subscribe to several leading journals in the field of telecommunications in general
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`and wireless communications in particular. Over the years, I have delivered many
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`3 to 5 day intensive short courses on telecommunications and wireless
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`communications to professional audiences of practicing engineers and others. In
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`1988, I was elected to the grade of Fellow of the Institute of Electrical and
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`Electronics Engineers, cited for contributions to high capacity digital satellite
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`systems and broadband local communication networks.
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`16.
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`I am being compensated for my time at the rate of $725 per hour for
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`time spent on this matter. I have no interest in the outcome of this proceeding.
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`IV. MATERIALS CONSIDERED
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`17. My technical review, analysis, insights, and opinions are based on my
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`experience and other qualifications discussed above, as well as my study of
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`relevant materials.
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`18.
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`I have reviewed and am familiar with the ‘382 patent specification,
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`claims, and prosecution history.
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`19.
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`I have also reviewed and am familiar with each exhibit cited herein. I
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`confirm that to the best of my knowledge the accompanying exhibits are true and
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`accurate copies of what they purport to be, and that an expert in the field would
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`reasonably rely on them to formulate opinions such as those set forth in this
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`declaration.
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`Exhibit No. Exhibit Description
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`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`U.S. Patent No. 10,750,382
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`Prosecution History of U.S. Patent No. 9,197,382
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`[Present] Declaration of Dr. Anthony Acampora
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`Curriculum Vitae of Dr. Anthony Acampora
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`U.S. Patent No. 9,398,464 (“Kummetz-464”)
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`U.S. Publication No. 2012/0039254A1 (Stapleton)
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`U.S. Patent Application Publication No. 2010/0128676 A1 to Wu et al.
`(“Wu”)
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`U.S. Publication No. 2011/0281579 (“Kummetz-579”)
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`Common Public Radio Interface (CPRI); Interface Specification V4.0
`(2008-06-30)
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`U.S. Publication No. 2012/0057572 (“Evans”)
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`Provisional Application No. 61/506,363 (related to Kummetz-464
`patent)
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`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`In Support of Inter Partes Review
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`U.S. Patent No. 9,735,999 (“Kummetz-999”)
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`Requirements for Open Radio equipment Interface (ORI)
`(Release 1), ETSI GS ORI 001 V1.1.1 (2011-10)
`PTAB-IPR2021-00408-7 (paper 7, Institution Decision in IPR on
`Patent Owner’s ‘454 patent, the parent to the ‘382 patent)
`PTAB-IPR2021-00408-30 (paper 30, Final Written Decision in IPR on
`Patent Owner’s ‘454 patent, the parent to the ‘382 patent)
`PTAB-IPR2018-00571-53 (paper 53, Final Written Decision in IPR on
`Patent Owner’s ‘473 patent)
`U.S. Provisional Application Ser. No. 61/382,836, entitled ‘Remotely
`Reconfigurable Distributed Antenna System and Methods,’ filed Sep.
`14, 2010, (incorporated by prior art Stapleton of EX1006)
`U.S. Patent Application Publication No. 2009/0180426 A1 (“Sabat”).
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`U.S. Patent U.S. Patent No. 9,531,473 (“the ‘473 patent”)
`Exhibit C (Claim Chart for ’454 Patent) to Dali Wireless, Inc.’s
`Disclosure of Asserted Claims and Infringement Contentions in
`Dali Wireless, Inc. v. Corning Optical Communications LLC, No.
`3:20-cv-06469-EMC (N.D. Cal.)
`U.S. Provisional Application Ser. No. 61/374593, entitled ‘Remotely
`Reconfigurable Distributed Antenna System and Methods,’ filed Sep.
`14, 2010, (incorporated by prior art Stapleton of EX1006)
`U.S. Patent No. 10,506,454 (parent to ‘382 patent at issue in this IPR)
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`Network Design Basics for Cabling Professionals, BICSI, McGraw-
`Hill (2002)(excerpts).
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`V. RELEVANT LEGAL PRINCIPLES
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`In Support of Inter Partes Review
`of U.S. Patent No. 10,045,358
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`A.
`20.
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`Effective Filing Date
` I understand that claims of a patent have an “effective filing date”
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`and that obviousness is considered based on the prior art as of that date.
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`21. The utility application for the ‘382 patent (application No. 16 /
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`661,368) was filed on October 23, 2019 (“Utility Application”). The Utility
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`Application claims priority to a Provisional Application No. 61/678,016 filed on
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`July 31, 2012.
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`22. For the purpose of this proceeding, I have been asked to use July 31,
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`2012 as the effective filing date for challenged claims 1-19.
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`B.
`23.
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`Person of Ordinary Skill in the Art
`I have been informed that a person of ordinary skill in the art
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`(“POSA”) is a person who is presumed to have complete knowledge of the relevant
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`prior art and who would think along the lines of conventional wisdom in that art.
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`The person of ordinary skill in the art has ordinary creativity and does not have
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`extraordinary skill, e.g., is not an expert. I have been informed that factors to
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`consider in determining the level of ordinary skill in the art include the educational
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`level of workers in the field, the types of problems addressed in the art, prior-art
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`solutions to such problems, how quickly innovations are made, and the complexity
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`of the technology.
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`24. The ‘382 patent relates to wireless communication systems. Generally
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`speaking, the ‘382 patent is directed to wireless communication systems employing
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`distributed antenna systems. See EX-1001 (‘382 Patent). In wireless communications,
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`a distributed antenna system is used by a wireless service provider to distribute
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`communication signals to or from mobile devices such as cell phones into coverage
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`areas that are difficult to reach using conventional base station antennas. For example,
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`conventional base stations often have difficulty sending wireless signals into
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`buildings. In view of the factors mentioned above and the discussion of the technical
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`background herein, it is my opinion that a person of ordinary skill in the art of the
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`‘382 patent would have a Bachelor’s Degree in Electrical Engineering or equivalent
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`field of study, with 2-3 years of work experience in the field of wireless
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`communications.
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`25. Throughout my declaration, even if I discuss my analysis in the
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`present tense, I am always making my determinations based on what a POSA
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`would have known at the time of the invention.
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`C. Claim Construction Standard
` I have been instructed by counsel on the law regarding claim
`26.
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`construction and patent claims, and understand that a patent may include two types
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`of claims—independent claims and dependent claims. An independent claim
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`stands alone and includes only the features it recites. A dependent claim can
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`In Support of Inter Partes Review
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`depend from an independent claim or another dependent claim. I understand that a
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`dependent claim includes all the features that it recites in addition to all of the
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`features recited in the claim from which it depends.
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`27.
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` In an inter partes review proceeding such as this, I understand the
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`claim of a patent shall be construed using the same claim construction standard that
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`would be used to construe the claim in a civil action. I understand this includes
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`construing the claim in accordance with the ordinary and customary meaning of
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`such claim as understood by one of ordinary skill in the art and the prosecution
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`history pertaining to the patent. For completeness, I understand this standard is
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`different from the prior “broadest reasonable interpretation” standard that was used
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`in certain earlier inter partes review proceedings.
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`28.
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`I understand an appropriate dictionary definition may provide
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`evidence explaining the ordinary and customary meaning as would be understood
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`by a person of ordinary skill in the art.
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`29.
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`I understand that if there are specific statements in the specification
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`that define the invention with respect to a term, those statements are strong
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`evidence of a definition for the term.
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`D. Construing Terms of ‘382 Patent
`In view of the prior art applied in my analysis, I do not expect the
`30.
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`meaning of any of the claim terms will be in dispute in this proceeding.
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`In Support of Inter Partes Review
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`E. Anticipation and Obviousness Law
` In this declaration I have been instructed by counsel on the law
`31.
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`regarding anticipation and obviousness. I understand that a claim is invalid if it is
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`anticipated or obvious. My opinions here relate to both anticipation and
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`obviousness as detailed below.
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`Anticipation
`1.
` I understand that anticipation of a claim requires that every element
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`32.
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`of a claim is expressly or inherently disclosed in a single prior art reference. I
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`understand that an anticipating reference need not use the exact terms of the
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`claims, but must describe the patented subject matter with sufficient clarity and
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`detail to establish that the claimed subject matter existed in the prior art and that
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`such existence would be recognized by persons of ordinary skill in the field of the
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`purported invention. I also understand that an anticipating reference must enable
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`one of ordinary skill in the art to reduce the purported invention to practice without
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`undue experimentation.
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`Obviousness
`2.
`I understand that a patent claim is also invalid if the claims would
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`33.
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`have been obvious to a POSA at the time of the invention. I understand that the
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`obviousness inquiry should not be done in hindsight but rather from the
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`perspective of a POSA as of the time of the invention.
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`34.
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`I understand that to obtain a patent, the claims must have been, as of
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`the time of the invention, nonobvious in view of the prior art. I understand that an
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`obviousness analysis involves comparing a claim to the prior art to determine
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`whether the claimed invention would have been obvious to a POSA at the time of
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`the invention in view of the prior art and in light of the general knowledge in the
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`art as a whole. I also understand that obviousness is ultimately a legal conclusion
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`based on underlying facts of four general types, all of which must be considered:
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`(1) the scope and content of the prior art;
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`(2) the level of ordinary skill in the art;
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`(3) the differences between the claimed invention and the prior art;
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`and
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`(4) any objective indicia of nonobviousness.
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`35.
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`I understand that a claim is obvious when the differences between the
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`subject matter sought to be patented and the prior art are such that the subject
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`matter as a whole would have been obvious to a POSA at the time of the invention.
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`36.
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`I understand that certain objective indicia can be important evidence
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`regarding whether a patent is obvious. Such indicia include: industry acceptance;
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`commercial success of products covered by the patent claims; long-felt need for
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`the invention; failed attempts by others to make the invention; copying of the
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`invention by others in the field; unexpected results achieved by the invention as
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`compared to the closest prior art; praise of the invention by the infringer or others
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`in the field; taking of licenses under the patent by others; expressions of surprise
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`by experts and those skilled in the art at making the invention; and the patentee
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`proceeded contrary to the accepted wisdom of the prior art. I understand that such
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`evidence must have a nexus, or causal relationship to the elements of the claim. I
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`am unaware of any such objective considerations having a nexus to the claims at
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`issue in this proceeding.
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`37.
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`I understand that obviousness can be established by combining
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`multiple prior art references to meet each and every claim element, or by
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`modifying a single prior art reference.
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`38.
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`I understand that a showing of obviousness requires that, as of the
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`patent’s effective filing date, (1) a POSA would have been motivated to combine
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`prior art references to arrive at the claimed subject matter and (2) there would have
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`been a reasonable expectation of success in achieving the claimed invention from
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`such combination.
`
`39.
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`I also understand that to support a combination of multiple prior art
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`references or a modification of a single reference, there must be a rationale
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`explaining why a skilled artisan would combine or modify the references in the
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`manner claimed and how the proposed combination or modification meets each
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`and every claim element. But I also understand that a proposed combination or
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`modification of references can be susceptible to hindsight bias. When it appears
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`hindsight bias is being used, I understand the modification or combination is not
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`considered obvious.
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`40.
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`I understand that exemplary rationales that may support a conclusion
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`of obviousness include: combining or modifying prior art elements according to
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`known methods to yield predictable results; simple substitutions of one known
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`element for another to obtain predictable results; using a known technique to
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`improve similar dev