`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`
`MICROSOFT CORPORATION,
`HP INC., DELL INC., DELL TECHNOLOGIES INC.,
`ASUSTEK COMPUTER INC., ASUS GLOBAL PTE. LTD.,
`Petitioners
`v.
`LITL LLC,
`Patent Owner.
`
`
`___________________
`
`IPR2024-00457
`U.S. Patent No. 9,880,715
`_____________________
`
`
`
`
`
`DECLARATION OF DR. HENRY HOUH
`REGARDING U.S. PATENT NO. 9,880,715
`
`
`
`
`
`EX-1003
`Microsoft Inc. v. LiTL LLC
`
`

`

`
`
`TABLE OF CONTENTS
`INTRODUCTION .................................................................................................... 1 
`I. 
`II.  BACKGROUND AND QUALIFICATIONS .......................................................... 2 
`III. LEVEL OF ORDINARY SKILL IN THE ART ...................................................... 6 
`IV. MATERIALS CONSIDERED AND RELIED UPON ............................................. 7 
`V.  LEGAL STANDARDS .......................................................................................... 10 
`A. 
`Legal Standards for Prior Art ................................................................... 10 
`B. 
`Legal Standards for Priority Date ............................................................ 11 
`C. 
`Legal Standards for Obviousness ............................................................. 11 
`VI.    SUMMARY OF OPINIONS ............................................................................... 15 
`VII.   BRIEF DESCRIPTION OF THE TECHNOLOGY ........................................... 15 
`VIII. OVERVIEW OF THE ’715 PATENT ................................................................. 16 
`A. 
`Subject Matter Overview of the ’715 Patent ............................................ 16 
`B. 
`Brief Summary of ’715 Patent Prosecution History ................................ 19 
`C. 
`Brief Summary of Prior Patent Office Proceedings Involving the ’715
`Patent ........................................................................................................ 20 
`IX. CLAIM CONSTRUCTION ................................................................................... 21 
`A. 
`“plurality of views” .................................................................................. 21 
`B.  Means-Plus-Function (“MPF”) ................................................................ 22 
`1. 
`“display component” ..................................................................... 22 
`2. 
`“execution component” ................................................................. 22 
`3. 
`“storage component” ..................................................................... 25 
`X.  OVERVIEW OF THE CITED REFERENCES ..................................................... 25 
`A. 
`Pröll (Ex. 1006) ........................................................................................ 25 
`B.  Martinez (Ex. 1007) ................................................................................. 27 
`C. 
`Chandhri (Ex. 1011) ................................................................................. 29 
`D. 
`Preppernau ................................................................................................ 30 
`XI. DETAILED EXPLANATION OF GROUNDS .................................................... 31 
`A.  Ground 1: Obviousness over Pröll and Martinez (Claims 1, 19, 20) ...... 31 
`1. 
`Claim 1 ........................................................................................... 31 
`2. 
`Claim 19: The user interface of claim 1, wherein the first mode is a
`laptop mode where the keyboard is oriented to be accessible to the
`i
`
`

`

`
`
`2. 
`
`3. 
`
`operator and wherein the second mode is an easel mode or a frame
`mode where the keyboard is oriented to be inaccessible to the
`operator. ......................................................................................... 49 
`Claim 20 ......................................................................................... 51 
`3. 
`B.  Ground 2: Obviousness over Pröll, Martinez, and Chandhri (Claims 2,
`15-18) ....................................................................................................... 53 
`Claim 2: The user interface of claim 1, wherein in the plurality of
`1. 
`views includes a home view configured to organize a plurality of
`content modes and a channel view configured to organize at least
`one of a single content mode and two content modes. .................. 53 
`Claim 15: The user interface of claim 1, wherein the plurality of
`views includes a channel view including a channel selector that
`displays a sequence of visual representations. .............................. 56 
`Claim 16: The user interface of claim 15, wherein the execution
`component is further configured to transition the computer system
`to the channel view in response to receiving user input via at least
`one input device integral to or operatively connected with the
`computer system. ........................................................................... 58 
`Claim 17 ......................................................................................... 59 
`Claim 18 The user interface of claim 17, wherein the at least one
`input device includes at least one of a scroll wheel, a touchpad, and
`a mouse .......................................................................................... 62 
`C.  Ground 3: Obviousness over Pröll, Martinez, and Preppernau (Claims 3-
`14) ............................................................................................................ 63 
`Claim 3: The user interface of claim 1, wherein the plurality of
`1. 
`views includes a screen saver view configured to organize selected
`content modes for passive viewing. ............................................... 63 
`Claim 4: The user interface of claim 1, wherein the plurality of
`views includes a home view organizing a plurality of visual
`representations of digital content, wherein the home view
`comprises a header display and a body display, and wherein the
`header display comprises a lateral frame extending from the left of
`the display component to the right of the display component,
`wherein the body display is rendered below the header display in
`the display component of the computer system. ........................... 63 
`Claim 5: The user interface of claim 4, wherein the computer
`system configuration comprises a physical positioning of a
`computer system display relative to a base of the computer system
`ii
`
`4. 
`5. 
`
`2. 
`
`3. 
`
`

`

`
`
`6. 
`
`7. 
`
`8. 
`9. 
`
`4. 
`5. 
`
`that includes the keyboard about a longitudinal axis of rotation. .. 68 
`Claim 6 ........................................................................................... 70 
`Claim 7: The user interface of claim 1, further comprising a
`storage component configured to retain a previous view state. .... 72 
`Claim 8: The user interface of claim 7, wherein the execution
`component is further configured to cause the computer system to
`transition to a previous view in response to execution of a
`navigation element by a user. ........................................................ 74 
`Claim 9: The user interface of claim 7, further comprising the
`navigation element displayed in a header display. ........................ 76 
`Claim 10 ......................................................................................... 77 
`Claim 11: The user interface of claim 10, wherein the home view
`further comprises an indication of visual representations displayed
`on adjacent display pages of the home view, wherein the indication
`is displayed within the body of the home view. ............................ 80 
`10.  Claim 12 ......................................................................................... 83 
`11.  Claim 13 ......................................................................................... 88 
`12.  Claim 14: The user interface of claim 1, wherein the plurality of
`views includes a quick access view configured to permit user
`generation of a mapping between digital content and a visual
`representation. ................................................................................ 92 
`D.  Ground 4: Obviousness over Pröll and Preppernau (Claims 1, 3-14, 19,
`20) ............................................................................................................ 92 
`1.  Motivation to Combine .................................................................. 92 
`2. 
`Claim 1 ........................................................................................... 94 
`3. 
`Claim 3: The user interface of claim 1, wherein the plurality of
`views includes a screen saver view configured to organize selected
`content modes for passive viewing. ............................................. 101 
`Claim 4: The user interface of claim 1, wherein the plurality of
`views includes a home view organizing a plurality of visual
`representations of digital content, wherein the home view
`comprises a header display and a body display, and wherein the
`header display comprises a lateral frame extending from the left of
`the display component to the right of the display component,
`wherein the body display is rendered below the header display in
`the display component of the computer system. ......................... 102 
`Claim 5: The user interface of claim 4, wherein the computer
`iii
`
`4. 
`
`5. 
`
`

`

`
`
`E. 
`
`6. 
`7. 
`
`8. 
`
`system configuration comprises a physical positioning of a
`computer system display relative to a base of the computer system
`that includes the keyboard about a longitudinal axis of rotation. 102 
`Claim 6 ......................................................................................... 103 
`Claim 7: The user interface of claim 1, further comprising a
`storage component configured to retain a previous view state. .. 103 
`Claim 8: The user interface of claim 7, wherein the execution
`component is further configured to cause the computer system to
`transition to a previous view in response to execution of a
`navigation element by a user. ...................................................... 104 
`Claim 9: The user interface of claim 7, further comprising the
`navigation element displayed in a header display. ...................... 104 
`10.  Claim 10 ....................................................................................... 105 
`11.  Claim 11: The user interface of claim 10, wherein the home view
`further comprises an indication of visual representations displayed
`on adjacent display pages of the home view, wherein the indication
`is displayed within the body of the home view. .......................... 106 
`12.  Claim 12 ....................................................................................... 106 
`13.  Claim 13 ....................................................................................... 106 
`14.  Claim 14: The user interface of claim 1, wherein the plurality of
`views includes a quick access view configured to permit user
`generation of a mapping between digital content and a visual
`representation. .............................................................................. 108 
`15.  Claim 19: The user interface of claim 1, wherein the first mode is a
`laptop mode where the keyboard is oriented to be accessible to the
`operator and wherein the second mode is an easel mode or a frame
`mode where the keyboard is oriented to be inaccessible to the
`operator. ....................................................................................... 109 
`16.  Claim 20 ....................................................................................... 109 
`Ground 5: Obviousness over Pröll, Preppernau, and Chandhri (Claims 2,
`15-18) ..................................................................................................... 111 
`Claim 2: “The user interface of claim 1, wherein in the plurality of
`1. 
`views includes a home view configured to organize a plurality of
`content modes and a channel view configured to organize at least
`one of a single content mode and two content modes.” .............. 111 
`Claim 15: “The user interface of claim 1, wherein the plurality of
`views includes a channel view including a channel selector that
`iv
`
`9. 
`
`2. 
`
`

`

`
`
`3. 
`
`displays a sequence of visual representations.” ........................... 112 
`Claim 16: “The user interface of claim 15, wherein the execution
`component is further configured to transition the computer system
`to the channel view in response to receiving user input via at least
`one input device integral to or operatively connected with the
`computer system.” ....................................................................... 112 
`Claim 17 ....................................................................................... 113 
`Claim 18: “The user interface of claim 17, wherein the at least one
`input device includes at least one of a scroll wheel, a touchpad, and
`a mouse.” ..................................................................................... 115 
`XII.  CONCLUSION .................................................................................................. 115 
`
`
`4. 
`5. 
`
`v
`
`

`

`
`
`I.
`
`I, Dr. Henry Houh, hereby declare as follows:
`INTRODUCTION
`1.
`I have been retained on behalf of Microsoft Corp. (“Microsoft” or
`
`“Petitioner”) to offer technical opinions related to U.S. Patent No. 9,880,715 (“the ’715
`
`patent”) (EX-1001). I understand that Microsoft is requesting that the Patent Trial and
`
`Appeal Board (“PTAB” or “Board”) institute an inter partes review (“IPR”) proceeding
`
`of the ’715 patent. Specifically, I have been asked to consider the validity of claims 1–
`
`20 of the ’715 patent (the “Challenged Claims”) in view of prior art and obviousness
`
`considerations from the perspective of a person of ordinary skill in the art at the time of
`
`the invention (“POSITA”) as it relates to the ’715 patent.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I am
`
`also being reimbursed for expenses that I incur during the course of this work. My
`
`compensation is not contingent upon the results of my study, the substance of my
`
`opinions, or the outcome of any proceeding involving the Challenged Claims. I have no
`
`financial interest in the outcome of this matter or on the pending litigation between
`
`Petitioner and Patent Owner.
`
`3. My analysis here is based on my years of education, research and
`
`experience, as well as my investigation and study of relevant materials, including those
`
`cited herein.
`
`4.
`
`I may rely upon these materials, my knowledge and experience, and/or
`
`additional materials to rebut arguments raised by the Patent Owner. Further, I may also
`
`1
`
`

`

`
`
`consider additional documents and information in forming any necessary opinions,
`
`including documents that may not yet have been provided to me.
`
`5. My analysis of the materials in this proceeding is ongoing and I will
`
`continue to review any new material as it is provided. This declaration represents only
`
`those opinions I have formed to date. I reserve the right to revise, supplement, and/or
`
`amend my opinions stated herein based on new information and on my continuing
`
`analysis of the materials already provided.
`
`II. BACKGROUND AND QUALIFICATIONS
`6.
`I am over the age of 18 and am competent to write this declaration. I have
`
`personal knowledge, or have developed knowledge of these technologies based upon
`
`education, training, or experience, of the matters set forth herein.
`
`7. My qualifications are set forth in my curriculum vitae, a copy of which is
`
`attached as Appendix A to this Declaration. The following is a brief summary of my
`
`relevant qualifications and professional experience.
`
`8.
`
`I received a Ph.D. in Electrical Engineering and Computer Science from
`
`the Massachusetts Institute of Technology (“MIT”) in 1998. Beforehand, I received a
`
`Master of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science degree in Electrical Engineering and Computer Science in 1989,
`
`and a Bachelor of Science degree in Physics in 1990, all from MIT.
`
`9.
`
`I am currently self-employed as an independent technical consultant. Until
`
`late 2022, I was also president of a company that provides supplemental science,
`2
`
`

`

`
`
`technology, engineering, and mathematics (“STEM”) education to children of all ages.
`
`10.
`
`I first entered telecommunications in 1987 when I worked as a summer
`
`intern at AT&T Bell Laboratories as part of a five-year dual degree program at MIT.
`
`During my first summer, I worked designing digital hardware including using
`
`programmable logic devices. I continued to work at AT&T Bell Laboratories as part of
`
`this MIT program. While at MIT, I was a teaching assistant (“TA”) in the Electrical
`
`Engineering and Computer Science Department’s core Computer Architectures course.
`
`I first was a TA as a senior for a role typically reserved for graduate students. I later
`
`became head TA. The course covered various topics in computer architectures,
`
`including programmable logic arrays, multiprocessor systems and parallel processing.
`
`As a TA, I helped write homework assignments, lab assignments, and exams. I also
`
`taught in the recitation sections.
`
`11. Later, as part of my doctoral research at MIT from 1991-1998, I was a
`
`research assistant in the Telemedia Network Systems (“TNS”) group at the Laboratory
`
`for Computer Science. The TNS group built a high-speed gigabit network and created
`
`applications that ran over the network. Example applications included ones for remote
`
`video capture, processing, and display of video on computer terminals. In addition to
`
`working on the design of core network components, designing and building the high-
`
`speed links, and designing and writing the device drivers for the interface cards, I also
`
`helped design the switch, which was composed of an array of FPGAs at the core.
`
`12.
`
`I also set up the group’s web server and helped to build the web pages that
`3
`
`

`

`
`
`initiated the above-mentioned video sessions via a web interface. Vice President Al
`
`Gore visited our group in 1996 and received a demonstration of—and remotely drove—
`
`a radio-controlled toy car with a wireless video camera mounted on it that was built by
`
`our group. This toy car device received commands transmitted over a network from a
`
`remote computer, and video data from the toy car was transmitted wirelessly then over
`
`a computer network back to the user controller. On occasion, we allowed users visiting
`
`our web site to drive the toy car from their remote computer while they watched the
`
`video on their computer. The video stream was encoded by TNS-designed hardware,
`
`streamed over the TNS-designed network, and displayed using TNS-designed software.
`
`13.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks for
`
`Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I analyzed local
`
`area and wide area flows to show a more efficient method for routing packets in a
`
`network, based on traffic patterns at the time.
`
`14. From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems for streaming packetized
`
`audio over data networks instead of using traditional telephone lines. NBX was later
`
`acquired by 3Com Corporation and the phone system is still used today by numerous
`
`businesses.
`
`15. As part of my work at NBX, I designed the core audio reconstruction
`
`algorithms for the telephones, as well as the packet transmission algorithms. I also
`
`designed and validated the core packet transport protocol used by the phone system.
`4
`
`

`

`
`
`The protocol was used for all signaling in the phone system, including for the setup of
`
`conference calls. The NBX system also featured a computer interface for initiating
`
`phone calls, which could also initiate conference calls. The NBX system also supported
`
`the Telephony Application Programming Interface (“TAPI”) that allowed other
`
`computer programs to integrate with our system telephony features. We obtained U.S.
`
`Patent No. 6,697,963, entitled “Telecommunication method for ensuring on-time
`
`delivery of packets containing time-sensitive data,” as part of this work.
`
`16. From 1999-2004, I was employed by Empirix or its predecessor company,
`
`Teradyne. Empirix was a leader in test tools for telecommunications protocols and
`
`systems, providing functional testing tools as well as load testing tools. From 2000-
`
`2001, I conceived and built a test platform for testing Voiceover-IP (VoIP) based on
`
`highly parallel network processors. The first application on this new test platform was
`
`a cloud emulator for simulating the effects of transmitting VoIP over a busy network.
`
`The platform was based on a multi-core high performance network processor chip.
`
`17.
`
`In 2006, as part of my role at BBN Technologies, I helped found PodZinger
`
`Inc., now known as RAMP Inc. PodZinger utilized BBN’s speech recognition
`
`algorithms to search through the spoken words in audio and video segments. While I
`
`was Vice President of Operations and Technology, PodZinger followed its initial
`
`prototype with a full streaming audio and video search solution. I also created a social
`
`networking web site, which BBN sold to a venture-funded startup company. In the
`
`process of creating the web site, I designed and specified the authentication and
`5
`
`

`

`
`
`authorization protocols.
`
`18. Since I set up one of the web’s first hundred or so servers around late 1993,
`
`I have continued to create web servers and their interfaces for various organizations and
`
`companies. I have coded the web user interface from scratch, and I have also used
`
`various content management systems to create user interfaces.
`
`19.
`
`I have been awarded several United States patents, and I have several
`
`patent publications including the following examples:
`
` U.S. Patent No. 7,975,296, “Automated security threat testing of web pages”;
`
` U.S. Patent No. 7,877,736, “Computer language interpretation and optimization
`
`for server testing”;
`
` U.S. Patent No. 7,801,910, “Method and apparatus for timed tagging of media
`
`content”;
`
` U.S. Patent 7,590,542, “Method of Generating Test Scripts Using a Voice-
`
`Capable Markup Language”;
`
` U.S. Patent No. 6,967,963, “Telecommunication method for ensuring on-time
`
`delivery of packets containing time-sensitive data.”
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`20.
`In rendering the opinions set forth in this declaration, I was asked to
`
`consider the patent claims and the prior art through the eyes of a POSITA at the time of
`
`the alleged invention, which I understand is asserted to be April 1, 2008—the earliest
`
`possible priority date of the ’715 Patent. I understand that the factors considered in
`6
`
`

`

`
`
`determining the ordinary level of skill in a field of art include the level of education and
`
`experience of persons working in the field; the types of problems encountered in the
`
`field; the teachings of the prior art, and the sophistication of the technology at the time
`
`of the alleged invention. I understand that a POSITA is not a specific real individual,
`
`but rather is a hypothetical individual having the qualities reflected by the factors above.
`
`I understand that a POSITA would also have knowledge from the teachings of the prior
`
`art, including the art cited below.
`
`21. Taking these factors into consideration, in my opinion, at the relevant time,
`
`a POSITA relating to the technology of the ’715 Patent would have had a Bachelor’s
`
`degree in Electrical Engineering, Computer Engineering, Computer Science, or a
`
`similar field, plus two years of work experience in designing GUIs for computing
`
`devices. In my opinion, more education could substitute for experience and vice versa.
`
`22. Before April 1, 2008, my level of skill in the art was at least that of a
`
`POSITA. I am qualified to provide opinions concerning what a POSITA would have
`
`known and understood at that time, and my analysis and conclusions herein are from
`
`the perspective of a POSITA as of that date.
`
`IV. MATERIALS CONSIDERED AND RELIED UPON
`
`23.
`
`In forming my opinions expressed herein, in addition to relying on my
`
`education and experience, I considered the totality of the following materials:
`
`Exhibit
`1001
`
`Reference
`U.S. Patent No. 8,612,715 (“the ’715 patent”)
`
`7
`
`

`

`
`
`Exhibit
`1002
`1003
`
`1004
`1005
`1006
`
`1007
`1008
`
`1009
`1010
`1011
`
`1012
`1013
`1014
`1015
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Reference
`File History of the ’715 patent
`Declaration of Dr. Henry Houh in Support of Petition (“Houh
`Decl.”)
`Dr. Henry Houh CV
`U.S. 90/014,958 Ex Parte Reexamination File History
`German Patent Application Publication DE10331185A1
`(“Pröll”) with certified translation
`U.S. Patent 6,137,468 (“Martinez”)
`Joan Preppernau & Joyce Cox, Step By Step Windows Vista,
`Microsoft Press (Jan. 3, 2007) (“Preppernau”)
`U.S. Patent 5,847,698 (“Reavey”)
`RESERVED
`U.S. Patent Application Publication 2006/0062141 A1
`(“Chandhri”)
`RESERVED
`RESERVED
`RESERVED
`Declaration of June Munford
`Complaint, LiTL LLC v. ASUSTeK Computer Inc., No. 23-cv-
`00122 (D. Del. Feb. 1, 2023)
`Complaint, LiTL LLC v. Dell Techs. Inc., No. 23-cv-0121 (D.
`Del. Feb. 1, 2023)
`Complaint, LiTL LLC v. HP Inc., No. 23-cv-00120 (D. Del.
`Feb. 1, 2023)
`Order Granting Microsoft Intervention, LiTL LLC v. HP Inc.,
`No. 23-cv-00120 (D. Del. Oct. 16, 2023)
`Scheduling Order, LiTL LLC v. HP Inc., No. 23-120 (D. Del.
`Jan. 11, 2024), ECF No. 44
`Foley, James D., et al., Computer Graphics Principles and
`Practice, Second Edition in C (July 1997)
`
`8
`
`

`

`
`
`Exhibit
`1022
`
`1024
`
`1025
`
`1026
`1027
`
`Reference
`Dino Esposito, New Graphical Interface: Enhance Your
`Programs with New Windows XP Shell Features, MSDN
`Magazine
`1023 Maintenance & Service Guide, HP Pavilion dv1600
`Entertainment Notebook PC (June 2006)
`Complaint, LiTL LLC v. Lenovo (United States), Inc., No. 20-
`cv-00689 (D. Del. May 22, 2020)
`Stipulation of Dismissal, LiTL LLC v. Lenovo (United States)
`Inc., No. 20-cv-00689 (D. Del. Feb. 3, 2023)
`RESERVED
`Fujitsu LifeBook T3000 Tablet PC review: Fujitsu LifeBook
`T3000 Tablet PC, available at
`https://www.cnet.com/reviews/fujitsu-lifebook-t3000-tablet-pc-
`review/
`HP Compaq Tablet PC TC1100 review: HP Compaq Tablet PC
`TC1100, available at https://www.cnet.com/reviews/hp-
`compaq-tablet-pc-tc1100-review/
`Acer TravelMate C110 review: Acer TravelMate C110,
`available at https://www.cnet.com/reviews/acer-travelmate-
`c110-review/
`OLPC XO-1 (One Laptop Per Child) review: OLPC XO-1
`(One Laptop Per Child), available at
`https://www.cnet.com/reviews/olpc-xo-1-one-laptop-per-child-
`review/
`1031 Microsoft Indemnity Request
`1032
`RESERVED
`1033
`RESERVED
`1034
`RESERVED
`1035
`Q&A Microsoft Unveils Details for Ultra-Mobile Personal
`Computers
`Australia Patent Application Publication AU2001100022A4
`RESERVED
`RESERVED
`
`1036
`1037
`1038
`
`1028
`
`1029
`
`1030
`
`9
`
`

`

` have also considered any materials cited in this declaration even if not included in
`
`
`
` I
`
`the list above.
`
`V. LEGAL STANDARDS
`24.
`I am not a lawyer and do not provide any legal opinions, but I have been
`
`advised that certain legal standards are to be applied by technical experts in forming
`
`opinions regarding meaning and validity of patent claims. I have applied the legal
`
`standards described below.
`
`25.
`
`It is my understanding that assessing the validity of a U.S. patent based on
`
`a prior art analysis involves two steps. First, one must assess what meaning a POSITA
`
`would have given the terms. Second, after assessing the meaning of the claim terms,
`
`one may then assess validity by comparing a patent claim to the “prior art.” I understand
`
`that the teaching of the prior art is viewed through the eyes of a POSITA at the time the
`
`invention was made. My analysis as to what constitutes a relevant POSITA is set forth
`
`above.
`
`A. Legal Standards for Prior Art
`26.
`I understand that a patent or other publication must first qualify as prior art
`
`before it can be used to invalidate a patent claim. For purposes of this declaration,
`
`counsel for Petitioner has instructed me to assume that each prior art reference cited in
`
`the combinations described below (Pröll, Martinez, Chandhri, Preppernau) qualify as
`
`prior art to the ’715 Patent.
`
`10
`
`

`

`
`
`B.
`27.
`
`Legal Standards for Priority Date
`I understand that the “priority date” (or “earliest effective filing date” or
`
`“Critical Date”) of a patent is the date on which it is filed, or the date on which an earlier
`
`application was filed if the patentee properly claims the benefit of the earlier
`
`application’s filing date. For purposes of my analysis in this declaration, I have assumed
`
`that the ’715 Patent is entitled to a priority date of April 1, 2008.
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`C. Legal Standards for Obviousness
`28.
` My understanding is that a patent claim is invalid as obvious only if the
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`subject matter of the claimed invention “as a whole” would have been obvious to a
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`POSITA at the time the invention was made. To determine the differences between a
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`prior art reference (or a proposed combination of prior art references) and the claims,
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`the question of obviousness is not whether the differences themselves would have been
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`obvious, but whether the claimed invention as a whole would have been obvious. Also,
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`obviousness grounds cannot be sustained by mere conclusory statements. Rather, it is
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`necessary to provide some articulated reasoning with rational underpinning to support
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`the legal conclusion of obviousness.
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`29.
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`I understand that a patent claim that comprises several elements is not
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`proved obvious by simply showing that each of its elements was independently known
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`in the prior art. In my evaluation of whether any claim of the ’715 Patent would have
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`been obvious, I considered whether the Petition, or any evidence submitted in this
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`proceeding, presented an articulated reason with a rational basis that would have
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`motivated a POSITA to combine the elements or concepts from the prior art in the same
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`way as in the claimed invention.
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`30.
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`It is my understanding that there is no single way to define the line between
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`true inventiveness on one hand—which is patentable—and the application of common
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`sense and ordinary skill to solve a problem on the other hand—which is not patentable.
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`For instance, factors such as market forces or other design incentives may be the source
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`of what produced a change, rather than true inventiveness.
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`31.
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`I understand that the decision-maker may consider whether the change was
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`merely the predictable result of using prior art elements according to their known
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`functions, or whether it was the result of true inventiveness. And, the decision-maker
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`may also consider whether there is some teaching or suggestion in the prior art to make
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`the modification or combination of elements recited in the claim at issue. Also, the
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`decision-maker may consider whether the innovation applies a known technique that
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`had been used to improve a similar device or method in a similar way. The decision-
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`maker may also consider whether the claimed invention would have been obvious to
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`try, meaning that the claimed innovation was one of a relatively small number of
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`possible approaches to the problem with a reasonable expectation of success, by those
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`skilled in the art.
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`32.
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`I have been instructed by counsel that if any of these considerations are
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`relied upon to reach a conclusion of obviousness, the law requires that the analysis of
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`such a consideration must be made explicit. I understand that the decision-maker must
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`be careful not to determine obviousness using the benefit of hindsight and that many
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`true inventions might seem obvious after the fact. I understand that the decision-maker
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`should consider obviousness from the perspective of a POSITA at the time the claimed
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`invention was made, and that the decisionmaker should not consider what is known
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`today or what is learned from the teaching of the patent.
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`33.
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`I understand that in order to determine whether a patent claim is obvious,
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`one must make certain factual findings regarding the claimed invention and the prior
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`art. Specifically, I understand that the following factors must be evaluated to determine
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`whether a claim is obvious: the scope and content of the prior art; the difference or
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`differences, if any, between the claim of the patent and the prior art; the level of