UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`FITBIT, INC.,
`
`Petitioner,
`
`v.
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`PHILIPS NORTH AMERICA LLC,
`
`Patent Owner.
`
`_______________
`
`Case IPR2020-007831
`Patent 7,088,233 B2
`_______________
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`____________________________________________________________
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`DECLARATION OF DR. THOMAS MARTIN
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`1 Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd., who filed
`a petition in IPR2020-00910, has been joined as a petitioner in this
`proceeding.
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`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1 
`  QUALIFICATIONS ........................................................................................ 1 
`  SUMMARY OF OPINIONS AND MATERIALS CONSIDERED............... 6 
`  LEVEL OF SKILL IN THE ART ................................................................... 8 
`THE ’233 PATENT AND TECHNOLOGICAL BACKGROUND ............... 9 
`  CLAIM CONSTRUCTION .......................................................................... 14 
`  LEGAL PRINCIPLES ................................................................................... 18 
`A. 
`Burden of Proof ................................................................................... 18 
`B.  Anticipation ......................................................................................... 18 
`C.  Obviousness ......................................................................................... 19 
`  PRIOR ART RELIED ON IN THE PETITION ........................................... 21 
`A. 
`Jacobsen (Ex. 1005) ............................................................................ 21 
`B. 
`Say (Ex. 1006) ..................................................................................... 24 
`C.  Quy (Ex. 1007) .................................................................................... 27 
`D.  Geva (Ex. 1008) .................................................................................. 27 
`E. 
`Reber (Ex. 1020) ................................................................................. 29 
`F. 
`Gabai (Ex. 1040) ................................................................................. 30 
`  DETAILED RESPONSE TO GROUNDS OF REJECTION ....................... 31 
`A.  Ground 1: Jacobsen Fails to Disclose all Features of Claims 1,
`7–10, and 14 ........................................................................................ 31 
`1. 
`Claim 1 ...................................................................................... 31 
`2. 
`Claims 7–10 .............................................................................. 40 
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`Claim 14 .................................................................................... 40 
`3. 
`B.  Ground 2: Obviousness of Claims 1, 7–10, and 14 Over Say ............ 42 
`1. 
`Claim 1 ...................................................................................... 42 
`2. 
`Claims 7–10 .............................................................................. 49 
`3. 
`Claim 14 .................................................................................... 50 
`C.  Ground 3: Obviousness of Claims 1, 7–10, and 14 over
`Jacobsen and Say ................................................................................. 50 
`D.  Ground 4: Obviousness of Claim 13 Over Jacobsen, Say, and
`Quy ...................................................................................................... 57 
`Ground 5: Obviousness of Claims 24–25 Over Jacobsen, Say,
`and Geva .............................................................................................. 60 
`Ground 6: Obviousness of Claim 26 Over Jacobsen, Say, and
`Reber .................................................................................................... 62 
`G.  Ground 7: Obviousness of Claims 15, 16, and 22 Over Say, and
`Gabai .................................................................................................... 66 
`CONCLUSION .............................................................................................. 68 
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`E. 
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`F. 
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`I, Dr. Thomas Martin, declare as follows:
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`
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`INTRODUCTION
`1.
`I have been retained by Patent Owner Philips North America LLC
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`(“Patent Owner” or “Philips”) as an independent expert consultant in these Inter
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`Partes review proceedings regarding U.S. Patent No. 7,088,233 (“the ’233 patent”)
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`(Ex. 1001). I have been asked to consider, among other things, whether certain
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`references relied on by Petitioners and their expert, Dr. Joseph Paradiso, disclose
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`or suggest the features recited in claims 1, 7–10, 13–16, 22, 24–26 of the ’233
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`patent. My opinions are set forth below.
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`2.
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`I am being compensated at my normal rate of $400/hour for the time I
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`spend working on this proceeding. My compensation is not dependent on the
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`nature of my findings, or the outcome of this proceeding or any other proceeding. I
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`have no other interest in this proceeding.
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` QUALIFICATIONS
`3. My qualifications for forming the opinions in this report are
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`summarized here and explained in more detail in my curriculum vitae, which I
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`understand is provided as Exhibit 2027.
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`4.
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`I am a Professor in the Department of Electrical and Computer
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`Engineering at Virginia Polytechnic Institute and State University, more
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`commonly known as “Virginia Tech” where I have been employed since 2001. I
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`was previously an Assistant Professor at the University of Alabama in Huntsville
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`from 1999-2001.
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`5.
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`As discussed in my curriculum vitae in Exhibit 2027, I have more
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`than 25 years of experience in the area of wearable technologies, with a particular
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`emphasis on activity monitoring technology. In 1992, I began working on wearable
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`computers for campus tour guides using the Global Positioning System (GPS) and
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`aircraft maintenance. Since that time, I have conducted research on a wide variety
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`of wearable computing topics and applications, including electronic textiles,
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`ambulatory medical monitoring of physiological data such as heart rate, activity
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`classification based upon measuring a person’s movements using sensors such as
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`accelerometers and gyroscopes, and personal protective equipment using GPS. I
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`have also been affiliated with the International Symposium on Wearable
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`Computers since 1998, having served as general chair, technical program co-chair
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`(3 times), technical program committee member, and steering committee member.
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`6. My education includes a Bachelor of Science degree in Electrical
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`Engineering in 1992 from the University of Cincinnati, a Master of Science degree
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`in Electrical and Computer Engineering in 1994 from Carnegie Mellon University,
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`and a Ph.D. in Electrical and Computer Engineering in 1999 from Carnegie Mellon
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`University.
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`7. My research areas include wearable computing (including for health
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`and activity monitoring), pervasive computing, interdisciplinary design teams for
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`smart devices, and electronic textiles (e-textiles). I am the co-director of the
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`Virginia Tech E-textiles Laboratory, which conducts research on hardware and
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`software architectures for e-textile applications, including both smart garments and
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`large-scale fabrics such as home furnishings. Since joining Virginia Tech, I have
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`been the Principal Investigator or co-Principal Investigator on over $6.5M in
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`external research funding. My current research is focused on developing
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`computational architectures and design tools for electronic textiles that will allow
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`domain experts to develop intelligent garments and home furnishings that will
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`work reliably across a range of populations, environments and applications. My
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`goal is to develop intelligent fabrics that look and feel like normal fabric, while
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`providing sensing and computing platforms that fit unobtrusively into a person’s
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`normal daily routine. Reviews of my proposals stated that my research is “ground-
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`breaking,” “highly innovative,” “full of exciting potential,” and “already showing a
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`clear impact”; I was said to be “among a small group of pioneers” in electronic
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`textiles. In 2006, I was one of 20 National Science Foundation researchers to
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`receive the Presidential Early Career Award for Scientists and Engineers
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`(PECASE) for my research on electronic textiles for wearable computing.
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`8.
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`One of my ongoing research thrusts is electronic textile garments for
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`monitoring a person’s motions using a variety of sensors attached to the clothing,
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`including accelerometers, gyroscopes, magnetometers, and bend sensors.
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`Applications of this research include sports medicine, treatment of motion-related
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`injuries, physical therapy for stroke victims, and monitoring patients’ physiological
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`responses during normal daily routines.
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`9.
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`I have recently completed a National Science Foundation Smart
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`Health and Wellbeing grant to develop e-textile garments for ambulatory medical
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`monitoring. These garments simultaneously monitor both the patient’s
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`physiological characteristics and movements, to annotate physiological data with
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`information about the patient’s activities, which are classified based upon
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`measuring the movements of the patient’s body segments (torso, arms, and legs)
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`with wearable sensors. The goal is to allow medical personnel to see the
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`relationship of daily activities and physiological response and to use the activities
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`to determine when physiological data is collected, providing a greater insight into
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`the patient’s state of health and the dynamics of their wellbeing.
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`10.
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`I am currently working with colleagues at the University of Minnesota
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`and University of Delaware on a National Science Foundation grant to develop soft
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`exoskeletons for children with mobility impairments of their arms. My portion of
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`the work is to monitor the movements of the arms using stitched stretch sensors
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`and inertial measurement units (IMUs).
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`11.
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`In earlier grants from the National Science Foundation, dating back to
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`2002, my colleagues and I investigated a number of medical applications of e-
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`textile garments, including gait analysis (the characteristics of a person’s walking
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`movements) and simultaneous monitoring of a person’s movements and
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`physiological data.
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`12.
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`In addition to medical applications, I investigated using the Global
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`Positioning System (GPS) in wearable technology for personal protective
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`equipment in industrial settings. My previous research in this area includes proof-
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`of-concepts of a vest that uses the Global Positioning System (GPS) to alert
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`workers-on-foot at roadside construction sites when there is an imminent risk of
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`being struck by a passing car, as well as a hard hat for construction workers that
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`can alert them of dangerous blood levels of carbon monoxide, the sensor for which
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`senses an individual’s blood composition to provide a personalized warning.
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`13.
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`In addition to my funded research projects, I have supervised
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`numerous student course projects related to wearable technologies, including
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`activity monitoring, location tracking, and wireless communication. These courses
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`include my graduate course “Wearable and Ubiquitous Computing,” which I first
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`offered in 2002; an undergraduate course on smart products called Interdisciplinary
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`Product Development studio; and a mixed undergraduate/graduate course called
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`Textile Space, which focuses mainly on wearable technologies for space flight, in
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`coordination with engineers at NASA’s Johnson Space Center.
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`14.
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`I have only testified as an expert in one deposition in the last four
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`years and have not testified as an expert at trial. The matter for which I have
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`testified at deposition is Philips North America LLC v. Fitbit, Inc., C.A. No. 1:19-
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`cv-11586-IT (D. Mass.).
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` SUMMARY OF OPINIONS AND MATERIALS CONSIDERED
`15. All of the opinions contained in this declaration are based on the
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`documents I reviewed and my professional judgment, as well as my education,
`
`experience, and professional knowledge. I am not an attorney and I am not offering
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`any legal opinions in this declaration.
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`16.
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`In forming my opinions expressed in this declaration, I reviewed the
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`Petition filed by Fitbit, Inc. (“Fitbit”), the exhibits cited in the Petition, and the
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`exhibits cited in the Paradiso Declaration that accompanied the Petition (Ex. 1002).
`
`I have also considered Patent Owner’s Preliminary Response filed July 28, 2020
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`and the Decision Granting Institution dated October 27, 2020.
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`17.
`
`I understand that this matter involves another IPR that resulted from a
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`petition filed by Garmin International, Inc., Garmin USA, Inc., and Garmin Ltd.
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`(collectively “Garmin”). I understand that Garmin’s petition relies on the same
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`grounds and information set forth in Fitbit’s petition, and so my opinions would
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`apply identically to the information relied upon by Garmin. Any specific citations
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`to the “Petition” in this declaration are in reference to Fitbit’s petition filed April,
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`8, 2020.
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`18. My opinions are additionally guided by my appreciation of how a
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`person of ordinary skill in the art would have understood the claims of the ’233
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`patent at the time of the alleged inventions.
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`19. Based on my experience and expertise, it is my opinion that:
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`
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`U.S. Patent No. 6,198,394 to Jacobsen (“Jacobsen”, Ex. 1005) does
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`not disclose all the limitations of claims 1, 7–10, and 14 of the ’233
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`patent as asserted in Ground 1 of the Petition.
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`
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`U.S. Patent No. 6,175,752 to Say (“Say”, Ex. 1006) does not disclose
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`all the limitations of claims 1, 7–10, and 14 of the ’233 patent as
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`asserted in Ground 2 of the Petition.
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`
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`A person of ordinary skill in the art (“POSITA”) would not have
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`modified Jacobsen in view of Say as asserted in Ground 3 of the
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`Petition, and even if combined, the resulting combination would not
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`include all features of claims 1, 7–10, 13–16, 22, 24–26 of the ’233
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`patent.
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`
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`A POSITA would not have modified Jacobsen in view of Say and
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`U.S. Patent No. 6,602,191 to Quy (“Quy”, Ex. 1007) as asserted in
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`Ground 4 of the Petition with respect to claim 13 of the ’233 patent.
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`A POSITA would not have modified Jacobsen in view of Say and
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`U.S. Patent No. 6,366,871 to Geva (“Geva”, Ex. 1008) as asserted in
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`Ground 5 of the Petition with respect to claims 24 and 25 of the ’233
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`patent.
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`
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`A POSITA would not have modified Jacobsen in view of Say and
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`U.S. Patent No. 5,961,451 to Reber (“Reber”, Ex. 1020) as asserted in
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`Ground 6 of the Petition with respect to claim 26 of the ’233 patent.
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`
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`A POSITA would not have modified Say in view of U.S. Patent No.
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`6,160,986 to Gabai (“Gabai”, Ex. 1040) as asserted in Ground 7 of the
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`Petition with respect to claims 15, 16, and 22 of the ’233 patent.
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` LEVEL OF SKILL IN THE ART
`20.
`I understand that the Decision to institute inter partes review adopted
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`the following description of a person of ordinary skill in the relevant art, based on
`
`my prior declaration:
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`[A] person of ordinary skill in the art of the patented
`inventions as of the earliest claimed priority date on the
`face of each patent, is an individual with a.) at least a
`bachelor’s degree in electrical engineering, computer
`engineering, or computer science and b.) some
`experience with activity and/or health monitoring
`technologies, or the equivalent thereof . . . [and] would
`also have experience with security in the context of
`wireless communications.
`Decision, 9–10; Ex. 2007, ¶11.
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`21.
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`I have applied this description in connection with the opinions
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`expressed below. I have also considered the alternative description of the level of
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`skill set forth by Dr. Paradiso (Ex. 1002, ¶15) and do not believe that any of my
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`opinions would change if it were applied.
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` THE ’233 PATENT AND TECHNOLOGICAL BACKGROUND
`22.
` The ’233 patent, titled “Personal Medical Device Communication
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`System and Method,” was filed on June 7, 2002 and issued on August 8, 2006.
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`The ’233 patent refers to various continuation-in-part, continuation and provisional
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`applications, the earliest of which is provisional application No. 60/105,493, filed
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`on Oct. 23, 1998. Ex. 1001, 1:4–17.
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`23. The ’233 patent describes a “personal and/or institutional health and
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`wellness communications system, which may be used for a variety of emergency
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`and non-emergency situations using two-way communication devices and a bi-
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`directional communication network.” Id., Abstract. The disclosed system
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`“provides multiple levels” of prioritization and various types of authentication. Id.
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`More particularly, the disclosed system provides different levels of access to
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`sensitive information on a personal device, noting that “[t]he purpose for
`
`communications” includes “to provide health care professionals with access to
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`information for remote diagnostic capabilities … remote treatment action…” Id.,
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`2:12-22; see also 12:16-21 (referencing “electrocardiogram data” from the
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`personal device); 11:32-33 (referencing “activation (shock, release medication,
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`brain stimulation))”. The disclosed system also can provide access to less sensitive
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`information, such as “location information.” Id., 13:8-9 (“[s]elected clients are
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`those authorized to receive the location information”).
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`24. Figure 5 of the ’233 patent, reproduced below, is a network diagram
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`showing communications with various system components. Id., 2:47–48. .
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`
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`Id., Fig. 5.
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`25.
`
`In Figure 5, the personal device 100 of a victim V is in short-range
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`wireless communication (via, for example, BLUETOOTH) with a second device of
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`a bystander B. Id., 11:49–67. The personal device of victim V can then be in
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`wireless communication with other aspects of the network. Id., 12:1–37.
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`26. Personal Medical Device 100 could have one or more sensor inputs
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`connected to external or embedded “detectors 140” (not shown on Figure 5) that:
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`“may be any sensor of bodily or physiological parameters such as, but not limited
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`to: temperature, motion, respiration, blood oxygen content, electrocardiogram
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`(ECG), electroencephalogram (EEG), and other measurements.” Id., 3:27–33.
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`27. The ’233 patent discloses that Personal Medical Device 100 includes a
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`power module, such as a battery, a memory, and a processor, and may include
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`connections to the above-mentioned sensors, a user interface module with a display
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`and other user input/output devices, and a short range wireless communications
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`module. Id., Figs. 2, 3; 3:18–33; 3:50–4:10. Personal Medical Device 100 can
`
`also include a GPS (Global Positioning System) receiver to enable determining the
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`location of the victim. Id., 12:63–13:8. In addition, Personal Medical Device 100
`
`can include power management circuitry to save battery life by powering off the
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`communications module when not needed. Id., 14:15–60.
`
`28. The short range wireless communications module of Personal Medical
`
`Device 100 can communicate with Medical Device Interface 600 and the central
`
`communications base station, which also may include short range wireless
`
`communications modules. Id., Fig. 4F; 4:14–21; 7:55–57; 8:41–46. One mode of
`
`short range wireless communication uses the Bluetooth standard. Id., 4:49–60.
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`The ’233 patent “impos[es] a “meaning” on the phrase, “short range wireless
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`communication”: “[T]o include premises and facility based wireless networks and
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`not to describe long-range networks such as cellular telephone networks used to
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`communicate over long-distances.” Id., 5:61–65.
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`29. The ’233 patent further provides both communication channel security
`
`and level of information access control for security arrangements to restrict the
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`exchange of information to authorized agents. Id., 13:24–14:14. Exemplary
`
`arrangements include the use of passwords, and various encryption techniques such
`
`as security keys and public/private key exchange. Id., 8:12–15, 13:43–65. While
`
`there may be both bystander and responding personnel connected to the personal
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`device with secure BLUETOOTH channels, the patent highlights the different
`
`levels of access governing information transmitted noting that “[w]hen the
`
`responding personnel R reach the victim, they may establish communications
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`through local area wireless 330 from their medical device interface 500 to the
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`victims personal device 100, request data from the personal device 100, and
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`request the personal device 100 to take some action, such as dispensing medication
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`to the victim V.” Id., 12:38-46; see also, 14:7-8 (“a user needing access to the
`
`device 100 may make a request for such access to a responsible third party”).
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`30.
`
`In sum, the ’233 patent states that a purpose of providing
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`communications between the personal medical device and other agents or devices
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`is: “to provide health care professionals with access to information for remote
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`diagnostic capabilities; to provide notification of acute conditions possibly
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`requiring immediate assistance, transportation to a medical center, or remote
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`treatment action; to provide a location information of mobile persons for
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`caregivers; to notify responsible parties of the occurrence of a medical condition;
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`and to provide remote intervention assistance by caregivers through verbal or
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`visual interaction.” Id., 2:11–22.
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`31. One exemplary embodiment of the ’233 patent includes wireless
`
`communications via BLUETOOTH. Id., 4:46–5:60. BLUETOOTH is a short-
`
`range wireless standard operating in the 2.4GHz frequency band. Id.
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`BLUETOOTH is intended for establishing connections between devices in
`
`wireless personal area networks. A common use is, for example, establishing
`
`communications between a person’s laptop and a keyboard.
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`32. As noted in the BLUETOOTH Security Architecture white paper,
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`Version 1.0 (15 July 1999), the BLUETOOTH standard does not provide
`
`authentication of users, only of devices. See Ex. 2029, 11 (“The Bluetooth
`
`Security architecture has the following limitations: … 2. Only a device is
`
`authenticated and not its user. If there is a need for authentication of the user, other
`
`means – e.g., application level security features – will be necessary.”). As
`
`reflected in the Guide to Bluetooth Security, NIST Special Publication 800-121,
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`Rev. 2, (May 2017), that characteristic of BLUETOOTH remains unchanged. Ex.
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`2028, 50 (identifying that “[n]o user authentication exists” as a “Security Issue of
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`Vulnerability” of BLUETOOTH and noting how “Only device authentication is
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`provided by the [BLUETOOTH] specification. Application-level security,
`
`including user authentication” must be added separately.). That is, since its
`
`inception, BLUETOOTH’s encryption scheme is focused on establishing secure
`
`communications links, and is not focused on access to various levels of the
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`information that may be transmitted over those links. For situations where it is
`
`desirable to verify and authorize a user’s access, user authentication should be
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`implemented by other means, such as by any application that may employ
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`BLUETOOTH for communications.
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`33. Consistent with this understanding, the ’233 patent indicates that
`
`“voice and visual channels of transmission may be controlled for activation by the
`
`personal device 100 or by an authorized entity, but may not necessarily be
`
`encrypted.” Id., 13:47–49 (emphasis added). In other words, a POSITA would
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`understand that embodiments of the ’233 patent may utilize encryption, such as
`
`specified for use with BLUETOOTH, but an additional mechanism would be
`
`required to provide user authorization for different levels of access to requested
`
`information.
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` CLAIM CONSTRUCTION
`34.
`I understand that when considering the meaning of claims subject to
`
`inter partes review, one must consider the claim language. I understand that claim
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`terms are generally given their ordinary and customary meaning, as would be
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`understood by one with ordinary skill in the art at the time of invention in the
`
`context of the specification, the prosecution history, and other claims. For my
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`opinions in this declaration, I have been asked to consider the challenged claims
`
`under their plain and ordinary meanings as understood by a POSITA at the time of
`
`the alleged invention. I have applied the above principles in forming my opinions
`
`provided in this declaration.
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`35. The Petition asserts that no construction is necessary for any terms of
`
`the challenged claims of the ’233 patent except for “means for signaling the bi-
`
`directional communications module to transition from the powered-down state to
`
`the powered-up state” as recited in claim 26. The Petition asserts that the function
`
`of this term is “signaling the bi-directional communications module to transition
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`from the powered-down state to the powered-up state,” and that the associated
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`structure for the claimed function is components capable of providing a magnetic,
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`mechanical, sound or ultrasound, infrared, or radio frequency signal, and structural
`
`equivalents thereof. Petition, 21–22. I understand that a decision by the U.S.
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`District Court for the Central District of California applied a similar construction.
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`See Ex. 2023, 23.
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`36. The Decision instituting IPR states that the Board was not persuaded
`
`that Petitioner’s description of the structure corresponding to the “means for
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`signaling. . . .” was correct. Dec., 12. The Decision found that the disclosed
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`structure “includes a switch that turns the bi-directional communications module
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`on and off.” Id. I have applied this construction in considering whether this
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`limitation is found in the references cited in the Petition as to claim 26.
`
`37. The Decision instituting IPR construes the term “wireless
`
`communication” as used in the challenged claims as “an over-the-air
`
`communication (e.g. using radiofrequency (RF), infrared, or optical techniques).”
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`Dec., 13. I have applied this construction in considering whether this limitation is
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`found in the references cited in the Petition as to the challenged claims.
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`38. The Decision instituting IPR construes the term “data input/output
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`port” as recited in claim 14 as requiring something other than the “wireless
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`communications module” recited in claim 1. Dec., 38–39. I agree with the
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`Decision that the specification contemplates that a data input/output port would be
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`something separate from the wireless communications module discussed in the
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`specification. See id., citing Ex. 1001, Figs. 4A and 4C; 3:47–49; 3:54–57; 4:14–
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`16; 4:25–27.
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`39.
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`I understand that the PTAB declined to construe the term “governing
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`information transmitted between the first personal device and the second device”
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`as recited in claim 1 and declined to adopt Philips’ construction of that term as
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`“controlling the transmission of information between the first personal device and
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`the second device.” Dec., 13–15. My opinions herein do not rely on Philips’s
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`original proposed construction for this term. Instead, I rely on what I regard as
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`how a POSITA would understand this term according to its plain and ordinary
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`meaning when understood in the context of the specification.
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`40.
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`I understand that a decision from the U.S. District Court for the
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`Central District of California construed the term “first personal device” as “first
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`personal medical device.” Ex. 2023, 16–18. It is my understanding that
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`Petitioners have not advocated for this this particular construction in this IPR
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`proceeding, my analysis below would not change whether this particular
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`construction by the U.S. District Court for the Central District of California were
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`adopted.
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`41.
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`I understand that this same decision from the U.S. District Court for
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`the Central District of California also construed the term “location determination
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`module” of claim 24 as “a terrestrial location system.” Id., 19–20. I do not agree
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`with this construction, and have not adopted in my analysis below. However, were
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`the construction applied to the Petition, it does not appear that Petitioners have
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`shown that the prior art discloses “a terrestrial location system.” Instead, the
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`Petition relies on prior art showing a GPS receiver.
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`42.
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`I understand that this same decision from the U.S. District Court for
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`the Central District of California also construed the term “the bi-directional
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`communications module has a powered-down state” of claim 26 as a bi-directional
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`communications module having “a state in which no power is consumed.” Id., 43.
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`Were this construction applied in this proceeding, it would not change my analysis
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`below in any material way.
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` LEGAL PRINCIPLES
`43.
`I am not an attorney and I have not been asked to express any legal
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`opinions. Rather, in connection with the analysis presented in this this declaration,
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`I considered the following legal standards that counsel for Patent Owner provided
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`to me.
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`A. Burden of Proof
`44.
`I understand that Fitbit and Garmin, as the Petitioners, have the
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`burden of proving the unpatentability of the patent claims by a preponderance of
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`the evidence, which I understand as meaning more than 50% likely.
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`B. Anticipation
`45.
`I understand that a claim is anticipated, and therefore not patentable, if
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`each and every element of that claim is found in a single prior art reference. I
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`further understand that, if a prior art reference does not explicitly disclose every
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`element of a claim, the claim may still be anticipated and rendered invalid if the
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`claim elements not explicitly disclosed are inherently disclosed. However, I
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`understand that to inherently disclose an element, that element must be necessarily
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`present in the prior art reference and that inherency cannot be established through
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`mere probabilities or possibilities.
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`C. Obviousness
`46.
`I understand that a claim is obvious, and therefore not patentable, if at
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`the time of the invention, the subject matter of the claim as a whole would have
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`been obvious to a person of ordinary skill in the art. I understand that a proper
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`obviousness analysis must consider the following four factors: (1) the scope and
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`content of the prior art; (2) the level of ordinary skill in the art; (3) the differences
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`between the claimed subject matter and the prior art; and (4) any objective indicia
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`of non-obviousness.
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`47.
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`I understand that a reason to combine that merely describes the
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`resulting combination without explaining the particular reason why one of ordinary
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`skill would combine the elements of the prior art in order to form Patent Owner’s
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`claimed invention is merely conclusory and based on impermissible hindsight
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`reasoning. It is not enough to simply show that the references disclose each
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`element of a claim; it is also necessary to identify a reason that would have
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`prompted a person of ordinary skill in the art to combine the elements in the
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`manner set forth in the claim.
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`48.
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`I understand that a prima facie case of obviousness requires more than
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`describing the results of the proposed combination. Rather, the Petitioner must
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`articulate a reason for making the proposed combination in the first instance. I
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