Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`EXPERT DECLARATION OF DR. KEVIN NEGUS
`FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,270,384
`
`- 1 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`TABLE OF CONTENTS
`
`INTRODUCTION .....................................................................................................................3
`I.
`II. QUALIFICATIONS ..................................................................................................................5
`III. PERSON OF ORDINARY SKILL IN THE ART ..................................................................12
`IV. LEGAL UNDERSTANDING .................................................................................................14
`V. THE ‘384 PATENT .................................................................................................................20
`A.
`Overview of the ‘384 Patent ................................................................................20
`B.
`Prosecution File History of the ‘384 Patent .......................................................30
`C.
`Asserted Claims and Priority Date .....................................................................38
`D.
`Objective Indicia of Non-obviousness ................................................................38
`VI. CLAIM CONSTRUCTION ....................................................................................................39
`VII.
`STATE OF THE ART .......................................................................................................41
`A.
`Calhoun (Ex. 1005) ..............................................................................................42
`B.
`LWAAP (Ex. 1006) ..............................................................................................58
`C.
`Network World (Ex. 1007) ..................................................................................71
`D.
`CAPWAP (Ex. 1008) ............................................................................................74
`E.
`IEEE 802.11-1999 (Ex. 1009) ..............................................................................84
`VIII. ANTICIPATION AND/OR OBVIOUSNESS OF THE ‘384 PATENT UNDER 35
`U.S.C. §§ 102, 103 DUE TO CALHOUN, LWAPP AND/OR CAPWAP ...................................91
`IX. CONCLUSION .....................................................................................................................160
`
`
`
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`- 2 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`I.
`
`INTRODUCTION
`
`
`
`I, Dr. Kevin Negus, submit this declaration in support of a Petition for Inter
`
`Partes Review of United States Patent Nos. 8,270,384 (the “‘384 Patent”), owned by Sovereign
`
`Peak Ventures, LLC (“SPV” or “Patent Owner”). I have been retained in this matter by counsel
`
`for Hewlett-Packard Enterprise Company (“HP” or “Petitioner”). I understand that Petitioner is
`
`the Real Party-in-Interest to this Petition.
`
`
`
`I make this declaration based upon my personal knowledge. I am over the age of
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`21 and am competent to make this declaration.
`
`
`
`The statements herein include my opinions and the bases for those opinions,
`
`which relate to at least the following documents of the pending inter partes review petition:
`
`§ U.S. Patent No. 8,270,384 by H. Cheng et al., entitled “Wireless point that provides
`
`functions for a wireless local area network to be separated between the wireless point and
`
`one or more control nodes, and method for providing service in a wireless local area
`
`network having functions separated between a wireless point and one or more control
`
`nodes” (the “‘384 Patent”) (Ex. 1001).
`
`§ File History for U.S. Patent No. 8,270,384 (Ex. 1002).
`
`§ U.S. Patent No. 8,045,531 by H. Cheng et al., entitled “System and method for
`
`negotiation of WLAN entity” (the “‘531 Patent”) (Ex. 1003).
`
`§ File History for U.S. Patent No. 8,045,531 (Ex. 1004).
`
`§ U.S. Patent No. 7,508,801 by P. Calhoun et al., entitled “Light-weight Access Point
`
`Protocol” (“Calhoun”) (Ex. 1005).
`
`§
`
`Internet-Draft draft-calhoun-seamoby-lwapp-03 by P. Calhoun et al., entitled “Light
`
`Weight Access Point Protocol (LWAPP)” (“LWAPP”) (Ex. 1006).
`
`- 3 -
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`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`§ Network World article by P. Calhoun et al., entitled “LWAPP brings harmony to
`
`WLANs” (“Network World”) (Ex. 1007).
`
`§
`
`Internet-Draft draft-mani-ietf-capwap-arch-00 by M. Mani et al., entitled “Architecture
`
`for Control and Provisioning of Wireless Access Points (CAPWAP)” (“CAPWAP”) (Ex.
`
`1008).
`
`§ Part 11: Wireless LAN Medium Access Control (MAC) and Physical Layer (PHY)
`
`Specifications, ANSI/IEEE Std 802.11, 1999 Edition (“IEEE 802.11-1999”) (Ex. 1009).
`
`§
`
`IETF RFC 5412 by P. Calhoun et al., entitled “Lightweight Access Point Protocol” (Ex.
`
`1011).
`
`§ Plaintiff’s Preliminary Infringement Contentions, Case No. 2:23-cv-00009, Feb. 28, 2023
`
`(Ex. 1013).
`
`§ Amended Docket Control Order, Case No. 2:23-cv-00009, Apr. 13, 2023 (Ex. 1014).
`
`§ Expert Declaration of Dr. Sylvia Hall-Ellis with respect to Inter Partes Review (Ex.
`
`1015).
`
`§ Declaration of Alexa Morris (Ex. 1016).
`
`
`
`My materials considered for forming my opinions herein have included at least
`
`the above-referenced documents.
`
`
`
`Although I am being compensated for my time at my normal and customary rate
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`in preparing this declaration, the opinions herein are my own, and I have no stake in the outcome
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`of the review proceeding. My compensation does not depend in any way on the outcome of the
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`Petitioner’s petition.
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`- 4 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`II.
`
`QUALIFICATIONS
`
`
`
`I am qualified by education and experience to testify as an expert in the field of
`
`telecommunications. Attached, as Attachment A, is a copy of my resume detailing my
`
`experience and education. Additionally, I provide the following overview of my background as it
`
`pertains to my qualifications for providing expert testimony in this matter.
`
`
`
`I am currently a Full Professor of Electrical Engineering at Montana Tech
`
`University in Butte, MT. I lead research programs at Montana Tech that include developing
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`communications solutions for extremely low power sensors in challenging locations such as
`
`alpine mountains and watersheds including federally-designated wilderness areas and for control
`
`of critical infrastructure distributed continentally and globally. I mentor, supervise and teach
`
`both senior undergraduate and graduate students of Electrical Engineering in the general fields of
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`telecommunications and networking with an emphasis on wireless systems.
`
`
`
`In 1988, I received my Ph.D. in Engineering from the University of Waterloo in
`
`Canada. The Departments of Electrical Engineering and Mechanical Engineering jointly
`
`supervised my Ph.D. research on the modeling of bipolar semiconductor devices. My graduate
`
`course work was primarily in Electrical Engineering and included such subjects as
`
`semiconductor device physics and fabrication, wireless circuit design, and wireless propagation
`
`analysis. For my Ph.D. work, I received the Faculty Gold Medal in 1988 for the best Ph.D. thesis
`
`in the entire Faculty of Engineering across all Departments for that year. My Ph.D. thesis
`
`research also formed the basis of a paper published in 1989 that won the award for Best Paper in
`
`1989 for the IEEE (Institute of Electrical and Electronic Engineers) journal in which it was
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`published.
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`- 5 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
`
`In 1984 and 1985, respectively, I received the B.A.Sc. and M.A.Sc. Degrees in
`
`Mechanical Engineering from the University of Waterloo in Canada. My coursework and
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`research work included, amongst many other topics, extensive embedded firmware development
`
`for automation applications and implementation of networks and communications protocols. For
`
`my M.A.Sc. Degree research and academic achievements, I received the prestigious University
`
`Gold Medal in 1985 for the best Masters thesis in the entire University of Waterloo for that year.
`
`
`
`In 1986, I joined the Palo Alto Research Center of Fairchild Semiconductor in
`
`Palo Alto, CA. At Fairchild, I participated in the development of devices and products for high-
`
`speed applications such as wired networking, RISC microprocessors and wireless
`
`communications.
`
`
`
`In 1988, I took the position of Member of the Technical Staff at Avantek, Inc. in
`
`Newark, CA. I was hired to develop products for both wireless and wired data networking
`
`applications. Some of the components I developed early in my career at Avantek were used for
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`1st generation wireless local area network (WLAN) products, voice band modem equipment,
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`wired data networking both in the LAN and WAN and 1st generation cellular handsets and base
`
`stations based on AMPS or TACS.
`
`
`
`In 1991, the Hewlett-Packard Company purchased Avantek, Inc. I continued to
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`work for Hewlett-Packard until 1998 in such roles as IC Design Manager, Director of Chipset
`
`Development and Principal System Architect. In 1992, Hewlett-Packard assigned me to work on
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`the “Field of Waves” project, which was a major multi-division effort to build WLAN products
`
`for mobile computers. The project was cancelled in 1993. However, the work I did on the
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`project was leveraged into producing the world’s first IEEE 802.11 chipset, which my division at
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`Hewlett-Packard first offered for sale in 1994. I led the project to develop and market this
`
`- 6 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`chipset for many early WLAN product companies including Proxim, Symbol (now part of
`
`Motorola) and Aironet (now part of Cisco). I also helped coordinate efforts within Hewlett-
`
`Packard to guide extensive research projects on WLAN protocols and technology at Hewlett-
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`Packard’s central research laboratories in Palo Alto, CA and Bristol, U.K.
`
`
`
`In 1998, I joined Proxim, Inc. in Mountain View, CA. At that time, Proxim was
`
`engaged in the development and sale of wired and wireless products for home and enterprise
`
`networking applications based on several different wired and wireless networking protocols. I
`
`stayed at Proxim through 2002 and was the Chief Technology Officer for this publicly-traded
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`company at the time of my departure. During my career at Proxim, I led or participated in the
`
`development of many WLAN and WWAN products and/or chipsets for network adapters, OEM
`
`design-in modules, access points, bridges, switches, and routers that used a wide variety of bus,
`
`LAN, or WAN wired interfaces. I have supervised many engineers including those responsible
`
`for embedded firmware development to implement various wired and wireless networking,
`
`reservation, and security protocols at the MAC layer and above, those responsible for HDL code
`
`creation of baseband chips to implement PHY and MAC algorithms, as well as other engineers
`
`that developed hardware reference designs, modem algorithms and chipsets.
`
`
`
`I note that specific to this matter that while I was Chief Technology Officer at
`
`Proxim that we developed the world’s first WLAN access point controller system, which used
`
`the system architecture disclosed in the ‘384 Patent. This system was sold in the USA starting in
`
`2001.
`
`
`
`Since 2002, I have been an independent consultant and have provided services to
`
`a number of companies including some that have developed IEEE 802.11 products. In particular,
`
`from 2002 until 2007 I was Chairman of WiDeFi, Inc. – a company that developed chips and
`
`- 7 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`embedded firmware for 802.11 repeater products based on 802.11a, b, g and draft n amendments.
`
`From 2007-2011, I was Chairman of Tribal Shout – a company that delivered IP voice and audio
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`streaming media using VoIP to any cellular or landline phone including those reachable only by
`
`the circuit-switched connections such as the PSTN and 2nd generation cellular radio. From
`
`2010-2016, I was Chairman and Chief Technology Officer of CBF Networks, Inc. (dba Fastback
`
`Networks) – a company that developed fiber extension products for backhaul of data networks
`
`including Wi-Fi, HSPA, CDMA2000, WiMAX and LTE cellular radio systems.
`
`
`
`I have been a Board Observer on behalf of the venture capital firm Camp
`
`Ventures at two companies that develop semiconductor components including one that
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`developed technology specifically to improve the system performance of HSPA and LTE cellular
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`radio systems (Quantance) and another that provides system on a chip (SOC) microcontrollers,
`
`OEM design-in modules and firmware with 802.11 and wired interfaces for embedded
`
`applications (GainSpan). I have also been a technology and/or business strategy advisor to
`
`multiple early stage companies that are developing such products as new wireless
`
`communications security systems (AirTight), RFID radio systems (Mojix), time/frequency
`
`reference components (SiTime), and application of machine learning to wireless communications
`
`(Aira).
`
`
`
`I have actively monitored or participated in the IEEE 802.11 standards process
`
`continuously since 1989. I am a listed contributor to the highly successful IEEE 802.11g
`
`standard published in 2003 that describes a wireless communications protocol in use worldwide
`
`by over 5 billion devices. In 2002 and 2003, I participated in the IEEE 802.11 Wireless Next
`
`Generation Committee that was responsible for launching the 802.11n standards development
`
`process.
`
`- 8 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
`
`I am an author or co-author of many papers that have been published in
`
`distinguished engineering journals or conferences such as those of the IEEE or ASME. An
`
`exemplary list of these publications is included in my resume.
`
`
`
`I am also a former member of the Federal Communication Commission’s
`
`Technological Advisory Committee as an appointee of then Chairman Michael Powell. I have
`
`also served on the Wyoming Telecommunications Council as an appointee of then Governor Jim
`
`Geringer after confirmation by the Wyoming State Senate.
`
`
`
`I am named as an inventor on numerous U.S. patents all of which have related in
`
`at least some way to products for wired and/or wireless networks. I believe that the following is
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`a complete list as of this date for my approximately 88 issued U.S. Patents: 4,839,717,
`
`5,111,455, 5,150,364, 5,436,595, 5,532,655, 6,587,453, 7,035,283, 7,085,284, 7,187,904,
`
`8,095,067, D704174, 8,238,318, 8,300,590, 8,311,023, 8,385,305, 8,422,540, 8,467,363,
`
`8,502,733, 8,638,839, 8,649,418, 8,761,100, 8,811,365, 8,824,442, 8,830,943, 8,872,715,
`
`8,897,340, 8,928,542, 8,942,216, 8,948,235, 8,982,772, 8,989,762, 9,001,809, 9,049,611,
`
`9,055,463, 9,178,558, 9,179,240, 9,226,295, 9,226,315, 9,252,857, 9,282,560, 9,313,674,
`
`9,325,398, 9,345,036, 9,350,411, 9,374,822, 9,408,215, 9,474,080, 9,490,918, 9,572,163,
`
`9,577,700, 9,577,733, 9,578,643, 9,609,530, 9,655,133, 9,712,216, 9,713,019, 9,713,155,
`
`9,713,157, 9,876,530, 10,051,643, 10,063,363, 10,129,888, 10,135,501, 10,237,760, 10,284,253,
`
`10,306,635, 10,313,898, 10,356,782, 10,506,611, 10,548,132, 10,700,733, 10,708,918,
`
`10,716,111, 10,720,969, 10,735,979, 10,736,110, 10,764,891, 10,785,754, 10,932,267,
`
`10,966,201, 11,134,491, 11,160,078, 11,166,280, 11,271,613, 11,283,192, 11,303,322,
`
`11,343,060, 11,343,684.
`
`- 9 -
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`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
`
`I have provided expert testimony, reports or declarations in the cases of Agere v.
`
`Sony (on behalf of plaintiff Agere), Linex v. Belkin et al. (on behalf of defendant Cisco), CSIRO
`
`v. Toshiba et al. (multiple related cases on behalf of plaintiff CSIRO), Freedom Wireless v.
`
`Cingular et al. (on behalf of plaintiff Freedom Wireless), Rembrandt v. HP et al. (on behalf of
`
`defendant HP), DNT v. Sprint et al. (on behalf of the defendants Sprint, T-Mobile, US Cellular,
`
`Verizon and Novatel), Teles v. Cisco (on behalf of defendant Cisco), WiAV v. HP (on behalf of
`
`defendant HP), SPH v. Acer et al. (on behalf of defendants Sony, Nokia, Motorola, Novatel,
`
`Sierra and Dell), LSI v. Funai (on behalf of plaintiff LSI), WiAV v. Dell and RIM (on behalf of
`
`the defendants Dell and RIM), Wi-LAN v. RIM (on behalf of defendant RIM), LSI v. Barnes &
`
`Noble (on behalf of plaintiff LSI), Novatel v. Franklin and ZTE (on behalf of plaintiff Novatel),
`
`LSI v. Realtek (on behalf of plaintiff LSI), Wi-LAN v. Apple et al. (on behalf of defendants
`
`Apple, Sierra and Novatel), EON v. Sensus et al. (on behalf of defendants Motorola, US Cellular
`
`and Sprint), M2M/Blackbird v Sierra et al. (multiple related cases on behalf of defendants Sierra
`
`and Novatel), Intellectual Ventures v. AT&T et al. (on behalf of defendants AT&T, T-Mobile and
`
`Sprint), Intellectual Ventures v. Motorola (on behalf of defendant Motorola), TQ Beta v. DISH et
`
`al. (on behalf of defendant DISH), Qurio v. DISH et al. (on behalf of defendant DISH), Fatpipe
`
`v. Talari (on behalf of the defendant Talari), EON v. Apple (on behalf of defendant Apple),
`
`Chrimar v. Dell (on behalf of defendant Dell), Nokia v. LGE (on behalf of plaintiff Nokia),
`
`PanOptis v. Blackberry (on behalf of defendant Blackberry), Customedia v. DISH et al. (on
`
`behalf of defendant DISH), Blackberry v. BLU (on behalf of plaintiff Blackberry), MTel v.
`
`Charter et al. (on behalf of defendants Charter, Time Warner, Cox and Bright House), Huawei v.
`
`Samsung (on behalf of plaintiff Huawei), Alacritech v. Wistron (on behalf of defendant Wistron),
`
`IPA v. DISH et al. (on behalf of defendant DISH), XR v. Ruckus et al. (on behalf of defendants
`
`- 10 -
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`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`Ruckus, Netgear and Belkin), Twilio v. Telesign (on behalf of plaintiff Twilio), Hera/Sisvel v.
`
`Arris et al. (on behalf of defendants Arris/Ruckus, Netgear, Amazon, Roku and Belkin),
`
`Intellectual Ventures v. Ericsson et al. (on behalf of defendants Ericsson, T-Mobile and Sprint),
`
`Sol IP v. AT&T et al. (on behalf of defendants AT&T, Verizon and Sprint), Soundview v DISH et
`
`al. (on behalf of defendants DISH and Sling Media), DISH v Peloton, iFIT and MIRROR (on
`
`behalf of plaintiffs DISH and Sling Media) and XR v. D-Link et al. (on behalf of defendants D-
`
`Link, HP, Netgear and Belkin). I believe that the preceding list includes all cases that I have
`
`testified in as an expert at trial or by deposition at least during the past four years.
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`- 11 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`III.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`
`
`I understand that the content of a patent (including its claims) and prior art should
`
`be interpreted the way a person of ordinary skill in the art (or “POSITA”) would have interpreted
`
`the material at the alleged time of invention.
`
`
`
`I understand that the “alleged time of invention” here is no earlier than the date
`
`that the applicants for the ‘384 Patent first filed an application related to the ‘384 Patent, namely,
`
`Mar. 2, 2004.
`
`
`
`A person of ordinary skill in the art (referred to herein as a “POSITA”) at the
`
`alleged time of invention for the ‘384 Patent would have been a person familiar with wireless
`
`communications networks and equipment, and would have had at least a working knowledge of
`
`the applicable standards-based protocols and architectures for common wireless communications
`
`networks at the time as well as an understanding of the components and subsystems within
`
`available wireless communication equipment.
`
`
`
`For example, such a POSITA would have had at least a Bachelor’s degree in
`
`Electrical Engineering or an equivalent field, and at least two years of work experience in
`
`wireless communications. Alternatively, a POSITA would have had a more advanced degree,
`
`such as a Master’s degree in Electrical Engineering or an equivalent field, combined with at least
`
`one year of work experience in wireless communications.
`
`
`
`In addition to my testimony as an expert, I am prepared to testify as someone who
`
`actually practiced in the field from 1986 to present, who actually possessed at least the
`
`knowledge of a POSITA within that time period including at the alleged time of invention, and
`
`who actually worked with others possessing at least the knowledge of a POSITA within that time
`
`period including at the alleged time of invention.
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`- 12 -
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`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
`
`I understand that the POSITA is a hypothetical person who is assumed to be
`
`aware of all the pertinent information that qualifies as prior art. In addition, the POSITA makes
`
`inferences and takes creative steps.
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`- 13 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`IV.
`
`LEGAL UNDERSTANDING
`
`
`
`I have a general understanding of validity based on my experience with patents
`
`and my discussions with counsel.
`
`
`
`I understand that the claims of a patent are presumed valid. I understand that one
`
`factor to be considered in challenging this presumption of validity is whether or not prior art
`
`references cited by Petitioner are cumulative to one or more prior art references considered by
`
`the U.S. Patent and Trademark Office (the “PTO”) in allowing the claims at issue. I understand
`
`that prior art references not specifically considered by the PTO are presumed to be non-
`
`cumulative. I understand that if Patent Owner contends that certain prior art references are
`
`cumulative to one or more prior art references considered by the PTO, then Patent Owner has the
`
`burden to prove this contention with specificity, and further that Petitioner and/or its experts will
`
`be allowed to rebut the Patent Owner’s contention.
`
`
`
`I have a general understanding of prior art and priority date based on my
`
`experience with patents and my discussions with counsel.
`
`
`
`I understand that inventors may be entitled to a priority date earlier than an actual
`
`date of filing of a patent application that provides written description support for a particular
`
`claim to the extent that they can show complete possession of such a particular claimed invention
`
`at such an earlier priority date and reasonable diligence to reduce such a particular claimed
`
`invention to practice between such an earlier priority date and such an actual date of filing. I
`
`understand that if Patent Owner contends that particular claims are entitled to such an earlier
`
`priority date than such an actual date of filing, then Patent Owner has the burden to prove this
`
`contention with specificity.
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`- 14 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
`
`I understand that an invention by another must be made before the priority date of
`
`a particular patent claim in order to qualify as “prior art” under 35 U.S.C. § 102 or § 103, that a
`
`printed publication must be publicly available before the priority date of a particular patent claim
`
`in order to qualify as “prior art” under 35 U.S.C. § 102(a), that a printed publication must be
`
`publicly available more than one year prior to the actual date of filing of a patent application that
`
`provides written description support for a particular claim in the United States in order to qualify
`
`as “prior art” under 35 U.S.C. § 102(b), or that the invention by another must be described in an
`
`application for patent filed in the United States before the priority date of a particular patent
`
`claim in order to qualify as “prior art” under 35 U.S.C. § 102(e). I understand that Petitioner has
`
`the burden of proving that any particular reference or product usage or offer for sale is prior art.
`
`
`
`I have a general understanding of anticipation based on my experience with
`
`patents and my discussions with counsel.
`
`
`
`I understand that anticipation analysis is a two-step process. The first step is to
`
`determine the meaning and scope of the asserted claims. Each claim must be viewed as a whole,
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`and it is improper to ignore any element of the claim. For a claim to be anticipated under U.S.
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`patent law: (1) each and every claim element must be identically disclosed, either explicitly or
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`inherently, in a single prior art reference; (2) the claim elements disclosed in the single prior art
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`reference must be arranged in the same way as in the claim; and (3) the identical invention must
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`be disclosed in the single prior art reference, in as complete detail as set forth in the claim.
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`Where even one element is not disclosed in a reference, the anticipation contention fails.
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`Moreover, to serve as an anticipatory reference, the reference itself must be enabled, i.e., it must
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`provide enough information so that a person of ordinary skill in the art can practice the subject
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`matter of the reference without undue experimentation.
`
`- 15 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`
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`I further understand that where a prior art reference fails to explicitly disclose a
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`claim element, the prior art reference inherently discloses the claim element only if the prior art
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`reference must necessarily include the undisclosed claim element. Inherency may not be
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`established by probabilities or possibilities. The fact that an element may result from a given set
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`of circumstances is not sufficient to prove inherency. I have applied these principles in forming
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`my opinions in this matter.
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`
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`I have a general understanding of obviousness based on my experience with
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`patents and my discussions with counsel.
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`
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`I understand that a patent claim is invalid under 35 U.S.C. § 103 as being obvious
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`only if the differences between the claimed invention and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a person of
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`ordinary skill in that art. An obviousness analysis requires consideration of four factors: (1)
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`scope and content of the prior art relied upon to challenge patentability; (2) differences between
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`the prior art and the claimed invention; (3) the level of ordinary skill in the art at the time of the
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`invention; and (4) the objective evidence of non-obviousness, such as commercial success,
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`unexpected results, the failure of others to achieve the results of the invention, a long-felt need
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`which the invention fills, copying of the invention by competitors, praise for the invention,
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`skepticism for the invention, or independent development.
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`
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`I understand that a prior art reference is proper to use in an obviousness
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`determination if the prior art reference is analogous art to the claimed invention. I understand
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`that a prior art reference is analogous art if at least one of the following two considerations is
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`met. First a prior art reference is analogous art if it is from the same field of endeavor as the
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`claimed invention, even if the prior art reference addresses a different problem and/or arrives at a
`
`- 16 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`different solution. Second, a prior art reference is analogous art if the prior art reference is
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`reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of
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`endeavor as the claimed invention.
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`
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`I understand that it must be shown that a person of ordinary skill in the art at the
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`time of the invention would have had a reasonable expectation that a modification or
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`combination of one or more prior art references would have succeeded. Furthermore, I
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`understand that a claim may be obvious in view of a single prior art reference, without the need
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`to combine references, if the elements of the claim that are not found in the reference can be
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`supplied by the knowledge or common sense of a person of ordinary skill in the relevant art.
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`However, I understand that it is inappropriate to resolve obviousness issues by a retrospective
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`analysis or hindsight reconstruction of the prior art and that the use of “hindsight reconstruction”
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`is improper in analyzing the obviousness of a patent claim.
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`
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`I further understand that the law recognizes several specific guidelines that inform
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`the obviousness analysis. First, I understand that a reconstructive hindsight approach to this
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`analysis, i.e., the improper use of post-invention information to help perform the selection and
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`combination, or the improper use of the listing of elements in a claim as a blueprint to identify
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`selected portions of different prior art references in an attempt to show that the claim is obvious,
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`is not permitted. Second, I understand that any prior art that specifically teaches away from the
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`claimed subject matter, i.e., prior art that would lead a person of ordinary skill in the art to a
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`specifically different solution than the claimed invention, points to non-obviousness, and
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`conversely, that any prior art that contains any teaching, suggestion, or motivation to modify or
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`combine such prior art reference(s) points to the obviousness of such a modification or
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`combination. Third, while many combinations of the prior art might be “obvious to try”, I
`
`- 17 -
`
`Exhibit 1012
`Hewlett Packard Enterprise Company v. Sovereign Peak Ventures, LLC
`
`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 8,270,384
`
`understand that any obvious to try analysis will not render a patent invalid unless it is shown that
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`the possible combinations are: (1) sufficiently small in number so as to be reasonable to conclude
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`that the combination would have been selected; and (2) such that the combination would have
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`been believed to be one that would produce predictable and well understood results. Fourth, I
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`understand that if a claimed invention that arises from the modification or combination of one or
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`more prior art references uses known methods or techniques that yield predictable results, then
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`that factor also points to obviousness. Fifth, I understand that if a claimed invention that arises
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`from the modification or combination of one or more prior art references is the result of known
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`work in one field prompting variations of it for use in the same field or a different one based on
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`design incentives or other market forces that yields predicable variations, then that factor also
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`points to obviousness. Sixth, I understand that if a claimed invention that arises from the
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`modification or combination of one or more prior art references is the result of routine
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`optimization, then that factor also points to obviousness. Seventh, I understand that if a claimed
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`invention that arises from the modification or combina