UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`____________________
`
`Case No. IPR2024-00232
`U.S. Patent No. 8,352,730
`
`____________________
`
`DECLARATION OF STEPHEN GRAY
`
`1
`
`MICROSOFT-1003
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF OPINIONS ........................................................................... 2
`
`III. QUALIFICATIONS AND BACKGROUND ................................................. 2
`
`IV. MATERIALS CONSIDERED ........................................................................ 6
`
`V.
`
`LEGAL STANDARDS ................................................................................... 8
`
`A.
`
`B.
`
`C.
`
`D.
`
`Level of Ordinary Skill ......................................................................... 9
`
`Prior Art ...............................................................................................10
`
`Anticipation .........................................................................................10
`
`Obviousness .........................................................................................10
`
`VI.
`
`THE ’730 PATENT .......................................................................................15
`
`A.
`
`Overview .............................................................................................15
`
`VII. CLAIM CONSTRUCTION ..........................................................................18
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................20
`
`IX.
`
`THE PRIOR ART ..........................................................................................21
`
`X.
`
`XI.
`
`A.
`
`B.
`
`Ludtke (U.S. Patent No. 7,188,110) ....................................................22
`
`Kon (U.S. Patent Application Publication No. 2002/0046336) ..........25
`
`GROUNDS OF UNPATENTABILITY ........................................................30
`
`THE CHALLENGED CLAIMS ARE UNPATENTABLE BASED
`ON THE PRIOR ART ...................................................................................31
`
`A.
`
`Ground 1: Claims 1, 2, 4-6, 8, 9, 11, 12, and 14-17 Are Obvious
`in View of Ludtke. ...............................................................................31
`
`1.
`
`Independent claim 1 ..................................................................31
`
`i
`
`2
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`[1preamble]: “A method for verifying a user
`during authentication of an integrated device,
`comprising the steps of:” ................................................31
`
`[1ai]: “persistently storing biometric data of the
`user [in a tamper proof format written to a storage
`element on the integrated device that is unable to
`be subsequently altered]” ................................................32
`
`[1aii]: “[persistently storing] a plurality of codes
`and other data values comprising a device ID code
`uniquely identifying the integrated device [in a
`tamper proof format written to a storage element
`on the integrated device that is unable to be
`subsequently altered]” ....................................................35
`
`[1aiii]: “[persistently storing] a secret decryption
`value in a tamper proof format written to a storage
`element on the integrated device that is unable to
`be subsequently altered;” ................................................37
`
`[1b]: “wherein the biometric data is selected from
`a group consisting of a palm print, a retinal scan,
`an iris scan, a hand geometry, a facial recognition,
`a signature recognition and a voice recognition;” ..........44
`
`[1c]: “responsive to receiving a request for a
`biometric verification of the user, receiving scan
`data from a biometric scan;” ...........................................45
`
`[1d]: “comparing the scan data to the biometric
`data to determine whether the scan data matches
`the biometric data;” ........................................................46
`
`[1e]: “responsive to a determination that the scan
`data matches the biometric data, wirelessly
`sending one or more codes from the plurality of
`codes and the other data values for authentication
`by an agent that is a third-party trusted authority
`possessing a list of device ID codes uniquely
`identifying legitimate integrated devices, wherein
`
`ii
`
`3
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`i.
`
`the one or more codes and other data values
`includes the device ID code; and” ..................................46
`
`[1f]: “responsive to authentication of the one or
`more codes and the other data values by the agent,
`receiving an access message from the agent
`allowing the user access to an application, wherein
`the application is selected from a group consisting
`of a casino machine, a keyless lock, a garage door
`opener, an ATM machine, a hard drive, computer
`software, a web site and a file.” ......................................53
`
`Claim 2: “The method of claim 1, wherein the one or
`more codes and the other data values are transmitted to
`the agent over a network.” ........................................................57
`
`Claim 4: “The method of claim 1, wherein the one or
`more codes and the other data values indicate that the
`biometric verification was successful.” ....................................57
`
`Claim 5: “The method of claim 1, wherein the biometric
`data and the scan data are both based on a fingerprint
`scan by the user.” ......................................................................59
`
`Claim 6: “The method of claim 1, further comprising
`establishing a secure communication channel prior to
`sending the one or more codes and the other data values
`for authentication”.....................................................................60
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Independent Claim 8 .................................................................60
`
`a.
`
`b.
`
`c.
`
`[8preamble]: “An integrated device for verifying a
`user during authentication of the integrated device,
`comprising:” ...................................................................60
`
`[8ai]: “a memory stores biometric data of a user,
`and” .................................................................................60
`
`[8aii]: “a plurality of codes and other data values
`comprising a device ID code uniquely identifying
`the integrated device, and” .............................................60
`
`iii
`
`4
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`d.
`
`e.
`
`f.
`
`g.
`
`[8aiii]: “a secret decryption value in a tamper proof
`format written to the memory that is unable to be
`subsequently altered;” .....................................................61
`
`[8b]: “wherein the biometric data is selected from
`a group consisting of a palm print, a retinal scan,
`an iris scan, a hand geometry, a facial recognition,
`a signature recognition and a voice recognition;” ..........61
`
`[8c]: “a verification unit, in communication with
`the memory, receives scan data from a biometric
`scan for comparison against the biometric data,
`and if the scan data matches the biometric data,
`wirelessly sends one or more codes from the
`plurality of codes and the other data values for
`authentication by an agent that is a third-party
`trusted authority possessing a list of device ID
`codes uniquely identifying legitimate integrated
`devices, wherein the one or more codes and the
`other data values includes the device ID code; and” ......61
`
`[8d]: “responsive to the agent authenticating the
`one or more codes and the other data values, a
`radio frequency communicator, receives an access
`message from the agent allowing the user access to
`an application, wherein the application is selected
`from a group consisting of a casino machine, a
`keyless lock, a garage door opener, an ATM
`machine, a hard drive, computer software, a web
`site and a file.” ................................................................62
`
`7.
`
`8.
`
`Claim 9: “The integrated device of claim 8, wherein the
`one or more codes and the other data values are
`transmitted to the agent over a network.” .................................63
`
`Claim 11: “The integrated device of claim 8, wherein the
`verifier comprises: an LED to be activated for requesting
`the biometric scan.”...................................................................63
`
`9.
`
`Independent Claim 12 ...............................................................66
`
`iv
`
`5
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`[12preamble]: “A method for authenticating a
`verified user using a computer processor
`configured to execute method steps, comprising:” ........66
`
`[12a]: “receiving one or more codes from a
`plurality of codes and other data values including a
`device ID code, wherein the plurality of codes and
`the other data values comprises the device ID code
`uniquely identifying the integrated device and a
`secret decryption value associated with a
`biometrically verified user, the device ID code
`being registered with an agent that is a third-party
`trusted authority possessing a list of device ID
`codes uniquely identifying legitimate integrated
`devices” ...........................................................................67
`
`[12b]: “requesting authentication of the one or
`more codes and the other data values by the agent,
`wherein the authentication determines whether the
`one or more codes and the other data values are
`legitimate;” .....................................................................70
`
`[12c]: “receiving an access message from the
`agent; and;” .....................................................................70
`
`[12d]: “in response to a positive access message,
`allowing the biometrically verified user access to
`an application, wherein the application is selected
`from a group consisting of a casino machine, a
`keyless lock, a garage door opener, an ATM
`machine, a hard drive, computer software, a web
`site and a file.” ................................................................71
`
`10. Claim 14: “The method of claim 12, further comprising:
`establishing a secure communications channel with a
`biometric key, wherein the one or more codes and the
`other data values associated with the biometrically
`verified user is received from the biometric key. .....................71
`
`11.
`
`Independent claim 15 ................................................................72
`
`a.
`
`[15preamble]: “A system, comprising:” .........................72
`
`v
`
`6
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`g.
`
`h.
`
`[15ai]: “a biometric key stores biometric data of a
`user” ................................................................................73
`
`[15aii]: “and a plurality of codes and other data
`values comprising a device ID code uniquely
`identifying the biometric key” ........................................73
`
`[15aiii]: “and a secret decryption value in a tamper
`proof format written to a storage element on the
`biometric key that is unable to be subsequently
`altered,” ...........................................................................73
`
`[15aiv]: “and if scan data can be verified as being
`from the user by comparing the scan data to the
`biometric data, wirelessly sending, one or more
`codes from the plurality of codes and other data
`values wherein the one or more codes and the
`other data values include the device ID code,” ..............73
`
`[15av]: “and the biometric data is selected from a
`group consisting of a palm print, a retinal scan, an
`iris scan, a hand geometry, a facial recognition, a
`signature recognition and a voice recognition; and” ......73
`
`[15b]: “an authentication unit receives the plurality
`of codes and the other data values and send the
`plurality of codes and the other data values to
`agent for authentication to determine whether the
`one or more codes and the other data values are
`legitimate, wherein the agent is a third-party
`trusted authority possessing a list of device ID
`codes uniquely identifying legitimate integrated
`devices,” ..........................................................................74
`
`[15c]: “and responsive to the device ID code being
`authenticated, the authentication unit receiving an
`access message from the agent allowing the user to
`access an application, wherein the application is
`selected from a group consisting of a casino
`machine, a keyless lock, a garage door opener, an
`
`vi
`
`7
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`ATM machine, a hard drive, computer software, a
`web site and a file.” ........................................................76
`
`12. Claim 16: “The system of claim 15, wherein the
`biometric key receives an authentication request from the
`authentication unit, and in response, requests a biometric
`scan from the user to generate the scan data.” ..........................76
`
`13. Claim 17: “The system of claim 15, wherein if the
`biometric key cannot verify the scan data as being from
`the user, it does not send the one or more codes and the
`other data values.” .....................................................................77
`
`B.
`
`Ground 2: Claims 3, 10, and 13 Are Obvious In View Of
`Ludtke and Kon. ...................................................................................79
`
`1.
`
`2.
`
`3.
`
`Claim 3: “The method of claim 1, further comprising:
`registering an age verification for the user in association
`with the device ID code.” ..........................................................80
`
`Claim 10: “The integrated device of claim 9, wherein an
`age verification is registered in association with the
`device ID code.” ........................................................................84
`
`Claim 13: “The method of claim 12, further comprising:
`registering a date of birth or age with the agent.” .....................84
`
`XII. CONCLUSION ..............................................................................................84
`
`vii
`
`8
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Google LLC (“Petitioner”) as an independent
`
`expert consultant in this proceeding before the United States Patent and Trademark
`
`Office.
`
`2.
`
`I am over 21 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein.
`
`3.
`
`I understand that this proceeding involves U.S. Patent No. 8,352,730
`
`(“the ’730 patent,” Ex. 1001). The application for the ’730 patent was filed
`
`December 20, 2005, and claims the benefit of U.S. Provisional Application No.
`
`60/637,538, filed on December 20, 2004, and of U.S. Provisional Application No.
`
`60/652,765, filed on February 14, 2005.
`
`4.
`
`I have been asked by Petitioner to provide my opinion on whether the
`
`claims of the ’730 patent would have been obvious to a person of ordinary skill in
`
`the art at the time of the earliest possible priority date of the ’730 patent. In
`
`performing my analysis, I have been asked to assume that the priority date of the
`
`‘730 patent is December 20, 2004. My opinions are set forth below.
`
`5.
`
`Throughout this declaration, I refer to specific pages, figures, and/or
`
`line numbers of various exhibits. These citations are illustrative and are not
`
`intended to suggest that they are the only support for the propositions for which
`
`they are cited.
`
`1
`
`9
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`II.
`
`SUMMARY OF OPINIONS
`
`6.
`
`This declaration considers claims 1-6 and 8-17 of the ’730 patent.
`
`Below, I set forth the opinions I have formed, the conclusions I have reached, and
`
`the bases for these opinions and conclusions. I believe the statements contained in
`
`this declaration to be true and correct to the best of my knowledge.
`
`7.
`
`Based on my experience and knowledge of the art at the time of the
`
`applicable priority date, it is my opinion that claims 1-6 and 8-17 of the ’730 patent
`
`would have been obvious based on the asserted grounds discussed below.
`
`8.
`
`I am being compensated for my time at my normal hourly rate. My
`
`compensation is in no way contingent upon the nature of my findings, the
`
`presentation of my findings in testimony, or the outcome of this proceeding.
`
`III. QUALIFICATIONS AND BACKGROUND
`
`9.
`
`I believe that I am well qualified to serve as a technical expert in this
`
`matter based upon my qualifications, discussed in detail below.
`
`10.
`
`I am competent to write this declaration.
`
`11.
`
`I am an independent consultant. All of my opinions stated in this
`
`declaration are based on my own personal knowledge and professional judgment.
`
`In forming my opinions, I have relied on my knowledge and experience in
`
`designing, developing, and deploying distributed client/server systems, graphical
`
`user interfaces, website platforms, e-commerce systems, and digital image
`
`2
`
`10
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`processing systems, and on the documents and information referenced in this
`
`declaration. I am over 18 years of age and, if I am called upon to do so, I am
`
`competent to testify as to the matters set forth herein.
`
`12.
`
`In formulating my opinions, I have relied upon my training,
`
`knowledge, and experience in the relevant art. Provided as Exhibit 1004 is a copy
`
`of my current curriculum vitae, which details my education and experience, and a
`
`list of all other cases in which, during the previous four years, I testified as an
`
`expert at trial or by deposition. The following provides a brief overview of some
`
`of my experience that is relevant to the matters set forth in this declaration.
`
`13.
`
`Since the mid-1970s, I have designed, developed, and deployed
`
`computing systems and products that operate in server, client, and network
`
`environments. As such, I have acquired expertise and am an expert in the areas of
`
`distributed computing architecture and design, graphical user interfaces, operating
`
`systems, distributed data management, local area and wide area networks, and the
`
`various programming languages used in the development of those systems and
`
`products. I have been employed by or retained as a consultant, including as a
`
`litigation consultant, for numerous companies such as Burroughs, FileNet, Fujitsu,
`
`Marriott Corporation, MCI, Northern Telecom, Olivetti, TRW, and Xerox, as well
`
`as other companies.
`
`3
`
`11
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`14. During my career I have had a variety of assignments relating to
`
`distributed processing. For example, as the Chief Technology Officer for NTN
`
`Communications, I was responsible for the technologies related to the broadcast of
`
`online trivia games to 3,500 remote sites in North America. The trivia game
`
`broadcast used a variety of image technologies.
`
`15. My practical experience regarding mobile device computing software
`
`includes development at NTN Communications of a multiplayer game system
`
`operating over mobile phones where issues of data synchronization, event handling
`
`and centralized control of distributed devices was required.
`
`16. As my curriculum vitae shows, much of my career has been spent as a
`
`software development professional. As a software development professional, I
`
`have had numerous occasions to write, modify, analyze, and otherwise review
`
`bodies of source code. I have analyzed source code written in several variants of
`
`C, SQL, COBOL, PHP, Python, RPG, variants of Basic, Java, Perl, several
`
`Assembler languages, and others. For example, as an individual contributor at
`
`Xerox during the mid-1980s to 1990, I evaluated the quality of source code from
`
`third party software providers for possible inclusion in the Xerox product line.
`
`Also, as another example, I evaluated the source code of several application
`
`software packages for completeness and maintainability for possible inclusion into
`
`the NTN Communications product line in 2000-2001. During my early career, I
`
`4
`
`12
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`spent time maintaining source code written by others. In each of these
`
`assignments, I analyzed the source code to identify the data structures, logical
`
`flow, algorithms and other aspects.
`
`17.
`
`I have developed and presented numerous public and in-house courses
`
`in computer systems technology, including relating to distributed computing
`
`applications for IBM MVS, UNIX, Linux, IBM OS/2, Microsoft Windows, and
`
`related networking technologies.
`
`18.
`
`I also have professional experiences related to computerized
`
`authentication including authentication responsive to biometric verification of a
`
`user being authenticated.
`
`19. While consulting for Xerox in the mid 1990s, I worked on the design
`
`of systems for multi-level authentication for distributed product configuration
`
`software products.
`
`20.
`
`In the early 2000s I served as a technical advisor to SiCommNet
`
`which was an e-Commerce Internet start-up. SiCommNet developed and sold a
`
`product for procurement in public agencies. One of the functions that the system
`
`provided was for suppliers to confidentially respond to Requests for Proposals
`
`(RFP) posted on the e-Commerce site. A need arose for authentication and
`
`encryption of these responses. I led the analysis and prototyping of several
`
`different approaches including PKI, certificates, tokens and biometrics.
`
`5
`
`13
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`IV. MATERIALS CONSIDERED
`
`21.
`
`In forming my opinions, I have reviewed the following documents
`
`and any other document cited in this declaration.
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 8,352,730 (“the ’730 patent”)
`
`Ex. 1002
`
`File History of U.S. Patent No. 8,352,730
`
`Ex. 1005 U.S. Patent No. 7,188,110 to Ludtke et al. (“Ludtke”)
`
`Ex. 1006 U.S. Patent Application Publication No. 2002/0046336 to Kon et al.
`(“Kon”)
`
`Ex. 1007
`
`Samsung Electronics America, Inc. v. Proxense, LLC, IPR2021-
`01444, Paper 11 (PTAB Feb. 28, 2022).
`
`Ex. 1009
`
`Ex. 1010
`
`Proxense, LLC v. Samsung Electronics Co., Ltd., Case No. 6:21-cv-
`00210, Dkt. No. 43, Claim Construction Order (W.D. Tex. Jan. 18,
`2022).
`
`Proxense, LLC v. Samsung Electronics Co., Ltd., Case No. 6:21-cv-
`00210, Dkt. No. 149, Memorandum in Support of Claim
`Construction Order (W.D. Tex. Dec. 28, 2022).
`
`Ex. 1012
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No. 1,
`Complaint (W.D. Tex. May 2, 2023)
`
`Ex. 1013
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320,
`Preliminary Infringement Contentions (W.D. Tex. July 24, 2023.
`
`Ex. 1014 CERTIFICATION REPORT No. P165: Sony FeliCa Contactless
`Smart Card RC-S860, UK IT Security Evaluation and Certification
`Scheme (Mar. 2002)
`
`Ex. 1015 U.S. Patent Application Publication No. 2002/0049806 to Gatz et al.
`(“Gatz”)
`
`6
`
`14
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`Exhibit
`
`Description
`
`Ex. 1016 U.S. Patent Application Publication No. 2006/0034492 to Siegel et
`al. (“Siegel”)
`
`Ex. 1017 U.S. Patent Application Publication No. 2001/0036297 to Ikegami
`et al. (“Ikegami”)
`
`Ex. 1018
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No.
`45, Proxense’s Responsive Claim Construction Brief (W.D. Tex.
`Dec. 1, 2023).
`
`Ex. 1019
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No.
`45, Proxense’s Expert Report (W.D. Tex. Dec. 18, 2023).
`
`Ex. 1020 Decision on Petition, Ex Parte Reexamination No. 90/015,052
`(January 3, 2023).
`
`Ex. 1021 Order Granting Request for Ex Parte Reexamination, Ex Parte
`Reexamination No. 90/015,052 (August 2, 2022).
`
`Ex. 1022
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No.
`50, Proxense’s Sur-Reply Claim Construction Brief (W.D. Tex. Jan.
`5, 2023).
`
`22.
`
`I have also relied on my education, experience, research, training, and
`
`knowledge in the relevant art, and my understanding of any applicable legal
`
`principles described in this declaration.
`
`23. All the opinions contained in this declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. My opinions
`
`have also been guided by my understanding of how a person of ordinary skill in the
`
`art would have understood the claims of the ’730 patent.
`
`7
`
`15
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`24.
`
`I reserve the right to supplement and amend any of my opinions in
`
`this declaration based on documents, testimony, and other information that
`
`becomes available to me after the date of this declaration.
`
`V.
`
`LEGAL STANDARDS
`
`25.
`
`I am not a lawyer. My understanding of the legal standards to apply in
`
`reaching the conclusions in this declaration is based on discussions with counsel
`
`for Petitioner, my experience applying similar standards in other patent-related
`
`matters, and my reading of the documents submitted in this proceeding. In
`
`preparing this declaration, I have tried to faithfully apply these legal standards to
`
`the challenged claims.
`
`26.
`
`I have been informed that there are two ways in which prior art may
`
`render a patent claim unpatentable. First, I have been informed that the prior art
`
`can “anticipate” a claim. Second, I have been informed that the prior art can render
`
`a claim “obvious” to a person of ordinary skill in the art. I understand that a claim
`
`is patentable if it was not anticipated and would not have been obvious in view of
`
`the prior art as of the effective filing date of the patent.
`
`27.
`
`I have been informed that a dependent claim is a patent claim that
`
`refers back to another patent claim. I have been informed that a dependent claim
`
`includes all the limitations of the claim to which it refers.
`
`8
`
`16
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`28.
`
`I have been asked to provide my opinions as to whether the cited prior
`
`art discloses or renders obvious claims 1-6 and 8-17 of the ’730 patent from the
`
`perspective of a person of ordinary skill in the art at the ’730 patent’s earliest
`
`priority date in 2004, as described in more detail below.
`
`29.
`
`I have been informed that in inter partes review proceedings, such as
`
`this one, the party challenging the patent bears the burden of proving
`
`unpatentability by a preponderance of the evidence. I understand that a
`
`preponderance of the evidence means “more likely than not.”
`
`30.
`
`For the purposes of this declaration, I have been asked to provide my
`
`opinions on issues regarding unpatentability. I have been informed of the following
`
`legal standards, which I have applied in forming my opinions.
`
`A.
`
`Level of Ordinary Skill
`
`31.
`
`I have been informed that a person of ordinary skill in the art is
`
`determined by considering several factors, including the (i) type of problems
`
`encountered in the art; (ii) prior art solutions to those problems; (iii) rapidity with
`
`which innovations are made; (iv) sophistication of the technology; and
`
`(v) educational level of active workers in the field.
`
`32.
`
`I have been instructed to assume that a person of ordinary skill in the
`
`art is not a specific real individual but rather a hypothetical individual having the
`
`qualities reflected by the factors discussed above.
`
`9
`
`17
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`B.
`
`Prior Art
`
`33.
`
`I have been advised and understand that the information used to
`
`evaluate whether an invention was new and not obvious when made is generally
`
`referred to as “prior art.” I understand that prior art includes patents and printed
`
`publications that existed before the earliest priority date or the earliest filing date of
`
`the patent (which I have been informed is also called the “effective filing date”). I
`
`have been informed and understand that a patent or published patent application is
`
`prior art if it was filed before the earliest filing date of the claimed invention and
`
`that a printed publication is prior art if it was publicly available before the earliest
`
`filing date.
`
`C.
`
`34.
`
`Anticipation
`
`I have been informed that under 35 U.S.C. § 102, a patent claim is
`
`unpatentable for anticipation if the claimed subject matter was patented or
`
`described in a printed publication before the effective filing date of the claimed
`
`invention. I have been informed that this is referred to as unpatentability by
`
`anticipation. I have been informed that a patent claim is anticipated under § 102 if
`
`a single prior art reference discloses all limitations of the claimed invention.
`
`D.
`
`35.
`
`Obviousness
`
`I have been informed that for obviousness under 35 U.S.C. § 103, a
`
`patent claim is unpatentable if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`10
`
`18
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`been obvious to a person having ordinary skill in the art to which said subject
`
`matter pertains at the time the invention was made. I have been informed that this
`
`is referred to as unpatentability by obviousness.
`
`36.
`
`I have been informed that an obviousness analysis includes the
`
`following considerations:
`
`a. Determining the scope and content of the prior art;
`
`b. Ascertaining the differences between the prior art and the claims at
`
`issue;
`
`c. Resolving the level of ordinary skill in the pertinent art; and
`
`d. Considering evidence of secondary indicia of nonobviousness (if
`
`available).
`
`37.
`
`I have been informed that the relevant time for considering whether a
`
`claim would have been obvious to a person of ordinary skill in the art is the time of
`
`invention. For my obviousness analysis, counsel for Petitioner instructed me to
`
`assume that the date of invention for the challenged claims is December 20, 2004.
`
`My opinions would not change if I assumed a later date of invention.
`
`38.
`
`I have been informed that a reference may be modified or combined
`
`with other references or with a person of ordinary skill in the art’s own knowledge
`
`if the person would have found the modification or combination obvious. I have
`
`also been informed that a person of ordinary skill in the art is presumed to know all
`
`11
`
`19
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`the relevant prior art, and the obviousness analysis may take into account the
`
`inferences and creative steps that a person of ordinary skill in the art would
`
`employ.
`
`39.
`
`I have been informed that whether a prior art reference renders a
`
`patent claim obvious is determined from the perspective of a person of ordinary
`
`skill in the art. I have also been informed that, while there is no requirement that
`
`the prior art contain an express suggestion to combine known elements to achieve
`
`the claimed invention, and while a suggestion to combine known elements to
`
`achieve the claimed invention may come from the prior art as a whole or
`
`individually and may consider the inferences and creative steps a person of
`
`ordinary skill in the art would employ, as filtered through the knowledge of one
`
`skilled in the art, obviousness grounds cannot be sustained by mere conclusory
`
`statements and must include some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.
`
`40.
`
`In determining whether a prior art reference could have been
`
`combined with another prior art reference or other information known to a person
`
`having ordinary skill in the art, I have been informed that the following principles
`
`may be considered:
`
`a. A combination of familiar elements according to known methods is
`
`likely to be obvious if it yields predictable results;
`
`12
`
`20
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 8,352,730
`
`b. The substitution of one known element for another is likely to be
`
`obvious if it yields predictable results;
`
`c. The use of a known technique to improve similar items or methods in
`
`the same way is likely to be obvious if it yields predictable results;
`
`d. The application of a known technique to a prior art reference that is
`
`ready for improvement to yield predictable results;
`
`e. Any need or problem known in the field and addressed by the
`
`reference can provide a reason for combining the elements in the
`
`manner claimed;
`
`f. A person of ordinary skill often will be able to fit the teachings of
`
`multiple references together like a puzzle; and
`
`g. The proper analysis of obviousness requires a determination of
`
`whether a person of ordinary skill in the art would have a “reasonable
`
`expectation of success”—but not “absolute predictability” of
`
`success—in achieving the claimed invention by combining prior art
`
`references.
`
`41.
`
`I have been info