IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Gregory G. Raleigh
`In re Patent of:
`8,639,811
`U.S. Patent No.:
`January 28, 2014
`Issue Date:
`Appl. Serial No.: 13/742,312
`January 15, 2013
`Filing Date:
`Title:
`AUTOMATED DEVICE PROVISIONING AND ACTIVATION
`
` Attorney Docket No.: 39843-0180IP1
`
`DECLARATION OF DR. PATRICK MCDANIEL
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable under Section 1001 of Title 18 of
`
`the United States Code.
`
`Date: June 17, 2024
`
`By: __
`Patrick McDaniel, Ph.D.
`
`1
`
`SAMSUNG 1003
`
`

`

`Table of Contents
`ASSIGNMENT ................................................................................................ 4 
`I. 
`QUALIFICATIONS AND BACKGROUND INFORMATION .................... 4 
`II. 
`III.  OVERVIEW OF CONCLUSIONS FORMED ............................................. 18 
`IV.  LEVEL OF ORDINARY SKILL IN THE ART ........................................... 19 
`V. 
`LEGAL STANDARDS ................................................................................. 20 
`  Terminology ............................................................................................ 20 
`  Legal Standards ....................................................................................... 21 
`  Anticipation ............................................................................................. 22 
`  Obviousness ............................................................................................ 22 
`VI.  MATERIALS CONSIDERED ...................................................................... 28 
`VII.  TECHNOLOGY OVERVIEW ...................................................................... 35 
`  Mobile Devices ....................................................................................... 35 
`  Policy-based Management ...................................................................... 39 
`  Network Bandwidth Management .......................................................... 51 
`  Bandwidth Management Policy .............................................................. 54 
`VIII.  THE ’811 PATENT ....................................................................................... 60 
`  Overview of the ’811 Patent ................................................................... 60 
`  Prosecution History of the ’811 Patent ................................................... 61 
`IX.  OVERVIEW AND COMBINATIONS OF PRIOR ART REFERENCES .. 62 
`  U.S. Pat. App. Pub. No. 2006/0039354 (“Rao”) .................................... 63 
`  U.S. Pat. No. 8,400,491 (“Panpaliya”) ................................................... 71 
`  Rao-Panpaliya Combination ................................................................... 73 
`  U.S. Pat. No. 8,285,850 (“Jones”) .......................................................... 77 
`  Rao-Jones Combination .......................................................................... 81 
`  U.S. Pat. App. Pub. No. 2008/0162981 (“Jajoo”) .................................. 93 
`  Rao-Jones-Jajoo Combination ................................................................ 95 
`  U.S. Pat. App. Pub. No. 2008/0080458 (“Cole”) .................................100 
`  Rao-Jones-Cole Combination ...............................................................103 
`  U.S. Pat. App. Pub. No. 2009/0207817 (“Montemurro”) ....................106 
`  Rao-Montemurro Combination ............................................................108 
`  U.S. Pat. App. Pub. No. 2009/0185527 (“Akhtar”) ..............................111 
`  Rao-Akhtar Combination ......................................................................112 
`  U.S. Pat. App. Pub. No. 2009/0228951 (“Ramesh”) ............................116 
`  Rao-Ramesh Combination ....................................................................118 
`  U.S. Pat. No. 5,987,611 (“Freund”) ......................................................121 
`
`2
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`

`  Rao-Freund Combination .....................................................................124 
`  U.S. Pat. App. Pub. No. 2010/0281154 (“Bedi”) .................................129 
`  Rao-Freund-Bedi Combination ............................................................130 
`  U.S. Pat. App. Pub. No 2007/0032230 (“Pregont”) .............................133 
`  Rao-Jones-Pregont Combination ..........................................................137 
`X.  MANNER IN WHICH THE PRIOR ART REFERENCES RENDER THE
`‘811 CLAIMS UNPATENTABLE .............................................................141 
`  Ground 1A: Rao renders claims 1, 3, 6, 8-11, 14 and 19-20 obvious .141 
`  Ground 1B: Rao-Panpaliya renders claim 2 obvious ...........................185 
`  Ground 1C: Rao-Jones renders claims 4, 13, 21, 23, 25 obvious.........186 
`  Ground 1D: Rao-Jones-Jajoo render claims 17 obvious ......................198 
`  Ground 1E: Rao-Jones-Cole renders claim 22 obvious........................201 
`  Ground 1F: Rao-Montemurro renders claim 5 obvious .......................202 
`  Ground 1G: Rao-Akhtar renders claim 7 obvious ................................204 
`  Ground 1H: Rao-Ramesh renders 18 obvious ......................................208 
`  Ground 1I: Rao-Freund renders claims 12, 15-16, and 26-27, 29-30
`obvious ..................................................................................................211 
`  Ground 1J: Rao-Freund-Bedi renders claim 28 obvious ......................217 
`  Ground 2: Rao-Pregont-Jones renders claims 1, 24 obvious ...............218 
`XI.  CONCLUSION ............................................................................................222 
`
`
`3
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`

`

`I.
`
`ASSIGNMENT
`1.
`I have been retained on behalf of Samsung Electronics Co., Ltd.
`
`(“Samsung”) to offer technical opinions related to 8,639,811
`
`(“the ’811 patent”) (SAMSUNG-1001). I understand that
`
`Samsung is requesting that the Patent Trial and Appeal Board
`
`(“PTAB” or “Board”) to institute an inter partes review (“IPR”)
`
`proceeding of the ’811 patent.
`
`2.
`
`I have been asked to provide my independent analysis of the
`
`’811 patent based on the prior art publications cited in this
`
`declaration.
`
`3.
`
`I am not and never have been, an employee of Samsung. I
`
`received no compensation for this declaration beyond my
`
`normal hourly compensation based on my time actually spent
`
`analyzing the ’811 patent, the prior art publications cited below,
`
`and issues related thereto, and I will not receive any added
`
`compensation based on the outcome of any IPR or other
`
`proceeding involving the ’811 patent.
`
`II. QUALIFICATIONS AND BACKGROUND INFORMATION
`4.
`I am over the age of 18 and am competent to write this
`
`declaration. I have personal knowledge, or have developed
`
`4
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`

`

`knowledge of these technologies based upon education, training,
`
`or experience, of the matters set forth herein.
`
`5. My qualifications are summarized here and explained in more
`
`detail in my curriculum vitae, which is attached as Appendix A
`
`to this report. Appendix A also includes a list of my publications
`
`and the cases in which I have testified at deposition, hearing, or
`
`trial within the past four years.
`
`6.
`
`I earned a Ph.D. in Computer Science from the Computer
`
`Science and Engineering Department at University of Michigan,
`
`Ann Arbor in 2001. I earned a Bachelor of Science degree in
`
`Computer Science from Ohio University in 1989, and a Master
`
`of Science degree, also in Computer Science, from Ball State
`
`University in 1991.
`
`7.
`
`Since 2022, I have been Tsun-Ming Shih Professor of Computer
`
`Sciences in the School of Computer, Data and Information
`
`Sciences at the University of Wisconsin-Madison. Prior to my
`
`move to Wisconsin, I was the William L. Weiss Professor of
`
`Information and Communications Technology in the School of
`
`Electrical Engineering and Computer Science at Pennsylvania
`
`State University in University Park, PA. I was also the director
`
`5
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`

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`of the Institute for Network and Security Research, and founder
`
`and co-director of the Systems and Internet Infrastructure
`
`Security Laboratory, a research laboratory focused on the study
`
`of security in diverse network and computer environments. My
`
`research efforts primarily involve computer systems, network
`
`management and authentication, systems security, and technical
`
`public policy.
`
`8.
`
`Prior to 2017, I was an Assistant Professor (2004-2007),
`
`Associate Professor (2007-2011), Full Professor (2011-2015),
`
`and Distinguished Professor (2016-2017) of Computer Science
`
`and Engineering and the William L. Weiss Professor of
`
`Information and Communications Technology (2017-2022) at
`
`the Pennsylvania State University. Since 2004, I have taught
`
`courses in the field of computer systems, systems programming,
`
`mobile device security, networks, and network and computer
`
`security at both the undergraduate and graduate level. I created
`
`and maintained several of these courses at Penn State. I began
`
`teaching cybersecurity courses at the University of Wisconsin-
`
`Madison but will teach a network security course in Fall of
`
`2023.
`
`6
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`

`

`9.
`
`From 2003-2009, I was also an Adjunct Professor at the Stern
`
`School of Business at New York University in New York, NY.
`
`At the Stern School of Business, I taught courses in computer
`
`and network security and online privacy.
`
`10.
`
`I am a Fellow of the Association for Computing Machinery
`
`(ACM, the leading professional association for computer
`
`science), a Fellow Institute for Electrical and Electronics
`
`Engineering (IEEE, the leading professional association for
`
`engineering), and Fellow of the American Association for the
`
`Advancement of Science (AAAS, the leading professional
`
`association for science).
`
`11.
`
`I am the director of the NSF Frontier Center for Trustworthy
`
`Machine Learning (CTML), a research organization exploring
`
`security and privacy of machine learning (and AI in general).
`
`Funded by the US National Science Foundation, the CTML is
`
`led by the University of Wisconsin-Madison and has members
`
`from Stanford, the University of California, Berkeley, The
`
`University of California-San Diego, and the University of
`
`Virginia.
`
`7
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`

`

`12.
`
`I was the Program Manager (PM) and lead scientist for the
`
`Cyber Security Collaborative Research Alliance (CRA). The
`
`CRA is led by Penn State University and includes faculty and
`
`researchers from the Army Research Laboratory, Carnegie
`
`Mellon University, Indiana University, the University of
`
`California-Davis, and the University of California-Riverside.
`
`This initiative is a major research project aimed at developing a
`
`new science of cyber-security for military networks, computers,
`
`and installations.
`
`13.
`
`I have served as an advisor to several Ph.D. and master’s degree
`
`candidates, several of whom have gone on to become professors
`
`at various institutions such as North Carolina State University,
`
`Purdue University, the University of Toronto, the University of
`
`Oregon, and the Georgia Institute of Technology and the
`
`University of Florida. I am currently an advisor to seven Ph.D.
`
`students.
`
`14. Before joining Pennsylvania State University as a professor, I
`
`was a software developer and project manager for companies in
`
`the networking industry including Applied Innovation, Inc., and
`
`Primary Access Corporation. I was also a senior researcher at
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`8
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`

`

`AT&T Research-Labs (previously known as Bell Labs). As part
`
`of my duties in these industrial positions, I informed, reviewed,
`
`and formed corporate policies and practices relating to the
`
`security of mobile devices, networks, and software systems.
`
`15. As shown in Appendix A, I have published extensively in the
`
`field of mobile security, network and security management,
`
`computer systems, routing and queueing, authentication, systems
`
`security, applied cryptography and network security. In addition
`
`to writing several articles for industry journals and conferences,
`
`I have authored portions of numerous books related to computer
`
`systems, applied cryptography and network security. I have
`
`served on the editorial boards of several peer-reviewed journals
`
`including ACM Transactions on Internet Technology, for which
`
`I was the Editor-in-Chief. I was also an Associate Editor for
`
`ACM Transactions on Information and System Security and
`
`IEEE Transactions of Software Engineering, two highly
`
`regarded journals in the field. My curriculum vitae, attached as
`
`Appendix A, includes a list of publications on which I am an
`
`author. It contains details regarding my experience, education,
`
`9
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`

`publications, and other qualifications to provide an expert
`
`opinion in connection with this proceeding.
`
`16. My curriculum vitae, included as an appendix to this declaration,
`
`includes a list of publications on which I am a named author. It
`
`contains further details regarding my experience, education,
`
`publications, and other qualifications to render an expert opinion
`
`in connection with this proceeding.
`
`17.
`
`In writing this Declaration, I have considered the following: my
`
`own knowledge and experience, including my work experience
`
`in the fields of [INSERT]; my experience in teaching those
`
`subjects; and my experience in working with others involved in
`
`those fields. In addition, I have analyzed the following
`
`publications and materials, in addition to other materials I cite in
`
`my declaration:
`
`18.
`
`I have reviewed the ‘811 patent (SAMSUNG-1001), and
`
`relevant excerpts of the prosecution history (SAMSUNG-1002)
`
`of the ‘811 patent. Among various textbooks, documents, and
`
`publications, I have also reviewed the following prior art
`
`references:
`
` SAMSUNG-1005 U.S. Pat. App. Pub. No. 2006/0039354 (“Rao”)
`
`10
`
`

`

` SAMSUNG-1006 U.S. Pat. No. 8,285,850 (“Jones”)
`
` SAMSUNG-1007 U.S. Pat. No. 8,400,491 (“Panpaliya”)
`
` SAMSUNG-1008 U.S. Pat. App. Pub. No. 2009/0207817
`
`(“Montemurro”)
`
` SAMSUNG-1009 U.S. Pat. App. Pub. No. 2009/0185527
`
`(“Akhtar”)
`
` SAMSUNG-1010 U.S. Pat. App. Pub. No. 2008/0162981 (“Jajoo”)
`
` SAMSUNG-1011 U.S. Pat. App. Pub. No. 2009/0228951
`
`(“Ramesh”)
`
` SAMSUNG-1012 U.S. Pat. App. Pub. No 2007/0032230
`
`(“Pregont”)
`
` SAMSUNG-1013 U.S. Pat. No. 5,987,611 (“Freund”)
`
` SAMSUNG-1019 van Beek, et. al., 2004, January. Adaptive
`
`streaming of high-quality video over wireless LANs. In Visual
`
`Communications and Image Processing 2004 (Vol. 5308, pp. 647-
`
`660). SPIE. (“van Beek”)
`
`11
`
`

`

` SAMSUNG-1020 IETF RFC 791, Internet Protocol, September
`
`1981, downloaded from the internet at
`
`https://www.ietf.org/rfc/rfc791.txt on July 28, 2023
`
` SAMSUNG-1021 IETF RFC 5246, The Transport Layer Security
`
`(TLS) Protocol, version 1.2, August 2008, downloaded from the
`
`internet at https://datatracker.ietf.org/doc/html/rfc5246 on May 9,
`
`2024
`
` SAMSUNG-1022 Internet connection speed recommendations,
`
`downloaded from the Internet at
`
`https://help.netflix.com/en/node/306 on April 29, 2024.
`
`(“Netflix”)
`
` SAMSUNG-1023 Apostolopoulos, et al., 2002. Video streaming:
`
`Concepts, algorithms, and systems. HP Laboratories, report HPL-
`
`2002-260, pp.2641-8770. (“Apostolopoulos”)
`
` SAMSUNG-1024 U.S. Pat. App. Pub. No. 2006/0282566 (“Virdi”)
`
` SAMSUNG-1025 U.S. Pat. App. Pub. No. 2005/0080904
`
`(“Green”)
`
`12
`
`

`

` SAMSUNG-1026 IETF RFC 793, TRANSMISSION CONTROL
`
`PROTOCOL, September 1981, downloaded from the internet at
`
`https://datatracker.ietf.org/doc/html/rfc793 on April 24, 2024.
`
`(“TCP”)
`
` SAMSUNG-1027 U.S. Pat. App. Pub. No. 20070121615 (“Weill”)
`
` SAMSUNG-1029 U.S. Pat. App. Pub. No. 2008/0080458 (“Cole”)
`
` SAMSUNG-1030 U.S. Pat. App. Pub. No. 2010/0281154 (“Bedi”)
`
` SAMSUNG-1031 Lobo, et. al., (1999). A policy description
`
`language. AAAI/IAAI, 1999, 291-298. (“Lobo”)
`
` SAMSUNG-1032 Verma, et. al., (2002). Policy-based
`
`management of content distribution networks. IEEE network,
`
`16(2), 34-39. (“Verma”)
`
` SAMSUNG-1034 Banchs, et. al., Distributed weighted fair
`
`queuing in 802.11 wireless LAN, 2002 IEEE International
`
`Conference on Communications, Conference Proceedings. ICC
`
`2002 pp. 3121-3127), 2002 (“Banchs”)
`
`13
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`

`

` SAMSUNG-1035 Wu, et. al., 2001. Scalable video coding and
`
`transport over broadband wireless networks. Proceedings of the
`
`IEEE, 89(1), pp.6-20.
`
` SAMSUNG-1036 IETF RFC 2205, Resource ReSerVation
`
`Protocol (RSVP), version 1 Functional Specification, September
`
`1997, downloaded from the internet at
`
`https://datatracker.ietf.org/doc/html/rfc2205 on May 16, 2024
`
` SAMSUNG-1037 Excerpts, Computer Networks, Fourth Edition,
`
`by Andrew Tanenbaum, Prentice Hall, 2003
`
` SAMSUNG-1038 U.S. Pat. App. Pub. No. 2007/0258459
`
`(“Smith”)
`
` SAMSUNG-1039 Agrawal, et. al., 2005. Policy-based
`
`management of networked computing systems. IEEE
`
`Communications Magazine, 43(10), pp.69-75 (“Agrawal”)
`
` SAMSUNG-1041 Blake, et al., IETF RFC 2475, “An Architecture
`
`for Differentiated Services,” December 1998, downloaded from
`
`the internet at https://datatracker.ietf.org/doc/html/rfc2475 on July
`
`29, 2023
`
`14
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`

`

` SAMSUNG-1042 Reeder, et. al., 2007. Usability challenges in
`
`security and privacy policy-authoring interfaces. In Human-
`
`Computer Interaction–INTERACT 2007: 11th IFIP TC 13
`
`International Conference, Rio de Janeiro, Brazil, September 10-14,
`
`2007, Proceedings, Part II 11 (pp. 141-155). Springer Berlin
`
`Heidelberg.
`
` SAMSUNG-1043 Mansour, et al., 2001. Jitter control in QoS
`
`networks. IEEE/ACM Transactions On Networking, 9(4), pp.492-
`
`502.
`
` SAMSUNG-1044 Westerinen, et al., IETF RFC 3198,
`
`Terminology for Policy-Based Management, November 2001,
`
`downloaded from the Internet on May 27, 2024.
`
` SAMSUNG-1045 Damianou, et al., 2001. The ponder policy
`
`specification language. In Policies for Distributed Systems and
`
`Networks: International Workshop, POLICY 2001 Bristol, UK,
`
`January 29–31, 2001 Proceedings (pp. 18-38). Springer Berlin
`
`Heidelberg. (“Damianou”)
`
`15
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`

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` SAMSUNG-1046 Stone, G.N., Lundy, B. and Xie, G.G., 2001.
`
`Network policy languages: a survey and a new approach. IEEE
`
`network, 15(1), pp.10-21. (“Stone”)
`
` SAMSUNG-1047 Agrawal, et. al., 2007, May. Issues in designing
`
`a policy language for distributed management of IT infrastructures.
`
`In 2007 10th IFIP/IEEE International Symposium on Integrated
`
`Network Management (pp. 30-39). IEEE. (“Agrawal-2”)
`
` SAMSUNG-1048 Simplified Policy Language (CIM-SPL).
`
`Document Number DSP0231, version, 1. (“CIM-SPL”)
`
` SAMSUNG-1049 Ponnappan, et al., 2002, June. A policy based
`
`QoS management system for the IntServ/DiffServ based Internet.
`
`In Proceedings Third International Workshop on Policies for
`
`Distributed Systems and Networks (pp. 159-168). IEEE.
`
`(“Ponnappan”)
`
` SAMSUNG-1050 Gonçalves, et al., 2009, October. A graphical
`
`user interface for policy composition in CIM-SPL. In 2009
`
`International Conference on Ultra Modern Telecommunications &
`
`Workshops (pp. 1-7). IEEE. (“Gonçalves”)
`
`16
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`

`

` SAMSUNG-1051 U.S. Pat. App. Pub. No. 2008/0122796 (“Jobs”)
`
` SAMSUNG-1052 Grossman, Invention of the year: The iPhone.
`
`Time Magazine Online, 1, downloaded from the internet at
`
`https://content.time.com/time/specials/2007/article/0,28804,16773
`
`29_1678542_1677891,00.html on May 28, 2024.
`
` SAMSUNG-1053 Excerpts, Telcom Dictionary, Althos
`
`Publishing, 2007.
`
` SAMSUNG-1054 U.S. Pat. App. Pub. No. 2008/0002652.
`
`(“Gupta”)
`
` SAMSUNG-1055 U.S. Pat. No. 8,019,868 (“Rao-2”)
`
`19. Counsel (Fish & Richardson) has informed me that I should
`
`consider these materials through the lens of one of ordinary skill
`
`in the art related to the ’811 patent at the time of the earliest
`
`possible priority date of the ’811 patent, and I have done so
`
`during my review of these materials. I have been informed by
`
`Counsel to use the filing date January 28, 2009.
`
`20.
`
`I have no financial interest in the outcome of this proceeding. I
`
`am being compensated for my work as an expert on an hourly
`
`17
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`

`

`basis. My compensation is not dependent on the outcome of
`
`these proceedings or the content of my opinions.
`
`21. My opinions, as explained below, are based on my education,
`
`experience, and expertise in the fields relating to the ‘811 Patent.
`
`Unless otherwise stated, my testimony below refers to the
`
`knowledge of one of ordinary skill in the art as of the earliest
`
`possible priority date. Any figures that appear within this
`
`document have been prepared with the assistance of Counsel and
`
`reflect my understanding of the ‘811 Patent and the prior art
`
`discussed below.
`
`III. OVERVIEW OF CONCLUSIONS FORMED
`22. This declaration explains the conclusions that I have formed
`
`based on my analysis of all of the considered materials and my
`
`personal experience. To summarize those conclusions, based
`
`upon my knowledge and experience and my review of the prior
`
`art references listed above, I believe that:
`
` Ground 1A renders claims 1, 3, 6, 8, 10-11, 14, and 19-20
`
`obvious.
`
` Ground 1B renders claim 2 obvious.
`
` Ground 1C renders claims 4, 13, 21, 23, 25 obvious.
`
`18
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`

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` Ground 1D renders 17 claim obvious.
`
` Ground 1E renders 22 claim obvious.
`
` Ground 1F renders 5 claim obvious.
`
` Ground 1G renders 7 claim obvious.
`
` Ground 1H renders 18 claim obvious.
`
` Ground 1I renders claims 12, 15-16, 26-27, 29-30 obvious.
`
` Ground 1J renders claim 28 obvious.
`
` Ground 2 renders claims 1, 24 obvious.
`
`23.
`
`In support of these conclusions, I provide an overview of the
`
`references in Section IX and more detailed comments regarding
`
`the obviousness of claims 1-30 (“the Challenged Claims”) of
`
`the ‘811 patent in Section X.
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`24.
`In my opinion, one of ordinary skill in the art relating to, and at
`
`the time of, the Priority Date would have been someone with (1)
`
`at least a bachelor’s degree in computer science, computer
`
`engineering, electrical engineering, or a related field, and (2) at
`
`least two years of industry experience in wireless
`
`communications security. Additional advanced education could
`
`compensate for a deficiency in work experience, and vice-versa.
`
`19
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`

`

`25. Based on my experiences, I have a good understanding of the
`
`capabilities of a POSITA. Indeed, I have taught, participated in
`
`organizations, and worked closely with many such persons over
`
`the course of my career. Based on my knowledge, skill, and
`
`experience, I have an understanding of the capabilities of a
`
`POSITA. For example, from my industry experience, I am
`
`familiar with what a POSITA would have known and found
`
`predictable in the art. From teaching and supervising my post-
`
`graduate students, I also have an understanding of the
`
`knowledge that a person with this academic experience
`
`possesses. Furthermore, I possess those capabilities myself.
`
`V. LEGAL STANDARDS
` Terminology
`26.
`I have been informed by Counsel and understand that the best
`
`indicator of claim meaning is its usage in the context of the
`
`patent specification as understood by one of ordinary skill. I
`
`further understand that the words of the claims should be given
`
`their plain meaning unless that meaning is inconsistent with the
`
`patent specification or the patent’s history of examination before
`
`the Patent Office. Counsel has also informed me, and I
`
`20
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`

`

`understand that, the words of the claims should be interpreted as
`
`they would have been interpreted by one of ordinary skill at the
`
`time of the invention was made (not today). The ’811 patent
`
`was filed January 15, 2013, and claims priority to many
`
`provisional applications, the earliest of which was filed January
`
`28, 2009, which I refer to as the “Critical Date” in this
`
`proceeding. Because I do not know at what date the invention as
`
`claimed was made, if ever, I have used the Critical Date of the
`
`’811 patent as the point in time for claim interpretation purposes.
`
`My opinion does not change if the invention date is earlier.
`
`
`
`Legal Standards
`27.
`I have been informed by Counsel and understand that documents
`
`and materials that qualify as prior art can render a patent claim
`
`unpatentable as being anticipated or obvious.
`
`28.
`
`I am informed by Counsel and understand that all prior art
`
`references are to be looked at from the viewpoint of a person of
`
`ordinary skill in the art at the time of the invention, and that this
`
`viewpoint prevents one from using his or her own insight or
`
`hindsight in deciding whether a claim is anticipated or rendered
`
`obvious.
`
`21
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`

`

` Anticipation
`29.
`I understand that patents or printed publications that qualify as
`
`prior art can be used to invalidate a patent claim as anticipated
`
`or as obvious.
`
`30.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a
`
`patent claim requires a comparison of the properly construed
`
`claim language to the prior art on a limitation-by-limitation
`
`basis.
`
`31.
`
`I understand that a prior art reference “anticipates” an asserted
`
`claim, and thus renders the claim invalid, if all limitations of the
`
`claim are disclosed in that prior art reference, either explicitly or
`
`inherently (i.e., necessarily present).
`
` Obviousness
`32.
`I understand that even if a patent is not anticipated, it is still
`
`invalid if the differences between the claimed subject matter and
`
`the prior art are such that the subject matter as a whole would
`
`have been obvious at the time the invention was made to a
`
`POSITA.
`
`22
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`

`

`33.
`
`I have been informed by Counsel and understand that a claim is
`
`unpatentable for obviousness and that obviousness may be based
`
`upon a combination of references. I am informed by Counsel
`
`and understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does
`
`no more than yield predictable results. However, I am informed
`
`by Counsel and understand 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.
`
`34.
`
`I am informed by Counsel and understand that when a patented
`
`invention is a combination of known elements, a court
`
`determines whether there was an apparent reason to combine the
`
`known elements in the fashion claimed by the patent at issue by
`
`considering the teachings of prior art references, the effects of
`
`demands known to people working in the field or present in the
`
`marketplace, and the background knowledge possessed by a
`
`person having ordinary skill in the art.
`
`35.
`
`I am informed by Counsel and understand that a patent claim
`
`composed of several limitations is not proved obvious merely by
`
`23
`
`

`

`demonstrating that each of its limitations was independently
`
`known in the prior art. I am informed by Counsel and
`
`understand that identifying a reason those elements would be
`
`combined can be important because inventions in many
`
`instances rely upon building blocks long since uncovered, and
`
`claimed discoveries almost of necessity will be combinations of
`
`what, in some sense, is already known. I am informed by
`
`Counsel and understand that it is improper to use hindsight in an
`
`obviousness analysis, and that a patent’s claims should not be
`
`used as a “roadmap.”
`
`36.
`
`I am informed by Counsel and understand that an obviousness
`
`inquiry requires consideration of the following factors: (1) the
`
`scope and content of the prior art, (2) the differences between
`
`the prior art and the claims, (3) the level of ordinary skill in the
`
`art, and (4) any so called “secondary considerations” of non-
`
`obviousness, which include: (i) “long felt need” for the claimed
`
`invention, (ii) commercial success attributable to the claimed
`
`invention, (iii) unexpected results of the claimed invention, and
`
`(iv) “copying” of the claimed invention by others.
`
`24
`
`

`

`37.
`
`I have been informed by Counsel and understand that an
`
`obviousness evaluation can be based on a single reference or a
`
`combination of multiple prior art references. I understand that
`
`the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two
`
`or more prior art references is sometimes simple common sense.
`
`I have been informed by Counsel and understand that
`
`obviousness analysis recognizes that market demand, rather than
`
`scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the
`
`direction of the marketplace.
`
`38.
`
`I have been informed by Counsel and understand that if a
`
`technique has been used to improve one device, and a person of
`
`ordinary skill at the time of invention would have recognized
`
`that it would improve similar devices in the same way, using the
`
`technique is obvious unless its actual application is beyond his
`
`or her skill.
`
`39.
`
`I have been informed by Counsel and understand that practical
`
`and common sense considerations should guide a proper
`
`obviousness analysis, because familiar items may have obvious
`
`25
`
`

`

`uses beyond their primary purposes. I have been informed by
`
`Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the
`
`teachings of multiple prior art references. I have been informed
`
`by Counsel and understand that obviousness analysis therefore
`
`takes into account the inferences and creative steps that a person
`
`of ordinary skill would have employed at the time of invention.
`
`40.
`
`I have been informed by Counsel and understand that a proper
`
`obviousness analysis focuses on what was known or obvious to
`
`a person of ordinary skill at the time of invention, not just the
`
`patentee. Accordingly, I understand that any need or problem
`
`known in the field of endeavor at the time of invention and
`
`addressed by the patent can provide a reason for combining the
`
`elements in the manner claimed.
`
`41.
`
`I have been informed by Counsel and understand that a claim
`
`can be obvious in light of a single reference, without the need to
`
`combine references, if the elements of the claim that are not
`
`found explicitly or inherently in the reference can be supplied by
`
`the common sense of one of skill in the art.
`
`26
`
`

`

`42.
`
`I have been informed by Counsel and understand that there must
`
`be a relationship between any such secondary considerations and
`
`the invention, and that contemporaneous and independent
`
`invention by others is a secondary consideration supporting an
`
`obviousness determination.
`
`43.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where one of ordinary skill having the understanding
`
`and knowledge reflected in the prior art and motivated by the
`
`general problem facing the inventor, would have been led to
`
`make the combination of elements recited in the claims. Under
`
`this analysis, the prior art references themselves, or any need or
`
`problem known in the field of endeavor at the time of the
`
`invention, can provide a reason for combining the elements of
`
`multiple prior art references in the claimed manner.
`
`44.
`
`I have been informed by Counsel and understand that in an inter
`
`partes review, “the petitioner shall have the burden of proving a
`
`proposition of unpatentability,” including a proposition of
`
`obviousness, “by a preponderance of the evidence.” 35 U.S.C.
`
`§316(e).
`
`
`
`27
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`

`

`VI. MATERIALS CONSIDERED
`45. My analysis and conclusions set forth in this declaration are
`
`based on my educational background and experiences in the
`
`field (see Section II). Based on my knowledge and experience, I
`
`believe that I am considered to be an expert in the field. Also,
`
`based on my knowledge and experience, I understand and know
`
`of the capabilities of persons of ordinary skill in the field around
`
`2009, and I taught, participated in organizations, and worked
`
`closely with many such persons in the field during that time
`
`frame.
`
`46. As part of my independent analysis for this declaration, I have
`
`considered the following: the background
`
`knowledge/technologies that were commonly known to persons
`
`of ordinary skill in this art during the time before the earliest
`
`claimed priority date for the ’811 patent; my own knowledge
`
`and experiences gained from my