UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HP INC.; DELL TECHNOLOGIES INC.; DELL INC.;
`ASUSTEK COMPUTER INC.; and ASUS GLOBAL PTE. LTD.,
`Petitioner
`
`v.
`
`LITL LLC,
`Patent Owner
`
`____________________
`
`IPR2024-0404
`U.S. Pat. No. 8,624,844
`____________________
`
`DECLARATION OF ANDREW WOLFE, PHD
`
`1605880913
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`HP Inc. - Exhibit 1002 - Page 1
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`

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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`Page
`Background and Qualifications ....................................................................... 2
`A. Qualifications ........................................................................................ 2
`B. Materials Reviewed ............................................................................... 6
`Relevant Legal Standards ................................................................................ 7
`A.
`Burden of Proof ..................................................................................... 7
`B.
`Legal Standards for Prior Art ................................................................ 7
`C.
`Person of Ordinary Skill in the Art ....................................................... 8
`D. Anticipation ........................................................................................... 9
`E.
`Obviousness ........................................................................................... 9
`F.
`Priority/Written Description ................................................................ 14
`III. The 844 Patent ............................................................................................... 16
`A.
`State of the Art Prior to the 844 Patent ............................................... 16
`1.
`Configurable Portable Computers ............................................ 16
`2.
`Using Sensors to Reorient the Display ..................................... 21
`B. Overview of the 844 Patent ................................................................. 26
`C. Overview of the 844 patent’s File History .......................................... 29
`D. Overview of the Prior IPR for the 844 Patent ..................................... 29
`E.
`Overview of the Ex-Parte Reexamination of the 844 Patent .............. 30
`F.
`Person of Ordinary Skill in the Art ..................................................... 31
`IV. Claim Construction Under 37 C.F.R. § 42.104(b)(3) .................................... 32
`A.
`“frame mode” (claims 1, 10, 18) ......................................................... 33
`B.
`“configured to display to a user on the main display component
`a [first/second] content mode” (claims 1, 10, 18) ............................... 34
`“display mode” (claims 1, 10, 18) ....................................................... 35
`“navigation control” (claims 1, 10, 18) ............................................... 36
`“the main display component and the base are rotatable with
`respect to each other about a longitudinal axis . . . to transition
`between at least the laptop mode and the easel mode” (claim 1)
`
`C.
`D.
`E.
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`

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`“a hinge assembly . . . that defines an axis of rotation about
`which the both the base and the main display component are
`rotatable to transition the portable computer between at least the
`laptop mode and the easel mode” (claim 10)
`
`“the hinge assembly defining a longitudinal axis . . . about
`which both the display component and the base are rotatable to
`transition the portable computer between at least the laptop
`mode and the easel mode” (claim 18) ................................................. 37
`V. Overview of the Prior Art References ........................................................... 37
`A.
`EX1006 – Lane .................................................................................... 38
`B.
`EX1007 - Pogue .................................................................................. 40
`C.
`EX1010 - MIT ..................................................................................... 42
`D.
`EX1020 – Hotelling............................................................................. 43
`E.
`EX1012 – Segawa ............................................................................... 45
`VI. Ground 1: claims 1, 3, 4, 7-10, 13, 14, 16, 18 and 22 Are Obvious
`Over the Combination of Lane and Pogue .................................................... 48
`A.
`Claims 1, 10 and 18 ............................................................................. 49
`1.
`[1pre], [10pre], [18pre] A portable computer
`configurable between a plurality of display modes
`including a laptop mode and an easel mode wherein
`transitions between the plurality of display modes allows
`an operator to interact with a single display screen in
`each of the plurality of display modes, the portable
`computer comprising: ............................................................... 49
`[1a], [10a], [18a] a base including a keyboard; ........................ 52
`[1b] a main display component rotatably coupled to the
`base “”
`
`2.
`3.
`
`[10b] a main display component rotatably coupled to the
`base and including the single display screen which
`displays content;
`
`[18b] a main display component including the single
`display screen configured to display content; ........................... 53
`iii
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`

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`4.
`
`[1c] such that the main display component and the base
`are rotatable with respect to one another about a
`longitudinal axis running along an interface between the
`main display component and the base to transition
`between at least the laptop mode and the easel mode, the
`main display component including the single display
`screen,
`
`[10c] a hinge assembly disposed at least partially within
`the base and the main display component that defines an
`axis of rotation about which both the base and the main
`display component are rotatable to transition the portable
`computer between at least the laptop mode and the easel
`mode,
`
`[18c] a hinge assembly disposed at least partially within
`the base configured to rotatably couple the main display
`component to the base, the hinge assembly defining a
`longitudinal axis running along an interface between the
`display component and the base about which the display
`component and the base are rotatable to transition the
`portable computer between at least the laptop mode and
`the easel mode, .......................................................................... 54
`[1d], [10d], [18d] wherein the transition between the
`laptop mode and the easel mode allows the operator to
`operate the portable computer while viewing the single
`display screen in each of the plurality of display modes,
`wherein ...................................................................................... 59
`[1e], [10e], [18e] the laptop mode is configured to
`display to a user on the main display component a first
`content mode having a first content display orientation
`with the main display component oriented towards the
`user and the keyboard oriented to receive input from the
`user; ........................................................................................... 60
`[1f], [10f], [18f] the easel mode is configured to display
`to the user on the main display component a second
`content mode having a second content display orientation
`with the main display component oriented towards the
`user and the keyboard oriented away from the user,
`iv
`
`5.
`
`6.
`
`7.
`
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`8.
`
`wherein the first and second content display orientations
`are 180 degrees relative to each other, and wherein the
`portable computer is operable in the easel mode to enable
`the user to interact with displayed content without
`interacting with the keyboard; and ............................................ 62
`[1g] a navigation control disposed at least partially within
`the base and rotatable about the longitudinal axis, the
`navigation control configured to permit a user to control
`at least one of operating parameters of the portable
`computer and content displayed on the single display
`screen
`
`[10g] a navigation control accessible in each of the
`plurality of display modes and configured to permit a
`user to manipulate at least one of operating parameters of
`the portable computer and the content displayed on the
`single display screen
`
`9.
`
`[18.g] a navigation control disposed at least partially
`about the longitudinal axis ........................................................ 66
`[1h], [10h], [18h] wherein the plurality of modes includes
`a frame mode in which the main display component is
`oriented towards the operator, the base contacts a
`substantially horizontal surface, and the keyboard faces
`the substantially horizontal surface. .......................................... 71
`Claims 3 and 13 ................................................................................... 72
`1.
`[3] The portable computer of claim 1, further comprising
`a first navigation button disposed on one of the base and
`the display component and configured to permit the user
`to manipulate selected content displayed on the screen.
`
`[13] The portable computer of claim 10, further
`comprising a first navigation button user-accessible in
`each of the laptop mode and the easel mode, and
`configured to permit the user to manipulate selected
`content displayed on the screen. ............................................... 72
`Claims 4 and 14 ................................................................................... 74
`
`B.
`
`C.
`
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`HP Inc. - Exhibit 1002 - Page 5
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`

`

`1.
`
`2.
`
`[4pre], [14pre] The portable computer of claim [3/13],
`wherein the screen is configured to display at least one of
`a plurality of modes of content; and ......................................... 74
`[4a], [14a] wherein the first navigation button is
`configured to permit the user to select for display one of
`the plurality of modes of content. ............................................. 74
`Claim 7 ................................................................................................ 75
`1.
`[7a] The portable computer of claim 1, wherein rotating
`either the display component or the base component
`about the longitudinal axis up to approximately 180
`degrees from a closed mode in which the screen is
`disposed substantially against the base configures the
`portable computer into the laptop mode; and ........................... 75
`[7b] wherein rotating either the display component or the
`base about the longitudinal axis beyond approximately
`180 degrees from the closed mode configures the
`portable computer into the easel mode. .................................... 76
`[8] The portable computer of claim 1, wherein the frame mode
`is configured to display to a user on the main display
`component the first content mode having the first content
`display orientation. .............................................................................. 76
`Claim 9 ................................................................................................ 77
`1.
`[9] The portable computer of claim 1, wherein the
`portable computer is configured to prevent the portable
`computer from responding to keyboard input when the
`portable computer is in the frame mode. .................................. 77
`Claim 16 .............................................................................................. 77
`1.
`[16] The portable computer of claim 10, wherein an
`operating display mode is selected from the plurality of
`display modes based on a physical orientation of the
`portable computer. .................................................................... 77
`Claim 22 .............................................................................................. 78
`1.
`[22] The portable computer of claim 18, further
`comprising at least one navigation button disposed on
`one of the base and the display component. ............................. 78
`
`2.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
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`

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`VII. Ground 2: Claims 1, 3, 4, 7-10, 13, 14, 16, 18 and 22 Are Obvious
`Over the Combination of Lane, Pogue and Hotelling ................................... 78
`VIII. Ground 3: Claim 17 is obvious over Lane, Pogue and Segawa .................... 80
`A. Motivation to Combine Lane and Pogue with Segawa ....................... 80
`B.
`[17] The portable computer of claim 10, wherein an operating
`display mode is selected from the plurality of display modes in
`response to operation of the navigation control. ................................. 81
`IX. Ground 4: Claims 1, 3, 4, 7-10, 13, 14, 16, 18 and 22 Are Obvious
`Over Lane, Pogue and MIT ........................................................................... 82
`1.
`Limitations [1c], [10c], [18c] .................................................... 83
`X. Ground 5: CLAIMS 1, 3, 4, 7-10, 13, 14, 16, 18 AND 22 Are
`Obvious Over Lane, Pogue, MIT and Hotelling ........................................... 84
`XI. Ground 6: Claim 17 is Obvious over Lane, Pogue, MIT and Segawa .......... 85
`A. Motivation to Combine Lane and Pogue with Segawa ....................... 85
`B.
`[17] The portable computer of claim 10, wherein an operating
`display mode is selected from the plurality of display modes in
`response to operation of the navigation control. ................................. 85
`XII. Secondary Considerations ............................................................................. 85
`XIII. Availability for Cross-Examination .............................................................. 86
`XIV. Right to Supplement ...................................................................................... 86
`XV. Conclusion ..................................................................................................... 86
`
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`HP Inc. - Exhibit 1002 - Page 7
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`

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`LIST OF EXHIBITS
`
`Description
`
`U.S. Patent No. 8,624,844
`Declaration of Dr. Andrew Wolfe
`File History for U.S. Patent No 8,624,844
`IPR2021-00822, Paper 6 (Institution Decision)
`Reexamination File History for U.S. Patent No 8,624,844
`WIPO Pub. No. WO 95/24007 (“Lane”)
`Windows XP Pro – The Missing Manual (“Pogue”)
`U.S. Pat. No. 6,771,494 (“Shimano”)
`U.S. Pat. Pub. No. 2006/0017692 A1 (“Wehrenberg”)
`“The $100 Laptop Moves Closer to Reality,” c|net News.Com.com
`(September 28, 2005) (“MIT")
`“$100 Laptop Idea Taking Off,” TechTalk (Vol. 50, No. 4,
`October 5, 2005)
`U.S. Pat. Pub. No. 2006/0183512 A1 (“Segawa”)
`First Amended Complaint in 1:23-cv-00120-RGA
`Complaint in 1:23-cv-00120-RGA
`U.S. Pat. No. 5,689,667 (“Kurtenbach”)
`UK Patent Application No. GB2321982A (“Välikangas”)
`U.S. Pat. Pub. No. 2006/0264243 (“Aarras”)
`U.S. Patent No. 5,436,954 (“Nishiyama”)
`U.S. Patent No. 7,061,472 (“Schweizer”)
`U.S. Pat. Pub. No. 2006/0026535 (“Hotelling”)
`United States District Courts —National Judicial Caseload Profile
`Excerpt from PC Magazine (9/26/1995)
`Advertisement in InfoWorld, The Newsweekly for Microcomputer
`Users, Vol. 4, No. 46 (November 22, 1982)
`Advertisement in BYTE (September 1990)
`Chinese Patent Application No. CN2627170Y;
`Certified English Translation of CN2627170Y (“Lin”)
`U.S. Pat. Pub. No. 2006/0034042 (“Hisano”)
`U.S. Pat. No. 6,154,359 (“Kamikakai”)
`viii
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`
`1011
`
`1012
`1013
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`1023
`
`1024
`1025
`1026
`1027
`1028
`
`1605880913
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`Exhibit No.
`1029
`1030
`1031
`1032
`1033
`1034
`
`Description
`U.S. Pat. No. 7,768,508 (“Okuley”)
`U.S. Pat. No. 5,949,408 (“Kang”)
`U.S. Pat. No. 2,880,617 (“Cotton”)
`U.S. Pat. No. 6,851,711 (“Goertzen”)
`U.S. Pat. No. 7,408,506 (“Miller”)
`Declaration of Jackob Ben-Ezra
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`1605880913
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`HP Inc. - Exhibit 1002 - Page 9
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`1.
`
`I, Dr. Andrew Wolfe, have been engaged by HP Inc. as an
`
`independent expert in this action. I expect to testify concerning the subjects
`
`outlined in this report.
`
`2.
`
`As part of that engagement, I have been asked to provide analysis and
`
`expert opinions on U.S. Pat. No. 8,624,844 (the “844 patent”).
`
`3.
`
`I am being compensated for the time I have spent on this matter at the
`
`rate of $650 per hour. My compensation does not depend in any way upon the
`
`outcome of this proceeding.
`
`4.
`
`In reaching the conclusions described herein, I have considered the
`
`documents and materials identified in the Index of Exhibits that is attached to this
`
`report, in addition to any materials cited in this report. My opinions are also based
`
`upon my education, training, research, knowledge, and personal and professional
`
`experience.
`
`5.
`
`Based on my review of the 844 patent and its prosecution history, the
`
`other materials I have considered, and my knowledge and experience, my opinions
`
`are as follows:
`
` Claims 1, 3, 4, 7-10, 13, 14, 16, 18, 22 are unpatentable due to
`
`obviousness based on Lane and Pogue in view of the knowledge of a
`
`POSITA.
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` Claims 1, 3, 4, 7-10, 13, 14, 16, 18, 22 are unpatentable as obvious
`
`over Lane, Pogue and Hotelling in view of the knowledge of a
`
`POSITA.
`
` Claim 17 is unpatentable as obvious over Lane, Pogue and Segawa in
`
`view of view of the knowledge of a POSITA.
`
` Claims 1, 3, 4, 7-10, 13, 14, 16, 18, 22 are unpatentable as obvious
`
`over Lane, Pogue and MIT in view of the knowledge of a POSITA.
`
` Claims 1, 3, 4, 7-10, 13, 14, 16, 18, 22 are unpatentable as obvious
`
`over Lane, Pogue, MIT and Hotelling in view of the knowledge of a
`
`POSITA.
`
` Claim 17 is unpatentable as obvious over Lane, Pogue, MIT and
`
`Segawa in view of the knowledge of a POSITA.
`
`I.
`
`BACKGROUND AND QUALIFICATIONS
`A.
`Qualifications
`A full description of my educational background, professional
`6.
`
`achievements, qualifications, and publications in the past 30+ years are set forth
`
`more fully in my curriculum vitae, which is attached to this Declaration as Exhibit
`
`A. Here, I provide a brief summary of my background and qualifications.
`
`7.
`
`I am the founder and sole employee of Wolfe Consulting. Through
`
`Wolfe Consulting, I provide technical and business analytics to businesses on
`
`1605880913
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`HP Inc. - Exhibit 1002 - Page 11
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`processor technology, computer systems, consumer electronics, software, design
`
`tools, data security, cryptography and intellectual property issues. I have more than
`
`thirty five years’ experience developing products, researching, consulting, and
`
`teaching in those fields. In that time, I have worked as a computer architect,
`
`computer system designer, and as an executive in the PC and electronics business.
`
`I have also taught at some of the world’s leading institutions in those fields,
`
`including Stanford University, Princeton University, Carnegie Mellon University,
`
`and Santa Clara University.
`
`8.
`
`In 1985, I earned the B.S.E.E. degree in Electrical Engineering and
`
`Computer Science from the Johns Hopkins University. In 1987, I received the M.S.
`
`degree in Electrical and Computer Engineering from Carnegie Mellon University
`
`and in 1992, I received the Ph.D. degree in Computer Engineering from Carnegie
`
`Mellon University. My doctoral dissertation proposed a new approach for the
`
`architecture of a computer processor.
`
`9.
`
`I have more than 35 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator, and
`
`executive in the electronics industry.
`
`10.
`
`I have extensive experience in the design, development, and analysis
`
`of portable computing devices including portable PCs. In the mid-late 1980s I
`
`worked as part of the development team for the Linus Write-Top, which is
`
`1605880913
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`HP Inc. - Exhibit 1002 - Page 12
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`commonly acknowledged to be the first commercial tablet computer. I later
`
`worked on screen technology for many handheld computing devices including the
`
`Motorola Envoy and prototypes for the Apple Newton. In 1997, I was hired to run
`
`the research efforts at S3, Inc. At the time S3 produced the 3D graphics hardware
`
`and driver software for more than half of new PCs, worldwide. I managed our
`
`display technology group. I led the development of components for laptop
`
`computers including the IBM Thinkpad and for desktop computers as well. I also
`
`worked with the teams that developed the FrontPath wireless tablet PC and the
`
`Diamond Mako handheld computer.
`
`11.
`
`In these roles, I managed relationships with numerous laptop
`
`computer companies including IBM, Toshiba, and Compaq as well as key software
`
`providers such as Microsoft.
`
`12.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technology advisory
`
`boards for two media processor design companies: BOPS, Inc., where I chaired the
`
`board, and Siroyan Ltd., where I served in a similar role; for three networking chip
`
`companies – Intellon, Inc., Comsilica, Inc., and Entridia, Inc.; and for one 3D game
`
`accelerator company, Ageria, Inc.
`
`13.
`
`I have also served as a technology advisor to Motorola and to several
`
`venture capital funds in the U.S. and Europe. Currently, I am a director at Turtle
`
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`Beach Corporation, providing guidance in its development of commercial
`
`electronic products primarily related to video gaming.
`
`14.
`
`From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I
`
`taught undergraduate and graduate-level courses in Computer Architecture,
`
`Advanced Computer Architecture, Display Technology, and Microprocessor
`
`Systems, and conducted sponsored research in the area of computer systems and
`
`related topics. From 1999 through 2002, I taught a Computer Architecture course
`
`to both undergraduate and graduate students at Stanford University multiple times
`
`as a Consulting Professor. At Princeton, I received several teaching awards, both
`
`from students and from the School of Engineering. I have also taught advanced
`
`microprocessor architecture to industry professionals in IEEE and ACM sponsored
`
`seminars. I am currently a lecturer at Santa Clara University teaching courses on
`
`Microprocessor Systems, Advanced Logic Design, Real-Time Computing, and
`
`Mechatronics.
`
`15.
`
`I have published more than fifty peer-reviewed papers in computer
`
`architecture and computer systems. I have also chaired IEEE and ACM
`
`conferences in microarchitecture and integrated circuit design and served as an
`
`associate editor for IEEE and ACM journals. I served on the IEEE Computer
`
`Society Awards committee. I am an IEEE Fellow and an IEEE Computer Society
`
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`Distinguished Contributor. I am a named inventor on at least fifty-seven U.S.
`
`patents and thirty-seven foreign patents, including patents related to display
`
`technology.
`
`16.
`
`I have been the invited keynote speaker at the ACM/IEEE
`
`International Symposium on Microarchitecture and at the International Conference
`
`on Multimedia. I have also been an invited speaker on various aspects of
`
`technology or the PC industry at numerous industry events including the Intel
`
`Developer’s Forum, Microsoft Windows Hardware Engineering Conference,
`
`Microprocessor Forum, Embedded Systems Conference, Comdex, and Consumer
`
`Electronics Show as well as at the Harvard Business School and the University
`
`Illinois Law School. I have been interviewed on subjects related to technology and
`
`the electronics industry by publications such as the Wall Street Journal, New York
`
`Times, LA Times, Time, Newsweek, Forbes, and Fortune as well as CNN, NPR,
`
`and the BBC. I have also spoken at dozens of universities including MIT, Stanford,
`
`University of Texas, Carnegie Mellon, UCLA, University of Michigan, Rice
`
`University, and Duke University.
`
`B. Materials Reviewed
`17.
`In preparing this declaration, I have reviewed and/or considered at
`
`least the documents cited in the List of Exhibits and the documents referenced in
`
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`this declaration. I have also reviewed the entire prosecution history of the 844
`
`patent.
`
`II.
`
`RELEVANT LEGAL STANDARDS
`18.
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed by counsel for Petitioner about certain aspects of the law that are relevant
`
`to forming my opinions. My understanding of the law is as follows.
`
`A.
`19.
`
`Burden of Proof
`I understand that a petitioner must demonstrate unpatentability by a
`
`preponderance of the evidence. I understand preponderance means more likely
`
`than not in this context.
`
`B.
`20.
`
`Legal Standards for Prior Art
`I understand that a patent or other publication must first qualify as
`
`prior art before it can be used to invalidate a patent claim.
`
`21.
`
`I understand that a U.S. or foreign patent qualifies as prior art to an
`
`asserted patent if the date of issuance of the patent is prior to the invention of the
`
`asserted patent.
`
`22.
`
` I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication, qualifies as prior art to an asserted
`
`patent if the date of publication is prior to the invention of the asserted patent.
`
`1605880913
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`HP Inc. - Exhibit 1002 - Page 16
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`23.
`
`I understand that a U.S. or foreign patent also qualifies as prior art to
`
`an asserted patent if the date of issuance of the patent is more than one year before
`
`the filing date of the asserted patent.
`
`24.
`
`I further understand that a printed publication, such as an article
`
`published in a magazine or trade publication, constitutes prior art to an asserted
`
`patent if the publication occurs more than one year before the filing date of the
`
`asserted patent.
`
`25.
`
`I also understand that a U.S. patent qualifies as prior art to the asserted
`
`patent if the application for that patent was filed in the United Stated before the
`
`invention of the asserted patent.
`
`C.
`26.
`
`Person of Ordinary Skill in the Art
`I understand that my assessment of the claims of the 249 patent and
`
`the teachings of the prior art and my analysis and opinions herein must be
`
`undertaken from the perspective of what would have been known or understood by
`
`a person having ordinary skill in the art, reading the 844 patent on its priority date
`
`and in light of the specification and file history of the 844 patent. I refer to such a
`
`person as a “POSITA.”
`
`27.
`
`I further understand that in determining the level of ordinary skill in
`
`the art, I may consider factors including:
`
`(a) the type of problems encountered in the art or field of invention,
`
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`(b) prior art solutions to those problems,
`
`(c) the rapidity with which innovations are made,
`
`(d) sophistication of the technology, and
`
`(e) the educational level of active workers in the field.
`
`28.
`
`I understand that a person of ordinary skill in the art is not a specific
`
`real individual, but rather a hypothetical individual having the qualities reflected
`
`by the factors above. This hypothetical person has knowledge of all prior art in the
`
`relevant field and takes from each reference what it would teach to a person having
`
`the skills of a POSITA.
`
`D.
`29.
`
`Anticipation
`I understand that a patent claim may be “anticipated” if each element
`
`of that claim is present either explicitly or inherently in a single prior art reference,
`
`and that the elements should be arranged in the reference as in the claim. I
`
`understand that for a claimed limitation to be inherently present, the prior art
`
`reference need not expressly disclose the limitation, therefore long as the claimed
`
`limitation necessarily flows from a disclosure in the reference.
`
`E.
`30.
`
`Obviousness
`I understand that a patent claim can be considered to have been
`
`obvious to a person of ordinary skill in the art at the time of the claimed invention.
`
`This means that, even if all of the requirements of a claim are not found in a single
`
`1605880913
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`9
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`HP Inc. - Exhibit 1002 - Page 18
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`

`

`prior art reference, the claim is not patentable if the differences between the prior
`
`art and the subject matter in the claim would have been obvious to a person of
`
`ordinary skill in the art at the time of the claimed invention.
`
`31.
`
`I understand that a person of ordinary skill in the art provides a
`
`reference point from which the prior art and claimed invention should be viewed.
`
`This reference point prevents one from using his or her own insight or hindsight in
`
`deciding whether a claim is obvious.
`
`32.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, etc.
`
`33.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references.
`
`34.
`
`I also understand that the prior art references themselves may provide
`
`a suggestion, motivation, or reason to combine, but other times the nexus linking
`
`two or more prior art references is simple common sense.
`
`35.
`
`I further understand that obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
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`HP Inc. - Exhibit 1002 - Page 19
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`

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`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`36.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.
`
`37.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art looking to overcome a problem will often be able to fit
`
`together the teachings of multiple publications. I understand that obviousness
`
`analysis therefore takes into account the inferences and creative steps that a person
`
`of ordinary skill in the art would employ under the circumstances.
`
`38.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a person of ordinary skill has good
`
`reason to pursue the known options within his or her technical grasp because the
`
`result is likely the product not of innovation but of ordinary skill and common
`
`sense.
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`1605880913
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`HP Inc. - Exhibit 1002 - Page 20
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`39.
`
`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
`
`work is available in one field of endeavor, design incentives and other market
`
`forces can prompt variations of it, either in the same field or a different one. If a
`
`person of ordinary skill can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`40.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a person of ordinary skill in the art, not
`
`just the patentee. Accordingly, I understand that any need or problem known in the
`
`field of endeavor at the time of invention and addressed by the patent can provide a
`
`reason for combining the elements in the manner claimed.
`
`41.
`
`I understand that a proposed obviousness combination does not need
`
`to be the preferred, or most desirable, combination available, in order to render a
`
`claim obvious. Instead, there must be something that suggests the desirability of
`
`the proposed combination, not necessarily something that suggests that the
`
`proposed combination is the most desirable combination available.
`
`42.
`
`Similarly, I understand that for purposes of obviousness, when a
`
`motivating benefit comes at the expense of another benefit, that does not nul