Declaration of Dr. Mark P. Mahon
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`ERICSSON INC.
`NOKIA OF AMERICA CORPORATION
`Petitioners,
`
`v.
`
`XR COMMUNICATIONS LLC
`Patent Owner.
`____________
`
`U.S. PATENT NO. 10,715,235
`Title: DIRECTED WIRELESS COMMUNICATION
`_____________________
`
`Inter Partes Review No.: IPR2024-00613
`_____________________
`
`DECLARATION OF DR. MARK P. MAHON UNDER 37 C.F.R.
`§ 1.68 IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`By:
`
`
`
`___________________________________
`
`
`
`Mark P. Mahon
`
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 7
`I.
`BACKGROUND AND QUALIFICATIONS ................................................ 7
`II.
`III. MATERIALS REVIEWED ......................................................................... 14
`IV. LEGAL STANDARDS ................................................................................ 14
`V.
`LEVEL OF ORDINARY SKILL ................................................................. 19
`VI. TECHNICAL BACKGROUND AND STATE OF THE ART ................... 21
`A.
`Cellular And Wireless Technology .................................................... 22
`B.
`Digital Communications and Packet Switched Networks ................. 23
`C.
`Local Area Networks (LANs) ............................................................ 25
`D. An Overview of 802.11 Local Area Networks .................................. 28
`E.
`Cellular Networking Technology ....................................................... 31
`1.
`The Radio Access Network ..................................................... 32
`2.
`The Core Network .................................................................... 33
`3.
`First Generation Cellular Telephony ....................................... 34
`4.
`2nd Generation Cellular Telephony ......................................... 34
`5.
`GPRS and Data Calls ............................................................... 38
`6.
`3rd Generation Cellular Systems ............................................. 40
`F. Mobile Devices / Smartphones .......................................................... 45
`G. MIMO ................................................................................................. 48
`H. General Related Knowledge ............................................................... 72
`1.
`Prior Art MIMO Antenna Systems .......................................... 72
`2.
`The Use Of Beamforming With MIMO Antennas .................. 74
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`Declaration of Dr. Mark P. Mahon
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`VII. OVERVIEW OF THE CHALLENGED PATENT ...................................... 75
`A.
`Priority Date ....................................................................................... 75
`B.
`Overview Of The Content Of The Challenged Patent ....................... 75
`C.
`Prosecution History ............................................................................ 77
`D.
`Previous Petitions for Inter Partes Review ......................................... 98
`VIII. OVERVIEW OF THE PRIOR ART .......................................................... 103
`A. Agee .................................................................................................. 103
`B.
`Butler ................................................................................................ 143
`IX. CLAIM CONSTRUCTION ....................................................................... 161
`X.
`THE CHALLENGED CLAIMS OF THE ‘235 PATENT ARE
`OBVIOUS OVER AGEE ALONE OR IN COMBINATION WITH
`BUTLER. .................................................................................................... 162
`A.
`The Motivation to Combine Agee With Butler With A
`Reasonable Expectation of Success. ................................................ 162
`Challenged Claims. .......................................................................... 164
`1.
`Detailed Application of Agee alone or in combination
`with Butler .............................................................................. 164
`a.
`Claim 1 ......................................................................... 164
`[1.0] A receiver for use in a wireless communications system, the
`receiver comprising: an antenna, wherein the antenna comprises a first
`antenna element and a second antenna element; ......................................164
`[1.1] a transceiver operatively coupled to the antenna and
`configured to transmit and receive electromagnetic signals using the
`antenna; ....................................................................................................171
`[1.2] a processor operatively coupled to the transceiver, the
`processor configured to: ...........................................................................176
`
`B.
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`Declaration of Dr. Mark P. Mahon
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`[1.3] receive a first signal transmission from a remote station via
`the first antenna element and a second signal transmission from the remote
`station via the second antenna element simultaneously; .........................186
`[1.4] determine first signal information for the first signal
`transmission;.............................................................................................224
`[1.5] determine second signal information for the second signal
`transmission, wherein the second signal information is different than the
`first signal information; ............................................................................224
`[1.6] determine a set of weighting values based on the first signal
`information and the second signal information; ......................................230
`[1.7] wherein the set of weighting values is configured to be used
`by the transceiver to construct one or more beam-formed transmission
`signals; ......................................................................................................248
`[1.8] cause the transceiver to transmit a third signal to the remote
`station via the antenna, the third signal comprising content based on the
`set of weighting values. ............................................................................255
`b.
`Claim 2 ......................................................................... 257
`The receiver as recited in claim 1, wherein the first signal
`[2]
`transmission and the second signal transmission comprise electromagnetic
`signals comprising one or more transmission peaks and one or more
`transmission nulls. ....................................................................................258
`c.
`Claim 3 ......................................................................... 260
`The receiver as recited in claim 2, wherein the first signal
`[3]
`transmission and the second signal transmission are directional
`transmissions. 260
`d.
`Claim 4 ......................................................................... 263
`The receiver as recited in claim 1, wherein the content
`[4]
`comprises data configured to be used by the remote station to modify the
`placement of one or more transmission peaks and one or more
`transmission nulls in a subsequent signal transmission. ..........................263
`e.
`Claim 5 ......................................................................... 264
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`The receiver as recited in claim 4, wherein the set of
`[5]
`weighting values is further based on one or more of: a transmit power
`level, a data transmit rate, an antenna direction, quality of service data, or
`timing data.
`264
`f.
`Claim 8 ......................................................................... 264
`8. A method in a wireless communications system, the
`[8]
`method comprising. ..................................................................................264
`[8.1] receiving a first signal transmission from a remote station via
`a first antenna element of an antenna and a second signal transmission
`from the remote station via a second antenna element of the antenna
`simultaneously, wherein the first signal transmission and the second signal
`transmission comprise electromagnetic signals comprising one or more
`transmission peaks and one or more transmission nulls; .........................264
`[8.2] determining first signal information for the first signal
`transmission;.............................................................................................265
`[8.3] determining second signal information for the second signal
`transmission, wherein the second signal information is different than the
`first signal information; ............................................................................265
`[8.4] determining a set of weighting values based on the first signal
`information and the second signal information, wherein the set of
`weighting values is configured to be used by the remote station to
`construct one or more beam-formed transmission signals; and;..............265
`[8.5] transmitting to the remote station a third signal comprising
`content based on the set of weighting values. ..........................................269
`g.
`Claim 9 ......................................................................... 269
`The method as recited in claim 8, further comprising:
`[9]
`transmitting the third signal to the remote station via the antenna. .........269
`h.
`Claim 10. The method as recited in claim 8
`wherein the first signal transmission and the
`second signal transmission are directional
`transmissions. ............................................................... 270
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`i.
`
`Claim 11. The method as recited in claim 8,
`wherein the set of weighting values is further
`based on one or more of: a transmit power level, a
`data transmit rate, an antenna diretion, quality of
`service data, or timing data. ......................................... 270
`Claim 12 ....................................................................... 270
`j.
`The method as recited in claim 11, wherein the content
`[12]
`comprises data configured to be used by the remote station to modify the
`placement of one or more transmission peaks and one or more
`transmission nulls in a subsequent signal transmission. ..........................270
`k.
`Claim 15 ....................................................................... 271
`[15]
`15. An apparatus for use in a wireless communications
`system, the apparatus comprising: an antenna .........................................271
`[15.1] a transceiver operatively coupled to the antenna; ..............271
`[15.2] a processor operatively coupled to the transceiver, the
`processor configured to: ...........................................................................271
`[15.3] receive a first signal transmission from a remote station via
`the antenna; ..............................................................................................271
`[15.4] the first signal transmission comprising first signal
`information, wherein the first signal information comprises one or more
`of: a transmit power level, a data transmit rate, an antenna direction,
`quality of service data, or timing data; .....................................................271
`[15.5] receive a second signal transmission from the remote station
`via the antenna, the second signal transmission comprising second signal
`information; ..............................................................................................271
`[15.6] determine a set of weighting values based on the first signal
`information and the second signal information, wherein the set of
`weighting values is configured to be used by the transceiver to construct
`one or more beam-formed transmission signals; .....................................272
`[15.7] cause the transceiver to generate a third signal comprising
`content based on the set of weighting values. ..........................................272
`
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`Claim 16 ....................................................................... 272
`l.
`The apparatus as recited in claim 15, wherein the first
`[16]
`signal transmission and the second signal transmission comprise
`electromagnetic signals comprising one or more transmission peaks and
`one or more transmission nulls. ...............................................................272
`m.
`Claim 17 ....................................................................... 272
`n.
`Claim 18 ....................................................................... 276
`o.
`Claim 19 ....................................................................... 279
`XI. SECONDARY CONSIDERATIONS DO NOT REBUT THE PRIMA
`FACIE CASE OF OBVIOUSNESS ........................................................... 280
`XII. CONCLUSION AND DECLARATION ................................................... 281
`APPENDIX A – MATERIALS RELIED UPON ................................................. 283
`APPENDIX B – RÉSUMÉ ................................................................................... 285
`
`
`
`
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`Declaration of Dr. Mark P. Mahon
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`
`I, Dr. Mark P. Mahon declare as follows:
`
`INTRODUCTION
`
`I.
`
`1. I have been retained by Duane Morris on behalf of Petitioners as an independent,
`
`technical expert consultant in this proceeding before the United States Patent and
`
`Trademark Office (USPTO).1 I have been ask to consider whether certain references
`
`disclose or suggest the limitations found in U.S. Pat. No. 10,715,235 (“‘235 patent”)
`
`which I reference as the “challenged patent” in this declaration as discussed in detail
`
`below. My opinions are set forth below.
`
`2. I am being compensated at my rate of $500 per hour for my services. No part of my
`
`compensation depends on my opinions or the outcome of this proceeding. I have no
`
`financial interest in any of the parties to this proceeding.
`
`3. In my analysis below, I generally refer to the ‘235 patent for citations unless
`
`otherwise noted.
`
`4. Unless otherwise indicated, the emphasis in quotations has been added.
`
`II. BACKGROUND AND QUALIFICATIONS
`5. My complete qualifications and professional experience are described in my
`
`Curriculum Vitae, a copy of which can be found in Appendix B to this Declaration.
`
`
`
`1 Where appropriate, I refer to exhibits that I understand are to be attached to
`the petition for Inter Partes Review of the challenged patent.
`
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`Declaration of Dr. Mark P. Mahon
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`6. The following is a brief summary of my relevant qualifications and professional
`
`experience
`
`7. I am a Teaching Professor in the School of Electrical Engineering and Computer
`
`Science at Pennsylvania State University, University Park, PA (“Penn State” or
`
`“PSU”). I have worked on telecommunications and wireless networks, including Z-
`
`Wave, Bluetooth, Zigbee, Wi-Fi, NFC, AMPS, IS-95, CDMA2000, GSM, EDGE,
`
`UMTS/WCDMA, LTE, and 5G cellular systems since 1988.
`
`8. I received my B.S. in Electronics Engineering from the University of Scranton in
`
`1987. I received my M.S. in Electrical Engineering and Ph.D. in Acoustics from Penn
`
`State in 1991 and 2001, respectively.
`
`9. In 1988, after I received my bachelor’s degree, I joined the Central Intelligence
`
`Agency (CIA) while pursuing my M.S. degree at Penn State part-time. My first job
`
`at the CIA involved designing and testing systems to automatically capture and
`
`characterize telecommunication signals and emissions from various wireless and
`
`computer networking devices.
`
`10. I returned to Penn State in early 1990 to pursue graduate research full-time and
`
`complete my M.S. degree. My graduate research work focused on wideband
`
`beamforming and adaptive signal processing. After completing my M.S. degree in
`
`EE in 1991, I accepted a full-time faculty research position at the Applied Research
`
`Lab at PSU, primarily working on classified programs, and began working on diverse
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`radio frequency and acoustic sensor systems including wireless communications and
`
`small wireless networks for acoustic tracking, source localization, and feature
`
`extraction.
`
`11. I began pursuing my Ph.D. part-time in 1993 while continuing my faculty research
`
`position. In 1997, as part of my faculty research position, I began working on
`
`classified programs focused on mathematical analytical modeling of cellular
`
`communication networks and the development of hardware and software systems to
`
`test against cellular networks. My role was to develop the algorithms and write the
`
`code running on a specially developed embedded system. For this work, I received a
`
`letter of recognition as the “genius behind the VELA software algorithms” from the
`
`Director of National Reconnaissance Office (NRO) Systems Engineering and
`
`Technology Office. As part of this same work, I was extensively involved in protocol
`
`and signaling analysis as well as researching model-specific performance and unique
`
`functional characteristics associated with individual mobile devices. The work
`
`involved testing dozens of handsets from many manufacturers in controlled and real-
`
`world environments against network simulators and live operational networks for
`
`each research project.
`
`12. In 2000 my research extended into utilizing non-orthogonal wavelets for improving
`
`detection and localization of cellular handsets from high altitude sensor systems. In
`
`2001, I completed my Ph.D. and my research focused on the utilization of advanced
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`communication signals for wideband characterization and remote sensing of
`
`propagation channels.
`
`13. Beginning in 1997 my cellular communications research work focused on CDMA,
`
`GSM, EDGE, UMTS, LTE, and 5G cellular systems primarily under grants
`
`sponsored principally by the Department of Defense. This classified research work
`
`required 3GPP protocol analysis and development of real-time embedded hardware
`
`and software systems capable of interacting with cellular networks and cellular
`
`handsets. A large portion of my work was directed at architectures, protocols,
`
`software, and signaling.
`
`14. I have been working on classified projects since 1988. Before 1998, because the work
`
`was not deemed highly classified, I was able to publish eight journal and conference
`
`papers prior to 2000. Between 1999 and 2015, however, I was allowed to publish
`
`only one article in an unclassified symposium and published and presented about a
`
`dozen articles in classified settings. This is because during this period, the vast
`
`majority of my research was highly classified. As a result, nearly all of my research
`
`results were summarized in classified reports and not available to the general public.
`
`Further, because the U.S. government owns any intellectual property resulting from
`
`the sponsored research work, I did not pursue or file patent applications.
`
`15. . In 2015, I transferred to the School of Electrical Engineering and Computer Science
`
`at Penn State as a teaching faculty member. In that role, I have continued teaching
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`graduate and undergraduate courses, guiding Ph.D. and M.S. students in
`
`communication and mobile networking (including LTE and 5G cellular networks),
`
`and pursuing research in this and related areas. Since 2015, I have been an author on
`
`seven refereed papers as listed in my curriculum vitae (CV) (attached as Exhibit A).
`
`16. Because of my decades of research and my continuing work at Penn State, I have
`
`intimate knowledge of telecommunication networks, including the technology
`
`involved in the patents in this case. I have been highly recognized as an expert in
`
`such systems within the research community. I was recognized twice by the National
`
`Reconnaissance Office with commendation letters for work dealing with detecting
`
`cellular signals in low signal to noise ratio environments. The U.S. government
`
`awarded me over $12M in grants between 2003 and 2015 for projects focused on
`
`mobile communication devices and networks, in which I served as a Principal
`
`Investigator (PI), Co- PI, and/or technical lead.
`
`17. Additionally, during my research career, I interacted extensively with computer
`
`scientists and engineers responsible for the design, development, and testing of
`
`telephony and data networking systems and testbeds. As a research faculty member,
`
`I oversaw engineers and computer scientists that executed many joint projects with
`
`development organizations. These interactions exposed me to a wide range of
`
`computer scientists and engineers working on
`
`telecommunication network
`
`technologies. Since 2011, I have been teaching undergraduate and graduate classes
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`in communication and mobile networking and am familiar with the curricula being
`
`taught to electrical engineers and computer scientists. The interactions with a wide
`
`range of computer scientists and engineers working on telecommunication network
`
`technologies and the familiarity with the classes taught to electrical engineers and
`
`computer scientists have allowed me to have a good understanding of the level of
`
`skills possessed by a person of ordinary skill in the field of cellular technology.
`
`18. . I have extensive experience with mobile networks in general and LTE and 5G
`
`specifically. While most of my research efforts between 1998 and 2015 were highly
`
`classified, I can state that they included detailed investigation of network
`
`architectures, signaling, and functional behavior. A typical research effort would
`
`involve studying 3GPP, 3GPP2, IEEE, and other protocol standards to fully
`
`comprehend all aspects of L1, L2, and L3 requirements including timing, bit-level
`
`construction of the control and user plane messages, and timing characteristics for a
`
`given standard as well as functional behavior of network components and user
`
`equipment.
`
`19. From 2006 through 2015 my research focused specifically on LTE. My research
`
`continues to this day, although I am no longer operating in a classified environment.
`
`During this time, I investigated the performance and functional differences of many
`
`varied network and handset devices to see how differing signaling and hardware
`
`configurations (inlcuding MIMO) and environmental factors influenced the behavior
`
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`of user equipment in a given network environment. This included how diversity
`
`techniques (transmit and receive), synchronization, timing, and signal to interference
`
`plus noise ratio (SINR) for a given device would affect specific functional aspects
`
`including elements of
`
`the receiver structure, decoding and demodulation
`
`performance, calculation of parameters used by the device for making decisions and
`
`deriving parameters reported to the network.
`
`20. As part of my research work, I built several custom CDMA, GSM, UMTS, and LTE
`
`platforms that implemented specific network-side and user equipment-side
`
`functionality including custom signal generation and processing structures,
`
`particularly the signal processing chains on both the transmit and receive sides. This
`
`equipment was developed using network simulation hardware in a laboratory
`
`environment and was later tested with corresponding networks in both controlled and
`
`fully operational environments. Implementing the transmit and receive chains for
`
`custom built protocol-enabled equipment required me to gain an intimate
`
`understanding of the relevant 3GPP protocol specifications and the underlying
`
`structures. Since 2015, I have been primarily focused on guiding graduate students
`
`pursuing research including using code domain non-orthognal multiple access
`
`(NOMA) combined with MIMO sparse coding multiple access to minimize latency
`
`and maximize user density in grant free Internet of Things (IoT) enviornments.
`
`Additionally, I am guiding my graduate students in pursuing research in optimized
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`distributed processing algorithms, implementation of block chain coding techniques
`
`to improve handover security, and edge computing resource allocation in 4G
`
`(LTE)/5G (NR) networks.
`
`21. Much of the classified research work I performed also led to similar approaches for
`
`other wireless protocols including IEEE 802.11 and 802.15 (e.g., Zigbee, Bluetooth,
`
`and UWB), HART, and other short-range standards as well as HF radio and Wi-
`
`MAX.
`
`III. MATERIALS REVIEWED
`22. The opinions contained in this Declaration are based on the documents I reviewed,
`
`my professional judgment, as well as my education, experience, and knowledge
`
`regarding cellular networking systems.
`
`23. I have reviewed all of the documents referenced in this Declaration. I have reviewed
`
`the challenged patent and its prosecution history. I have listed the reviewed materials
`
`in in Appendix A to this Declaration.
`
`IV. LEGAL STANDARDS
`
`24. I am not an attorney and offer no legal opinions. My analysis and opinions are based
`
`on my expertise in this technical field and on the instructions that counsel has given
`
`me for the legal standards relating to patentability as outlined in the rest of this
`
`section. I have applied these principles in reaching the opinions set forth herein do
`
`not provide any legal opinions in this Declaration. I have been informed and
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`understand that certain legal standards are to be applied by technical experts in
`
`forming opinions regarding the meaning and validity of patent claims.
`
`25. I understand and the standard that I have used throughout my declaration is that, in
`
`this proceeding, a patent claim may be deemed unpatentable as “anticipated” if it is
`
`shown by a preponderance of the evidence that each and every feature of the claim is
`
`found in a single prior art reference or rendered “obvious” if, in view of a prior art
`
`reference or a combination of prior art references, it would have been obvious to a
`
`person of ordinary skill in the art (“POSITA”) at the time of the invention, taking into
`
`account the following four issues: (1) the scope and intent of the prior art, (2) the
`
`differences between the prior art and the claim under consideration, (3) the level of
`
`ordinary skill in the art, and (4) any secondary evidence bearing on obviousness.
`
`26. Counsel has informed me that legal principles regarding unpatentability of a claim
`
`due to obviousness have been addressed by the U.S. Supreme Court and that, while
`
`not absolute, the principles relating to a “motivation,” “suggestion,” or “teaching” in
`
`the prior art to combine references are useful in analyzing whether an invention is
`
`obvious. Counsel has also informed me that the suggestion or motivation may be
`
`either explicit or implicit and may come from knowledge generally available to a
`
`POSITA, from the nature of the problem to be solved, or from a combination of these
`
`factors. The test for an implicit motivation, suggestion, or teaching is what the
`
`combined teachings, knowledge of a POSITA, and the nature of the problem to be
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`solved as a whole would have suggested to those of ordinary skill in the art. The
`
`analysis is not focused on the specific problem solved by the invention, but the
`
`general problem that confronted the inventor prior to the invention.
`
`27. Counsel has further informed me that the U.S. Supreme Court has clarified that
`
`additional principles may also be applied in such an analysis. Some of those
`
`principles are set forth below.
`
`28. I have been informed by counsel that it is no longer always required to present
`
`evidence of an explicit teaching, suggestion, or motivation to combine prior art
`
`references for purposes of determining whether an invention is obvious. Prior art can
`
`be combined based on several factors including: an express teaching, suggestion, or
`
`motivation from the prior art itself, or from a reasoned explanation of an expert or
`
`other witness.
`
`29. I have been informed that a patent claim composed of several elements is not proved
`
`obvious merely by demonstrating that each of its elements was independently known
`
`in the prior art. In evaluating whether such a claim would have been obvious, I may
`
`consider whether there is a reason that would have prompted a person of ordinary
`
`skill in the field to combine the elements or concepts from the prior art in the same
`
`way as in the claimed invention.
`
`30. To determine whether there was an apparent reason to combine the known elements
`
`in the way a patent claims, it will often be necessary to look to interrelated teachings
`
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`of multiple pieces of prior art, to the effects of demands known to the design
`
`community or present in the marketplace, and to the background knowledge
`
`possessed by a POSITA. Also, in determining obviousness, one must be aware of the
`
`distortion caused by hindsight bias and be cautious of arguments relying upon
`
`hindsight reasoning. An obviousness argument cannot be sustained by mere
`
`conclusory statements. Instead, it must be some articulated reasoning with some
`
`rational underpinnings to support the legal conclusion of obviousness.
`
`31. In an obviousness analysis, it is my understanding that there are “secondary
`
`considerations” that should be analyzed if they apply. I am told that these
`
`considerations include (a) whether the prior art teaches away from the claimed
`
`invention, (b) whether there was a long felt but unresolved need for the claimed
`
`invention, (c) whether others tried but failed to make the claimed invention, (d)
`
`skepticism of experts, (e) whether the claimed invention was commercially
`
`successful, (f) whether the claimed invention was praised by others, and (g) whether
`
`the claimed invention was copied by others.
`
`32. I have also been informed that in order for evidence of secondary considerations to
`
`be significant, there must be a sufficient relationship between the claimed invention
`
`and the evidence of secondary considerations. I understand that this relationship
`
`serves to provide a link between the merits of the claimed invention and the evidence
`
`of secondary considerations provided.
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`33. I have been informed by counsel that the Board construes claims according to the so-
`
`called “Phillips” standard. Under the Phillips standard, terms in a claim are given
`
`their ordinary and customary meaning, consistent with the patent’s specification, as
`
`understood by a POSITA. I have been informed by counsel that what is to be
`
`considered includes the claims, the patent specifications and drawings, and the
`
`prosecution history, including any art listed by the examiner or the Applicant. I have
`
`been informed by counsel that information external to the patent, including expert
`
`and inventor testimony and unlisted prior art, are to be considered if ambiguities
`
`remain. However, expert testimony may be useful in helping to explain the
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`technology.
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`34. I have been informed and understand that a patent claim is not patentable as obvious
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`if the differences between the patent claim and the prior art are such that the claimed
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`subject matter as a whole would have been obvious at the time the claimed invention
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`was made to a person having ordinary skill in the relevant art.
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`35. In analyzing the relevance of the differences between the claimed invention and the
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`prior art, I have been informed that I must consider the impact of such differences on
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`the obviousness or non-obviousness of the invention as a whole, not merely some
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`portion of it. The person of ordinary skill faced with a problem is able to apply their
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`experience and ability to solve the problem and also look to any available prior art to
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`help solve the problem.
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`Page 18 of 286
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`Declaration of Dr. Mark P. Mahon
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`36. I have been informed and understand that there are recognized, exemplary rationales
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`for combining or modifying references to show the obviousness of claimed subject
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`matter. Some of