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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`PLR WORLDWIDE SALES LIMITED,
`Petitioner
`
`v.
`
`
`
`
`
`
`
`FLIP PHONE GAMES INC.
`Patent Owner
`
`___________________
`
`U.S. Patent No. 11,117,056
`Inter Partes Review No. 2024-00200
`___________________
`
`
`DECLARATION OF JOSÉ ZAGAL, PH.D.
`
`
`
`
`
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`Playrix Ex. 1003, Page 1 of 102
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`U.S. Patent No. 111,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ................................................. 2
`
`I.
`
`II.
`
`III. COMPENSATION AND RELATIONSHIP WITH PARTIES ...................... 5
`
`IV. MATERIALS REVIEWED AND CONSIDERED ........................................ 5
`
`V. UNDERSTANDING OF THE RELEVANT LEGAL STANDARDS........... 6
`
`A.
`
`B.
`
`C.
`
`The Person of Ordinary Skill in the Art ................................................ 6
`
`Claim Construction................................................................................ 7
`
`Anticipation ........................................................................................... 7
`
`D. Obviousness ........................................................................................... 8
`
`E.
`
`Objective Indicia of Non-Obviousness ...............................................11
`
`VI. SUMMARY OF OPINIONS .........................................................................12
`
`VII. TECHNOLOGY BACKGROUND ...............................................................13
`
`A. Video Games .......................................................................................13
`
`B. Mobile Games .....................................................................................15
`
`C.
`
`Dynamic Content and In-Game Advertising ......................................18
`
`VIII. THE ’056 PATENT .......................................................................................19
`
`A.
`
`B.
`
`C.
`
`Specification ........................................................................................20
`
`Prosecution History .............................................................................21
`
`Claims ..................................................................................................22
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`IX. LEVEL OF ORDINARY SKILL IN THE ART ...........................................26
`
`X.
`
`CLAIM CONSTRUCTION ..........................................................................29
`
`XI. OVERVIEW OF THE PRIOR ART .............................................................30
`
`A. U.S. Patent Pub. No. 2008/0102947 (“Hays”) ....................................30
`
`B.
`
`C.
`
`U.S. Patent Pub. No. 2007/0174490 (“Choi”) ....................................32
`
`U.S. Patent No. 7,698,178 (“Chu”) .....................................................33
`
`D. U.S. Patent Pub. No. 2007/0088801 (“Levkovitz”) ............................33
`
`XII. OBVIOUSNESS ANALYSIS FOR THE CHALLENGED CLAIMS .........35
`
`A. Ground 1: Hays Alone Renders Obvious Claims 1-16 .......................35
`
`1.
`
`Claim 1 ......................................................................................36
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`f)
`
`Element 1[pre]: A system for providing updated content
`associated with a mobile video game to a mobile
`communication device, the system comprising: .............36
`
`Element 1[a]: a storage medium for storing in-game
`video game content; ........................................................37
`
`Element 1[b]: a server in communication with the storage
`medium; and ...................................................................38
`
`Element 1[c]: wherein the server is configured to: receive
`a request for updated content from the mobile
`communication device; ...................................................39
`
`Element 1[d]: identify, in response to receiving the
`request, what in-game video game content to send; .......41
`
`Element 1[e]: send a message relating to the in-game
`video game content to the mobile communication device
`in response to receiving the request, wherein the message
`is pre-selected by the server based on a model type
`associated with the mobile communication device, a
`
`- ii -
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`service subscription associated with the mobile
`communication device, or a service provider for the
`service subscription associated with the mobile
`communication device; and ............................................42
`
`g)
`
`Element 1[f]: send the in-game video game content to the
`mobile communication device as the updated content for
`the mobile video game. ...................................................45
`
`Claim 2: The system of claim 1, wherein the updated content
`comprises promotional content. ................................................46
`
`Claim 3: The system of claim 2, wherein the promotional
`content comprises localized promotional content based on a
`location of the mobile communication device. .........................46
`
`Claim 4: The system of claim 1, wherein identifying what in-
`game video game content to send is based on a model type
`associated with the mobile communication device, a service
`subscription associated with the mobile communications
`device, a service provider for the service subscription
`associated with the mobile communication device, or a location
`of the mobile communications device. .....................................48
`
`Claim 5: The system of claim 1, wherein the server is further
`configured to send information to the mobile communication
`device regarding the in-game placement location of the in-game
`video game content. ..................................................................49
`
`Claim 6: The system of claim 1, wherein the server is further
`configured to check whether the mobile communication device
`should receive the updated content before sending the updated
`content to the mobile communication device. ..........................52
`
`Claim 7: The system of claim 1, wherein the server is further
`configured to track the distribution of updated content. ...........53
`
`Claim 8: The system of claim 1, wherein the server is further
`configured to check for availability of bandwidth before
`sending the updated content to the mobile communication
`device. .......................................................................................54
`- iii -
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`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`
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`
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`Playrix Ex. 1003, Page 4 of 102
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
`
`9.
`
`Claims 9-16 ...............................................................................56
`
`B.
`
`Ground 2: Hays in Further View of Choi Render Obvious Claims 1-16
` .............................................................................................................57
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Rationale to Combine Hays and Choi .......................................57
`
`Elements 1[e] and 9[d] ..............................................................62
`
`Claims 3 and 11.........................................................................64
`
`Claims 4 and 12.........................................................................64
`
`Claims 8 and 16.........................................................................65
`
`C.
`
`Ground 3: Hays (or Hays and Choi) in Further View of Chu Render
`Obvious Claims 5 and 13 ....................................................................66
`
`1.
`
`2.
`
`Rationale to Combine Hays with Chu ......................................67
`
`Claims 5 and 13.........................................................................70
`
`D. Ground 4: Levkovitz Alone Renders Obvious Claims 1-16 ...............70
`
`1.
`
`Claim 1 ......................................................................................71
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`Element 1[pre]: A system for providing updated content
`associated with a mobile video game to a mobile
`communication device, the system comprising: .............71
`
`Element 1[a]: a storage medium for storing in-game
`video game content; ........................................................71
`
`Element 1[b]: a server in communication with the
`storage medium; and ......................................................73
`
`Element 1[c]: wherein the server is configured to:
`receive a request for updated content from the mobile
`communication device; ...................................................73
`
`Element 1[d]: identify, in response to receiving the
`request, what in-game video game content to send; ......74
`
`- iv -
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`

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`f)
`
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
`
`Element 1[e]: send a message relating to the in-game
`video game content to the mobile communication device
`in response to receiving the request, wherein the message
`is pre-selected by the server based on a model type
`associated with the mobile communication device, a
`service subscription associated with the mobile
`communication device, or a service provider for the
`service subscription associated with the mobile
`communication device; and ............................................75
`
`g)
`
`Element 1[f]: send the in-game video game content to the
`mobile communication device as the updated content for
`the mobile video game. ...................................................77
`
`Claim 2: The system of claim 1, wherein the updated content
`comprises promotional content. ................................................78
`
`Claim 3: The system of claim 2, wherein the promotional
`content comprises localized promotional content based on a
`location of the mobile communication device ..........................78
`
`Claim 4: The system of claim 1, wherein identifying what in-
`game video game content to send is based on a model type
`associated with the mobile communication device, a service
`subscription associated with the mobile communications
`device, a service provider for the service subscription
`associated with the mobile communication device, or a location
`of the mobile communications device. .....................................79
`
`Claim 5: The system of claim 1, wherein the server is further
`configured to send information to the mobile communication
`device regarding the in-game placement location of the in-game
`video game content. ..................................................................80
`
`Claim 6: The system of claim 1, wherein the server is further
`configured to check whether the mobile communication device
`should receive the updated content before sending the updated
`content to the mobile communication device. ..........................81
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`7.
`
`8.
`
`Claim 7: The system of claim 1, wherein the server is further
`configured to track the distribution of updated content. ...........82
`
`Claim 8: The system of claim 1, wherein the server is further
`configured to check for availability of bandwidth before
`sending the updated content to the mobile communication
`device. .......................................................................................82
`
`9.
`
`Claims 9-16 ...............................................................................83
`
`E.
`
`Ground 5: Levkovitz in View of Chu Render Obvious Claims 5 and
`13 .........................................................................................................84
`
`1.
`
`2.
`
`Rationale to Combine Levkovitz with Chu ..............................84
`
`Claims 5 and 13.........................................................................87
`
`F.
`
`Ground 6: Levkovitz in View of Choi Render Obvious Claims 8 and
`16 .........................................................................................................88
`
`1.
`
`2.
`
`Rationale to Combine Levkovitz with Choi .............................88
`
`Claims 8 and 16.........................................................................90
`
`G.
`
`Secondary Considerations ...................................................................91
`
`XIII. CONCLUSION ..............................................................................................92
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
`
`EXHIBIT LIST
`
`No.
`
`Short Name
`
`Exhibit
`
`1001
`
`’056 Patent
`
`U.S. Patent No. 11,117,056
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`’056 File
`History
`
`
`
`
`
`Hays
`
`Choi
`
`Chu
`
`Prosecution history for U.S. Patent No. 11,117,056
`
`Declaration of Dr. José Zagal
`
`Curriculum Vitae of Dr. José Zagal
`
`U.S. Patent Pub. No. 2008/0102947
`
`U.S. Patent Pub. No. 2007/0174490
`
`U.S. Patent No. 7,698,178
`
`1008
`
`Levkovitz
`
`U.S. Patent Pub. No. 2007/0088801
`
`1009
`
`FPG
`Infringement
`Charts
`
`Exemplary infringement charts for U.S. Patent No.
`11,117,056 served by Patent Owner in Flip Phone
`Games Inc. v. PLR Worldwide Sales Ltd., No. 2:23-
`cv-139 (E.D. Tex.)
`
`1010
`
`History of
`Video Games
`
`Steven Kent, The Ultimate History of Video Games
`(2001)
`
`Encyclopedia
`of Digital
`Communicatio
`ns
`
`Frans Mayra, “Mobile Games,” in the International
`Encyclopedia of Digital Communications and Society,
`1st ed. (2015)
`
`Wireless
`Gaming
`
`N. Leavitt, “Will wireless gaming be a winner?” in
`Computer, Vol. 36, No. 1, pp. 24-27 (Jan. 2003)
`
`1011
`
`1012
`
`1013
`
`ACM
`
`
`
`
`
`Jason Soh & Bernard Tan, “Mobile Gaming,” in
`Communications of the ACM, Vol. 51, No. 3, pp. 35-
`39 (Mar. 2008)
`
`- vii -
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`No.
`
`Short Name
`
`Exhibit
`
`1014
`
`IEEE
`Computer
`Graphics
`
`Michael Zyda et al., “Educating the Next Generation
`of Mobile Game Developers,” in IEEE Computer
`Graphics and Applications, Vol. 27, No. 2, pp. 92-96
`(Mar./Apr. 2007)
`
`1015 Productive Play
`
`Mark Andrejevic, “Productive Play 2.0: The Logic of
`In-Game Advertising” in Media International
`Australia, Vol. 130, No. 1, pp. 66-76 (Feb. 2009)
`
`1016
`
`Vedrashko
`Thesis
`
`Ilya Vedrashko, Advertising in Computer Games
`(Doc. No. 123290221) [Master’s Thesis, Mass. Inst. of
`Technology], DSpace@MIT
`
`1017
`
`Exit Games
`Press Release
`
`Exit Games, In-Game Advertising Goes Mobile [Press
`Release] (Mar. 21, 2006)
`
`1018
`
`Partanen
`
`Jussi-Pekka Partanen, Mobile Gaming: A Framework
`for Evaluating the Industry 2000-2005 (2001)
`
`
`
`
`
`- viii -
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`U.S. Patent No. 10,617,958
`Petition for Inter Partes Review
`
`
`
`I, José P. Zagal, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Quinn Emanuel Urquhart & Sullivan on behalf
`
`of PLR Worldwide Sales Ltd. (“Playrix” or “Petitioner”). I understand that Playrix
`
`is the petitioner in an inter partes review (“IPR”) of U.S. Patent No. 11,117,056 (the
`
`“’056 Patent”) (Ex. 1001) before the Patent Trial and Appeal Board (“PTAB” or
`
`“Board”). I understand the ’056 Patent is assigned to Patent Owner Flip Phone
`
`Games, Inc. (“Patent Owner”).
`
`2.
`
`I have been asked to provide my independent analysis of the ’056 Patent
`
`in light of the materials cited in this declaration and my knowledge and experience
`
`in the field of video games and game design during the relevant period. I have been
`
`asked to consider what a person of ordinary skill in the art as of the priority date of
`
`the ’056 Patent would have understood from the teachings of the ’056 Patent,
`
`including scientific and technical knowledge related to the ’056 Patent. I have also
`
`been asked to consider whether the references relied on by Playrix render obvious
`
`claims 1-16 of the ’056 Patent. All the opinions set forth in this declaration are my
`
`own.
`
`
`
`
`
`
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`- 1 -
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
`
`II. BACKGROUND AND QUALIFICATIONS
`
`3.
`
`I earned a Bachelor of Engineering Sciences degree from Pontificia
`
`Universidad Catolica de Chile in 1997. I obtained my title of Civil Industrial
`
`Engineer with a Computer Science Diploma and my Master’s degree in Engineering
`
`Science from Pontificia Universidad Catolica de Chile in 1999. I obtained my Ph.D.
`
`in Computer Science from Georgia Institute of Technology in 2008.
`
`4.
`
`I currently hold the position of Professor (Lecturing) in the Division of
`
`Games at the University of Utah. I have been employed by the University of Utah
`
`since 2013 and was employed as an Assistant Professor for the College of
`
`Computing and Digital Media at DePaul University from 2008 to 2015. I have spent
`
`more than two decades teaching, researching, or working in the field of gaming and
`
`computer science.
`
`5. My research for more than 20 years has focused generally on gaming,
`
`electronic media, and computer science. I have authored four books: Game Design
`
`Snacks (as editor), Role-Playing Games Studies: Transmedia Foundations (as editor,
`
`with Dr. Sebastian Deterding), The Videogames Ethics Reader (as editor), and
`
`Ludoliteracy: Defining, Understanding, and Supporting Games Education. I have
`
`also authored numerous peer-reviewed articles related to gaming and electronic
`
`media, and I regularly speak at both academic and game industry events such as the
`
`Game Developers Conference.
`
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`6.
`
`I have knowledge and experience in the area of mobile games and
`
`online games through my academic research, teaching activities, as well as the
`
`activities of students here at the University of Utah. My very first academic
`
`publication from over 20 years ago proposed a model to support the design of
`
`multiplayer games1 at a time when multiplayer videogames were much rarer than
`
`they are nowadays. Since then, among other things, I have examined collaborative
`
`gameplay and the ethical considerations surrounding competition in multiplayer
`
`games. Mobile games and multiplayer games are also regular areas of discussion and
`
`analysis in the game design and ethics in videogame classes I teach at both the
`
`undergraduate and graduate levels (e.g. Introduction to Game Design, Mobile Game
`
`Design, Ethics in Games, etc.). For example, I designed and teach an undergraduate
`
`class on mobile game design that is offered as an elective in the BS in Games degree
`
`offered at the University of Utah. Mobile games are covered in most of the other
`
`courses I teach on games and game design.
`
`7.
`
`Also, I have professional experience in the area of online communities
`
`and social websites. From 2000 to 2002, I was the Director of Content and
`
`Community Development at Virtualia S.A. Virtualia was a Chilean company that
`
`
`1 Zagal, J.P., Nussbaum, M., Rosas, R. (2000) “A Model to Support the
`Design of Multiplayer Games”, Presence, Vol. 9, No. 5, October 2000, 448-462.
`
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`created and developed an online community of the same name. The site included
`
`many social features including chat, message boards, and more. One of its more
`
`unique features was its own virtual currency that users could spend to obtain virtual
`
`as well as real-world items. Furthermore, during the summer months from 2005 to
`
`2007, I served as Director of Community Development for Studiocom, a full-service
`
`interactive media agency that designed and developed custom online communities
`
`for commercial clients such as Coca-Cola (CokeStudios, MyCoke) and Mattel
`
`(BarbieGirls.com).
`
`8. My past experience as an expert witness includes in support of the
`
`plaintiff in Segan LLC v Zynga Inc. (United States District Court for the Northern
`
`District of California, Case No. 3:14-cv-01315-CV) concerning U.S. Patent No.
`
`7,954,928, in support of the plaintiff in Catherine Alexander v. Take Two Interactive
`
`Software Inc. et al. (United States District Court for the Southern District of Illinois,
`
`Case No. 3:18-cv-0966-MJR-DGW) concerning copyright infringement, in support
`
`of the defendant in Ragnarok Game, LLC and ESDFOS, LLC v. Nine Realms, Inc.
`
`dba Human Head, et al. (Superior Court for the State of California, County of Los
`
`Angeles, Central District, Case No. 19STCV43434), and in support of the plaintiff
`
`in Skillz Platform Inc. v. AviaGames Inc. (United States District Court for the
`
`Northern District of California, Case No. 5:21-cv-02436) concerning U.S. Patent
`
`No. 9,649,564. I have also been retained as an expert witness for the defendant in
`
`
`
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`GREE, Inc. v. Supercell Oy (United States District Court for the Eastern District of
`
`Texas, Case Nos. 2:19-cv-00070, -161, -172, -311). I have also submitted expert
`
`declarations in support of petitions for post-grant and inter partes review in the
`
`following cases: Supercell Oy v. GREE, Inc., IPR2020-00893, IPR2020-00513,
`
`IPR2020-00310, IPR2020-00215, IPR2020-00993, PGR2021-00041, and PGR-
`
`2021-00034.
`
`9. My professional background and technical qualifications also are
`
`reflected in my Curriculum Vitae, which is attached as Exhibit 1004.
`
`III. COMPENSATION AND RELATIONSHIP WITH PARTIES
`
`10.
`
`I am being compensated for my time. This compensation is not
`
`contingent upon my performance, the outcome of this matter, or any issues involved
`
`in or related to this matter.
`
`11.
`
`I have no financial interest in Petitioner or any related parties. I have
`
`been informed that Flip Phone Games, Inc. owns the ’056 Patent. I have no financial
`
`interest in and have no contact with Flip Phone Games, Inc. I similarly have no
`
`financial interest in the ’056 Patent and have not had any contact with the named
`
`inventor.
`
`IV. MATERIALS REVIEWED AND CONSIDERED
`
`12.
`
`I have reviewed and considered, in the preparation of this declaration,
`
`the ’056 Patent (Ex. 1001) and relevant portions of the prosecution file history for
`
`
`
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`the ’056 Patent (Ex. 1002). I have also reviewed and considered the documents
`
`listed in the Exhibit List of this declaration, including the prior art I opine on in this
`
`declaration. I have also relied upon my education and experience in the relevant
`
`field of the art, and have considered the viewpoint of a POSITA as of the priority
`
`date of the ’056 Patent.
`
`V. UNDERSTANDING OF THE RELEVANT LEGAL STANDARDS
`
`A. The Person of Ordinary Skill in the Art
`
`13.
`
`I understand that central to the process of understanding the disclosures
`
`in a patent and assessing the validity of a patent is the notion of a person of ordinary
`
`skill in the art, sometimes referred to as a “POSITA.”
`
`14.
`
`I have been informed that a person having ordinary skill in the art is a
`
`hypothetical person who is used to analyze the prior art without the benefit of
`
`hindsight. Such a person is presumed to be one who thinks along the lines of
`
`conventional wisdom in the art. It is my understanding that factors such as the
`
`education level of those working in the field, the sophistication of the technology,
`
`the types of problems encountered in the art, the prior art solutions to those problems,
`
`and the speed at which innovations are made may help establish the level of skill in
`
`the art.
`
`15.
`
`I have been informed that the hypothetical person of ordinary skill is
`
`presumed to have knowledge of all references that are sufficiently related to one
`
`
`
`
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`- 6 -
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`another and to the pertinent art, and to have knowledge of all arts reasonably
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`pertinent to the particular problem that the claimed invention addresses.
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`B. Claim Construction
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`16.
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`I have been informed that “[i]n an inter partes review proceeding, a
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`claim of a patent . . . shall be construed using the same claim construction standard
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`that would be used to construe the claim in a civil action under 35 U.S.C. 282(b),
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`including construing the claim in accordance with the ordinary and customary
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`meaning of such claim as understood by one of ordinary skill in the art and the
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`prosecution history pertaining to the patent.” 37 C.F.R. § 42.100(b).
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`17.
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`I understand that there are certain exceptions to the general rule of
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`construing claims in accordance with their ordinary and customary meaning,
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`including lexicography and disavowal, but I have not been asked to analyze those
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`exceptions for the purposes of this declaration.
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`C. Anticipation
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`18.
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`I understand that to anticipate a claim, each and every element in the
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`claim must be present in a single item of prior art. I understand that anticipation
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`must be found in a single reference, device, or process. In other words, anticipation
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`does not allow an additional reference to supply a missing claim limitation.
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`19.
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`In determining whether every one of the elements of the claimed
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`invention is found in the prior art, I understand that one should take into account
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`what a person of ordinary skill in the art would have understood from his or her
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`examination of the particular prior art.
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`20.
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`I understand that an element may be inherent within a prior art
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`reference, and therefore disclosed for purposes of anticipation. In order to rely on
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`inherency, however, one must demonstrate that the element is necessarily present in
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`the prior art reference, not merely likely or possibly present.
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`21.
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`I also understand that the prior art reference alleged to be anticipatory
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`must also enable one of ordinary skill in the art to make the claimed invention
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`without undue experimentation. I understand there is a rebuttable presumption that
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`prior art patents are enabled.
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`22.
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`I understand that any differences between a prior art reference and a
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`claimed invention invoke the question of obviousness, not anticipation.
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`D. Obviousness
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`23.
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`I understand that a patent claim is also unpatentable if the claimed
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`invention would have been obvious to a person of ordinary skill in the field at the
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`time the claimed invention was made. This means that even if all of the requirements
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`of the claim cannot be found in a single prior art reference that would anticipate the
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`claim, a person of ordinary skill in the relevant field who knew about all this prior
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`art would have come up with the claimed invention.
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`24.
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`I understand an obviousness determination can be based on a single
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`prior art reference or a combination of multiple prior art references and the
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`knowledge of a POSITA.
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`25.
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`I further understand that the ultimate conclusion of whether a claim is
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`obvious should be based upon several factual determinations. That is, a
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`determination of obviousness requires inquiries into: (1) the level of ordinary skill
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`in the field; (2) the scope and content of the prior art; (3) what difference, if any,
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`existed between the claimed invention and the prior art; and (4) any secondary
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`evidence bearing on obviousness.
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`26.
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`I further understand that, in determining the scope and content of the
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`prior art, in order to be considered as prior art, a reference must be reasonably related
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`to the claimed invention of the patent. A reference is reasonably related if it is in the
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`same field as the claimed invention or is from another field to which a person of
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`ordinary skill in the field would look to solve a known problem.
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`27.
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`I understand that a patent claim composed of several elements is not
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`proved obvious merely by demonstrating that each of its elements was independently
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`known in the prior art. In evaluating whether such a claim would have been obvious,
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`I may consider whether there is a reason that would have prompted a person of
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`ordinary skill in the field to combine the elements or concepts from the prior art in
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`the same way as in the claimed invention. I understand the prior art itself may
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`U.S. Patent No. 11,117,056
`Ex. 1003 Declaration of Dr. Jose Zagal
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`provide a suggestion, motivation, or reason to combine or modify the teachings of
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`the prior art, or that such a reason may come from other sources, such as the
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`knowledge of a POSITA, common sense, and market forces.
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`28.
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`I further understand, however, that I must be careful not to determine
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`obviousness using the benefit of hindsight. I should put myself in the position of a
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`person of ordinary skill in the field at the time the claimed invention was made and
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`I should not consider what is known today or what is learned from the teaching of
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`the patent.
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`29.
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`I further understand that there is no single way to define the line
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`between true inventiveness on the one hand (which is patentable) and the application
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`of common sense and ordinary skill to solve a problem on the other hand (which is
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`not patentable). For example, market forces or other design incentives may be what
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`produced a change, rather than true inventiveness. I may consider whether the
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`change was merely the predictable result of using prior art elements according to
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`their known functions or substituting one known element for another, rather than
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`being the result of true inventiveness. I may also consider whether there is some
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`teaching or suggestion in the prior art to make the modification or combination of
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`elements claimed in the patent. I may consider whether the innovation applies a
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`known technique that had been used to improve a similar device or method in a
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`similar way. I may also consider whether the claimed invention would have been
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`U.S. Patent No. 11,117,056
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`obvious to try, meaning that the claimed innovation was one of a relatively small
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`number of possible approaches to the problem with a reasonable expectation of
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`success by those skilled in the art.
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`30. Finally, I understand that any obviousness rationale for modifying or
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`combining prior art must include a showing that a person of ordinary skill would
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`have had a reasonable expectation of success. The expectation of success need only
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`be reasonable; a perfect implementation or commercial embodiment of the invention
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`is not required.
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`E. Objective Indicia of Non-Obviousness
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`31.
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`I understand that objective evidence may be considered as an indication
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`that the claimed invention would not have been obvious at the time the claimed
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`invention was made. I understand that the purpose of such objective indicia of non-
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`obviousness, also sometimes referred to as secondary considerations of non-
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`obviousness, is to prevent a hindsight analysis of the obviousness of the claims.
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`32.
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`I understand that objective indicia of obviousness or non-obviousness
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`may include the commercial success of the invention, industry praise for the
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`invention, skepticism of the invention, licensing of the invention, copying of the
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`invention, any long-felt need that the invention solved, failure of others, and
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`unexpected results of the invention.
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`U.S. Patent No. 11,117,056
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`33.
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`I further understand that in order for evidence of secondary
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`considerations to be significant, there must be a sufficient nexus between the claimed
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`invention and the evidence of secondary considerations. I understand that this nexus
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`serves to provide a link between the merits of the claimed invention and the ev