UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`APPLE INC.
`Petitioner
`
`v.
`
`ZENTIAN LIMITED,
`Patent Owner
`_________________
`
`Inter Partes Review Case No. IPR2023-00035
`U.S. Patent No. 10,062,377
`
`DECLARATION OF CHRISTOPHER SCHMANDT
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 10,062,377
`
`Amazon / Zentian Limited
`Exhibit 1003
`Page 1
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`
`TABLE OF CONTENTS
`
`I.
`
`IV.
`V.
`
`INTRODUCTION AND QUALIFICATIONS ............................................. 9
`A.
`Educational Background and Professional Experience .................. 9
`II. METHODOLOGY; MATERIALS CONSIDERED ................................... 12
`III. OVERVIEW AND LEGAL STANDARDS ................................................. 15
`A.
`Person of Ordinary Skill in the Art ................................................ 15
`B.
`Obviousness ...................................................................................... 16
`C.
`Analogous Art ................................................................................... 21
`D.
`Claim Construction .......................................................................... 22
`LEVEL OF A PERSON OF ORDINARY SKILL ...................................... 22
`OVERVIEW OF THE TECHNOLOGY ..................................................... 24
`A.
`Speech Recognition .......................................................................... 24
`B.
`Feature Vectors ................................................................................ 32
`C.
`Acoustic Models ................................................................................ 41
`D.
`Hidden Markov Models ................................................................... 42
`E.
`Distance Calculations ....................................................................... 51
`F.
`Gaussian Distribution and Probability .......................................... 54
`G.
`Speech Recognition System Hardware ........................................... 57
`H.
`Pipelining .......................................................................................... 65
`I.
`Interrupts .......................................................................................... 69
`J.
`Prior Art Speech Recognition Systems .......................................... 71
`VI. OVERVIEW OF THE ’377 PATENT ........................................................ 72
`VII. THE PROSECUTION HISTORY OF THE ’377 PATENT ...................... 73
`A.
`Prosecution History of the ’377 Patent ........................................... 73
`VIII. SUMMARY OF UNPATENTABILITY ..................................................... 74
`IX. OVERVIEW OF THE PRIOR ART ........................................................... 75
`A.
`Overview of Jiang ............................................................................. 75
`B.
`Overview of Smyth ........................................................................... 76
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`X.
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`B.
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`C.
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`Overview of Nguyen ......................................................................... 77
`C.
`Overview of Boike ............................................................................ 78
`D.
`Overview of Baumgartner ............................................................... 78
`E.
`OPINIONS REGARDING GROUND 1: CLAIM 1 IS OBVIOUS
`OVER JIANG IN VIEW OF SMYTH ........................................................ 79
`A.
`Claim 1(a): “a first programmable device programmed to
`calculate a feature vector from a digital audio stream,” .............. 79
`1.
`Jiang Alone Teaches Claim 1(a) .............................................. 79
`2.
`Jiang in Combination with Smyth Teaches Claim 1(a) ........... 86
`3.
`Motivation to Modify Jiang to Include Smyth’s First
`Programmable Device .............................................................. 90
`Claim 1(b): “wherein the feature vector comprises a
`plurality of extracted and/or derived quantities from said
`digital audio stream during a defined audio time frame;” ........... 91
`’377 Patent’s Discussion of “extracted” or “derived
`1.
`quantities” ................................................................................ 91
`Jiang’s Teachings ..................................................................... 92
`2.
`Claim 1(c): “a second programmable device programmed to
`calculate distances indicating the similarity between a
`feature vector and a plurality of acoustic states of an
`acoustic model” ................................................................................. 95
`1.
`Overview of Jiang’s Teachings Regarding Utilizing
`HMMs and Prefix Trees for Speech Recognition as
`Applicable to Claims 1(c)-1(h) ................................................ 95
`’377 Patent’s Discussion of “distance” .................................. 101
`’377 Patent’s Teachings of “a plurality of acoustic states
`of an acoustic model” ............................................................. 103
`Jiang’s Teachings ................................................................... 103
`Smyth’s Teachings ................................................................. 113
`Motivation to Modify Jiang to Include Smyth’s Second
`Programmable Device ............................................................ 133
`Motivation to Modify Jiang to Include Smyth’s Second
`Programmable Device Performing Distance Calculations .... 143
`
`4.
`5.
`6.
`
`2.
`3.
`
`7.
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`D.
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`E.
`
`F.
`
`G.
`
`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`Claim 1(d): “wherein said feature vector is received by the
`second programmable device after it is calculated by the
`first programmable device; and” .................................................. 145
`1.
`Jiang’s Teachings ................................................................... 145
`2.
`Smyth’s Teachings ................................................................. 146
`Claim 1(e): “a third programmable device programmed to
`identify spoken words in said digital audio stream using
`Hidden Markov Models and/or Neural Networks” .................... 146
`1.
`Jiang’s Teachings ................................................................... 147
`2.
`Smyth’s Teachings ................................................................. 154
`Claim 1(f): “wherein said word identification uses one or
`more distances that were calculated by the second
`programmable device,” .................................................................. 167
`Claim 1(g): “wherein said identification of spoken words
`uses one or more distances calculated from a first feature
`vector; and” .................................................................................... 172
`Claim 1(h): “a search stage for using the calculated
`distances to identify words within a lexical tree, the lexical
`tree comprising a model of words.” .............................................. 173
`XI. OPINIONS REGARDING GROUND 2: CLAIMS 2-3 ARE
`OBVIOUS OVER JIANG, SMYTH, AND NGUYEN .............................. 177
`A.
`Dependent Claim 2 ......................................................................... 177
`B.
`Dependent Claim 3 ......................................................................... 185
`XII. OPINIONS REGARDING GROUND 3: CLAIM 4 IS OBVIOUS
`OVER JIANG, SMYTH, NGUYEN, AND BOIKE .................................. 187
`A.
`Dependent Claim 4 ......................................................................... 187
`XIII. OPINIONS REGARDING GROUND 4: CLAIM 5 IS OBVIOUS
`OVER JIANG, SMYTH, NGUYEN, AND BAUMGARTNER ................ 193
`A.
`Dependent Claim 5 ......................................................................... 193
`XIV. OPINIONS REGARDING GROUND 5: CLAIM 6 IS OBVIOUS
`OVER JIANG, SMYTH, NGUYEN, BAUMGARTNER, AND
`BOIKE ........................................................................................................ 203
`Dependent Claim 6 ......................................................................... 203
`A.
`
`H.
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`XV. CONCLUSION .......................................................................................... 206
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
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`CLAIM LISTING
`
`Claim 1:
`Claim 1[Pre] A speech recognition system comprising:
`
`1(a) a first programmable device programmed to calculate a feature vector
`
`from a digital audio stream, wherein the feature vector comprises a plurality of
`
`extracted and/or derived quantities from said digital audio stream during a defined
`
`audio time frame;
`
`1(b) a second programmable device programmed to calculate distances
`
`indicating the similarity between a feature vector and a plurality of acoustic states of
`
`an acoustic model wherein said feature vector is received by the second
`
`programmable device after it is calculated by the first programmable device; and
`
`1(c) a third programmable device programmed to identify spoken words in
`
`said digital audio stream using Hidden Markov Models and/or Neural Networks
`
`wherein said word identification uses one or more distances that were calculated by
`
`the second programmable device, wherein said identification of spoken words uses
`
`one or more distances calculated from a first feature vector; and
`
`1(d) a search stage for using the calculated distances to identify words
`
`within a lexical tree, the lexical tree comprising a model of words.
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
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`Claim 2:
`
`The speech recognition system of claim 1 wherein the time period taken for
`
`said identification of spoken words overlaps the time period taken for said second
`
`programmable device to calculate one or more distances from a second feature
`
`vector.
`
`Claim 3:
`
`The speech recognition system of claim 2 wherein the first programmable
`
`device, the second programmable device, and third programmable device are
`
`physically distinct processing circuits.
`
`Claim 4:
`
`The speech recognition system of claim 3 wherein said physically distinct
`
`processing circuits are all formed on a single integrated circuit.
`
`Claim 5:
`
`The speech recognition system of claim 2 wherein the first programmable
`
`device and the second programmable device comprise one physical uni-processor or
`
`multi-processor, and the second programmable device is a physically distinct
`
`processing circuit.
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
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`Claim 6:
`
`The speech recognition system of claim 5 wherein said one physical uni-
`
`processor or multi-processor and said second programmable device are all formed
`
`on a single integrated circuit.
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`
`I, Christopher Schmandt, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I am over the age of 21 and am competent to make this declaration.
`
`A.
`2.
`
`Educational Background and Professional Experience
`I retired several years ago after a 40-year career at the Massachusetts
`
`Institute of Technology (“MIT”); for most of that time I was employed as a Principal
`
`Research Scientist at the Media Laboratory. In that role I also served as faculty for
`
`the MIT Media Arts and Sciences academic program. I was a founder of the Media
`
`Laboratory, a research lab which now spans two buildings.
`
`3.
`
`I received my B.S. degree in Electrical Engineering and Computer
`
`Science from MIT in 1978, and my M.S. in Visual Studies (Computer Graphics) also
`
`from MIT. I was employed at MIT since 1980, initially at the Architecture Machine
`
`Group which was an early computer graphics and interactive systems research lab.
`
`In 1985, I helped found the Media Laboratory and continued to work there until
`
`retirement. I was director of a research group titled “Living Mobile.” My research
`
`spanned distributed communication and collaborative systems, with an emphasis on
`
`multi-media and user interfaces, with a strong focus on speech-based systems. I have
`
`over 70 published conference and journal papers and one book in the field of speech
`
`technology and user interaction.
`
`
`
`Amazon / Zentian Limited
`Exhibit 1003
`Page 9
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`For the first fifteen years of my career, my research emphasized speech
`
`4.
`
`recognition and speech user interfaces. I built the first conversational computer
`
`system utilizing speech recognition and synthesis (“Put That There”) starting in
`
`1980. I continued to innovate speech user interfaces using recognition, text-to-
`
`speech synthesis, and recorded audio in a wide variety of projects. I built one of the
`
`first graphical user interfaces for audio editing, employing keyword recognition on
`
`voice memos in 1982 (Intelligent Ear). I built the first research-grade unified
`
`messaging system, which combined text and voice messages into a single inbox,
`
`with speech recognition over the phone for remote access, and a graphical user
`
`interface for desktop access in 1983 (Phone Slave). Along with my students we built
`
`the first system for real time spoken driving directions, including speech-accessible
`
`maps of Cambridge, Massachusetts in 1987 (Back Seat Driver). We built some of
`
`the earliest speech-based personal assistants for managing messages, calendar,
`
`contacts, etc. (Conversational Desktop 1985, Chatter 1993, MailCall 1996). We built
`
`quite a few systems employing speech recognition in handheld mobile devices
`
`(ComMotion 1999, Nomadic Radio 2000, Impromptu 2001, and Symphony 2004,
`
`for example). We applied speech recognition to large bodies of everyday
`
`conversations captured with a wearable device and utilized as a memory aid
`
`(Memory Prosthesis 2004). We used speech recognition on radio newscasts to build
`
`a personalized version of audio newscasts (Synthetic News Radio, 1999) and also
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`investigated adding speech recognition to a mouse-based window system a few years
`
`earlier.
`
`5.
`
`I was later awarded the prestigious Association for Computing
`
`Machinery (ACM) Computer Human Interface (CHI) Academy membership
`
`specifically for those years of work pioneering speech user interfaces.
`
`6.
`
`In the course of my research, I built a number of speech recognition
`
`client/server distributed systems, with the first being in 1985. Much of the initial
`
`motivation for a server architecture was that speech recognition required expensive
`
`digital signal processing hardware that we could not afford to put on each computer,
`
`so a central server with the required hardware was used. Later versions of the speech
`
`recognition server architecture allowed certain computers to perform specialized
`
`tasks serving a number of client computers providing voice user interfaces, either on
`
`screens or over telephone connections.
`
`7.
`
`Because of my early work with distributed speech systems, I served for
`
`several years in the mid-1990s with a working group on the impact of multimedia
`
`systems on the Internet reporting to the Internet Engineering Task Force (IETF) and
`
`later the Internet Activities Board (IAB). This work impacted emerging standards
`
`such as Session Initiation Protocol (SIP).
`
`8.
`
`In my faculty position I taught graduate level courses in speech
`
`technology and user interaction design, and directly supervised student research and
`
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`theses at the Bachelors, Masters, and PhD level. I oversaw the Masters and PhD
`
`thesis programs for the entire Media Arts and Sciences academic program during
`
`my more senior years. I also served on the Media Laboratory intellectual property
`
`committee for many years.
`
`II. METHODOLOGY; MATERIALS CONSIDERED
`9.
`I have relied upon my education, knowledge and experience with
`
`speech technology and speech recognition systems, as well as the other materials as
`
`discussed in this declaration in forming my opinions.
`
`10.
`
`For this work, I have been asked to review U.S. Patent No. 10,062,377
`
`(“’377 Patent”) (Ex. 1001) including the specification and claims, and the ’377
`
`Patent’s prosecution history (“’377 File History”) (Ex. 1002). In developing my
`
`opinions relating to the ’377 Patent, I have considered the materials cited or
`
`discussed herein, including those itemized in the Exhibit Table below.
`
`Description
`Exhibit
`Exhibit 1001 U.S. Patent No. 10,062,377 (“’377 Patent”)
`Exhibit 1002 Prosecution History for the ’377 Patent (“’377 File History”)
`Exhibit 1004 U.S. Patent No. 6,374,219 to Jiang (“Jiang”)
`Exhibit 1005 U.S. Patent No. 5,819,222 to Smyth et al. (“Smyth”)
`Exhibit 1006 U.S. Patent No. 6,959,376 to Boike et al. (“Boike”)
`Exhibit 1007 U.S. Patent Application Publication No. 2002/0049582
`Baumgartner et al. (“Baumgartner”)
`Exhibit 1008 Harry Newton. Newton’s Telecom Dictionary. 19th Edition CMP
`Books March 2003 (“Newton”)
`Exhibit 1009 Kevin L. Kloker The Motorola DSP56000 Digital Signal Processor
`IEEE Micro Vol. 6, Issue 6, pp. 29-48 December 1986 (“Kloker”)
`Exhibit 1010 Christopher Schmandt Voice Communication with Computers Van
`Nostrand Reinhold 1994 (“Schmandt”)
`
`to
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`Exhibit 1011 U.S. Patent No. 6,499,012 to Peters et al. (“Peters”)
`Exhibit 1012 Ph.D. Thesis of Mosur Ravishankar (“Ravishankar”)
`Exhibit 1013 J. Mariani Recent Advances
`in Speech Processing IEEE
`International Conference on Acoustics, Speech, and Signal
`Processing, pp. 429-440 May 1989 (“Mariani”)
`Exhibit 1015 Lawrence Rabiner and Biing-Hwang Juang Fundamentals of
`Speech Recognition Prentice Hall PTR 1993 (“Rabiner”)
`Exhibit 1016 Richard Klevans and Robert Rodman Voice Recognition Artech
`House 1997 (“Klevans”)
`Exhibit 1017 U.S. Patent No. 7,120,582 to Young et al. (“Young”)
`Exhibit 1018 John Holmes and Wendy Holmes, Speech Synthesis and
`Recognition 2nd Edition, Taylor & Francis, 2001 (“Holmes”)
`Exhibit 1019 U.S. Patent No. 4,926,488 to Nadas et al. (“Nadas”)
`Exhibit 1020 Frederick Jelinek Statistical Methods for Speech Recognition Third
`Printing Massachusetts Institute of Technology 2001 (“Jelinek”)
`Exhibit 1021 Shigeru Katagiri Handbook of Neural Networks for Speech
`Processing Artech House, Inc. 2000 (“Katagiri”)
`Exhibit 1022 Lawrence Rabiner A Tutorial on Hidden Markov Models and
`Selected Applications in Speech Recognition Proceedings of the
`IEEE Vol. 77, No. 2 February 1989 (“Rabiner89”)
`Exhibit 1023 U.S. Patent No. 6,182,037 (“Maes”)
`Exhibit 1024 U.S. Patent Application Publication No. 2003/02207 to Aoyama et
`al. (“Aoyama”)
`Exhibit 1025 U.S. Patent No. 5,895, 447 to Ittycheriah et al. (“Ittycheriah ’447”)
`Exhibit 1026 U.S. Patent No. 6,092,045 to Stubley et al. (“Stubley”)
`Exhibit 1027 U.S. Patent No. 6,151,574 to Lee et al. (“Lee”)
`Exhibit 1028 U.S. Patent No. 6,580,814 to Ittycheriah et al. (“Ittycheriah”)
`Exhibit 1029 U.S. Patent No. 6,452,348 to Toyoda (“Toyoda”)
`Exhibit 1030 U.S. Patent No. 6,195,634 to Dudemaine et al. (“Dudemaine”)
`Exhibit 1031 U.S. Patent No. 5,893,058 to Kosaka (“Kosaka”)
`Exhibit 1032 U.S. Patent Application Publication No. 2001/0010039 to Yang
`(“Yang”)
`Exhibit 1033 U.S. Patent No. 5,754,878 to Asghar et al. (“Asghar”)
`Exhibit 1034 U.S. Patent No. 6,041,400 to Ozcelik et al. (“Ozcelik”)
`Exhibit 1035 Declaration of June Ann Munford (“Munford”)
`Exhibit 1036 U.S. Patent No. 5,699,456 to Brown et al. (“Brown”)
`Exhibit 1038 U.S. Patent No. 4,567,606 to Vensko et al. (“Vensko”)
`Exhibit 1039 U.S. Patent No. 6,182,203 to Simar, Jr. et al. (“Simar”)
`Exhibit 1047 U.S. Patent No. 6,879,954 to Nguyen et al. (“Nguyen”)
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`Exhibit 1052 U.S. Patent No. 4,718,094 to Bahl et al. (“Bahl”)
`Exhibit 1053 Hermann Ney et al. Dynamic Programming Search Strategies:
`From Digit Strings To Large Vocabulary Word Graphs C.-H. Lee
`et al. (eds.) Automatic Speech and Speaker Recognition 1996
`(“Ney”)
`Exhibit 1054 U.S. Patent No. 7,058,678 to Luick et al. (“Luick”)
`Exhibit 1057 U.S. Patent No. 5,983,180 to Robinson (“Robinson”)
`Exhibit 1058 Abdulmesih Aktas et al. “Multi-DSP and VQ-ASIC Based Acoustic
`Front-End for Real-Time Speech Processing Tasks” First European
`Conference on Speech Communication
`and Technology
`EUROSPEECH ’89. Paris, France. September 1989 (Atkas 1989)
`Exhibit 1059 Abdulmesih Aktas et al. “Speaker Independent Continuous Hmm-
`Based Recognition of Isolated Words on A Real-Time Multi-Dsp
`System” Second European Conference on Speech Communication
`and Technology EUROSPEECH ’91. Genova, Italy. September
`1991 (Atkas 1991)
`Exhibit 1060 U.S. Patent No. 6,029,221 to Wu et al. (“Wu”)
`Exhibit 1067 U.S. Patent No. 7,697,641 to Haddadin et al. (“Haddadin”)
`Exhibit 1068 U.S. Patent No. 4,745,544 to Renner et al. (“Renner”)
`Exhibit 1069 U.S. Patent No. 4,908,781 to Levinthal et al. (“Levinthal”)
`Exhibit 1070 U.S. Patent No. 6,603,990 to Zhang et al. (“Zhang”)
`
`11.
`
`I have considered these materials from the viewpoint of a POSITA as
`
`of the priority date of the ʼ377 Patent. For the purposes of this declaration, I have
`
`been asked to assume that the priority date of the ’377 Patent is September 14, 2004.
`
`I note that my opinions provided in this Declaration are made from the perspective
`
`of a POSITA as of this priority date of the ’377 Patent, unless expressly stated
`
`otherwise. To the extent that I use any verb tense in this Declaration that is present
`
`tense (e.g., “a POSITA would understand” instead of “a POSITA would have
`
`understood”), such verb tense should be understood to be my opinion as of the ’377
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`Patent’s priority date (again, unless expressly stated otherwise). I merely use the
`
`present verb tense for ease of reading.
`
`III. OVERVIEW AND LEGAL STANDARDS
`12.
`In formulating my opinions, I have been instructed to apply certain
`
`legal standards. I am not a lawyer. I do not expect to offer any testimony regarding
`
`what the law is. Instead, the following sections summarize the law as I have been
`
`instructed to apply it in formulating and rendering my opinions found later in this
`
`declaration. I understand that, in an inter partes review (“IPR”) proceeding, patent
`
`claims may be deemed unpatentable if it is shown that they were anticipated or
`
`rendered obvious in view of the prior art. I understand that prior art in an IPR review
`
`is limited to patents or printed publications that predate the priority date of the patent
`
`at issue. I understand that questions of claim clarity (definiteness) and enablement
`
`cannot be considered as a ground for considering the patentability of a claim in these
`
`proceedings.
`
`A.
`13.
`
`Person of Ordinary Skill in the Art
`I understand that the ’377 Patent, the record of proceedings at the Patent
`
`Office (which I understand is called the “File History” or “Prosecution History”),
`
`and the teachings of the prior art are evaluated from the perspective of a person of
`
`ordinary skill in the art (“POSITA”). I understand that the factors considered in
`
`determining the ordinary level of skill in the art include: (i) the levels of education
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`and experience of persons working in the field; (ii) the types of problems
`
`encountered in the field; and (iii) the sophistication of the technology. I may also
`
`consider, if available, the education level of the inventor, prior art solutions to the
`
`problems encountered in the art, and the rapidity with which innovations are made
`
`in the relevant art.
`
`14.
`
`I understand that a person of ordinary skill in the art is not a specific
`
`real individual, but rather a hypothetical individual having the qualities reflected by
`
`the factors above. This hypothetical person has knowledge of all prior art in the
`
`relevant field as if it were arranged on a workshop wall and takes from each reference
`
`what it would teach to a person having the skills of a POSITA.
`
`B.
`15.
`
`Obviousness
`I understand that a claim may be invalid under § 103(a) if the subject
`
`matter described by the claim as a whole would have been “obvious” to a
`
`hypothetical POSITA in view of a single prior art reference or in view of a
`
`combination of references at the time the claimed invention was made. Therefore, I
`
`understand that obviousness is determined from the perspective of a hypothetical
`
`POSITA. I further understand that a hypothetical POSITA is assumed to know and
`
`to have all relevant prior art in the field of endeavor covered by the patent in suit and
`
`all analogous prior art. I understand that obviousness in an IPR review proceeding
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`is evaluated using a preponderance of the evidence standard, which means that the
`
`claims must be more likely obvious than nonobvious.
`
`16.
`
`I also understand that an analysis of whether a claimed invention would
`
`have been obvious should be considered in light of the scope and content of the prior
`
`art, the differences (if any) between the prior art and the claimed invention, and the
`
`level of ordinary skill in the pertinent art involved. I understand as well that a prior
`
`art reference should be viewed as a whole. I understand that in considering whether
`
`an invention for a claimed combination would have been obvious, I may assess
`
`whether there are apparent reasons to combine known elements in the prior art in the
`
`manner claimed in view of interrelated teachings of multiple prior art references, the
`
`effects of demands known to the design community or present in the marketplace,
`
`and/or the background knowledge possessed by a POSITA. I also understand that
`
`other principles may be relied on in evaluating whether a claimed invention would
`
`have been obvious, and that these principles include the following:
`
`• A combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results;
`
`• When a device or technology is available in one field of endeavor,
`
`design incentives and other market forces can prompt variations of it,
`
`either in the same field or in a different one, so that if a POSITA can
`
`implement a predictable variation, the variation is likely obvious;
`
`
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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`• If a technique has been used to improve one device, and a POSITA
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`would have recognized that it would improve similar devices in the
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`same way, using the technique is obvious unless its actual application
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`is beyond his or her skill;
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`• An explicit or implicit teaching, suggestion, or motivation to combine
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`two prior art references to form the claimed combination may
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`demonstrate obviousness, but proof of obviousness does not depend on
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`or require showing a teaching, suggestion, or motivation to combine;
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`• Market demand, rather than scientific literature, can drive design trends
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`and may show obviousness;
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`• In determining whether the subject matter of a patent claim would have
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`been obvious, neither the particular motivation nor the avowed purpose
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`of the named inventor controls;
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`• One of the ways in which a patent’s subject can be proved obvious is
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`by noting that there existed at the time of invention a known problem
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`for which there was an obvious solution encompassed by the patent’s
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`claims;
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`• Any need or problem known in the field of endeavor at the time of
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`invention and addressed by the patent can provide a reason for
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`combining the elements in the manner claimed;
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`Amazon / Zentian Limited
`Exhibit 1003
`Page 18
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`

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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`• “Common sense” teaches that familiar items may have obvious uses
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`beyond their primary purposes, and in many cases a POSITA will be
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`able to fit the teachings of multiple patents together like pieces of a
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`puzzle;
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`• A POSITA is also a person of ordinary creativity, and is not an
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`automaton;
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`• A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there
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`is a design need or market pressure to solve a problem and there are a
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`finite number of identified, predictable solutions such that a POSITA
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`would have had good reason to pursue the known options within his or
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`her technical grasp; and
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`• One should not use hindsight in evaluating whether a claimed invention
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`would have been obvious.
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`17.
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`I also understand that an obviousness determination includes the
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`consideration of various factors such as: (1) the scope and content of the prior art,
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`(2) the differences between the prior art and the asserted claims, (3) the level of
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`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
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`such as commercial success, long-felt but unresolved needs, failure of others, and so
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`forth.
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`Amazon / Zentian Limited
`Exhibit 1003
`Page 19
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`

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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`I am informed that it is improper to combine references where the
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`18.
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`references teach away from their combination. I am informed that a reference may
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`be said to teach away when a person of ordinary skill in the relevant art, upon reading
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`the reference, would be discouraged from following the path set out in the reference,
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`or would be led in a direction divergent from the path that was taken by the patent
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`applicant. In general, a reference will teach away if it suggests that the line of
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`development flowing from the reference’s disclosure is unlikely to be productive of
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`the result sought by the patentee. I am informed that a reference teaches away, for
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`example, if (1) the combination would produce a seemingly inoperative device, or
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`(2) the references leave the impression that the product would not have the property
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`sought by the patentee. I also am informed, however, that a reference does not teach
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`away if it merely expresses a general preference for an alternative invention but does
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`not criticize, discredit, or otherwise discourage investigation into the invention
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`claimed.
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`19.
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`I am informed that even if a prima facie case of obviousness is
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`established, the final determination of obviousness must also consider “secondary
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`considerations” if presented. In most instances, the patentee raises these secondary
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`considerations of non-obviousness. In that context, the patentee argues an invention
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`would not have been obvious in view of these considerations, which include: (a)
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`commercial success of a product due to the merits of the claimed invention; (b) a
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`Amazon / Zentian Limited
`Exhibit 1003
`Page 20
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`

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`Declaration of Christopher Schmandt
`Patent No. 10,062,377
`long-felt, but unsatisfied need for the invention; (c) failure of others to find the
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`solution provided by the claimed invention; (d) deliberate copying of the invention
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`by others; (e) unexpected results achieved by the invention; (f) praise of the
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`invention by others skilled in the art; (g) lack of independent simultaneous invention
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`within a comparatively short space of time; (h) teaching away from the invention in
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`the prior art.
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`20.
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`I am further informed that secondary considerations evidence is only
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`relevant if the offering party establishes a connection, or nexus, between the
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`evidence and the claimed invention. The nexus cannot be based on prior art features.
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`The establishment of a nexus is a question of fact. While I understand that the Patent
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`Owner here has not offered any secondary considerations at this time, I will
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`supplement my opinions in the event that the Patent Owner raises secondary
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`considerations during the course of this proceeding.
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`21.
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`Finally, I understand that obviousness in an IPR must be proven by a
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`preponderance of the evidence.
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`C.