UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`T-Mobile USA, Inc., AT&T Services Inc., AT&T Mobility LLC, AT&T
`Corporation, Cellco Partnership d/b/a Verizon Wireless, Nokia of America
`Corporation, Ericsson Inc.
`Petitioners
`
`v.
`
`Cobblestone Wireless LLC
`Patent Owner
`
`Case IPR2024-00136
`Patent 8,891,347
`
`DECLARATION OF JAMES A. PROCTOR IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`UNITED STATES PATENT NO. 8,891,347
`
`IPR2024-00136
`Petitioners' Ex. 1005
`
`Ex.1005.00001
`
`

`

`TABLE OF CONTENTS
`INTRODUCTION............................................................................................................. 1
`
`BACKGROUND AND QUALIFICATIONS ................................................................. 2
`
`I.
`
`II.
`
`III. MATERIALS REVIEWED ............................................................................................. 8
`
`IV.
`
`LEGAL STANDARDS ..................................................................................................... 9
`
`A.
`
`B.
`
`Obviousness .......................................................................................................... 10
`
`Claim Construction ............................................................................................... 15
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART AND THE TIME OF THE
`ALLEGED INVENTION ............................................................................................... 16
`
`VI.
`
`THE ’347 PATENT......................................................................................................... 17
`
`A.
`
`B.
`
`C.
`
`Description of the ’347 Patent’s Specification ..................................................... 17
`
`The ’347 Patent’s Prosecution History ................................................................. 25
`
`Interpretation of the ’347 Challenged Claims ....................................................... 26
`
`1.
`
`2.
`
`“path parameter information” ................................................................... 27
`
`“predistorting a second signal at the transmitter in a time domain,
`frequency domain, and a spatial domain” ................................................. 30
`
`VII.
`
`SUMMARY OF THE PRIOR ART .............................................................................. 31
`
`A.
`
`Sesia (Ex. 1003) .................................................................................................... 31
`
`1.
`
`2.
`
`3.
`
`4.
`
`Signal Propagation in LTE........................................................................ 33
`
`Signaling in LTE ....................................................................................... 36
`
`Channel Estimation using Refence Signals .............................................. 39
`
`Beamforming ............................................................................................ 46
`
`B.
`
`Motivation to Combine ......................................................................................... 55
`
`VIII. GROUND 1: SESIA RENDERS OBVIOUS CLAIMS 1-4, 6-12, 14-17, AND
`19-23 ................................................................................................................................. 56
`
`A.
`
`Independent Claim 1 ............................................................................................. 56
`
`Ex. 1005, page i
`
`Ex.1005.00002
`
`

`

`
`
`[1.0] A method for wireless communication in a system including a
`transmitter, a receiver, and a plurality of propagation paths formed
`between the transmitter and the receiver which are capable of
`carrying a signal transmitted by the transmitter to the receiver, the
`method comprising: .................................................................................. 56
`
`[1.1] transmitting a first signal from the transmitter to the receiver via a first
`propagation path of the plurality of propagation paths; ............................ 58
`
`[1.2] receiving the first signal at the receiver; ...................................................... 60
`
`[1.3] performing a channel estimation based on the first signal to obtain path
`parameter information of the first propagation path; ................................ 61
`
`(i)
`
`(ii)
`
`Sesia discloses performing channel estimation on a reference
`signal. ............................................................................................ 61
`
`Sesia discloses obtaining path parameter information from
`the channel estimation................................................................... 64
`
`[1.4] sending the channel estimation that includes the path parameter
`information from the receiver to the transmitter via the first
`propagation path; ...................................................................................... 66
`
`[1.5] predistorting a second signal at the transmitter in a time domain, a
`frequency domain, and a spatial domain, according to the channel
`estimation based on the first signal; .......................................................... 70
`
`(i)
`
`(ii)
`
`Beamforming using closed-loop rank-1 precoding according
`to the channel state information. ................................................... 70
`
`Beamforming with UE-specific reference signals according
`to the channel state information. ................................................... 71
`
`(iii) Beamforming in a time domain, a frequency domain, and a
`spatial domain. .............................................................................. 72
`
`[1.6] transmitting the predistorted second signal from the transmitter to the
`receiver via the first propagation path; and............................................... 77
`
`[1.7] receiving the predistorted second signal at the receiver. .............................. 80
`
`B.
`
`C.
`
`D.
`
`E.
`
`Dependent Claim 2 ............................................................................................... 81
`
`Dependent Claim 3 ............................................................................................... 84
`
`Dependent Claim 4 ............................................................................................... 88
`
`Dependent Claim 6 ............................................................................................... 91
`
`Ex. 1005, page ii
`
`Ex.1005.00003
`
`

`

`
`
`F.
`
`G.
`
`Dependent Claim 7 ............................................................................................... 93
`
`Independent Claim 8 ............................................................................................. 95
`
`[8.0] A system for wireless communication comprising: ..................................... 95
`
`[8.1] a receiver; ..................................................................................................... 95
`
`[8.2] a transmitter; and .......................................................................................... 95
`
`[8.3] a plurality of propagation paths formed between the transmitter and
`the receiver which are capable of carrying a signal transmitted by
`the transmitter to the receiver, .................................................................. 96
`
`[8.4] wherein the receiver is configured to receive a first signal that is
`transmitted along a first propagation path of the plurality of
`propagation paths from the transmitter, perform a channel
`estimation based on the first signal to obtain path parameter
`information of the first propagation path, and send the channel
`estimation that includes the path parameter information to the
`transmitter via the first propagation path, and .......................................... 96
`
`[8.5] wherein the transmitter is configured to predistort a second signal in a
`time domain, a frequency domain, and a spatial domain according
`to the channel estimation that is based on the first signal and
`received from the receiver and to transmit the predistorted second
`signal to the receiver via the first propagation path. ................................. 96
`
`Dependent Claim 9 ............................................................................................... 97
`
`Dependent Claim 10 ............................................................................................. 97
`
`Dependent Claim 11 ............................................................................................. 98
`
`Dependent Claim 12 ............................................................................................. 99
`
`Dependent Claim 14 ........................................................................................... 100
`
`Independent Claim 15 ......................................................................................... 100
`
`[15.0] A base station for performing wireless communication with a
`receiver in a wireless device via a plurality of propagation paths, the
`base station comprising: .......................................................................... 100
`
`[15.1] a transmitter; ............................................................................................. 101
`
`[15.2] a computing device; and ........................................................................... 101
`
`H.
`
`I.
`
`J.
`
`K.
`
`L.
`
`M.
`
`Ex. 1005, page iii
`
`Ex.1005.00004
`
`

`

`
`
`[15.3] a computer-readable storage medium having computer-executable
`instructions stored thereon that are executable by the computing
`device to perform operations comprising: .............................................. 102
`
`[15.3.1] transmitting a first signal from the transmitter to the receiver via a
`first propagation path of the plurality of propagation paths; .................. 103
`
`[15.3.2] receiving a channel estimation based on the first signal, the channel
`estimation including path parameter information of the first
`propagation path; .................................................................................... 104
`
`[15.3.3] predistorting a second signal in a time domain, a frequency domain,
`and a spatial domain according to the channel estimation based on
`the first signal; and .................................................................................. 104
`
`[15.3.4] transmitting the predistorted second signal from the transmitter to
`the receiver via the first propagation path............................................... 104
`
`N.
`
`O.
`
`P.
`
`Dependent Claim 16 ........................................................................................... 105
`
`Dependent Claim 17 ........................................................................................... 105
`
`Independent Claim 19 ......................................................................................... 106
`
`[19.0] A wireless device for performing wireless communication with a
`base station with a transmitter via a plurality of propagation paths,
`the wireless device comprising: .............................................................. 106
`
`[19.1] a receiver; ................................................................................................. 106
`
`[19.2] a computing device; and ........................................................................... 106
`
`[19.3] a computer-readable storage medium having computer-executable
`instructions stored thereon that are executable by the computing
`device to perform operations comprising: .............................................. 107
`
`[19.3.1] receiving a first signal at the receiver via a first propagation path of
`the plurality of propagation paths; .......................................................... 107
`
`[19.3.2] performing a channel estimation based on the first signal to obtain
`path parameter information of the first propagation path; ...................... 107
`
`[19.3.3] sending the channel estimation that includes the path parameter
`information to the transmitter; and ......................................................... 108
`
`[19.3.4] receiving a second signal via the first propagation path, the second
`signal predistorted in a time domain, a frequency domain, and a
`
`Ex. 1005, page iv
`
`Ex.1005.00005
`
`

`

`
`
`spatial domain according to the channel estimation based on the first
`signal. ...................................................................................................... 108
`
`Q.
`
`R.
`
`S.
`
`T.
`
`Dependent Claim 20 ........................................................................................... 108
`
`Dependent Claim 21 ........................................................................................... 109
`
`Dependent Claim 22 ........................................................................................... 109
`
`Dependent Claim 23 ........................................................................................... 110
`
`IX. CONCLUSION ............................................................................................................. 110
`
`X.
`
`CLAIM LISTING ......................................................................................................... 112
`
`
`
`
`
`Ex. 1005, page v
`
`Ex.1005.00006
`
`

`

`
`
`I.
`
`INTRODUCTION
`I have been retained by T-Mobile USA, Inc., AT&T Corp., AT&T
`1.
`
`Mobility LLC, AT&T Services, Inc., Cellco Partnership d/b/a Verizon Wireless, Nokia
`
`of America Corporation, and Ericsson, Inc. (“Petitioners”) as an independent expert
`
`consultant in this proceeding before the United States Patent and Trademark Office
`
`(“PTO”) against Cobblestone Wireless, LLC (“Patent Owner”) regarding U.S. Patent
`
`No. 8,891,347 (“the ’347 Patent”) (Ex. 1001).1 I have been asked to submit this
`
`Declaration on behalf of Petitioners.
`
`2.
`
`I have been asked to consider whether certain references disclose or
`
`render obvious the features recited in claims 1-4, 6-12, 14-17, and 19-23 (collectively,
`
`the “Challenged Claims”) of the ’347 Patent. My opinions are set forth below. Based
`
`on my experience and expertise, it is my opinion that the prior art renders obvious all
`
`limitations of the Challenged Claims, as I discuss in detail below.
`
`3.
`
`I am being compensated at a rate of $550 per hour for my work in this
`
`proceeding. My compensation is in no way contingent on the nature of my findings,
`
`the presentation of my findings in testimony, or the outcome of this or any other
`
`proceeding. I have no other interest in this proceeding.
`
`
`1 Where appropriate, I refer to exhibits that I understand are to be attached to the
`
`petition for Inter Partes Review of the ’347 patent.
`
`
`
`Ex. 1005, page 1
`
`Ex.1005.00007
`
`

`

`
`
`4.
`
`All of my opinions stated in this Declaration are based on my own
`
`personal knowledge and professional judgment. I am over 18 years of age and, if I am
`
`called upon to do so, I would be competent to testify as to the matters set forth in this
`
`Declaration.
`
`II. BACKGROUND AND QUALIFICATIONS
`My background and expertise that qualify me as an expert are
`5.
`
`described in detail in my Curriculum Vitae attached as Attachment A, which further
`
`includes an accurate list of all publications authored by me in the previous 10 years
`
`and a list of all cases in which I testified as an expert at trial or by deposition during
`
`the previous 4 years. Below I have summarized those qualifications, as well as any
`
`other background and expertise relevant to the technical issues in this case:
`
`6.
`
`My educational background includes a Bachelor of Science in
`
`Electrical Engineering (BSEE) from the University of Florida in 1991 and Master of
`
`Science in Electrical Engineering (MSEE) from the Georgia Institute of Technology
`
`(“Georgia Tech”) in 1992 focusing on digital signal processing.
`
`7.
`
`I have worked as an engineer and entrepreneur in the field of wireless
`
`communications for over 25 years and have been involved with various aspects of
`
`wireless communications for the duration of my career.
`
`8.
`
`From 1986 to 1991, while at the University of Florida, I interned with
`
`Harris Corporation
`
`in various roles
`
`including mechanical design, software
`
`Ex. 1005, page 2
`
`Ex.1005.00008
`
`

`

`
`
`development, and digital design. From 1991 to 1992, while at Georgia Tech, I worked
`
`at the Georgia Tech Research Institute (GTRI) as a graduate research assistant,
`
`performing software development on classified government programs.
`
`9.
`
`From 1993 to 1995, while working for Harris Corporation, I designed
`
`various cellular communication systems for voice, data, and tracking/location. Many
`
`of these systems I designed utilized advanced communications technologies, such as
`
`those utilized in the then-developing and future telecommunications (such as IS95, W-
`
`CDMA, and aspects of LTE).
`
`10.
`
`From 1995 to 1998, I worked at Spectrian in advanced development
`
`and technical marketing. At Spectrian, I interfaced with Nortel’s and Qualcomm’s
`
`product management and performed advanced technology development and systems
`
`analysis. In this role, I designed IS-95 CDMA and GSM base station power amplifiers
`
`and control electronics, and received several patents associated with advanced
`
`linearization techniques for the reduction of transmitted distortion. I note that the peak
`
`to average ratio of various waveforms was of particular concern in the design of the
`
`power amplifiers and associated linearization techniques with the designs I was
`
`involved with during my work at Spectrian.
`
`11.
`
`From 1998 to 2002, I served as the Director of Strategic and Technical
`
`Marketing at Tantivy Communications, a venture capital-funded 3G cellular data and
`
`chip set company. At Tantivy, I helped to architect and standardize the I-CDMA
`
`Ex. 1005, page 3
`
`Ex.1005.00009
`
`

`

`
`
`Spread Spectrum Systems Air Interface Standard (T1P1.4). I also developed both
`
`wireless access terminals and base stations that complied with the standard. The base
`
`stations utilized various IP protocols, and interfaced with the wire line network
`
`utilizing IP over Ethernet. Additionally, I participated in and provided technical
`
`contributions to 3GPP/3GPP2 standardization efforts related to the development of
`
`CDMA2000 and 1xEV-DO. This work resulted in me being a named inventor on more
`
`than 150 pending or issued U.S. patents or applications.
`
`12.
`
`From 2002 to 2007, as co-founder of WiDeFi, Inc., I served in various
`
`roles including President, CEO, CTO, and board member. As the CEO, my
`
`responsibilities included advanced development of platform technologies. I was a
`
`named inventor of wireless technology components, including a frequency translating
`
`TDD repeater, a same frequency repeater architecture for TDD/FDD-based systems,
`
`and physical layer multi-stream MIMO repeater technology. WiDeFi invented and pro-
`
`vided wireless home networking products based on WiFi and cellular technologies.
`
`While at WiDeFi, I was a named inventor on over 25 issued U.S. patents or patent
`
`applications.
`
`13.
`
`From 2007 to 2009, I consulted as a principal engineer for Qualcomm
`
`Inc. as part of the acquisition of WiDeFi’s technology. While at Qualcomm, I worked
`
`with its corporate R&D division and developed consumer 3G and 4G cellular coverage
`
`enhancement systems utilizing WiDeFi’s baseband
`
`interference cancellation
`
`Ex. 1005, page 4
`
`Ex.1005.00010
`
`

`

`
`
`technologies. My responsibilities included working with international cellular
`
`operators on product requirements, detailed W-CDMA simulations, Long Term
`
`Evolution (“LTE”) systems analysis, and participation in prototype product realization.
`
`I am currently a named inventor on roughly 45 issued U.S. patents or patent
`
`applications assigned to Qualcomm.
`
`14.
`
`From 2010 to the present, I have served as managing director and co-
`
`founder of Proxicom Wireless, LLC, which has developed and continues to develop
`
`cloud-based, mobile social networking and mobile payments technology based upon
`
`the proximity and location of mobile devices. Proxicom currently holds twelve issued
`
`U.S. patents and multiple pending patent applications, of which I am a named inventor.
`
`Significant aspects of Proxicom’s technology involve a mobile device’s use of short
`
`range wireless technologies (802.11, near field communications, Bluetooth) in
`
`combination with cellular data links (3G/WCDMA or 4G/LTE, for example) to
`
`facilitate frictionless interactions via a wireless networked central cloud server.
`
`15.
`
`Since 2007, I have also been the principal of Proctor Consulting, LLC.
`
`In this role, I have been a consultant relating to wired, wireless, and cellular
`
`communication and technologies, start-up companies and intellectual property. I have
`
`also been involved with numerous patent infringement, patent validity, and patent
`
`analysis assignments for public and private companies in the wired, wireless, and
`
`cellular networking industries.
`
`Ex. 1005, page 5
`
`Ex.1005.00011
`
`

`

`
`
`16. Additionally, I have worked and consulted for both cellular
`
`infrastructure and device focused companies (Spectrian, Qualcomm, Fastback
`
`Networks), and defense contractors (Harris Corporation), where I developed covert-
`
`tracking and location technologies involving CDMA and smart-antenna technologies.
`
`17.
`
`In various of the above-detailed roles, I have been responsible for the
`
`development of business plans, product development plans, product development
`
`budgets, and product bill of materials estimations. I have been responsible for
`
`numerous product development teams, including schedule and costs of the
`
`development process at various stages of my career. For example, at Tantivy
`
`Communications, I ran a joint development of I-CDMA cellular base stations in Seoul,
`
`Korea that were used in a field trial in that country. Additionally, as founder and CEO
`
`of WiDeFi, Inc., I was responsible for similar such activities, as required to raise
`
`venture capital funding and reporting to the board of directors.
`
`18.
`
`I am currently a named inventor on more than 325 issued U.S. patents,
`
`and more than 700 international patent publications in total. A substantial portion of
`
`my work has focused on wireless communication systems and products. A number of
`
`these patents and patent applications are related to the subject matter of the patent
`
`challenged in this matter. For example, the following patents, for which I am a named
`
`inventor, are examples of some of my experience relevant to the subject matter of this
`
`declaration:
`
`Ex. 1005, page 6
`
`Ex.1005.00012
`
`

`

`
`
`U.S. Patent No.
`6,100,843
`
`Title
`“Adaptive antenna for use in same frequency networks”
`
`7,002,902
`
`6,400,317
`
`9,924,468
`7,113,786
`
`8,027,642
`7,463,200
`7,893,889
`8,774,079
`
`11,443,344
`
`8,477,665
`
`9,135,612
`
`
`
`“Method and system for economical beam forming in a
`radio communication system”
`“Method and apparatus for antenna control in a
`communications network”
`“Antenna control system and method”
`“Antenna adaptation to manage the active set to
`manipulate soft hand-off regions”
`“Transmission canceller for wireless local area network” Apr. 6, 2004
`“Directional antenna configuration for TDD repeater”
`Nov. 22, 2005
`“Multiple-antenna device having an isolation element”
`Nov. 12, 2006
`“Repeater techniques for multiple input multiple output
`Oct. 10, 2007
`utilizing beam formers”
`“Efficient and secure communication using wireless
`service identifiers”
`“Method in a wireless repeater employing an antenna
`array for interference reduction”
`“Proximity detection, virtual detection, or location based
`triggering of the exchange of value and information”
`
`Priority Date
`Sept. 21,
`1998
`Feb. 23, 2000
`
`Feb. 2, 2001
`
`Nov. 30, 2001
`Mar. 8, 2002
`
`Sept. 8, 2008
`
`July, 14, 2010
`
`Apr. 17, 2011
`
`19.
`
`Based on my professional experience, I believe I am qualified to testify
`
`as an expert on matters related to the patent at issue.
`
`20.
`
`I am currently consulting, working with and/or advising a number of
`
`companies and universities. For example, I currently serve on the external advisory
`
`board to the University of Florida’s Electrical and Computer Engineering department.
`
`I also perform expert consulting work, research, and development in the area of
`
`wireless communications with Proctor Consulting and Proxicom wireless. Finally, I
`
`perform conceptual and product development in the medical device field with Genesis
`
`Medical Devices.
`
`Ex. 1005, page 7
`
`Ex.1005.00013
`
`

`

`
`
`III. MATERIALS REVIEWED
`The opinions contained in this Declaration are based on the documents
`21.
`
`I reviewed, my professional judgment, as well as my education, experience, and
`
`knowledge.
`
`22.
`
`In forming my opinions expressed in this Declaration, I also reviewed
`
`the following materials and information:
`
`Exhibit
`No.
`1001
`
`1002
`
`1003
`
`1004
`
`1006
`
`1007
`
`1008
`
`1009
`
`Description
`
`U.S. Patent No. 8,891,347 to Yin
`
`Prosecution History of the ’347 Patent
`
`Stefania Sesia, et al., “LTE: The UMTS Long Term Evolution from
`Theory to Practice
`
`Declaration of Dr. Hall-Ellis regarding the publication date of Sesia
`
`Patent Owner’s Infringement Contentions against AT&T in
`Cobblestone Wireless, LLC v. AT&T Inc. et al, No. 2:22-cv-00474
`(E.D. Tex.) filed December 15, 2022
`
`3GPP TSG RAN WG1 Meeting #60, R1-101217, February 22-23,
`2010, San Francisco, USA, available at
`https://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_60/Docs
`
`3GPP TSG RAN WG1 Meeting #60, R1-100926, February 22-26,
`2010, San Francisco, USA, available at
`https://www.3gpp.org/ftp/tsg_ran/WG1_RL1/TSGR1_60/Docs
`
`Patent Owner’s Infringement Contentions against T-Mobile in
`Cobblestone Wireless, LLC v. T-Mobile USA, et al. No. 2:22-cv-
`00477 (E.D. Tex.) filed December 16, 2022
`
`Ex. 1005, page 8
`
`Ex.1005.00014
`
`

`

`Exhibit
`No.
`1010
`
`1013
`
`
`
`Description
`
`Patent Owner’s Infringement Contentions against Verizon in
`Cobblestone Wireless, LLC v. Verizon Communications Inc., et al.,
`No. 2:22-cv-00478 (E.D. Tex.) filed December 16, 2022
`
`Wiley Online Library listing for Sesia as of November. 22, 2023
`(https://onlinelibrary.wiley.com/doi/book/10.1002/9780470978504?
`SeriesKey=10.1002/9780470742891)
`
`
`
`23.
`
`I also reviewed any other materials I refer to in this Declaration in
`
`support of my opinions.
`
`24. My opinions contained in this Declaration are based on the documents
`
`I reviewed and my knowledge and professional judgment. My opinions have also been
`
`guided by my appreciation of how a person of ordinary skill in the art would have
`
`understood the state of the art, the prior art, and the claims and the specification of
`
`the ’347 patent at the time of the alleged invention.
`
`IV. LEGAL STANDARDS
`Petitioners’ attorneys have explained to me the legal standards that
`25.
`
`apply in this case. My understanding of those standards is described below. I am not
`
`an attorney, and I do not have formal training in the law regarding patents. I have used
`
`my understanding of the following legal principles set forth in this section in reaching
`
`my opinions.
`
`26.
`
`I understand that, in this proceeding, Petitioners have the burden of
`
`proving that the challenged claims are invalid by a preponderance of the evidence.
`
`Ex. 1005, page 9
`
`Ex.1005.00015
`
`

`

`
`
`A. Obviousness
`I have been informed that a claim is invalid as obvious under 35 U.S.C.
`27.
`
`§ 103 (pre-AIA) if the differences between the claimed subject matter and the prior art
`
`are such that the subject matter as a whole would have been obvious at the time of the
`
`invention to a person of ordinary skill in the art. I have been informed that the following
`
`matters are relevant to determining whether the claimed invention would have been
`
`obvious: (1) the scope and content of the prior art, (2) the difference or differences
`
`between the patent claim and the prior art, (3) the level of ordinary skill in the art at
`
`the time the invention of the patent, and (4) any secondary considerations or objective
`
`indicia of non-obviousness.
`
`28.
`
`I have been informed that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than yield
`
`predictable results. When a claim simply arranges prior art elements with each
`
`performing the same function it had been known to perform and yields no more than
`
`one would expect from such an arrangement, then such a combination is obvious.
`
`When a patent claims a structure already known in the prior art altered by the mere
`
`substitution of one element for another known in the field, the combination is likely to
`
`be obvious unless the combination yields an unpredictable result.
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`29.
`
`I have been informed that when a work is available in one field of
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`endeavor, design incentives and other market forces can prompt variations of it, either
`
`Ex. 1005, page 10
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`Ex.1005.00016
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`
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`in the same field or a different one. If a person of ordinary skill in the art can implement
`
`a predictable variation, such a variation is likely unpatentable. For the same reason, if
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`a technique has been used to improve one device, and one of ordinary skill in the art
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`would recognize that it would improve similar devices in the same way, using the
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`technique is obvious unless its actual application is beyond his or her skill. One
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`question to consider is whether the improvement is more than predictably using prior
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`art elements according to their established functions.
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`30.
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`I have been informed that it may often be necessary, in a validity
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`analysis, to consider whether there was an apparent reason to combine the known
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`elements in the fashion claimed by the patent at issue. This can be accomplished by
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`looking to interrelated teachings of multiple patents or other publications or pieces of
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`prior art; the effects of demands known to the design community or present in the
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`marketplace; and the background knowledge possessed by one of ordinary skill in the
`
`art.
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`31.
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`I have been informed that a validity analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim; it is
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`appropriate to take account of the inferences and creative steps that a person of ordinary
`
`skill in the art would employ. I have been informed that a person of ordinary skill in
`
`the art is a person of ordinary creativity, not an automaton.
`
`Ex. 1005, page 11
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`Ex.1005.00017
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`
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`32.
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`I have been informed that a claim composed of several elements is not
`
`proved obvious merely by demonstrating that each element was, independently, known
`
`in the prior art. I have been informed that it can be important to identify a reason that
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`would have prompted a person of ordinary skill in the art in the relevant field to
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`combine the elements in the way the claimed new invention does. I am told that one
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`way that subject matter can be proved obvious is by noting there existed at the time of
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`the invention a known problem for which there was an obvious solution encompassed
`
`by the patent’s claims. I have been informed that any need or problem known in the
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`field of endeavor at the time of the claimed invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed.
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`33.
`
`I have been informed that one should not assume that a person of
`
`ordinary skill in the art attempting to solve a problem will be led only to those elements
`
`of prior art designed to solve the same problem. Instead, I have been informed that
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`since familiar items may have obvious uses beyond their primary purposes, in many
`
`cases a person of ordinary skill in the art will be able to fit the teachings of multiple
`
`prior art references together like pieces of a puzzle.
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`34.
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`I have been informed that, when there is a design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, persons of ordinary skill in the art have good reason to pursue the known
`
`options within their technical grasp. If this leads to the anticipated success, the product
`
`Ex. 1005, page 12
`
`Ex.1005.00018
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`
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`was likely not accomplished by innovation but by using ordinary skill and common
`
`sense. I have been informed that, in such an instance, the fact that the combination was
`
`obvious to try may show that the combination was obvious.
`
`35.
`
`I have been informed that, when determining whether a claimed
`
`combination would have been obvious, the correct analysis is not whether a person of
`
`ordinary skill in the art, writing on a blank slate, would have chosen the particular
`
`combination of elements described in the claim. Instead, I have been informed that the
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`correct analysis considers whether one of ordinary skill, facing the wide range of needs
`
`created by developments in the field of e