UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`——————————
`
`ASUSTeK COMPUTER INC.; ASUS GLOBAL PTE. LTD.;
`DELL TECHNOLOGIES INC.; DELL INC.; AND HP INC.,
`Petitioners
`
`v.
`
`LiTL LLC,
`Patent Owner
`
`——————————
`Case IPR2024-00532
`U.S. Patent No. 8,289,688
`——————————
`
`DECLARATION OF ANDREW WOLFE, Ph.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 8,289,688
`CLAIMS 1-10 and 23
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P. O. Box 1450
`Alexandria, VA 22313-1450
`
`ASUSTeK Exhibit 1004
`
`

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`TABLE OF CONTENTS
`
`Page
`Introduction......................................................................................................8
`A.
`Education, Experience, and Qualifications ...........................................8
`B. Materials Considered...........................................................................12
`Summary of Opinions on the ’688 Patent .....................................................13
`Legal Bases of Opinions Formed ..................................................................13
`A.
`Level of Ordinary Skill in the Art .......................................................14
`B.
`Claim Interpretation ............................................................................16
`C.
`Obviousness.........................................................................................17
`D.
`Burden of Proof...................................................................................20
`The ’688 Patent..............................................................................................21
`A.
`Overview of the ’688 Patent................................................................21
`B.
`File History of the ’688 Patent ............................................................23
`1.
`Original Claims 1 & 13, Issued as Claims 1 & 12
`Respectively..............................................................................23
`Original Claim 12, Issued as Claim 11 .....................................29
`Original Claims 19 & 21, Issued as Claims 17 & 19
`Respectively..............................................................................31
`Original Claim 32, Issued as Claim 29 .....................................39
`4.
`Ex Parte Reexamination of the ’688 Patent........................................40
`C.
`Scope & Content of the Prior Art as of the Earliest Priority Date of the
`’688 Patent .....................................................................................................42
`A.
`Hinges and Display Modes .................................................................42
`
`2.
`3.
`
`I.
`
`II.
`III.
`
`IV.
`
`V.
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`B.
`
`3.
`
`4.
`5.
`
`Shimano (Exh. 1005) ................................................................42
`1.
`Kamikakai (Exh. 1014).............................................................43
`2.
`Choi (Exh. 1015).......................................................................43
`3.
`Misawa (Exh. 1016)..................................................................44
`4.
`Single-Pivot vs. Dual-Pivot Hinges..........................................44
`5.
`Sensors and Display Orientations .......................................................46
`1.
`Lane (Exh. 1017).......................................................................46
`2.
`Hisano (Exh. 1018) ...................................................................49
`VI. Challenged Claims & Statutory Grounds for Unpatentability ......................52
`A.
`Claim 1 of the ’688 Patent Would Have Been Obvious in View of
`Lane and Misawa.................................................................................52
`1.
`Motivation to Combine Lane and Misawa ...............................52
`2.
`[Preamble] A portable computer configurable between a
`plurality of display modes including a closed mode, a laptop
`mode and an easel mode, the portable computer comprising:..53
`[Element 1.a] a single display component including a
`display screen;...........................................................................53
`[Element 1.b] a base including a keyboard;..............................53
`[Element 1.c.i] a hinge assembly at least partially housed
`within the base and the display component configured to
`pivotably couple the display component to the base, ...............54
`[Element 1.c.ii] wherein the hinge assembly defines a
`single longitudinal axis running along an interface between
`the display component and the base, ........................................54
`a.
`Claim construction..........................................................54
`b.
`Misawa discloses a single longitudinal axis that is
`defined by the hinge assembly and runs along the
`
`6.
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`10.
`
`11.
`
`12.
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`interface between the display component and the
`base. ................................................................................55
`[Element 1.c.iii] and wherein the display component and the
`base are rotatable about the single longitudinal axis; ...............55
`[Element 1.d] wherein, in the closed mode, the display
`screen is disposed substantially against the base;.....................56
`[Element 1.e.i] wherein rotating either the single display
`component or the base by an operator about the single
`longitudinal axis up to approximately 180 degrees from
`the closed mode configures the portable computer into
`the laptop mode,........................................................................56
`[Element 1.e.ii] wherein in the laptop mode the single
`display component is oriented towards the operator and the
`keyboard is oriented to receive input from the operator;..........57
`[Element 1.f] wherein rotating either the single display
`component or the base by the operator about the single
`longitudinal axis beyond approximately 180 degrees from
`the closed mode configures the portable computer into the
`easel mode; and.........................................................................57
`[Element 1.g] wherein in the easel mode the single display
`component is oriented facing the operator with the
`keyboard oriented away from the operator...............................58
`Claim 2 of the ’688 Patent Would Have Been Obvious in View of
`Lane and Misawa.................................................................................58
`1.
`[Preamble] The portable computer of claim 1,.........................58
`2.
`[Element 2.a] wherein the single display component
`is rotatable about the single longitudinal axis up to
`approximately 320 degrees from the closed mode. ..................58
`Claim 3 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane and Misawa; or (b) Lane, Hisano, and Misawa....................59
`1.
`Motivation to Combine Hisano with Lane and Misawa...........59
`
`7.
`
`8.
`
`9.
`
`B.
`
`C.
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`D.
`
`E.
`
`2.
`3.
`
`[Preamble] The portable computer of claim 1,.........................60
`[Element 3.a] further comprising a display orientation
`module that displays content on the display screen in one
`of a plurality of content orientations relative to the single
`longitudinal axis........................................................................60
`a.
`Lane and Misawa............................................................60
`b.
`Lane, Hisano, and Misawa .............................................61
`Claim 4 of the ’688 Patent Would Have Been Obvious in View of
`Lane, Hisano, and Misawa ..................................................................62
`1.
`[Preamble] The portable computer of claim 3,.........................62
`2.
`[Element 4.a] further comprising a mode sensor which
`detects a current display mode of the portable computer;
`and.............................................................................................62
`a.
`Claim construction..........................................................62
`b.
`Hisano Discloses a Display Mode Sensor......................64
`[Element 4.b] wherein the display orientation module
`displays content on the display screen in the one of the
`plurality of content orientations dependent on the current
`display mode detected by the mode sensor...............................66
`Claim 5 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane and Misawa; or (b) Lane, Hisano, and Misawa....................67
`1.
`[Preamble] The portable computer of claim 3,.........................67
`2.
`[Element 5.a] wherein the display orientation module is
`configured to display the content in a first content
`orientation relative to the single longitudinal axis when the
`portable computer is configured into the laptop mode and in
`a second content orientation relative to the single
`longitudinal axis when the portable computer is configured
`into the easel mode....................................................................67
`
`3.
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`F.
`
`G.
`
`H.
`
`I.
`
`Claim 6 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane and Misawa; or (b) Lane, Hisano, and Misawa....................68
`1.
`[Preamble] The portable computer of claim 5,.........................68
`2.
`[Element 6.a] wherein the second content orientation is 180
`degrees relative to the first orientation. ....................................68
`Claim 7 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane and Misawa; or (b) Lane, Hisano, and Misawa....................68
`1.
`[Preamble] The portable computer of claim 3,.........................68
`2.
`[Element 7.a] wherein the plurality of display modes
`further comprises a flat mode in which the single display
`component is disposed at an angle of approximately 180
`degrees, measured about the single longitudinal axis,
`relative to the base.....................................................................68
`Claim 8 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane, Misawa, and (Dunko or Forstall); or (b) Lane, Hisano,
`Misawa, and (Dunko or Forstall) ........................................................69
`1.
`Motivation to Combine Either Dunko or Forstall with Lane,
`Hisano, and Misawa..................................................................69
`[Preamble] The portable computer of claim 7,.........................71
`[Element 8.a] wherein the plurality of content orientations
`comprises a first content orientation relative to the single
`longitudinal axis, a second content orientation relative to
`the single longitudinal axis, and a third content orientation
`relative to the single longitudinal axis; and ..............................71
`[Element 8.b] wherein, in the flat mode, the content
`displayed on the display screen is configurable among the
`first, second and third content orientations responsive to a
`user input...................................................................................71
`Claim 9 of the ’688 Patent Would Have Been Obvious in View of
`(a) Lane, Misawa, and (Dunko or Forstall); or (b) Lane, Hisano,
`Misawa, and (Dunko or Forstall) ........................................................73
`
`2.
`3.
`
`4.
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`1.
`2.
`
`3.
`
`[Preamble] The portable computer of claim 8,.........................73
`[Element 9.a] wherein the second content orientation is 90
`degrees relative to the first content orientation; and.................73
`[Element 9.b] wherein the third content orientation is 180
`degrees relative to the first content orientation.........................73
`Claim 10 of the ’688 Patent Would Have Been Obvious in View
`of Lane, Misawa, and Nako ................................................................74
`1.
`Motivation to Combine Nako with Lane and Misawa..............74
`2.
`[Preamble] The portable computer of claim 1,.........................74
`3.
`[Element 10.a] further comprising: a foot disposed along
`at least a portion of the base and configured to support
`the portable computer when in the easel mode.........................75
`a.
`Claim construction: “foot”..............................................75
`b.
`Nako Teaches a Foot Along the Edge of the Base of a
`Portable Computer Deployed in Easel Mode .................75
`Claim 23 of the ’688 Patent Would Have Been Obvious in View
`of Lane, Hisano, and Misawa..............................................................76
`1.
`[Preamble] The portable computer of claim 1,.........................76
`2.
`[Element 23.a] further comprising at least one integrated
`navigation hardware control, ....................................................76
`a.
`Claim construction: “at least one integrated
`navigation hardware control, … wherein the
`integrated hardware control can be operated by a
`user to control features and manipulate
`content displayed on the portable computer,” ................76
`The Combination of Hisano with Lane and Misawa
`Includes an Integrated Navigation Hardware Control....77
`
`J.
`
`K.
`
`b.
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`3.
`
`4.
`
`[Element 23.b] wherein at least one of the at least one
`integrated navigation hardware control is accessible in
`at least the laptop and easel modes, ..........................................78
`[Element 23.c] and wherein the integrated navigation
`hardware can be operated by a user to control features and
`manipulate content displayed on the portable computer, .........78
`[Element 23.d] including any mode wherein the keyboard is
`inaccessible or oriented away from the user.............................79
`VII. Secondary Considerations .............................................................................79
`VIII. Right to Supplement ......................................................................................79
`IX. Conclusion .....................................................................................................80
`
`5.
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`I, Andrew Wolfe, declare as follows:
`
`1.
`
`I have been retained by Procopio, Cory, Hargreaves and Savitch, LLP,
`
`counsel for Petitioners ASUSTeK Computer Inc. and ASUS Global Pte. Ltd.
`
`(collectively, “ASUSTeK”), to analyze and offer my expert opinions in support of
`
`ASUSTeK’s Petition for Inter Partes Review of Claims 1-10 and 23 of U.S. Patent
`
`No. 8,289,688 (“the ’688 Patent”). I am being compensated for my work on this
`
`matter at my standard hourly billing rate of $650. My compensation does not depend
`
`in any way on my opinion or the outcome of this matter.
`
`I.
`
`INTRODUCTION
`
`A.
`
`2.
`
`Education, Experience, and Qualifications
`
`I am the founder and sole employee of Wolfe Consulting. Through
`
`Wolfe Consulting, I provide technical and business analytics to businesses on
`
`processor technology, computer systems, consumer electronics, software, design
`
`tools, data security, cryptography, and intellectual property issues. I have more than
`
`thirty-five years of experience developing products, researching, consulting, and
`
`teaching in those fields. During 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.
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`3.
`
`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.
`
`4.
`
`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.
`
`5.
`
`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 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 S3’s display technology
`
`group, and 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
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`developed the FrontPath wireless tablet PC and the Diamond Mako handheld
`
`computer.
`
`6.
`
`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.
`
`7.
`
`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.
`
`8.
`
`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
`
`Beach Corporation, providing guidance in its development of commercial electronic
`
`products primarily related to video gaming.
`
`9.
`
`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 I
`
`conducted sponsored research in the area of computer systems and related topics.
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`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. Among other things, I teach about the operation and use of
`
`accelerometers for determining spatial orientation.
`
`10.
`
`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 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.
`
`11.
`
`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 invited to speak on various aspects of technology or
`
`the PC industry at numerous industry events including the Intel Developer’s Forum,
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`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.
`
`12. A more detailed description of my educational and professional
`
`background, qualifications, achievements, and publications in the past 30+ years is
`
`set forth in my curriculum vitae, attached hereto as Appendix A.
`
`B. Materials Considered
`
`13.
`
`In undertaking the analysis and forming the opinions on the ’688 Patent
`
`set forth in this declaration, I have drawn upon my knowledge and experience, and
`
`considered materials relating to the ’688 Patent and two related patents: U.S. Patent
`
`Nos. 8,624,844 and 9,563,229. My analyses and opinions on the two related patents
`
`are set forth in other, separate declarations.
`
`I have endeavored to enumerate the
`
`materials particularly related to the ’688 Patent that are referenced throughout this
`
`declaration in a list attached hereto as Appendix B.
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`II.
`
`SUMMARY OF OPINIONS ON THE ’688 PATENT
`
`14. Claims 1-3 and 5-7 would have been obvious in view of Lane (Exh.
`
`1017) and Misawa (Exh. 1016);
`
`15. Claims 3-7 would have been obvious in view of Lane, Hisano (Exh.
`
`1018), and Misawa;
`
`16. Claims 8-9 would have been obvious in view of Lane, Misawa, and
`
`(Dunko (Exh. 1019) or Forstall (Exh. 1020));
`
`17. Claims 8-9 would have been obvious in view of Lane, Hisano, Misawa,
`
`and (Dunko or Forstall);
`
`18. Claim 10 would have been obvious in view of Lane, Misawa, and Nako
`
`(Exh. 1021);
`
`19. And Claim 23 would have been obvious in view of Lane, Hisano, and
`
`Misawa.
`
`III. LEGAL BASES OF OPINIONS FORMED
`
`20.
`
`The legal bases of my opinions are set forth in this section of my
`
`declaration, which is not intended to be an exhaustive summary of such bases.
`
`Rather, such bases may also be set forth in the other sections of this declaration.
`
`21.
`
`I am not an attorney, but counsel for Petitioners has informed me of the
`
`following legal principles regarding claim construction and patentability, which I
`
`have followed for my analysis.
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`A.
`
`22.
`
`Level of Ordinary Skill in the Art
`
`I have been informed that both the ’688 Patent and the prior art are to
`
`be understood from the perspective of a hypothetical “Person of Ordinary Skill in
`
`the Art” at the time of the purported inventions claimed in the ’688 Patent (“POSA”).
`
`The ’688 Patent claims priority to a provisional patent application filed on April 1,
`
`2008. I have been asked to treat this date as the time of the purported inventions
`
`claimed in the ’688 Patent.
`
`23.
`
`I understand that the factors that may be considered to determine the
`
`level of ordinary skill in the art include: (a) the type of problems encountered in the
`
`art; (b) prior art solutions to those problems; (c) the complexity or sophistication of
`
`the technology in the art; (d) the education level and experience of active workers in
`
`the field of art; and (e) the pace of change, development, and innovation in the field
`
`of art. I have been informed that not every factor would be present in every case,
`
`and that a review of the prior art would shed light on factors (a), (b), (c), and (e). I
`
`have also been informed that a POSA is further presumed to have been aware of all
`
`relevant prior art.
`
`24. As discussed in further detail below, the ’688 Patent is directed to
`
`portable computers that can be deployed by users in multiple display modes,
`
`including: a laptop mode, an easel mode, and a frame mode. In each display mode,
`
`the relative spatial orientations of the screen and the base of the portable computer
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`are different, and the display orientation (i.e., the orientation of content visually
`
`presented on the screen) may be adjusted accordingly. The relevant prior art relates
`
`to portable computers and other portable electronic devices that can also be deployed
`
`in multiple display modes. I am familiar with the state of the art in this field at the
`
`time of the purported inventions claimed in the ’688 Patent.
`
`25.
`
`In my opinion, a POSA would have had a bachelor’s degree (or
`
`equivalent) in electrical engineering, computer engineering, computer science, or a
`
`comparable subject, and would have had two to three years of work experience in
`
`the design and architecture of laptop computers and other portable electronic
`
`devices. Alternatively, a POSA would have had an advanced degree (or equivalent)
`
`in electrical engineering, computer engineering, computer science, or a comparable
`
`subject and would have had one year of post-graduate research or work experience
`
`in the design and architecture of laptop computers and other portable electronic
`
`devices. A POSA would have been familiar with the structural hardware aspects of
`
`laptop computers and other portable electronic devices, as well as designs of user
`
`interfaces employed and displayed by computer operating systems and their
`
`organization of content and functionality. A POSA could have acquired similar
`
`skills and knowledge by other means.
`
`26.
`
`In view of my educational background and my decades of academic
`
`and professional experience (as discussed above), I was a person of more than the
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`ordinary level of skill in the art in the early 2008 timeframe. My opinions expressed
`
`in this declaration were formed, however, from the perspective of a person of
`
`ordinary skill in the art as of April 1, 2008. I was, and am, well acquainted with the
`
`level of knowledge of a POSA under this definition. As noted above, I have worked
`
`with many individuals during my time in the industry and taught many who would
`
`have met the definition of a POSA. Thus, I am comfortable applying this viewpoint
`
`in assessing the ’688 Patent and the state of the art in the relevant timeframe,
`
`including the prior art references I discuss below.
`
`27.
`
`I have also considered whether my opinions expressed in this
`
`declaration would change if the level of ordinary skill in the art was varied by a few
`
`years or varied somewhat with respect to subject matter. My opinions would not
`
`change in light of such minor variations.
`
`B.
`
`28.
`
`Claim Interpretation
`
`I have been informed that patent claims are to be interpreted from the
`
`perspective of a hypothetical “Person of Ordinary Skill in the Art” at the time of the
`
`purported inventions claimed in the patent (“POSA”). I have also been informed
`
`that the words of a patent claim are generally given their ordinary and customary
`
`meaning to a POSA in view of the context of the claims and the intrinsic evidence,
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`i.e., the patent specification and the prosecution history of the ’688 Patent. I have
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`read and analyzed the claims of the ’688 Patent from this perspective.
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`29.
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`I have been further informed that extrinsic evidence, e.g., prior art
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`publications and expert testimony, may be considered to understand a patent claim,
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`but cannot be used to contradict an interpretation thereof which is unambiguous in
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`view of the intrinsic evidence.
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`C.
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`Obviousness
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`30. As discussed above, the ’688 Patent claims priority to a provisional
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`patent application filed on April 1, 2008, and I have been asked to treat this date as
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`the time of the purported inventions claimed in the ’688 Patent.
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`31.
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`I have been informed that a claimed invention is obvious — and thus
`
`unpatentable — if the differences between the claimed invention and the prior art
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`are such that the claimed invention as a whole would have been obvious to a POSA
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`at the time of the claimed invention.
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`32.
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`I have also been informed that the determination of whether a claimed
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`invention is obvious in view of the prior art cannot rely on hindsight, i.e., using the
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`patent claim as a roadmap or template to select components from the prior art to
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`reconstruct the claimed invention.
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`33.
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`I have been informed that a POSA is presumed to have been aware of
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`all relevant prior art. I have also been informed that a POSA is someone of ordinary
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`creativity in the field who is presumed to have understood and considered design
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`needs and/or market forces which would have motivated or prompted them to seek
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`variations of a product having utility in their field.
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`34.
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`I have been informed that the determination of whether a claimed
`
`invention was obvious in view of the prior art is a legal question which involves an
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`objective analysis of these factual factors:
`
`(a)
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`(b)
`
`(c)
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`The scope and content of the prior art;
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`The differences between the prior art and the claimed invention;
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`The level of ordinary skill in the pertinent art; and
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`(d) Any secondary consideration(s) having a nexus to the claimed
`
`invention, for example: [i] its commercial success (or the lack
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`thereof), [ii] whether the claimed invention satisfied a long felt
`
`but unmet need, [iii] unexpected results achieved by the claimed
`
`invention, or [iv] skepticism or failure by others.
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`35.
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`I have also been informed that the above factors define an expansive
`
`and flexible framework to determine whether a claimed invention would have been
`
`obvious in view of the prior art. For example:
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`36. When a prior art reference was available in one field, design incentives
`
`and other market forces could prompt variations of the reference by a POSA, either
`
`in the same field or a different field. If the POSA could implement a predictable
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`variation that meets the elements of a patent claim, then the claimed invention was
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`obvious.
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`37.
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`Likewise, if a technique had been used to improve one device in the
`
`prior art, and a POSA would recognize that the technique could also be used to
`
`improve similar devices in the same way, using that technique was obvious unless
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`its actual application was beyond the capability of the POSA.
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`38.
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`The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. If an
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`invention is no more than the predictable use of prior art elements according to their
`
`established functions, the combination was obvious unless its implementation was
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`beyond the capability of the POSA.
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`39.
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`To determine whether there was an apparent reason to combine
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`elements known in the prior art as claimed, it is often necessary to examine the
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`interrelated teachings of multiple prior art references, the effects of demands known
`
`to the field or present in the market, and the background knowledge of a POSA. This
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`determination is not a rigid test. Rather, it must consider the inferences and creative
`
`steps that a POSA would employ, because the POSA is not an automaton.
`
`40. Common sense teaches that familiar items may have obvious uses
`
`beyond their primary purposes, and in many cases a POSA would be able to fit the
`
`teachings of multiple patents together like pieces of a puzzle.
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`41. A motivation to combine the teachings of multiple prior art references
`
`may be suggested in one or more of the references, or found in the nature of the
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`problem to be solved, in the trends or direction of the field and/or market, or come
`
`from the common sense and ordinary skill of the POSA.
`
`42. When there was a design need or market pressure to solve a problem
`
`and there were a finite number of identified, predictable solutions, a POSA would
`
`have good reason to pursue the known options within his or her technical grasp. If
`
`this would have led to reasonably anticipated success, it was likely the product not
`
`of innovation but of ordinary skill and common sense, in which case the fact that a
`
`combination of known elements was obvious to try would show that the claimed
`
`invention was obvious.
`
`43. Certain aspects of the purpor