UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`——————————
`
`GOOGLE LLC,
`
`Petitioner,
`
`v.
`
`PROXENSE, LLC,
`
`Patent Owner.
`
`——————————
`
`Case No. IPR2024-00782
`U.S. Patent No. 8,646,042
`Filing Date: April 12, 2012
`Issue Date: February 4, 2014
`
`DECLARATION OF ANDREW WOLFE IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,646,042
`
`(Exhibit 1003)
`
`GOOGLE EXHIBIT 1003
`
`Page 1 of 144
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`

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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`
`
`I.
`
`TABLE OF CONTENT
`
`Introduction ...................................................................................................... 1
`
`II.
`
`Education and Work Experience ..................................................................... 2
`
`III. Compensation .................................................................................................. 7
`
`IV. Legal Principles ............................................................................................... 7
`
`A. Anticipation Analysis: 35 U.S.C. § 102 .................................................. 8
`
`B. Obviousness Analysis: 35 U.S.C. § 103 .................................................. 9
`
`V.
`
`Level of Ordinary Skill .................................................................................. 14
`
`VI. Field of Art and Related Art .......................................................................... 14
`
`VII. Cited Art Prior to the ’042 Patent .................................................................. 15
`
`A. Dua ......................................................................................................... 17
`
`B. Buer ........................................................................................................ 22
`
`C. Lee .......................................................................................................... 26
`
`D. Nishikawa............................................................................................... 28
`
`E. Hoffmann ............................................................................................... 30
`
`VIII. Overview of the ’042 Patent .......................................................................... 31
`
`IX. Claim Construction ........................................................................................ 35
`
`X. Grounds 1 and 2: Claim 10 Would Have Been Obvious Over Dua
`
`alone, or in the alternative, in view of Kotola ............................................... 37
`
`A.
`
`Independent Claim 10 ............................................................................ 37
`
`1.
`
`[10pre] “A method comprising:” ...................................................37
`
`i
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`2.
`
`[10a] “creating a first wireless link between an integrated receiver-
`
`decoder circuit (RDC) of a hybrid device and an external personal
`
`digital key (PDK), the hybrid device including an integrated PDK
`
`and the integrated RDC;” ...............................................................38
`
`3.
`
`[10b] “receiving a first signal at the integrated RDC via the first
`
`wireless link from the external PDK;” ...........................................48
`
`4.
`
`[10c] “generating an enablement signal enabling one or more of an
`
`application, a function and a service on one or more of the hybrid
`
`device and a device associated with an external RDC; and” .........49
`
`5.
`
`[10d] “sending the enablement signal to one or more of the hybrid
`
`device and the device associated with an external RDC.”.............55
`
`XI. Ground 3: Claims 1, 3-6, 8-15, and 17 Would Have Been Obvious
`
`Over Buer. ...................................................................................................... 56
`
`A.
`
`Independent Claims ............................................................................... 56
`
`1.
`
`Independent Claim 10 ....................................................................56
`
`2.
`
`Independent Claim 1 ......................................................................79
`
`B. Dependent Claims .................................................................................. 90
`
`1. Claim 3: “The hybrid device claim 1, wherein the integrated PDK
`
`is capable of communicating with the at least one external RDC at
`
`the same time the integrated RDC communicates with the at least
`
`one external PDK.” ........................................................................90
`
`2. Claim 4: “The hybrid device of claim 1, wherein the integrated
`
`RDC communicates an enable signal to the device using the
`
`second signal line.” ........................................................................91
`
`ii
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`3. Claim 5: “The hybrid device of claim 1, wherein the one or more
`
`of the hybrid device and the device associated with the external
`
`RDC are enabled subsequent to the external PDK entering the
`
`proximity zone of the integrated RDC and based on the
`
`information stored by one or more of the external PDK and the
`
`integrated PDK.” ............................................................................92
`
`4. Claim 6: “The hybrid device of claim 1, wherein the hybrid device
`
`is a cell phone and the hybrid device is enabled to provide cell
`
`phone service subsequent to the external PDK entering the
`
`proximity zone of the integrated RDC and based on the
`
`information stored by one or more of the external PDK and the
`
`integrated PDK.” ............................................................................93
`
`5. Claim 8: “The hybrid device of claim 1, wherein the integrated
`
`PDK communicates with the external RDC subsequent to the
`
`external PDK entering the proximity zone of the integrated RDC.”
`
` ........................................................................................................94
`
`6. Claim 9: “The hybrid device of claim 1, comprising storage for
`
`inheritance information.” ...............................................................95
`
`7. Claim 11: “The method of claim 10, wherein the hybrid device is a
`
`cell phone and the enablement signal is sent to the cell phone
`
`enabling one or more of a service, a feature and a functionality of
`
`the cell phone.” ..............................................................................96
`
`8. Claim 12: “The method of claim 11, wherein the external PDK is
`
`adapted to receive and couple with a subscriber identity module
`
`(SIM) card.” ...................................................................................96
`
`iii
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`9. Claim 13: “The method of claim 10, wherein the integrated PDK is
`
`electrically coupled to the integrated RDC, and the method
`
`comprises:” .....................................................................................97
`
`10. Claim 14: “The method of claim 11, wherein the integrated PDK
`
`modifies the enablement signal to produce a modified enablement
`
`signal, and the modified enablement signal is sent from the
`
`integrated PDK to the external RDC.”...........................................99
`
`11. Claim 15: “The method of claim 10, wherein the integrated PDK is
`
`electrically coupled to the integrated RDC, and the method
`
`comprises:” ...................................................................................100
`
`12. Claim 17: “The method of claim 10, wherein the first signal
`
`includes service inheritance information.” ..................................104
`
`XII. Ground 4: Claim 2 Would Have Been Obvious Over Buer and Lee. ......... 107
`
`A. Claim 2: “The hybrid device of claim 1 further comprising one or
`
`more of another integrated PDK and another integrated RDC.” ......... 107
`
`XIII. Ground 5: Claim 12 Would Have Been Obvious Over Buer and
`
`Nishikawa .................................................................................................... 109
`
`A. Claim 12: “The method of claim 11, wherein the external PDK is
`
`adapted to receive and couple with a subscriber identity module
`
`(SIM) card.” ......................................................................................... 109
`
`XIV. Ground 6: Claims 3 and 18-20 Would Have Been Obvious Over Buer
`
`and Hoffmann .............................................................................................. 111
`
`A. Claim 3: “The hybrid device claim 1, wherein the integrated PDK
`
`is capable of communicating with the at least one external RDC
`
`iv
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`at the same time the integrated RDC communicates with the at
`
`least one external PDK.” ...................................................................... 111
`
`B. Claim 18: “The method of claim 10, wherein the first signal
`
`includes feature inheritance information.” .......................................... 114
`
`C. Claim 19: “The method of claim 10, wherein the first signal
`
`includes personality inheritance information.” .................................... 116
`
`D. Claim 20: “The method of claim 10 comprising: receiving a
`
`signal from the external PDK that a second external PDK
`
`includes inheritance information; creating a second wireless link
`
`between the integrated RDC and the second external PDK; and
`
`receiving the inheritance information from the second external
`
`PDK.” ................................................................................................... 119
`
`XV. Conclusion ................................................................................................... 122
`
`
`
`
`
`
`
`v
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`
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`TABLE OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex-1001
`
`U.S. Patent No. 8,646,042 to David L. Brown (“the ’042 patent”)
`
`
`
`Ex-1002
`
`
`
` Prosecution history of U.S. Patent No. 8,646,042
`
`Ex-1003
`
`Declaration of Andrew Wolfe, Ph.D., including his Curriculum
`
`Vitae
`
`Ex-1004
`
`U.S. Patent Application Publication No. 2006/0258289 to Dua
`
`(“Dua”)
`
`Ex-1005
`
`European Patent Application Publication No. EP 1536306 to Buer
`
`et al. (“Buer”)
`
`Ex-1006
`
`U.S. Patent Application Publication No. 2007/0245157 to Giobbi
`
`et al. (“Giobbi ’157”)
`
`Ex-1007
`
`U.S. Patent Application Publication No. 2004/0255139 to Giobbi
`
`(“Giobbi ’139”)
`
`Ex-1008
`
`PCT Application Publication No. WO 90/06633 to Lee et al.
`
`(“Lee”)
`
`Ex-1009
`
`Order, Proxense, LLC v. Samsung Elecs. Co., Ltd., No. 6:21-cv-
`
`00210-ADA (W.D. Tex. Jan. 18, 2022)
`
`Ex-1010
`
`Memorandum in Support of Claim Construction Order, Proxense,
`
` LLC v. Samsung Elecs. Co., Ltd., No. 6:21-cv-00210-ADA (W.D.
`Tex. Dec. 28, 2022)
`
`Ex-1011
`
`Scheduling Order, Proxense, LLC v. Google LLC, No. 6:23-cv-
`
`00320-ADA (W.D. Tex. March 18, 2024)
`
`Ex-1012
`
`U.S. Patent Application Publication No. 2005/0116050 to Jei et
`
`al. (“Jei”)
`
`Ex-1013
`
`PCT Application Publication No. WO 2005/104584 to Bella et al.
`
`(“Bella”)
`
`vi
`
`Page 7 of 144
`
`

`

`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`Ex-1014
`
`European Patent Application Publication No. EP 1600885 to
`
`Nishikawa et al. (“Nishikawa”)
`
`Ex-1015
`
`Google’s Proposed Constructions, Proxense, LLC v. Google LLC,
`
`No. 6:23-cv-00320 (W.D. Tex October 17, 2023)
`
`Ex-1016
`
`Proxense’s Proposed Constructions, Proxense, LLC v. Google
`
`LLC, No. 6:23-cv-00320 (W.D. Tex October 17, 2023)
`
`Ex-1017
`
`U.S. Patent Application Publication No. 2004/0176032 to Kotola
`
`et al. (“Kotola”)
`
`Ex-1018
`
`Preliminary Infringement Contentions Exhibit D, Proxense, LLC
`
`v. Google LLC, No. 6:23-cv-00320 (W.D. Tex)
`
`Ex-1019
`
`U.S. Patent Application Publication No. 2005/0151623 to
`
`Hoffmann (“Hoffmann”)
`
`Ex-1020
`
`Claim Construction Order, Proxense, LLC v. Google LLC,
`
`No. 6:23-cv-00320-ADA (W.D. Tex. January 23, 2024)
`
`Ex-1021
`
`Bluetooth Specification, Profiles of the Bluetooth System,
`
`Version 1.0 B (December 1999)
`
`Ex-1022
`
`
`
` Comparison of District Courts (December 31, 2023)
`
`
`
`
`
`
`
`Appendix A
`
`
`
`
`
`LIST OF APPENDICES
`
`Curriculum Vitae of Andrew Wolfe, Ph.D.
`
`
`
`vii
`
`Page 8 of 144
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`

`

`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`LIST OF CHALLENGED CLAIMS
`
`
`
`
`
`[1] Claim 1
`
`[1pre]
`
`A hybrid device comprising:
`
`[1a]
`
`[1b]
`
`[1c]
`
`[1d]
`
`[1e]
`
`Claim 2
`
`[2]
`
`Claim 3
`
`[3]
`
`Claim 4
`
`[4]
`
`Claim 5
`
`[5]
`
`an integrated personal digital key (PDK) for storing information
`and capable of communicating wirelessly with at least one
`external receiver-decoder circuit (RDC); and
`
`an integrated RDC for communicating wirelessly with at least one
`external PDK within a proximity zone,
`
`the integrated RDC coupled to the integrated PDK by a first
`signal line for communication,
`
`the integrated RDC coupled to at least one other component of the
`hybrid device by a second signal line,
`
`one or more of the integrated RDC and integrated PDK enabling
`one or more of an application, a function, and a service on one or
`more of the hybrid device and a device associated with the
`external RDC.
`
`The hybrid device of claim 1 further comprising one or more of
`another integrated PDK and another integrated RDC.
`
`The hybrid device claim 1, wherein the integrated PDK is capable
`of communicating with the at least one external RDC at the same
`time the integrated RDC communicates with the at least one
`external PDK.
`
`The hybrid device of claim 1, wherein the integrated RDC
`communicates an enable signal to the device using the second
`signal line.
`
`The hybrid device of claim 1, wherein the one or more of the
`hybrid device and the device associated with the external RDC
`
`viii
`
`Page 9 of 144
`
`

`

`
`
`Claim 6
`
`[6]
`
`Claim 8
`
`[8]
`
`Claim 9
`
`[9]
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`are enabled subsequent to the external PDK entering the
`proximity zone of the integrated RDC and based on the
`information stored by one or more of the external PDK and the
`integrated PDK.
`
`The hybrid device of claim 1, wherein the hybrid device is a cell
`phone and the hybrid device is enabled to provide cell phone
`service subsequent to the external PDK entering the proximity
`zone of the integrated RDC and based on the information stored
`by one or more of the external PDK and the integrated PDK.
`
`The hybrid device of claim 1, wherein the integrated PDK
`communicates with the external RDC subsequent to the external
`PDK entering the proximity zone of the integrated RDC.
`
`The hybrid device of claim 1, comprising storage for inheritance
`information.
`
`[10] Claim 10
`
`[10pre]
`
`A method comprising:
`
`[10a]
`
`[10b]
`
`[10c]
`
`[10d]
`
`Claim 11
`
`creating a first wireless link between an integrated receiver-
`decoder circuit (RDC) of a hybrid device and an external personal
`digital key (PDK), the hybrid device including an integrated PDK
`and the integrated RDC;
`
`receiving a first signal at the integrated RDC via the first wireless
`link from the external PDK;
`
`generating an enablement signal enabling one or more of an
`application, a function and a service on one or more of the hybrid
`device and a device associated with an external RDC; and
`
`sending the enablement signal to one or more of the hybrid device
`and the device associated with an external RDC.
`
`[11]
`
`The method of claim 10, wherein the hybrid device is a cell phone
`
`ix
`
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`

`

`
`
`Claim 12
`
`[12]
`
`[13] Claim 13
`
`[13pre]
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`and the enablement signal is sent to the cell phone enabling one or
`more of a service, a feature and a functionality of the cell phone.
`
`The method of claim 11, wherein the external PDK is adapted to
`receive and couple with a subscriber identity module (SIM) card.
`
`The method of claim 10, wherein the integrated PDK is
`electrically coupled to the integrated RDC, and the method
`comprises:
`
`
`[13a]
`
`[13b]
`
`[13c]
`
`sending the enablement signal from the integrated RDC to the
`integrated PDK;
`
`creating a second wireless link between the integrated PDK and
`an external RDC; and
`
`sending the enablement signal from the integrated PDK to the
`external RDC using the second wireless link.
`
`Claim 14
`
`[14]
`
`Claim 15
`
`[15]
`
`The method of claim 11, wherein the integrated PDK modifies the
`enablement signal to produce a modified enablement signal, and
`the modified enablement signal is sent from the integrated PDK to
`the external RDC.
`
`The method of claim 10, wherein the integrated PDK is
`electrically coupled to the integrated RDC, and the method
`comprises:
`creating a second wireless link between the hybrid device and an
`external RDC; and
`receiving a second signal at the hybrid device via the second
`wireless link from the external RDC,
`wherein the enablement signal is generated responsive to
`receiving the first and second signals.
`
`
`
`x
`
`Page 11 of 144
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`

`

`Claim 17
`
`[17]
`
`Claim 18
`
`[18]
`
`Claim 19
`
`[19]
`
`Claim 20
`
`[20]
`
`
`
`
`
`
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`The method of claim 10, wherein the first signal includes service
`inheritance information.
`
`The method of claim 10, wherein the first signal includes feature
`inheritance information.
`
`The method of claim 10, wherein the first signal includes
`personality inheritance information.
`
`The method of claim 10 comprising: receiving a signal from the
`external PDK that a second external PDK includes inheritance
`information; creating a second wireless link between the
`integrated RDC and the second external PDK; and receiving the
`inheritance information from the second external PDK.
`
`
`
`
`
`xi
`
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`GROUNDS FOR CHALLENGE (37 C.F.R. § 42.204(b)(2))
`
`Ground
`
`Claim(s) Challenged
`
`35 U.S.C. §
`
`Reference(s)
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`10
`
`10
`
`1, 3-6, 8-15, and 17
`
`2
`
`12
`
`3 and 18-20
`
`103
`
`103
`
`103
`
`103
`
`103
`
`103
`
`Dua
`
`Dua, Kotola
`
`Buer
`
`Buer, Lee
`
`Buer, Nishikawa
`
`Buer, Hoffmann
`
`
`
`
`
`
`
`
`xii
`
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`
`I, Dr. Andrew Wolfe, declare as follows:
`
`I.
`
`Introduction
`
`1. My name is Andrew Wolfe, and I have been retained by Finnegan,
`
`Henderson, Farabow, Garrett & Dunner, LLP, counsel for Google LLC (“Google”),
`
`as an expert witness in the case Google LLC v. Proxense LLC, Case No. IPR2024-
`
`00782 with respect to U.S. Patent No. 8,646,042 (“the ’042 patent”), Ex-1001.1
`
`2. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials. The
`
`materials that I have studied for this declaration include the documents identified in
`
`the table of exhibits.
`
`3.
`
`I may rely upon these materials, my knowledge and experience, and/or
`
`additional materials to rebut arguments raised by the patent owner. Further, I may
`
`also consider additional documents and information in forming any necessary
`
`opinions, including documents that may not yet have been provided to me.
`
`4. My analysis of the materials produced in this investigation is ongoing,
`
`and I will continue to review any new material as it is provided. This declaration
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`
`1 All references to “Ex” in this declaration refer to the Google Exhibits
`
`concurrently filed with Google’s petition.
`
`Page | 1
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`Page 14 of 144
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`

`
`supplement, and/or amend my opinions stated herein based on new information and
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`my continuing analysis of the materials already provided.
`
`5.
`
`I understand that the Petition for Inter Partes Review involves the ’042
`
`patent, Ex-1001, the ’042 patent.
`
`II. Education and Work Experience
`
`6.
`
`I have attached to this declaration a copy of my curriculum vitae that
`
`fully sets forth my qualifications. Below is a summary of my education, work
`
`experience, and other qualifications.
`
`7.
`
`In 1985, I earned a Bachelor’s degree in Electrical Engineering and
`
`Computer Science from The Johns Hopkins University. In 1987, I received an
`
`Master’s degree in Electrical and Computer Engineering from Carnegie Mellon
`
`University. In 1992, I received a Ph.D. in Computer Engineering from Carnegie
`
`Mellon University. My doctoral dissertation proposed a new approach for the
`
`architecture of a computer processor.
`
`8.
`
`I have more than 35 years of experience as a computer architect,
`
`computer system designer, personal computer graphics designer, educator, and
`
`executive in the electronics industry.
`
`9.
`
`In 1983, I began designing touch sensors, microprocessor-based
`
`computer systems, and I/O (input/output) cards for personal computers as a senior
`
`design engineer for Touch Technology, Inc. During the course of my design projects
`
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`with Touch Technology, I designed I/O cards for PC- compatible computer systems,
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`including the IBM PC-AT, to interface with interactive touch-based computer
`
`terminals that I designed for use in public information systems. I continued
`
`designing and developing related technology as a consultant to the Carroll Touch
`
`division of AMP, Inc., where in 1986 I designed one of the first custom touch-screen
`
`integrated circuits. I designed the touch/pen input system for the Linus WriteTop,
`
`which many believe to be the first commercial tablet computer.
`
`10.
`
` From 1986 through 1987, I designed and built a high- performance
`
`computer system as a student at Carnegie Mellon University. From 1986 through
`
`early 1988, I also developed the curriculum and supervised the teaching laboratory
`
`for processor design courses.
`
`11.
`
`In the latter part of 1989, I worked as a senior design engineer for ESL-
`
`TRW Advanced Technology Division. While at ESL-TRW, I designed and built a
`
`bus interface and memory controller for a workstation- based computer system, and
`
`also worked on the design of a multiprocessor system.
`
`12. At the end of 1989, I (along with some partners) reacquired the rights
`
`to the technology I had developed at Touch Technology and at AMP and founded
`
`The Graphics Technology Company. Over the next seven years, as an officer and a
`
`consultant for The Graphics Technology Company, I managed the company's
`
`Page | 3
`
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`engineering development activities and personally developed dozens of touch screen
`
`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
`
`sensors, controllers, and interactive touch- based computer systems.
`
`13.
`
`I have consulted, formally and informally, for a number of fabless
`
`semiconductor companies. In particular, I have served on the technical advisory
`
`boards for two processor design companies: BOPS, Inc., where I chaired the board;
`
`and Siroyan Ltd., where I served in a similar role for three networking chip
`
`companies—Intellon, Inc., Comsilica, Inc., and Entridia, Inc.—and one 3D game
`
`accelerator company, Ageia, Inc.
`
`14.
`
`I have also served as a technology advisor to Motorola and to several
`
`venture capital funds in the U.S. and Europe. Currently, I am a director of Turtle
`
`Beach Corporation, providing guidance in its development of premium audio
`
`peripheral devices for a variety of commercial electronic products.
`
`15. From 1991 through 1997, I served on the Faculty of Princeton
`
`University as an Assistant Professor of Electrical Engineering. At Princeton, I taught
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`undergraduate and graduate-level courses in Computer Architecture, Advanced
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`Computer Architecture, Display Technology, and Microprocessor Systems, and
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`conducted sponsored research in the area of computer systems and related topics. I
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`was also a principal investigator for DOD research in video technology and a
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`principal investigator for the New Jersey Center for Multimedia Research. From
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`1999 through 2002, while a Consulting Professor, I taught a Computer Architecture
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`course to both undergraduate and graduate students at Stanford University. At
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
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`Princeton, I received several teaching awards, both from students and from the
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`School of Engineering. I have also taught advanced microprocessor architecture to
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`industry professionals in seminars sponsored by the Institute of Electrical and
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`Electronics Engineers (“IEEE”) and the Association for Computing Machinery
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`(“ACM”). I am currently a lecturer at Santa Clara University teaching courses on
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`Microprocessor Systems, Integrated Circuit Design, Real-Time Computing, and
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`Mechatronics and currently serve as Faculty Senate President.
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`16. From 1997 through 2002, I held a variety of executive positions at a
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`publicly-held fabless semiconductor company originally called S3, Inc. and later
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`called SonicBlue Inc. I held the positions of Chief Technology Officer, Vice
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`President of Systems Integration Products, Senior Vice President of Business
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`Development, and Director of Technology, among others. At the time I joined S3,
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`the company supplied graphics accelerators for more than 50% of the PCs sold in
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`the United States. At S3 I supervised the design of several PC graphics accelerators.
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`During my time at SonicBlue we launched more than 30 new consumer electronics
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`products including devices to support copy-protected video and many of the first
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`commercial products to support copy-protected internet audio content. These
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`included some of the first consumer products to support playback of encrypted
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`content using digital rights management (DRM) based security. I also worked with
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`Universal Music Group and Sony Entertainment on the development of systems for
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
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`distribution and management of secure, encrypted content.
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`17.
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`I have published more than fifty peer-reviewed papers in computer
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`architecture and computer systems and IC design. I also have chaired IEEE and
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`ACM conferences in microarchitecture and integrated circuit design and served as
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`an associate editor for IEEE and ACM journals. I served on the IEEE Computer
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`Society Awards committee. I am an IEEE Fellow, an IEEE Computer Society
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`Distinguished Contributor and a Member of ACM. I am a named inventor on at least
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`fifty-seven U.S. patents and thirty-seven foreign patents, which are listed in my
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`curriculum vitae. Some of these patents relate to encryption systems.
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`18.
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`In 2002, I was the invited keynote speaker at the ACM/IEEE
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`International Symposium on Microarchitecture and at the International Conference
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`on Multimedia. From 1990 through 2005, I have also been an invited speaker on
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`various aspects of technology and the PC industry at numerous industry events
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`including the Intel Developer's Forum, Microsoft Windows Hardware Engineering
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`Conference, Microprocessor Forum, Embedded Systems Conference, Comdex, and
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`Consumer Electronics Show, as well as at the Harvard Business School and the
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`University of Illinois Law School. I have been interviewed on subjects related to
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`computer graphics and video technology and the electronics industry by publications
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`such as the Wall Street Journal, New York Times, Los Angeles Times, Time,
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`Newsweek, Forbes, and Fortune as well as on CNN, NPR, and the BBC. I have also
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`IPR2024-00782 Dr. Wolfe Declaration
`U.S. Patent No. 8,646,042
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`spoken at dozens of universities including MIT, Stanford, University of Texas,
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`Carnegie Mellon University, UCLA, University of Michigan, Rice University, and
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`Duke University.
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`19. Additional details about my employment history, fields of expertise,
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`and publications are further included in my curriculum vitae, attached herewith as
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`Appendix A.
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`III. Compensation
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`20.
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`I am being compensated at my usual and customary hourly rate of $650
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`for my expert services in connection with this proceeding. My compensation does
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`not depend in any way upon the outcome of this proceeding, the opinions I express,
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`or the content of my testimony.
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`IV. Legal Principles
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`21. For purposes of this declaration, I have been informed about certain
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`aspects of the law as it relates to my opinions.
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`22.
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`I understand that for an invention claimed in a patent to be found
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`patentable, it must be (among other things) new and not obvious based on what was
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`known before the invention was made.
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`23.
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`I understand that the information that is used to evaluate whether an
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`invention was new and not obvious when made is generally referred to as “prior art.”
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`I understand that the prior art includes patents and printed publications that existed
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`IPR2024-00782 Dr. Wolfe Declaration
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`before the earliest filing date of the patent (which I have been informed is called the
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`“effective filing date”). I also understand that a patent or published patent application
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`is prior art if it was filed before the effective 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 effective
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`filing date.
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`24.
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`I understand that in this inter partes review proceeding, the information
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`that may be evaluated is limited to patents and printed publications. My analysis,
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`which is set out in detail below, compares the claims to printed publications that I
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`understand are prior art to the claims.
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`A. Anticipation Analysis: 35 U.S.C. § 102
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`25.
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`I understand that a person cannot obtain a patent on an invention if the
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`prior art included that invention. If an invention is not new, then the invention has
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`been “anticipated” by the prior art. A claim is “anticipated” by the prior art if each
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`and every limitation of the claim is disclosed, expressly or inherently, in a single
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`item of prior art, from which a person of ordinary skill in the art could practice the
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`invention. I have applied this standard in my evaluation of whether claims of the
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`’042 patent are anticipated in light of the prior art.
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`IPR2024-00782 Dr. Wolfe Declaration
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`B. Obviousness Analysis: 35 U.S.C. § 103
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`26.
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`It is my understanding that a claim is unpatentable if the claimed subject
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`matter as a whole would have been obvious to a person of ordinary skill in the art at
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`the time of the alleged invention. I also understand that an obviousness analysis takes
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`into account the scope and content of the prior art, the differences between the
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`claimed subject matter and the prior art, and the level of ordinary skill in the art at
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`the time of the invention.
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`27.
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`I understand that a claimed invention is not patentable if it would have
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`been “obvious” to a person of ordinary skill in the field of the invention at the time
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`the invention was made. This means that even if all the requirements of a claim are
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`not found in a single prior art reference, the claim is not patentable if the differences
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`between the subject matter in the prior art and the subject matter in the claim would
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`have been obvious to a person of ordinary skill in the art at the time the application
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`was filed.
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`28.
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`In determining the scope and content of the prior art, it is my
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`understanding that a reference is considered relevant prior art to the ’042 patent if it
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`falls within the field of the inventor’s endeavor. In addition, a reference is prior art
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`if it is reasonably pertinent to the particular problem with which the inventor was
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`involved. A reference is reasonably pertinent if it logically would have commended
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`itself to an inventor’s attention in considering his problem. Thus, if a reference
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`relates to the same problem as the claimed invention, that supports the use of the
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`IPR2024-00782 Dr. Wolfe Declaration
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`reference as prior art in an obviousness analysis.
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`29.
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`In my opinion, the prior art references identified herein seek to solve
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`the same types of problems as the ’042 patent and logically would have commended
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`themselves to an inventor’s attention considering the problems of the ’042 patent.
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`30.
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`I understand that a determination as to whether a claim would have been
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`obvious should be based on four factors (though not necessarily in