Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 1 of 447
`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 1 of 447
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`EXHIBIT 3
`EXHIBIT 3
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`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 2 of 447
`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 2 of 447
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`CONFIDENTIAL
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`Civil Action No. 1:19-cv-11586-FDS
`
`PHILIPS NORTH AMERICA LLC,
`
`FITBIT, INC.,
`
`Plaintiff,
`
`Defendant.
`
`
`
`EXPERT REPORT OF JOSEPH A. PARADISO, PH.D. REGARDING
`INVALIDITY OF U.S. PATENT NO. 8,277,377
`
`Dated: November16, 2021
`
`

`

`
`
` I.
`
`II.
`
`III.
`
`IV.
`
`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 3 of 447
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`TABLE OF CONTENTS
`
`Pages
`
`INTRODUCTION ...............................................................................................................1
`
`SUMMARY OF CONCLUSIONS ......................................................................................1
`
`QUALIFICATIONS AND EXPERIENCE .........................................................................1
`
`UNDERSTANDING OF THE LAW ..................................................................................7
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`Invalidity And Burden Of Proof ..............................................................................7
`
`Person Of Ordinary Skill In The Art........................................................................7
`
`Date Of Invention ....................................................................................................8
`
`Claim Construction ..................................................................................................9
`
`Patent Eligibility Under 35 U.S.C. § 101.................................................................9
`
`1.
`
`2.
`
`Abstract Idea ................................................................................................9
`
`Inventive Concept ......................................................................................10
`
`Prior Art Under Pre-AIA 35 U.S.C. § 102 .............................................................11
`
`Anticipation Under Pre-AIA 35 U.S.C. § 102 .......................................................12
`
`Obviousness Under Pre-AIA 35 U.S.C. § 103.......................................................13
`
`1.
`
`Secondary Considerations Of Non-Obviousness .......................................14
`
`Written Description Under 35 U.S.C. § 112 ..........................................................15
`
`Enablement Under 35 U.S.C. § 112 .......................................................................15
`
`Indefiniteness Under 35 U.S.C. § 112 ...................................................................16
`
`V.
`
`VI.
`
`MATERIALS REVIEWED ...............................................................................................16
`
`OVERVIEW OF THE ʼ377 PATENT ...............................................................................17
`
`A.
`
`B.
`
`Priority Date Of The ʼ377 Patent ...........................................................................17
`
`Level Of Ordinary Skill In The Art Of The ʼ377 Patent ........................................18
`
`i
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`

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`TABLE OF CONTENTS (cont’d)
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`Pages
`
`Summary Of The Specification Of The ʼ377 Patent ..............................................19
`
`Prosecution History Of The ʼ377 Patent ................................................................25
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`May 4, 2009 Office Action And The Applicant’s Response .....................25
`
`December 29, 2009 Office Action And The Applicant’s Response ..........28
`
`August 13, 2010 Office Action, The Applicant’s Response, And
`The Applicant’s Request For Pre-Appellate Review .................................31
`
`March 18, 2011 Office Action And The Applicant’s Response ................34
`
`August 30, 2011 Office Action, The Applicant’s Request For Pre-
`Appellate Review, And The Applicant’s Appeal Brief .............................38
`
`April 4, 2012 Applicant-Initiated Interview and May 18, 2012
`Request For Continued Examination .........................................................41
`
`June 11, 2012 Examiner’s Amendments And Notice of Allowance .........43
`
`Obviousness Finding For The European Counterpart To The ’377 Patent ...........44
`
`Claim Construction Of The ʼ377 Patent ................................................................46
`
`Asserted Claims Of The ʼ377 Patent .....................................................................46
`
`Technology Background Of The ʼ377 Patent And State Of The Art ....................46
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Interactive Exercise Monitoring Was Well Known ...................................56
`
`Web-Enabled Wireless Phones Were Well Known ...................................65
`
`Downloading An Application From A Remote Server Over The
`Internet Was Well Known .........................................................................71
`
`Rendering User Interfaces On Web-Enabled Wireless Devices Was
`Well Known ...............................................................................................81
`
`Gathering Exercise And Physiologic Status Data While A Subject
`Is Exercising Was Well Known .................................................................86
`
`Coupling Web-Enabled Wireless Devices To Data Gathering
`Devices And Transferring Data Between Devices Using Either
`Wired Connections Or Short-Range Wireless Communications
`Including Infrared And RF Communication Protocols Were Well
`Known ........................................................................................................93
`
`
`
`ii
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`

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`TABLE OF CONTENTS (cont’d)
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`Pages
`
`7.
`
`Sending Data Over The Internet To Back-End Servers For Further
`Processing, And Receiving And Displaying Calculated Responses
`From Such Servers, Were Well Known ...................................................105
`
`VII. THE ʼ377 PATENT ASSERTED CLAIMS ARE DRAWN TO INELIGIBLE
`SUBJECT MATTER, OBVIOUS IN LIGHT OF THE PRIOR ART, AND
`POTENTIALLY INDEFINITE .......................................................................................110
`
`A.
`
`B.
`
`Summary Of Invalidity Conclusions For The ʼ377 Patent ..................................110
`
`’377 Patent Asserted Claims 1, 4-6, 9, And 12 Are Unpatentable For
`Claiming Ineligible Subject Matter Under 35 U.S.C. § 101 ................................110
`
`1.
`
`2.
`
`3.
`
`The ’377 Patent Asserted Claims Are Directed To The Abstract
`Idea Of Collecting, Analyzing, And Displaying Exercise-Related
`Information ..............................................................................................111
`
`The ’377 Patent Asserted Claims Do Not Recite An Inventive
`Concept ....................................................................................................129
`
`Philips’s Arguments To Date Do Not Change My Opinion That
`The ’377 Patent Asserted Claims Are Patent Ineligible ..........................135
`
`C.
`
`Asserted Claims 1, 4-6, 9, And 12 Of The ʼ377 Patent Are Invalid As
`Obvious In Light Of The Prior Art Under 35 U.S.C. § 103 ................................146
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Prior Art To The ’377 Patent ...................................................................146
`
`Browne In View Of Ausems And Hsu Renders Claims 1, 4-6, 9,
`And 12 Obvious .......................................................................................187
`
`Hickman In View Of Theimer, Or Hickman In View Of Theimer
`And Vaisanen, Renders Claims 1, 4-6, 9 And 12 Obvious......................224
`
`Mault In View of Dean Or Hsu Renders Claims 1, 4-6, 9 And 12
`Obvious ....................................................................................................250
`
`iFit In View Of Ausems And Dean, Or iFit In View Of Ausems
`And Hsu, Renders Claims 1, 4-6, 9, And 12 Obvious .............................284
`
`There Are No Secondary Considerations Of Non-Obviousness For
`The ʼ377 Patent ........................................................................................333
`
`D.
`
`’377 Patent Asserted Claims 1, 4-6, 9, And 12 Are Indefinite Under 35
`U.S.C. § 112 If They Are Interpreted To Include More Than One Server ..........334
`
`VIII. CONCLUSION ................................................................................................................338
`
`
`
`iii
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`

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`TABLE OF CONTENTS (cont’d)
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`DEMONSTRATIVE EXHIBITS ....................................................................................338
`
`COMPENSATION ..........................................................................................................338
`
`RESERVATION OF RIGHTS ........................................................................................339
`
`Pages
`
`IX.
`
`X.
`
`XI.
`
`
`
`
`
`iv
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`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 7 of 447
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`CONFIDENTIAL
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is Dr. Joseph Paradiso, Ph.D. I have been retained by Defendant Fitbit
`
`LLC (“Fitbit”) as an independent technical expert consultant in this proceeding. With regard to
`
`this report, Fitbit and its counsel asked me to consider and render my opinion regarding whether
`
`asserted claims 1, 4-6, 9, and 12 of the ’377 patent (the “Asserted Claims”) are valid or invalid.
`
`My current opinions regarding that question are set forth below.
`
`II.
`
`SUMMARY OF CONCLUSIONS
`
`2.
`
`My opinions and the bases and reasons for them are set forth in this report. In
`
`summary, as explained throughout this report, it is my opinion that each Asserted Claim is: (1)
`
`drawn to unpatentable subject matter and (2) obvious in light of the prior art. In addition, as
`
`detailed below, it is my opinion that if claim 1 of the ’377 patent is construed to allow the use of
`
`more than one server, then each Asserted Claim is indefinite for failure to provide an appropriate
`
`antecedent basis for the claim term “the server” in independent claim 1, from which all of the other
`
`Asserted Claims depend.
`
`III. QUALIFICATIONS AND EXPERIENCE
`I received a B.S. in electrical engineering and physics summa cum laude from Tufts
`3.
`
`University in 1977 and a Ph.D. in physics from the Massachusetts Institute of Technology (MIT)
`
`in 1981.
`
`4.
`
`For nearly five decades, I have been involved with the research and development
`
`of sensor technology in a variety of applications. I have twenty-one years of experience
`
`specifically in wearable devices, sensing, and computing, during which I invented and fielded
`
`many types of wearable activity tracking devices and associated web-enabled wireless devices and
`
`applications.
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`
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`

`

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`CONFIDENTIAL
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`5.
`
`For example, I worked summers and part-time during my undergraduate years from
`
`1974 to 1977 as an engineering intern at the Draper Laboratory in Cambridge, Massachusetts,
`
`where I was embedded in a team responsible for developing software to analyze data coming from
`
`tests of the MPMS/AIRS, the prototype for the MX missile guidance system, which at the time
`
`was the world’s most accurate purely inertial system.
`
`6.
`
`After receiving my Ph.D., I was a post-doctoral researcher at the Swiss Federal
`
`Institute of Technology (ETH) in Zurich from 1981-1983, where I worked on sensor technology
`
`for high-energy particle physics.
`
`7.
`
`From 1984-1994 following my post-doctoral position at ETH, I returned to the
`
`Draper Laboratory as a physicist, where I was a member of the NASA Systems and Advanced
`
`Sensors and Signal Processing Directorates. There, my research encompassed spacecraft control
`
`systems, image processing algorithms, underwater sonar, and precision alignment sensors for large
`
`high-energy physics detectors.
`
`8.
`
`From 1992-1994, I directed the development of precision alignment sensors for the
`
`GEM muon detector at the Superconducting Supercollider, and worked on the design of particle
`
`detectors at the CERN Large Hadron Collider (LHC).
`
`9.
`
`In 1994, I joined the MIT Media Lab, where I still work today. The Media Lab is
`
`a research laboratory founded in 1985 to promote a unique, interdisciplinary culture and focus on
`
`highly collaborative research that joins seemingly disparate technological and academic fields.
`
`Researchers at the Media Lab have pioneered areas such as wearable computing, tangible
`
`interfaces, and affective computing, which has led to numerous products and platforms that have
`
`become a ubiquitous part of consumer life today. Examples of technologies that have spun off
`
`from the Media Lab’s research include e-readers such as the Amazon Kindle and Barnes & Noble
`
`
`
`2
`
`

`

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`CONFIDENTIAL
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`Nook, the popular video game Guitar Hero, the MPEG-4 structured audio format, the first bionic
`
`lower-leg system for amputees, wireless mesh networks developed by Nortel, 3D printers
`
`manufactured by FormLabs, wearable motion trackers for physical therapy by Figur8, stress and
`
`health monitoring systems by Affectiva and Empatica, and the Mercury RFID Reader,
`
`commercialized by spin-off ThingMagic.
`
`10.
`
`Today, the Media Lab is supported by more than 80 members, including some of
`
`the world’s leading corporations representing the fields of electronics, entertainment, fashion,
`
`health care, cloud and mobile computing, smart homes, social media, e-government, greeting
`
`cards, toys, and telecommunications, among others. Currently, faculty members, research staff,
`
`and students work in over 25 research groups and initiatives on several hundred projects relating
`
`to a broad range of technologies and applications including digital approaches for treating
`
`neurological disorders, new approaches to optimizing sustainable cities, self-assembling
`
`spacecraft, powering implanted electronics via radio, advancing imaging technologies that can
`
`“see around a corner,” and the word’s first “smart” powered ankle-foot prosthesis.
`
`11. When I joined the Media Lab in 1994, I focused on developing new sensing
`
`modalities for human-computer interaction. By 1997, these modalities evolved into wearable and
`
`non-wearable wireless sensing and distributed sensor networks to measure movement activity.
`
`This work anticipated and influenced transformative products and industries that have blossomed
`
`in recent years. In fact, many of my projects, dating from the late 1990s, involve embedded
`
`sensors, such as accelerometers and gyros, in wearables.
`
`12.
`
`For example, in 1997, I developed a shoe with wireless sensors for measuring
`
`dynamic movement of the human foot during, for example, interactive dance and other physical
`
`activities. The shoe captured motion data, which were mapped into different information
`
`
`
`3
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`

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`CONFIDENTIAL
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`representations to facilitate interactivity. The design of this sensor-laden wireless shoe is now
`
`recognized as a watershed in the field of wireless sensing for activity tracking and was an
`
`inspiration for the Nike+, one of the very first activity trackers and the first commercial product to
`
`integrate dynamic music with monitored exercise. This shoe won the Discover Magazine Award
`
`for technological innovation in the entertainment category in 2000.1
`
`13.
`
`Following our Discover Magazine Award winning shoe, my team went on to
`
`pioneer on-shoe sensor architecture for clinical gait analysis in collaboration with the
`
`Massachusetts General Hospital (MGH) in 2002. Our article on this system, published in 2008,
`
`won of the Institute of Electrical and Electronics Engineers (IEEE) [EMB] Transactions on
`
`Information Technology in Biomedicine 2012 Outstanding Paper Award.
`
`14. We then broke new ground in sports medicine with another MGH collaboration that
`
`developed an attachable, ultra-wide-range, wireless inertial measurement unit system for
`
`evaluating professional baseball players in 2007. The latter project led to my Ph.D. alumna Nan-
`
`Wei Gong’s company Figur8, which produces IMU-based sensors along with real-time
`
`cloud/phone-based analysis software for physical therapy and motion analysis.
`
`15. My team and I have also been leaders in wearable sensing for Human-Computer
`
`Interfaces over the past decade, fielding, for example, wristbands to measure finger position,
`
`wristbands to enable pointing interaction and control of heating and lighting, and even a wireless
`
`touchpad mounted on a fingernail.
`
`
`1 https://news.mit.edu/2000/discover-0607 (“The Discover Awards for Technological Innovation
`‘honor the unsung technological heroes whose creative genius improves the quality of our
`everyday lives and alerts us to what lies ahead in the frontiers of human achievement and
`ingenuity,’ according to [Discover] magazine’s editors.”).
`4
`
`
`
`

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`CONFIDENTIAL
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`16.
`
`Leading to nearly 400 publications, 20 issued patents, and a string of awards in the
`
`Pervasive Computing, Human-Computer Interaction, and sensor network communities, my
`
`research has become the basis for widely established curricula. Many of these publications are
`
`directed to fixed, wearable, or portable sensor devices. I have also advised over 55 graduate theses
`
`for M.S. and Ph.D. students who have done their work in my research group, and served as a reader
`
`for roughly 100 M.S. and Ph.D. students in other groups and at other universities.
`
`17.
`
`Although I strive to push my research beyond the purview of current practice, I am
`
`gratified when my work makes it into products. Indeed, several of my patents have been licensed,
`
`I have spent invited residencies at Microsoft and Nokia research, and I have worked with a number
`
`of Media Lab sponsor companies, including ALPS, Cisco, EMC, Google, Intel, NEC, Nortel,
`
`Qualcomm, Ricoh, Schneider Electric, Sensormatic, Steelcase, Yamaha, and many others.
`
`18.
`
`Further, a number of my students have gone on to prominence in their own careers
`
`that have involved wearables, and several of my students have become successful entrepreneurs
`
`in the field. For example, Dr. Nan-Wei Gong (Ph.D. 2013) was the R&D lead of Project Jacquard
`
`(integrating electronics and textiles) at Google ATAP before becoming founder and CEO of her
`
`own companies with a wearable focus (Circular2 and Figur8). As another example, Dr. Stacy
`
`Morris Bamberg (Ph.D. 2004) became a tenured professor at the University of Utah doing
`
`wearable gait analysis, and then started a company in the space (Veristride).
`
`19.
`
`I have given nearly 400 invited talks, panel appearances, and seminars worldwide,
`
`recently keynoting on topics relating to ubiquitous sensing and the Internet of Things (“IoT”) for
`
`prestigious venues ranging from the Sensors Expo (the main industrial sensors conference) to the
`
`World Economic Forum. I am also frequently asked to address industrial groups on sensing
`
`systems and IoT. For example, I recently gave the opening keynote at the IoT Solutions World
`
`
`
`5
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`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 12 of 447
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`CONFIDENTIAL
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`Congress in Barcelona, the leading Industrial IoT event, and I have been on the Editorial Board of
`
`IEEE Pervasive Computing Magazine (the original flagship publication in this area) since 2006,
`
`including as Associate Editor in Chief. I also often engage with the Media Lab’s extensive list of
`
`industrial partners in strategizing these areas.
`
`20.
`
`I also belong to and participate in numerous professional organizations. For
`
`example, I belong to the Association for Computer Machinery (ACM) and the American Physical
`
`Society (the major professional society in physics). I am a senior member of the IEEE and the
`
`American Institute of Aeronautics and Astronautics. Within the IEEE, I belong to the Signal
`
`Processing Society, the Controls Society, and the Computer Society.
`
`21.
`
`I have also served on many Technical Program Committees (which solicit, review,
`
`and select papers for academic conferences) and journal editorial boards. I have also organized
`
`academic conferences in areas such as wireless sensor networks, wearable computing and wearable
`
`sensing, human-computer interfaces, ubiquitous computing, and the like. For example, I have
`
`organized major conferences focused on wearables (e.g., BSN 2006 and ISWC 2007), and I have
`
`been on the BSN Steering Committee since 2006.
`
`22.
`
`Currently, I am the Alexander W. Dreyfoos (1954) Professor and Associate
`
`Academic Head in the Program in Media Arts and Sciences at the MIT Media Laboratory.
`
`23.
`
`I have summarized in this section some of my educational background, career
`
`history, and other qualifications. A more complete listing of my qualifications and professional
`
`experience is described in my curriculum vitae. A copy of my current curriculum vitae is attached
`
`hereto as Exhibit A.
`
`
`
`6
`
`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 13 of 447
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`CONFIDENTIAL
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`IV. UNDERSTANDING OF THE LAW
`I am not an attorney. For the purposes of this report, I have been informed about
`24.
`
`certain aspects of the law that are relevant to my analysis and conclusions. My understanding of
`
`the law is as follows.
`
`A.
`25.
`
`Invalidity And Burden Of Proof
`
`I understand that the issued claims of a U.S. patent are presumed valid. I further
`
`understand that a challenger to the validity of an issued U.S. patent must demonstrate that the
`
`patent is invalid by clear and convincing evidence. I understand that clear and convincing evidence
`
`is evidence that makes a fact highly probable.
`
`B.
`26.
`
`Person Of Ordinary Skill In The Art
`
`I understand that, in the context of an invalidity analysis, a person of ordinary skill
`
`in the art (“POSITA”) is a hypothetical person who looks to the prior art at the time of the
`
`invention. I understand that the POSITA is presumed to have knowledge of all prior art references
`
`that are sufficiently related to the pertinent art. I also understand that the POSITA is presumed to
`
`have knowledge of all arts reasonably pertinent to the particular problem that the claimed invention
`
`addresses.
`
`27.
`
`I further understand that the factors that may be considered in determining the level
`
`of ordinary skill in the art at the relevant time include: (1) problems encountered in the art; (2)
`
`prior art solutions to problems encountered in the art; (3) rapidity of innovation; (4) sophistication
`
`of the technology; and (5) the education level of active workers in the field. I understand that these
`
`factors need not all be taken into account for the analysis and that one or more of these factors may
`
`control the analysis.
`
`
`
`7
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`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 14 of 447
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`CONFIDENTIAL
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`Date Of Invention
`
`I understand that “conception” occurs when an inventor forms in his or her mind a
`
`C.
`28.
`
`definite and permanent idea of an invention. For product claims, conception is complete when a
`
`POSITA could construct the apparatus without unduly extensive research or experimentation. For
`
`method or process claims, conception is complete when the inventor has mental possession of the
`
`steps of the operative process and a POSITA would have the ability to carry out the method or
`
`process without extensive research or experimentation.
`
`29.
`
`I understand that “reduction to practice” of an invention occurs when (1) a device
`
`is embodied in tangible form (or a method is actually performed) and its practical utility for its
`
`intended purpose is demonstrated—i.e., the device works or the results of the method are
`
`confirmed (referred to as “actual reduction to practice”); or (2) a patent application is filed on the
`
`invention (referred to as “constructive reduction to practice”). An invention is considered reduced
`
`to practice as of the earlier of actual reduction to practice or constructive reduction to practice.
`
`30.
`
`I understand that to show “diligence” in reducing an invention to practice after
`
`conception, an inventor must show that he or she had been continuously working to attempt to
`
`reduce the invention to practice, without any significant gaps in time or effort. I understand that
`
`if an inventor works continuously to either file a patent on his or her invention, or to create the
`
`invented device or practice the invented process, then the inventor was diligent.
`
`31.
`
`I understand that inventor testimony regarding conception, reduction to practice,
`
`and diligence must be corroborated by other evidence in order to prove conception, reduction to
`
`practice, or diligence.
`
`
`
`8
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`

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`Case 1:19-cv-11586-FDS Document 261-3 Filed 12/13/21 Page 15 of 447
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`CONFIDENTIAL
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`Claim Construction
`
`I understand that the first step in a validity/invalidity or infringement/non-
`
`D.
`32.
`
`infringement analysis is to properly construe the claims. I also understand that the claims must be
`
`construed the same way in determining validity/invalidity and infringement/non-infringement.
`
`33.
`
`I understand that the Court has construed certain terms of the asserted ’377 patent,
`
`and that I am required to apply the Court’s constructions in rendering my analysis and opinions. I
`
`also understand that any terms that the Court has not construed should be given their plain and
`
`ordinary meaning, as it would have been understood by a POSITA at the priority date of the ’377
`
`patent, in light of the ’377 patent’s claims, specification, and prosecution history.
`
`E.
`34.
`
`Patent Eligibility Under 35 U.S.C. § 101
`
`I understand that patentable subject matter is defined in 35 U.S.C. § 101. I
`
`understand that there are exceptions to this general definition of patentable inventions.
`
`Specifically, I understand that U.S. patents are not available for laws of nature, natural phenomena,
`
`or abstract ideas.
`
`35.
`
`I understand that patent eligibility under 35 U.S.C. § 101 is determined using a two-
`
`step analysis. At step one, the question is whether the claims are directed to a patent-ineligible
`
`concept, for example an “abstract idea.” At step two, the question is whether the claim limitations,
`
`individually and in combination, transform the nature of the claim into a patent-eligible
`
`application, sometimes referred to as an “inventive concept.”
`
`Abstract Idea
`
`1.
`I understand that the step one abstract idea inquiry looks to, and must focus on, the
`
`36.
`
`language of the claims. Any reliance on the specification must always yield to the claim language.
`
`In other words, the specification cannot be used to import details into the analysis if those details
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`are not claimed.
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`37.
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`I understand that one way to assess whether a computer implemented invention is
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`drawn to an abstract idea is to consider whether the claimed invention is merely a generic computer
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`implementation of long-standing business models or methods of organizing human activity that
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`were previously performed without the aid of a computer.
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`38.
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`I understand that claim limitations that render the scope of the claims narrower than
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`the overall abstract idea may not change the fact that those claims are directed to the abstract idea.
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`In other words, a claim is not patent eligible merely because it applies an abstract idea in a narrow
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`way.
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`39.
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`Similarly, claims are not saved from abstraction because they recite specific, rather
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`than generic, computer components. Rather, the focus of the claims must be on a specific asserted
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`improvement in computer capabilities, and not an abstract concept for which computers are
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`invoked merely as a tool.
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`40.
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`I understand that another way to evaluate the claims at step one is to look at whether
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`they are results-oriented. Specifically, the claimed invention must embody a concrete solution to
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`a problem, including the specificity required to transform the claim from one claiming only a result
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`to one claiming a way or mechanism of achieving that result.
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`Inventive Concept
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`2.
`I understand that the step two inventive concept inquiry looks to whether the claims
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`41.
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`supply an inventive concept, which ensures that the claims confer significantly more than a patent
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`upon the ineligible concept or abstract idea itself.
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`42.
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`I understand that reciting conventional, routine, and well-understood applications
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`previously known in the art does not supply an inventive concept. Similarly, I understand that
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`implementing an abstract idea using a generic computing device does not provide an inventive
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`concept—in other words, if the claims merely use a generic computer to implement an abstract
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`idea, there is no inventive concept.
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`43.
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`Rather, an inventive concept reflects something more than the application of an
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`abstract idea using well-understood, routine, and conventional activities previously known to the
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`industry. For example, I understand that if a computer facilitates an inventive process in a way
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`that could not be implemented by a human making calculations and computations without a
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`computer that may provide an inventive concept.
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`44.
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`Similar to the considerations of whether the claims are drawn to generic
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`components in step one, adding novel or non-routine components is not necessarily enough to
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`provide an inventive concept at step two.
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`F.
`45.
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`Prior Art Under Pre-AIA 35 U.S.C. § 1022
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`I understand that prior art under § 102(a) includes information that was known or
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`used by others in the U.S., or patented or described in a printed publication anywhere in the world,
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`before the applicant’s date of invention.
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`46.
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`I further understand that prior art under § 102(b) includes information that was
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`patented or published anywhere, or was in public use, on sale, or offered for sale in this country,
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`before the “critical date,” which occurs one year prior to the earliest effective filing date of the
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`patent application. I understand that the earliest effective filing date of a patent’s claims may
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`predate the actual filing date of the U.S. application for that patent. For example, if an application
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`is a continuation of an earlier “parent application”, the earliest effective filing date of the claims
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`resulting from the later continuation application is the filing date of the parent application, to the
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`2 I have been informed and understand that Congress passed the America Invents Act (“AIA”) and
`that it was signed into law on September 16, 2011. I understand that the AIA changed the law of
`invalidity in certain ways. However, for patents with effective filing dates before March 16, 2013,
`including the ’377 patent, I understand that pre-AIA law applies.
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`extent that the parent application’s disclosure satisfies the enablement and written description
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`requirements for those claims.
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`47.
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`I further understand that prior art under § 102(e) includes information that was
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`described in an application for a patent (so long as that application was later published) or a patent
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`granted on an application for patent that was filed in the U.S. by another before the applicant’s
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`date of invention.
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`G.
`48.
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`Anticipation Under Pre-AIA 35 U.S.C. § 102
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`I understand that a patent claim is invalid if it is “anticipated” by prior art. I
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`understand that for a claim to be invalid because it is anticipated, each and every limitation of that
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`claim must be found in a single prior art reference. I further understand that two references cannot
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`be combined for anticipation purposes unless one is incorporated by reference into the other by
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`including a particularized identification in the anticipatory reference of the material incorporated
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`and a clear indication in the anticipatory reference of where t