UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`____________________
`
`Case No. IPR2024-00234
`U.S. Patent No. 9,298,905
`
`____________________
`
`DECLARATION OF STEPHEN GRAY
`
`Page 1 of 76
`
`GOOGLE EXHIBIT 1003
`
`

`

`Decl. of Stephen Gray
`
`
`
`
`U.S. Patent No. 9,298,905
`
`TABLE OF CONTENTS
`
`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 ’905 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, 3-7, 9, 10, and 12-18 Are Obvious in View
`of Ludtke. ............................................................................................31
`
`1.
`
`Independent claim 1 ..................................................................31
`
`a.
`
`[1preamble]: “A method comprising:” ...........................31
`
`i
`
`Page 2 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`b.
`
`c.
`
`d.
`
`e.
`
`f.
`
`[1a]: “persistently storing biometric data of a
`legitimate user and an ID code on an integrated
`device” ............................................................................32
`
`[1b]: “responsive to receiving a request for a
`biometric verification of a user, receiving, from a
`biometric sensor, scan data from a biometric scan
`performed by the biometric sensor;” ..............................34
`
`[1c]: “comparing the scan data to the biometric
`data to determine whether the scan data matches
`the biometric data;” ........................................................35
`
`[1d]: “responsive to a determination that the scan
`data matches the biometric data, wirelessly
`sending the ID code for comparison by a third-
`party trusted authority against one or more
`previously registered ID codes maintained by the
`third-party trusted uthority; and” ....................................36
`
`[1e]: “responsive to receiving an access message
`from the third-party trusted authority indicating
`that the third-party trusted authority successfully
`authenticated the ID code, allowing the user to
`complete a financial transaction.” ..................................44
`
`2.
`
`3.
`
`4.
`
`Claim 3: “The method of claim 1, wherein an indication
`that the biometric verification was successful is sent with
`the ID code.” .............................................................................46
`
`Claim 4: “The method of claim 1, wherein the biometric
`data includes data from 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.” ..............................................................................47
`
`Claim 5: “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.” ....................................................................................47
`
`ii
`
`Page 3 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`5.
`
`6.
`
`Claim 6: “The method of claim 1, wherein completing
`the financial transaction includes accessing an
`application” ...............................................................................49
`
`Claim 7: “The method of claim 1, wherein completing
`the financial transaction includes accessing one or more
`of a casino machine, a keyless lock, an ATM machine, a
`web site, a file and a financial account.” ..................................51
`
`7.
`
`Independent Claim 9 .................................................................52
`
`a.
`
`b.
`
`c.
`
`d.
`
`[9preamble]: “An integrated device comprising:” .........52
`
`[9a]: “a persistent storage media that persistently
`stores biometric data of a user and an ID code” .............52
`
`[9b]: “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 the ID code for comparison by a third-party
`trusted authority aginst one or more previously
`registered ID codes maintained by the third-party
`trusted authority; and” ....................................................52
`
`[9c]: “a radio frequency communication module
`that receives an access message from the third-
`party trusted authority indicating that the third-
`party trusted authority successfully authenticated
`the ID code sent to the third-party trusted authority
`based n the comparison of the ID code and
`allowing the user to—complete a financial
`transaction.” ....................................................................54
`
`8.
`
`9.
`
`Claim 10: “The integrated device of claim 7, wherein the
`ID code is transmitted to the third-party trusted authority
`over a network.” ........................................................................55
`
`Claim 12: “The integrated device of claim 7, wherein the
`integrated device comprises one or more of a mobile
`phone, tablet, laptop, mp3 player, mobile gaming device,
`watch and a key fob.” ................................................................56
`
`iii
`
`Page 4 of 76
`
`

`

`Decl. of Stephen Gray
`
`10.
`
`U.S. Patent No. 9,298,905
`
`Independent claim 13 ................................................................56
`
`
`
`a.
`
`b.
`
`c.
`
`d.
`
`[13preamble]: “A system, comprising:” .........................56
`
`[13a]: “an integrated hardware device that
`persistently stores biometric data of a legitimate
`user and an ID code in the integrated hardware
`device, and that wirelessly sends the—ID code;” ..........57
`
`[13b]: “an authentication circuit that receives the
`[I]D code and sends the ID code to a third-party
`trusted authority for authentication, and that
`receives an access message from the third-party
`trusted authority indicating that the third-party
`trusted authority successfully authenticated the ID
`code and allows the user to complete a financial
`transaction; and” .............................................................57
`
`[13c]: “the third-party trusted authority operated
`by a third party, the third-party trusted authority
`storing a list of legitimate codes and determining
`the authentication of the ID code received based on
`a comparison of the ID code received and the
`legitimate codes included in the list of the
`legitimate codes.” ...........................................................59
`
`11. Claim 14: “The system of claim 11 wherein the
`integrated hardware device receives an authentication
`request from the authentication circuit, and in response,
`requests a biometric scan from a user to generate scan
`data and, when the integrated hardware deice cannot
`verify the scan data as being from the legitimate user, the
`integrated hardware device does not send the ID code.” ..........59
`
`12. Claim 15: “The system of claim 11, wherein the
`integrated hardware device comprises one or more of a
`mobile phone, tablet, laptop, mp3 player, mobile gaming
`device, watch and a key fob.” ...................................................64
`
`13. Claim 16: “The system of claim 11, wherein the
`biometric data includes data based on one or more of a
`fingerprint, palm print, a retinal scan, an iris scan, a hand
`
`iv
`
`Page 5 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`geometry, a facial recognition, a signature recognition
`and a voice recognition.” ..........................................................64
`
`14. Claim 17: “The system of claim 11, wherein completing
`the financial transaction includes accessing one or more
`of a casino machine, a keyless lock, an ATM machine, a
`web site, a file and a financial account.” ..................................64
`
`15. Claim 18: “The system of claim 11, wherein completing
`the financial transaction includes accessing an
`application.” ..............................................................................64
`
`B. Ground 2: Claims 2 and 11 Are Obvious in View of Ludtke and
`Kon ......................................................................................................64
`
`1.
`
`2.
`
`Claim 2: “The method of claim 1, further comprising:
`registering an age verification for the user in association
`with the ID code.” .....................................................................65
`
`Claim 11: “The integrated device of claim 7, wherein an
`age verification is registered in association with the ID
`code.” ........................................................................................69
`
`XII. CONCLUSION ..............................................................................................69
`
`
`
`v
`
`Page 6 of 76
`
`

`

`Decl. of Stephen Gray
`
`I.
`
`INTRODUCTION
`
`
`
`U.S. Patent No. 9,298,905
`
`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. 9,298,905
`
`(“the ’905 patent,” Ex. 1001). The application for the ’905 patent was filed
`
`October 23, 2015, and claims priority to U.S. patent application Ser. No.
`
`13/710,109 filed December 10, 2012, which claims priority to U.S. patent
`
`application Ser. No. 11/314,199, filed December 20, 2005, which 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. Ex. 1001, cover page.
`
`4.
`
`I have been asked by Petitioner to provide my opinion on whether the
`
`claims of the ’905 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 ’905 patent. In
`
`performing my analysis, I have been asked to assume that the priority date is
`
`December 20, 2004. My opinions are set forth below.
`
`1
`
`Page 7 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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.
`
`II.
`
`SUMMARY OF OPINIONS
`
`6.
`
`This declaration considers claims 1-7 and 9-18 of the ’905 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 and 9-18 of the ’905 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.
`
`2
`
`Page 8 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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
`
`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
`
`3
`
`Page 9 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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.
`
`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
`
`4
`
`Page 10 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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 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
`
`5
`
`Page 11 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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.
`
`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. 9,928,905 to Giobbi (“the ’905 patent”)
`
`Ex. 1002
`
`File History of U.S. Patent No. 9,928,905
`
`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 U.S. Patent Application Publication No. 2003/0023882 to Udom
`(“Udom”)
`
`Ex. 1013 U.S. Patent Application Publication No. 2002/0019811 to Lapsley et
`al. (“Lapsley”)
`
`6
`
`Page 12 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`Exhibit
`
`Ex. 1014
`
`Description
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320, Dkt. No. 1,
`Complaint (W.D. Tex. May 2, 2023)
`
`Ex. 1015
`
`Proxense, LLC v. Google LLC, Case No. 6:23-cv-00320,
`Preliminary Infringement Contentions (W.D. Tex. July 24, 2023)
`
`Ex. 1016 U.S. Patent Application Publication No. 2002/0049806 to Gatz et al.
`(“Gatz”)
`
`Ex. 1017
`
`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. 1018 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. 1019 Decision on Petition, Ex Parte Reexamination, No. 90/015,053
`(January 3, 2023)
`
`Ex. 1020 Order Granting Request for Ex Parte Reexamination, Ex Parte
`Reexamination No. 90/015,053 (Aug. 2, 2022)
`
`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
`
`Page 13 of 76
`
`

`

`Decl. of Stephen Gray
`
`U.S. Patent No. 9,298,905
`
`have also been guided by my understanding of how a person of ordinary skill in the
`
`
`
`art would have understood the claims of the ’905 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
`
`Page 14 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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 and 9-18 of the ’905 patent from the
`
`perspective of a person of ordinary skill in the art at the ’905 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.
`
`9
`
`Page 15 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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.
`
`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. 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
`
`a single prior art reference discloses all limitations of the claimed invention.
`
`10
`
`Page 16 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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;
`
`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.
`
`11
`
`Page 17 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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
`
`Page 18 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`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 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.
`
`13
`
`Page 19 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`41.
`
`I have been informed that, when a work is available in one field,
`
`design alternatives and other market forces can prompt variations of it, either in the
`
`same field or in another. I have been informed that if a person of ordinary skill in
`
`the art could have implemented a predictable variation and would have seen the
`
`benefit of doing so, that variation is likely to have been obvious. I have been
`
`informed that, in many fields, there may be little discussion of obvious
`
`combinations, and in these fields, market demand—not scientific literature—may
`
`drive design trends. I have been informed that, when there was a design need or
`
`market pressure and there are a finite number of predictable solutions, a person of
`
`ordinary skill in the art would have had a good reason to pursue those known
`
`options.
`
`42.
`
`I have been informed that the law permits the application of “common
`
`sense” in examining whether a claimed invention would have been obvious to a
`
`person skilled in the art. For example, I have been informed that combining
`
`familiar elements according to known methods and in a predictable way may
`
`suggest obviousness when such a combination would yield nothing more than
`
`predictable results. I understand, however, that a claim is not obvious merely
`
`because every claim element is disclosed in the prior art, and that a party asserting
`
`obviousness must still provide a specific motivation to combine or modify the
`
`14
`
`Page 20 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`references as recited in the claims and explain why one skilled in the art would
`
`have reasonably expected to succeed in doing so.
`
`43.
`
`I have been informed that there is no rigid rule that a reference or
`
`combination of references must contain a “teaching, suggestion, or motivation” to
`
`combine references. But I also understand that the “teaching, suggestion, or
`
`motivation” test can be a useful guide in establishing a rationale for combining
`
`elements of the prior art. I have been informed that this test poses the question as to
`
`whether there is an express or implied teaching, suggestion, or motivation to
`
`combine prior art elements in a way that realizes the claimed invention, and that it
`
`seeks to counter impermissible hindsight analysis.
`
`44.
`
`I am not aware of any evidence of secondary considerations that
`
`would support a determination of nonobviousness of the claimed subject matter in
`
`the ’905 patent.
`
`45.
`
`I have been informed that, in an obviousness analysis, prior art must
`
`be analogous to the patent being considered. I have been informed that a prior art
`
`reference is considered to be analogous, or in the same field of art, if the reference
`
`is either (1) in the same field of endeavor as the challenged patent, regardless of
`
`the problems the challenged patent and the prior art address; or (2) reasonably
`
`pertinent to the particular problem being solved by the challenged patent.
`
`15
`
`Page 21 of 76
`
`

`

`Decl. of Stephen Gray
`
`
`
`U.S. Patent No. 9,298,905
`
`
`VI. THE ’905 PATENT
`
`A. Overview
`
`46. The ’905 patent was filed on October 23, 2014, and claims priority to
`
`U.S. Patent Application Ser. No. 13/710,109 filed