UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`____________________
`
`Case No. IPR2024-00233
`U.S. Patent No. 8,886,954
`
`____________________
`
`DECLARATION OF STEPHEN GRAY
`
`1
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`MICROSOFT-1003
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`

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`Decl. of Stephen Gray
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`
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`U.S. Patent No. 8,886,954
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`
`SUMMARY OF OPINIONS ........................................................................... 2
`
`I.
`
`II.
`
`III. QUALIFICATIONS AND BACKGROUND ................................................. 2
`
`IV. MATERIALS CONSIDERED ........................................................................ 6
`
`V.
`
`LEGAL STANDARDS ................................................................................... 8
`
`A.
`
`B.
`
`Level of Ordinary Skill ......................................................................... 9
`
`Prior Art ...............................................................................................10
`
`C. Anticipation .........................................................................................10
`
`D. Obviousness .........................................................................................11
`
`VI. THE ’954 PATENT .......................................................................................16
`
`A. Overview .............................................................................................16
`
`VII. CLAIM CONSTRUCTION ..........................................................................18
`
`VIII. LEVEL OF ORDINARY SKILL IN THE ART ...........................................20
`
`IX. THE PRIOR ART ..........................................................................................21
`
`A.
`
`Ludtke (U.S. Patent No. 7,188,110) ....................................................22
`
`B. Kon (U.S. Patent Application Publication No. 2002/0046336) ..........25
`
`X. GROUNDS OF UNPATENTABILITY ........................................................30
`
`XI. THE CHALLENGED CLAIMS ARE UNPATENTABLE BASED
`ON THE PRIOR ART ...................................................................................31
`
`A. Ground 1: Claims 1, 2, 4-7, 10, 12, 13, 15, 16, 18, 19, and
`22-27 Are Obvious in View of Ludtke. ..............................................31
`
`1.
`
`Independent claim 1 ..................................................................31
`
`a.
`
`[1preamble]: “A method comprising:” ...........................31
`
`i
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`2
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`b.
`
`c.
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`d.
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`e.
`
`f.
`
`g.
`
`h.
`
`[1ai]: “persistently storing biometric data of a user
`[in a tamper proof format written to a storage
`element on the integrated device that is unable to
`be subsequently altered] and” .........................................32
`
`[1aii]: “[persistently storing] a plurality of codes
`and other data values comprising a device ID code
`uniquely identifying an integrated device [in a
`tamper proof format written to a storage element
`on the integrated device that is unable to be
`subsequently altered] and” ..............................................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]: “responsive to receiving a request for a
`biometric verification of the user, receiving scan
`data from a biometric scan;” ...........................................44
`
`[1c]: “comparing the scan data to the biometric
`data to determine whether the scan data matches
`the biometric data;” ........................................................45
`
`[1d]: “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
`to a third party that operates a trusted authority,
`wherein the one or more codes and other data
`values include[] the device ID code; and” ......................45
`
`[1e]: “receiving, at an application, an access
`message from the trusted authority indicating that
`the trusted authority successfully authenticated the
`one or more codes and other data values sent to the
`third party and allowing the user access to the
`application. ......................................................................51
`
`ii
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`3
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`

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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`2.
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`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`Claim 2: “The method of claim 1, wherein the one or
`more codes and the other data values are transmitted to
`the trusted authority over a network.” ......................................55
`
`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.” ....................................55
`
`Claim 5: “The method of claim 1, wherein the biometric
`data includes one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a hand geometry, a facial
`recognition, a signature recognition and a voice
`recognition.” ..............................................................................57
`
`Claim 6: “The method of claim 1, wherein the integrated
`device comprises one or more of a mobile phone, tablet,
`laptop, mp3 player, mobile gaming device, watch and a
`key fob.” ....................................................................................57
`
`Claim 7: “The method of claim 1, wherein the
`application includes one or more of a casino machine, a
`keyless lock, a garage door opener, an ATM machine, a
`hard drive, computer software, a web site, a file and a
`financial account.” ....................................................................59
`
`Claim 10: “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
`
`8.
`
`Independent Claim 12 ...............................................................60
`
`a.
`
`b.
`
`c.
`
`[12preamble]: “An integrated device comprising:” .......60
`
`[12ai]: “a persistent storage media that stores
`biometric data of a user, and” .........................................60
`
`[12aii]: “a plurality of codes and other data values
`comprising a device ID code uniquely identifying
`the integrated device, and” .............................................60
`
`iii
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`4
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`d.
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`e.
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`f.
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`[12aiii]: “a secret decryption value in a tamper
`proof format written to the memory that is unable
`to be subsequently altered;” ............................................61
`
`[12b]: “a validation module, coupled to
`communicate with the persistent storage media,
`that receives scan data from a biometric scan for
`comparison against the biometric data, and that
`sends one or more codes and other data values
`from the plurality of codes and other data values
`for authentication by a third party that operates a
`trusted authority, wherein the one or more codes
`and other data values includes the device ID
`code; and” .......................................................................61
`
`[12c]: “a radio frequency communication module
`that receives an access message from the trusted
`authority indicating that the trusted authority
`successfully authenticated the one or more codes
`and other data values to the third party and
`allowing the user access to an application.” ...................63
`
`9.
`
`Claim 13: “The integrated device of claim 12, wherein
`the one or more codes and the other data values are
`transmitted to the trusted authority over a network.” ...............64
`
`10. Claim 15: “The integrated device of claim 12
`comprising: an LED to be activated for requesting the
`biometric scan.” ........................................................................64
`
`11.
`
`Independent Claim 16 ...............................................................66
`
`a.
`
`b.
`
`[16preamble]: “A method for authenticating a
`verified user using a computer processor
`configured to execute method steps, comprising:” ........66
`
`[16a]: “wirelessly receiving one or more codes and
`other data values from a plurality of codes and
`other data values including a device ID code,
`wherein the plurality of codes and other data
`values comprises the device ID code uniquely
`identifying an integrated device associated with a
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`iv
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`5
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`biometrically verified user, the device ID code
`being registered with a trusted authority for
`authentication, the trusted authority operated by a
`third party” ......................................................................68
`
`[16b]: “requesting authentication of the integrated
`device using the one or more codes and other data
`values by the trusted authority;” .....................................71
`
`[16c]: “receiving, at an application, an access
`message from the trusted authority indicating that
`the trusted authority successfully authenticated the
`one or more codes and other data values to the
`third party; and” ..............................................................71
`
`[16d]: “in response to receiving the access
`message, allowing the biometrically verified user
`access to the application.” ..............................................71
`
`c.
`
`d.
`
`e.
`
`12. Claim 18: “The method of claim 16, further comprising:
`establishing a secure communications channel with the
`integrated device, wherein the one or more codes and
`other data values associated with the biometrically
`verified user is received from the integrated device.” ..............72
`
`13. Claim 19: “The method of claim 16, wherein the
`application includes one or more of a casino machine, a
`keyless lock, a garage door opener, an ATM machine, a
`hard drive, computer software, a web site, a file and a
`financial account.” ....................................................................72
`
`14.
`
`Independent claim 22 ................................................................72
`
`a.
`
`b.
`
`c.
`
`[22preamble]: “A system, comprising:” .........................72
`
`[22ai]: “an integrated hardware device that stores
`biometric data of a user” .................................................73
`
`[22aii]: “and a plurality of codes and other data
`values comprising a device ID code uniquely
`identifying the integrated hardware device”...................73
`
`v
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`6
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`d.
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`e.
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`f.
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`[22aiii]: “and a secret decryption value in a tamper
`proof format written to a storage element in the
`integrated hardware device that is not capable of
`being subsequently altered,” ...........................................74
`
`[22aiv]: “and that wirelessly sends one or more
`codes and other data values from the plurality of
`codes and other data values, wherein the one or
`more codes and other data values include the
`device ID code; and” ......................................................74
`
`[22b]: “an authentication circuit that receives the
`one or more codes and other data values and sends
`the one or more codes and other data values to a
`third party that operates a trusted authority for
`authentication, and that receives an access message
`from the trusted authority indicating that the
`trusted authority successfully authenticated the one
`or more codes and other data values to the third
`party and allows the user to access an application.” ......75
`
`15. Claim 23: “The system of claim 22, wherein the
`integrated hardware device receives an authentication
`request from the authentication circuit, and in response,
`requests a biometric scan from the user to generate scan
`data.” .........................................................................................76
`
`16. Claim 24: “The system of claim 22, wherein when the
`integrated hardware device cannot verify scan data as
`being from the user, the integrated hardware device does
`not send the one or more codes and other data values.” ...........78
`
`17. Claim 25: “The method of claim 1, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ................................................................80
`
`18. Claim 26: “The method of claim 1, wherein the biometric
`data includes one or more of a fingerprint, palm print, a
`retinal scan, an iris scan, a hand geometry, a facial
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`vi
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`recognition, a signature recognition and a voice
`recognition.” ..............................................................................80
`
`19. Claim 27: “The method of claim 1, wherein the
`application includes one or more of a casino machine, a
`keyless lock, a garage door opener, an ATM machine, a
`hard drive, computer software, a web site, a file and a
`financial account.” ....................................................................80
`
`B. Ground 2: Claims 3, 14, and 17 Are Obvious in View of Ludtke
`and Kon ...............................................................................................80
`
`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 14: “The integrated device of claim 12, wherein an
`age verification is registered in association with the
`device ID code.” ........................................................................85
`
`Claim 17: “The method of claim 16, further comprising:
`registering a date of birth or age with the agent.” .....................85
`
`XII. CONCLUSION ..............................................................................................85
`
`
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`vii
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`8
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`Decl. of Stephen Gray
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`
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`U.S. Patent No. 8,886,954
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`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. 8,886,954
`
`(“the ’954 patent,” Ex. 1001). The application for the ’954 patent was filed
`
`December 10, 2012, and claims priority to U.S. Patent Application Ser. No.
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`11/314,199, filed December 20, 2005, which claims the benefit of provisional
`
`applications filed on December 20, 2004, and February 14, 2005. Ex. 1001, cover
`
`page.
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`4.
`
`I have been asked by Petitioner to provide my opinion on whether the
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`claims of the ’954 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 ’954 patent. In
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`performing my analysis, I have been asked to assume that the priority date is
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`December 20, 2004. My opinions are set forth below.
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`5.
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`Throughout this declaration, I refer to specific pages, figures, and/or
`
`line numbers of various exhibits. These citations are illustrative and are not
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`1
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`intended to suggest that they are the only support for the propositions for which
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`they are cited.
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`II.
`
`SUMMARY OF OPINIONS
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`6.
`
`This declaration considers claims 1-7, 10, 12-19, and 22-27 of the
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`’954 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 1-7, 10, 12-19, and 22-27 of
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`the ’954 patent would have been obvious based on the asserted grounds discussed
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`below.
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`8.
`
`I am being compensated for my time at my normal hourly rate. My
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`compensation is in no way contingent upon the nature of my findings, the
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`presentation of my findings in testimony, or the outcome of this proceeding.
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`III. QUALIFICATIONS AND BACKGROUND
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`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
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`declaration are based on my own personal knowledge and professional judgment.
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`2
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`10
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`In forming my opinions, I have relied on my knowledge and experience in
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`designing, developing, and deploying distributed client/server systems, graphical
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`user interfaces, website platforms, e-commerce systems, and digital image
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`processing systems, and on the documents and information referenced in this
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`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
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`distributed computing architecture and design, graphical user interfaces, operating
`
`systems, distributed data management, local area and wide area networks, and the
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`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
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`litigation consultant, for numerous companies such as Burroughs, FileNet, Fujitsu,
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`3
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`11
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`Marriott Corporation, MCI, Northern Telecom, Olivetti, TRW, and Xerox, as well
`
`as other companies.
`
`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
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`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
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`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
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`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
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`software providers for possible inclusion in the Xerox product line. Also, as
`
`another example, I evaluated the source code of several application software
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`4
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`12
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`packages for completeness and maintainability for possible inclusion into the NTN
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`Communications product line in 2000-2001. During my early career, I spent time
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`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
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`applications for IBM MVS, UNIX, Linux, IBM OS/2, Microsoft Windows, and
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`related networking technologies.
`
`18.
`
`I also have professional experiences related to computerized
`
`authentication including authentication responsive to biometric verification of a
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`user being authenticated.
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`19. While consulting for Xerox in the mid 1990s, I worked on the design
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`of systems for multi-level authentication for distributed product configuration
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`software products.
`
`20.
`
`In the early 2000s I served as a technical advisor to SiCommNet
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`which was an e-Commerce Internet start-up. SiCommNet developed and sold a
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`product for procurement in public agencies. One of the functions that the system
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`provided was for suppliers to confidentially respond to Requests for Proposals
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`(RFP) posted on the e-Commerce site. A need arose for authentication and
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`5
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`13
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`encryption of these responses. I led the analysis and prototyping of several
`
`different approaches including PKI, certificates, tokens and biometrics.
`
`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. 8,886,954 (“the ’954 patent”)
`
`Ex. 1002
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`File History of U.S. Patent No. 8,886,954
`
`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., et al., 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., et al., Case No.
`6:21-cv-00210, Dkt. No. 149, Memorandum in Support of Claim
`Construction Order (W.D. Tex. Dec. 28, 2022).
`
`Ex. 1011 U.S. Patent Application Publication No. 2003/0023882 to Udom
`(“Udom”)
`
`Ex. 1012 U.S. Patent Application Publication No. 2002/0019811 to Lapsley
`et. al. (“Lapsley”)
`
`Ex. 1013
`
`Proxense, LLC v. Google LLC, et al., Case No. 6:23-cv-00320,
`Dkt. No. 1, Complaint (W.D. Tex. May 2, 2023)
`
`6
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`
`Exhibit
`
`Ex. 1014
`
`Description
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320,
`Preliminary Infringement Contentions (W.D. Tex. July 24, 2023).
`
`Ex. 1015 CERTIFICATION REPORT No. P165: Sony FeliCa Contactless
`Smart Card RC-S860, UK IT Security Evaluation and Certification
`Scheme (Mar. 2002)
`
`Ex. 1016 U.S. Patent Application Publication No. 2002/0049806 to Gatz et al.
`(“Gatz”)
`
`Ex. 1017 U.S. Patent Application Publication No. 2006/0034492 to Siegel et
`al. (“Siegel”)
`
`Ex. 1018 U.S. Patent Application Publication No. 2001/0036297 to Ikegami
`et al. (“Ikegami”)
`
`Ex. 1019
`
`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. 1020
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No.
`45, Proxense’s Expert Transcript (W.D. Tex. Dec. 18, 2023).
`
`Ex. 1021
`
`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
`
`7
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`Decl. of Stephen Gray
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`U.S. Patent No. 8,886,954
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`have also been guided by my understanding of how a person of ordinary skill in the
`
`
`
`art would have understood the claims of the ’954 patent.
`
`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.
`
`8
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`16
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`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 8,886,954
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`
`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.
`
`28.
`
`I have been asked to provide my opinions as to whether the cited prior
`
`art discloses or renders obvious claims 1-7, 10, 12-19, and 22-27 of the ’954 patent
`
`from the perspective of a person of ordinary skill in the art at the ’954 patent’s
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`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
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`unpatentability by a preponderance of the evidence. I understand that a
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`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
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`legal standards, which I have applied in forming my opinions.
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`A. Level of Ordinary Skill
`
`31.
`
`I have been informed that a person of ordinary skill in the art is
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`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
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`which innovations are made; (iv) sophistication of the technology; and
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`(v) educational level of active workers in the field.
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`9
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`17
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`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 8,886,954
`
`
`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.
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`B.
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`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
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`have been informed and understand that a patent or published patent application is
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`prior art if it was filed before the earliest filing date of the claimed invention and
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`that a printed publication is prior art if it was publicly available before the earliest
`
`filing date.
`
`C. Anticipation
`
`34.
`
`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
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`a single prior art reference discloses all limitations of the claimed invention.
`
`10
`
`18
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 8,886,954
`
`
`D. Obviousness
`
`35.
`
`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
`
`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;
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`c. Resolving the level of ordinary skill in the pertinent art; and
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`d. Considering evidence of secondary indicia of nonobviousness
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`(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
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`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.
`
`11
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`19
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`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 8,886,954
`
`
`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
`
`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
`
`12
`
`20
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`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 8,886,954
`
`
`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;
`
`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 toge