Case 6:21-cv-00569-ADA Document 207-8 Filed 04/20/23 Page 1 of 100
`Case 6:21-cv-00569-ADA Document 207-8 Filed 04/20/23 Page 1 of 100
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`EXHIBIT 8
`EXHIBIT 8
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`Case 6:21-cv-00569-ADA Document 207-8 Filed 04/20/23 Page 2 of 100
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`TOUCHSTREAM TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case No. IPR2022-00794
`U.S. Patent No. 8,782,289
`
`DECLARATION OF KEVIN C. ALMEROTH, PH.D. IN SUPPORT OF
`PATENT OWNER’S RESPONSE
`
`Touchstream Exhibit 2022
`Google LLC v. Touchstream Techs., Inc.
`IPR2022-00794
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`

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`Case 6:21-cv-00569-ADA Document 207-8 Filed 04/20/23 Page 3 of 100
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`TABLE OF CONTENTS
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`I.
`II.
`III.
`IV.
`
`Overview .......................................................................................................... 1
`Background & Qualifications .......................................................................... 2
`Information Considered .................................................................................14
`Legal Standards Applied ...............................................................................14
`A.
`Anticipation .........................................................................................15
`B.
`Obviousness .........................................................................................16
`Level of Ordinary Skill in the Art .................................................................19
`V.
`VI. General Background of the Art .....................................................................20
`A.
`General Network Communication ......................................................20
`B.
`802.11 Wi-Fi .......................................................................................27
`C.
`High Definition Television (HDTV) ...................................................28
`D.
`Codecs .................................................................................................28
`E.
`Exemplary Mobile Devices .................................................................31
`F.
`The Digital Home and Mobile Devices ..............................................32
`VII. Overview of the ’289 Patent ..........................................................................34
`A.
`Claims ..................................................................................................35
`B.
`Specification ........................................................................................38
`C.
`Prosecution History .............................................................................42
`VIII. Claim Construction ........................................................................................44
`A.
`“Media Player” ....................................................................................45
`B.
`“Programing Code” .............................................................................48
`Summary of Petitioner’s Grounds and the Cited References ........................52
`
`IX.
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`2.
`
`2.
`
`X.
`
`A. Muthukumarasamy ..............................................................................53
`1.
`The DBCS presents content choices on the IED, and the user
`selects content using the IED ....................................................55
`The IED controls presentation of selected content using one of
`two separate processes ..............................................................58
`Hayward ..............................................................................................63
`B.
`The Challenged Claims Would Not Have Been Obvious over the Cited
`References ......................................................................................................64
`A. Muthukumarasamy Describes Two Distinct Processes, Neither of
`Which Discloses or Renders Obvious the Claimed Method ...............64
`1.
`Petitioner Relies on Muthukumarasamy’s Descriptions of Two
`Separate Processes ....................................................................65
`Neither the RCIBS Process nor the zHub/zNode Process
`Discloses All the Limitations of the Challenged Independent
`Claims .......................................................................................70
`B. Muthukumarasamy Does Not Disclose or Suggest an Action Control
`Command That Is Independent of the Particular Media Player .........89
`Petitioner Fails to Prove That an Ordinary Artisan Would Have
`Considered the zHub and zNode Part of a Server System with
`Muthukumarasamy’s Server ...............................................................90
`Claims 2, 7 and 8 Would Not Have Been Obvious ............................95
`D.
`XI. Conclusion .....................................................................................................95
`
`C.
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`1.
`
`I, Kevin C. Almeroth, state that I am over the age of eighteen and am
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`otherwise competent to make this declaration. Statements in this declaration made
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`on my own knowledge are true, and statements made based on information and belief
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`are believed to be true. I hereby declare as follows:
`
`I.
`
`OVERVIEW
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`2.
`
`I have been retained as an expert witness on behalf of Touchstream
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`Technologies, Inc. (“Patent Owner”) for the above-captioned petition for inter partes
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`review (“IPR”). I am being compensated as an expert witness in this case at $800
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`per hour in addition to out-of-pocket expenses. I have received no additional
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`compensation for my work on this matter and my compensation does not depend,
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`and has not ever depended in any way, on my opinion as expressed in this Report,
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`in any testimony that I may give, or on the outcome of this or any other proceeding.
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`3.
`
`I understand that this IPR involves U.S. Patent No. 8,782,289 (Ex.
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`1001, “the ’289 patent”). I submit this Declaration in connection with Patent
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`Owner’s Response to the Petition in this IPR.
`
`4.
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`Based on my review of the Petition and the evidence in this IPR, as
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`described more fully below, it is my opinion that claims 1, 2, and 6-8 of the ’289
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`patent would not have been obvious based on the grounds asserted by Google LLC
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`(“Petitioner”) in this IPR proceeding.
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`II.
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`BACKGROUND & QUALIFICATIONS
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`5.
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`I am currently a Professor Emeritus in the Department of Computer
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`Science at the University of California, Santa Barbara (UCSB). While at UCSB, I
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`held faculty appointments and was a founding member of the Computer Engineering
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`(CE) Program, Media Arts and Technology (MAT) Program, and the Technology
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`Management Program (TMP). I also served as the Associate Director of the Center
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`for Information Technology and Society (CITS) from 1999 to 2012. I have been a
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`faculty member at UCSB since July 1997.
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`6.
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`I hold three degrees from the Georgia Institute of Technology: (1) a
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`Bachelor of Science degree in Information and Computer Science (with minors in
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`Economics, Technical Communication, and American Literature) earned in June
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`1992; (2) a Master of Science degree in Computer Science (with specialization in
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`Networking and Systems) earned in June 1994; and (3) a Doctor of Philosophy
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`(Ph.D.) degree in Computer Science (Dissertation Title: Networking and System
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`Support for the Efficient, Scalable Delivery of Services in Interactive Multimedia
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`System, minor in Telecommunications Public Policy) earned in June 1997. During
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`my education, I have taken a wide variety of courses as demonstrated by my minor.
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`My undergraduate degree also included a number of courses more typical of a degree
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`in electrical engineering
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`including digital
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`logic, signal processing, and
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`telecommunications theory.
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`7.
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`One of the major concentrations of my research over the past 30+ years
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`has been the delivery of multimedia content and data between computing devices,
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`including various network architectures. In my research, I have studied large-scale
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`content delivery systems, and the use of servers located in a variety of geographic
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`locations to provide scalable delivery to hundreds or thousands of users
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`simultaneously. I have also studied smaller-scale content delivery systems in which
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`content is exchanged between individual computers and portable devices. My work
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`has emphasized the exchange of content more efficiently across computer networks,
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`including the scalable delivery of content to many users, mobile computing, satellite
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`networking, delivering content to mobile devices, and network support for data
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`delivery in wireless networks.
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`8.
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`In 1992, the initial focus of my research was on the provision of
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`interactive functions (e.g., VCR-style functions like pause, rewind, and fast-forward)
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`for near video-on-demand systems in cable systems; in particular, how to aggregate
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`requests for movies at a cable head-end and then how to satisfy a multitude of
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`requests using one audio/video stream broadcast
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`to multiple
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`receivers
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`simultaneously. This research has continually evolved and resulted in the
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`development of techniques to scalably deliver on-demand content, including audio,
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`video, web documents, and other types of data, through the Internet and over other
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`types of networks, including over cable systems, broadband telephone lines, and
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`satellite links.
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`9.
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`An important component of my research has been investigating the
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`challenges of communicating multimedia content, including video, between
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`computers and across networks including the Internet. Although the early Internet
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`was used mostly for text-based, non-real time applications, the interest in sharing
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`multimedia content, such as video, quickly developed. Multimedia-based
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`applications ranged from downloading content to a device to streaming multimedia
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`content to be instantly used. One of the challenges was that multimedia content is
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`typically larger than text-only content, but there are also opportunities to use
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`different delivery techniques since multimedia content is more resilient to errors. I
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`have worked on a variety of research problems and used a number of systems that
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`were developed to deliver multimedia content to users. One content-delivery method
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`I have researched is the one-to-many communication facility called “multicast,” first
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`deployed as the Multicast Backbone, a virtual overlay network supporting one-to-
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`many communication. Multicast is one technique that can be used on the Internet to
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`provide streaming media support for complex applications like video-on-demand,
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`distance learning, distributed collaboration, distributed games, and large-scale
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`wireless communication. The delivery of media through multicast often involves
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`using Internet infrastructure, devices and protocols, including protocols for routing
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`and TCP/IP.
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`10.
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`Starting in 1997, I worked on a project to integrate the streaming media
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`capabilities of the Internet together with the interactivity of the web. I developed a
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`project called the Interactive Multimedia Jukebox (IMJ). Users would visit a web
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`page and select content to view. The content would then be scheduled on one of a
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`number of channels, including delivery to students in Georgia Tech dorms delivered
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`via the campus cable plant. The content of each channel was delivered using
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`multicast communication.
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`11.
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`In the IMJ, the number of channels varied depending on the capabilities
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`of the server including the available bandwidth of its connection to the Internet. If
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`one of the channels was idle, the requesting user would be able to watch their
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`selection immediately. If all channels were streaming previously selected content,
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`the user’s selection would be queued on the channel with the shortest wait time. In
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`the meantime, the user would see what content was currently playing on other
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`channels, and because of the use of multicast, would be able to join one of the
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`existing channels and watch the content at the point it was currently being
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`transmitted.
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`12.
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`The IMJ service combined the interactivity of the web with the
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`streaming capabilities of the Internet to create a jukebox-like service. It supported
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`true Video-on-Demand when capacity allowed, but scaled to any number of users
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`based on queuing requested programs. As part of the project, we obtained
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`permission from Turner Broadcasting to transmit cartoons and other short-subject
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`content. We also connected the IMJ into the Georgia Tech campus cable television
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`network so that students in their dorms could use the web to request content and then
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`view that content on one of the campus's public access channels.
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`13. More recently, I have also studied issues concerning how users choose
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`content, especially when considering the price of that content. My research has
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`examined how dynamic content pricing can be used to control system load. By
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`raising prices when systems start to become overloaded (i.e., when all available
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`resources are fully utilized) and reducing prices when system capacity is readily
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`available, users’ capacity to pay as well as their willingness can be used as factors
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`in stabilizing the response time of a system. This capability is particularly useful in
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`systems where content is downloaded or streamed on-demand to users.
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`14. As a parallel research theme, starting in 1997, I began researching
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`issues related to wireless devices and sensors. In particular, I was interested in
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`showing how to provide greater communication capability to “lightweight devices,”
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`i.e., small form-factor, resource-constrained (e.g., CPU, memory, networking, and
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`power) devices. Starting in 1998, I published several papers on my work to develop
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`a flexible, lightweight, battery-aware network protocol stack. The lightweight
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`protocols we envisioned were similar in nature to protocols like Bluetooth, Universal
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`Plug and Play (UPnP) and Digital Living Network Alliance (DLNA).
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`15.
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`From this initial work, I have made wireless networking—including ad
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`hoc, mesh networks and wireless devices—one of the major themes of my research.
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`My work in wireless networks spans the protocol stack from applications through to
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`the encoding and exchange of data at the data link and physical layers.
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`16. At the application layer, even before the large-scale “app stores” were
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`available, my research looked at building, installing, and using apps for a variety of
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`purposes, from network monitoring to support for traditional computer-based
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`applications (e.g., content retrieval) to new applications enabled by ubiquitous,
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`mobile devices. For example, my research has looked at developing applications for
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`virally exchanging and tracking “coupons” through “opportunistic contact” (i.e.,
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`communication with other devices coming into communication range with a user).
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`In many of the courses I have taught there is a project component. Through these
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`projects I have supervised numerous efforts to develop new “apps” for download
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`and use across a variety of mobile platforms.
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`17.
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`Toward the middle of the protocol stack, my research also looked to
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`build wireless infrastructure support to enable communication among a set of mobile
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`devices unaided by any other kind of network infrastructure. These kinds of
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`networks are useful either in challenged network environments (e.g., when a natural
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`disaster has destroyed existing infrastructure) or when suitable support for network
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`communication never existed. The deployment of such networks (or even the use
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`of traditional network support) are critical to support services like disaster relief,
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`catastrophic event coordination, and emergency services deployment.
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`18. Yet another theme is monitoring wireless networks, in particular
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`different variants of IEEE 802.11 compliant networks, to (1) understand the
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`operation of the various protocols used in real-world deployments, (2) use these
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`measurements to characterize use of the networks and identify protocol limitations
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`and weaknesses, and (3) propose and evaluate solutions to these problems. I have
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`successfully used monitoring techniques to study wireless data link layer protocol
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`operation and to improve performance by enhancing the operation of such protocols.
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`For wireless protocols, this research includes functions like network acquisition and
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`channel bonding.
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`19.
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`Protecting networks, including their operation and content, has been an
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`underlying theme of my research almost since the beginning of my research career.
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`Starting in 2000, I have been involved in several projects that specifically address
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`security, network protection, and firewalls. After significant background work, a
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`team on which I was a member successfully submitted a $4.3M grant proposal to the
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`Army Research Office (ARO) at the Department of Defense to propose and develop
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`a high-speed intrusion detection system. Key aspects of the system included
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`associating streams of packets and analyzing them for viruses and other malware.
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`Once the grant was awarded, we spent several years developing and meeting the
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`milestones of the project. A number of my students worked on related projects and
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`published papers on topics ranging from intrusion detection to developing advanced
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`techniques to be incorporated into firewalls. I have also used firewalls, including
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`their associated malware detection features, in developing techniques for the
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`classroom to ensure that students are not distracted by online content.
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`20. My recent work ties some of the various threads of my past research
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`together. I have investigated content delivery in online social networks and
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`proposed reputation management systems in large-scale social networks and
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`marketplaces. On the content delivery side, I have looked at issues of caching and
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`cache placement, especially when content being shared and the cache has
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`geographical relevance. We were able to show that effective caching strategies can
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`greatly improve performance and reduce deployment costs. Our work on reputation
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`systems showed that reputations have economic value, and as such, creates a
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`motivation to manipulate reputations. In response, we developed a variety of
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`solutions to protect the integrity of reputations in online social networks. The
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`techniques we developed for content delivery and reputation management were
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`particularly relevant in peer-to-peer communication and recommendations for
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`downloadable “apps.”
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`21. As an important component of my research program, I have been
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`involved in the development of academic research into available technology in the
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`market place. One aspect of this work is my involvement in the Internet Engineering
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`Task Force (IETF). The IETF is a large and open international community of
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`network designers, operators, vendors, and researchers concerned with the evolution
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`of the Internet architecture and the smooth operation of the Internet. I have been
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`involved in various IETF groups including many content delivery-related working
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`groups like the Audio Video Transport (AVT) group, the MBone Deployment
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`(MBONED) group, Source Specific Multicast (SSM) group, the Inter-Domain
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`Multicast Routing (IDMR) group, the Reliable Multicast Transport (RMT) group,
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`the Protocol Independent Multicast (PIM) group, etc. I have also served as a member
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`of the Multicast Directorate (MADDOGS), which oversaw the standardization of all
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`things related to multicast in the IETF. Finally, I was the Chair of the Internet2
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`Multicast Working Group for seven years.
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`22. My involvement in the research community extends to leadership
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`positions for several academic journals and conferences. I am the co-chair of the
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`Steering Committee for the ACM Network and System Support for Digital Audio
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`and Video (NOSSDAV) workshop and on the Steering Committees for the
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`International Conference on Network Protocols (ICNP), ACM Sigcomm Workshop
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`on Challenged Networks (CHANTS), and IEEE Global Internet (GI) Symposium. I
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`have served or am serving on the Editorial Boards of IEEE/ACM Transactions on
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`Networking, IEEE Transactions on Mobile Computing, IEEE Network, ACM
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`Computers in Entertainment, AACE Journal of Interactive Learning Research
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`(JILR), and ACM Computer Communications Review. I have co-chaired a number
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`of conferences and workshops including the IEEE International Conference on
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`Network Protocols (ICNP), IEEE Conference on Sensor, Mesh and Ad Hoc
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`Communications and Networks
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`(SECON),
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`International Conference on
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`Communication Systems and Networks (COMSNETS), IFIP/IEEE International
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`Conference on Management of Multimedia Networks and Services (MMNS), the
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`International Workshop On Wireless Network Measurement (WiNMee), ACM
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`Sigcomm Workshop on Challenged Networks (CHANTS), the Network Group
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`Communication (NGC) workshop, and the Global Internet Symposium, and I have
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`served on the program committees for numerous conferences.
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`23.
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`Furthermore, in the courses I taught at UCSB, a significant portion of
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`my curriculum covered aspects of the Internet and network communication
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`including the physical and data link layers of the Open System Interconnect (OSI)
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`protocol stack, and standardized protocols for communicating across a variety of
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`physical media such as cable systems, telephone lines, wireless, and high-speed
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`Local Area Networks (LANs). The courses I have taught also cover most major
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`topics in Internet communication, including data communication, multimedia
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`encoding, and mobile application design. My research and courses have covered a
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`range of physical infrastructures for delivering content over networks, including
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`cable, Integrated Services Digital Network (ISDN), Ethernet, Asynchronous
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`Transfer Mode (ATM), fiber, and Digital Subscriber Line (DSL). For a complete list
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`of courses I have taught, see my curriculum vitae (CV).
`
`24.
`
`In addition, I co-founded a technology company called Santa Barbara
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`Labs that was working under a sub-contract from the U.S. Air Force to develop very
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`accurate emulation systems for the military’s next generation internetwork. Santa
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`Barbara Labs’ focus was in developing an emulation platform to test the
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`performance characteristics of the network architecture in the variety of
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`environments in which it was expected to operate, and, in particular, for network
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`services including IPv6, multicast, Quality of Service (QoS), satellite-based
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`communication, and security. Applications for this emulation program included
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`communication of a variety of multimedia-based services, including video
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`conferencing and video-on-demand.
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`25.
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`In addition to having co-founded a technology company myself, I have
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`worked for, consulted with, and collaborated with companies for nearly 30 years.
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`These companies range from well-established companies to start-ups and include
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`IBM, Hitachi Telecom, Turner Broadcasting System (TBS), Bell South, Digital
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`Fountain, RealNetworks, Intel Research, Cisco Systems, and Lockheed Martin.
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`26.
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`Through my graduate education, leadership with CITS, involvement in
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`TMP, role in the development of the Internet2 infrastructure, and consulting with
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`ISPs, I have gained a strong understanding in the role of the Internet in our society
`
`and the challenges of deploying large-scale production networking infrastructure.
`
`CITS, since its inception, has looked at the role of the Internet in society, including
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`how the evolution of technology have created communication opportunities and
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`challenges, including, for example through disruptive technologies like P2P. TMP
`
`looks to focus on non-purely technical issues, including, for example, state-of-the-
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`art business methods, strategies for successful technology commercialization, new
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`venture creation, and best practices for fostering innovation. Through my industry
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`collaborations and Internet2 work, I have developed significant experience in the
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`challenges of deploying, monitoring, managing, and scaling communication
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`infrastructure to support evolving Internet services like streaming media,
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`conferencing, content exchange, social networking, and e-commerce.
`
`27.
`
`I am a Member of the Association of Computing Machinery (ACM)
`
`and a Fellow of the Institute of Electrical and Electronics Engineers (IEEE).
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`28. Additional details about my employment history, fields of expertise,
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`and publications are further included in my CV, which is Exhibit 2023 in this IPR.
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`III.
`
`INFORMATION CONSIDERED
`
`29.
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`In forming the opinions I express in this declaration, I considered the
`
`Petition, the Preliminary Response, the Institution Decision, the Exhibits filed in this
`
`proceeding, and all documents and other information referenced or cited herein. In
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`addition, I relied on my own professional experience in the relevant field, including
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`information that would have been well-known by a person of ordinary skill in the art
`
`at the time of the invention.
`
`IV. LEGAL STANDARDS APPLIED
`
`30.
`
`In forming my opinions and considering the patentability of the claims
`
`of the ’289 patent, I am relying upon certain legal principles that counsel has
`
`explained to me.
`
`31.
`
`I understand that the patentability of each claim in a patent is evaluated
`
`independently of the other claims. For an invention claimed in a patent to be found
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`patentable, it must be, among other things, both new and not obvious in light of what
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`came before it. Patents and publications that predated the invention are generally
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`referred to as “prior art.”
`
`32.
`
`I understand that in this proceeding the burden is on the party asserting
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`unpatentability to prove it by a preponderance of the evidence. I understand that “a
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`preponderance of the evidence” is evidence sufficient to show that a fact is more
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`likely than not.
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`33.
`
`I also understand that certain aspects of patentability and patent claim
`
`interpretation rely on the perspective of a so-called “person of ordinary skill in the
`
`art.” I have been informed and understand that a person of ordinary skill in the art is
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`a hypothetical person who is presumed to be aware of all the pertinent information
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`that qualifies as prior art. A person of ordinary skill in the art thinks conventionally;
`
`this hypothetical person may make inferences, but has only ordinary creativity.
`
`A.
`
`34.
`
`Anticipation
`
`I understand that a claim of a patent, in order to be patentable, must
`
`recite a new invention in view of a single “prior art” reference. I understand that the
`
`law governing anticipation is based on authority that precedes the America Invents
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`Act (AIA), since the ’289 patent was filed prior to the March 16, 2013. It is my
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`understanding that “anticipation” requires a single prior art reference that discloses
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`each and every element of a claimed invention, as those elements are arranged in the
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`context of each contested claim. The disclosure of the “prior art” is read as it would
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`have been understood by a person of ordinary skill in the art at the time of the
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`invention.
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`35. Based on explanations provided to me, I understand that a patent claim
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`may be invalid over “prior art” that was publicly known or used in the United States
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`by someone other than the inventor, if it was in public use or on sale in the United
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`States by anyone, or if it was patented or described in a “print publication” anywhere
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`more than one year prior to the earliest applicable filing date.
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`36.
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`I have been instructed that a claim limitation is said to be “expressly
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`disclosed” if a person of ordinary skill in the art would have understood the express
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`disclosure (including but not limited to text and figures) of the reference as
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`describing the subject matter of that limitation. If a limitation is not expressly
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`disclosed, it may nevertheless be ‘inherently disclosed’ if the missing limitation
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`would have been necessarily present in the allegedly anticipatory reference. To be
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`“inherent,” I understand that the alleged “inherent” teachings of the art must
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`necessarily be present; it is not enough that it is “merely probably or possibly
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`present.” Further, I understand that a patent challenger may not rely on inherency to
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`change the otherwise express statements in an alleged prior-art reference. Rather,
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`“inherency” is appropriate if the reference is silent as to the allegedly inherent
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`disclosure.
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`B.
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`37.
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`Obviousness
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`I understand that a claim can be unpatentable in view of prior art if the
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`differences between the subject matter claimed and the prior art are such that the
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`claimed subject matter as a whole would have been “obvious” at the time the
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`invention was made to a person having ordinary skill in the art. I understand that
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`patentability cannot be negated by the manner in which the invention was made.
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`Patentable inventions can be the result of careful, deliberate experimentation; there
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`need not be any flash of insight or “Eureka!” moment.
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`38.
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`I also understand that the relevant inquiry into obviousness requires
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`consideration of four factors:
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`a. The scope and content of the prior art;
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`b. The differences between the prior art and the claims at issue;
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`c. The knowledge and level of skill of a person of ordinary skill in the
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`pertinent art; and
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`d. Objective factors indicating obviousness or nonobviousness which may
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`be present in any particular case, such factors including commercial
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`success of products covered by the patent claims; a longfelt need for
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`the invention; failed attempts by others to make the invention; copying
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`of the invention by others in the field; unexpected results achieved by
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`the invention; praise of the invention by the infringer or others in the
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`field; the taking of licenses under the patent by others; expressions of
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`surprise by experts and those skilled in the art at the making of the
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`invention; and the patentee’s proceeding contrary to the accepted
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`wisdom of the prior art.
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`39.
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`I understand that the obviousness standard is defined at 35 U.S.C. §
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`103(a). I understand that a first step in analyzing obviousness is to determine whether
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`the prior art, including the knowledge of one skilled in the art at that time, discloses
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`each and every element of the recited claim. I understand that, when combining two
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`or more references, one should then also consider whether there was a teaching or
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`suggestion, or whether there was a motivation, to combine the references so as to
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`avoid impermissible hindsight. I have been informed that the application of the
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`teaching, suggestion or motivation test should not be rigidly applied, but rather is an
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`expansive and flexible test. For example, I have been informed that the common
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`sense of a person of ordinary skill in the art can serve as motivation for combining
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`references. I understand that where a proposed modification to a prior art reference
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`would render its disclosure inoperable for its intended purpose or would
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`fundamentally change its principle of operation, there may not be a sufficient