IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`AUSTIN DIVISION
`
`ANCORA TECHNOLOGIES, INC.,
`
`CIVIL ACTION NO. 1:20-CV-0034-ADA
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS INC. and LG
`ELECTRONICS U.S.A., INC.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`ANCORA TECHNOLOGIES, INC.,
`
`CIVIL ACTION NO. 1:20-CV-0034-ADA
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`JURY TRIAL DEMANDED
`
`EXPERT REPORT OF SUZANNE BARBER REGARDING INVALIDITY OF
`U.S. PATENT NO. 6,411,941
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`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`IV.
`
`IX.
`
`INTRODUCTION .............................................................................................................. 1
`BACKGROUND AND QUALIFICATIONS .................................................................... 2
`DOCUMENTS AND OTHER MATERIALS RELIED UPON ......................................... 5
`RELEVANT PATENT LAW AND LEGAL STANDARDS ............................................ 6
`A.
`Date of Invention .................................................................................................... 6
`B.
`Anticipation............................................................................................................. 7
`C.
`Obviousness ............................................................................................................ 7
`D.
`Indefiniteness ........................................................................................................ 10
`E.
`Standard of Proof .................................................................................................. 10
`F.
`Qualification as Prior Art ...................................................................................... 10
`CLAIM CONSTRUCTION .............................................................................................. 14
`V.
`RELEVANT FIELD AND LEVEL OF ORDINARY SKILL IN THE ART .................. 17
`VI.
`VII. OVERVIEW OF THE ’941 PATENT .............................................................................. 18
`VIII. BRIEF SUMMARY OF THE ’941 PATENT PROSECUTION HISTORY ................... 26
`A.
`First Office Action and Applicants’ Response ..................................................... 26
`B.
`Second Office Action and Applicants’ Response ................................................. 27
`C.
`Third Office Action and Applicant’s Response .................................................... 27
`D.
`Notice of Allowance ............................................................................................. 28
`E.
`Patent Owner’s Preliminary Response (“POPR”) in IPR2020-01184 .................. 29
`F.
`Litigation History .................................................................................................. 32
`OVERVIEW OF THE STATE OF ART AT THE TIME OF THE PURPORTED
`INVENTION OF THE ’941 PATENT ............................................................................. 32
`A.
`Architecture of PCs at the Time the ’941 Patent Was Filed ................................. 33
`B.
`Computer Software and Programs at the Time the ’941 Patent Was Filed .......... 35
`Software for PCs, BIOS, and BIOS Memory Areas at the Time the ’941 Patent
`C.
`Was Filed .............................................................................................................. 36
`Symmetric vs. Public-Key Encryption Systems ................................................... 40
`Cryptographic Algorithms .................................................................................... 43
`
`D.
`E.
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`F.
`
`C.
`
`X.
`
`XI.
`XII.
`
`Unique vs. Pseudo-Unique Numbers and Keys At The Time The ’941 Patent Was
`Filed ...................................................................................................................... 47
`Problems and Prior Art Solutions ......................................................................... 52
`G.
`THE ’941 PATENT IS NOT ENTITLED TO A PRIORITY DATE EARLIER THAN
`OCTOBER 2, 1997 ........................................................................................................... 53
`OVERVIEW OF THE ARBAUGH PATENT ................................................................. 56
`THE ARBAUGH PATENT IS PRIOR ART ................................................................... 61
`A.
`The Arbaugh Patent Is, On its Face, Prior Art Under 35 U.S.C. § 102(a). ........... 61
`B.
`The Arbaugh Provisional Shows the Arbaugh Patent Qualifies as Prior Art to the
`’941 Patent at Least as Early as October 2, 1997. ................................................ 61
`Even Assuming the ’941 Patent Were Entitled to a Priority Date Earlier Than
`October 2, 1997, Arbaugh Conceived of His Patent Before March 1997 ............ 72
`XIII. THE ARBAUGH PATENT INVALIDATES ALL ASSERTED CLAIMS OF THE ’941
`PATENT ........................................................................................................................... 78
`A.
`Claim 1 is Anticipated or Rendered Obvious by the Arbaugh Patent .................. 79
`B.
`Claim 2 is Anticipated by the Arbaugh Patent.................................................... 104
`C.
`Claim 3 is Anticipated by the Arbaugh Patent.................................................... 109
`D.
`Claim 6 is Anticipated by the Arbaugh Patent.................................................... 121
`E.
`Claim 7 is Anticipated or Rendered Obvious by the Arbaugh Patent ................ 122
`F.
`Claim 8 is Anticipated by the Arbaugh Patent.................................................... 128
`G.
`Claim 9 is Anticipated by the Arbaugh Patent.................................................... 129
`H.
`Claim 10 is Anticipated by the Arbaugh Patent.................................................. 133
`I.
`Claim 11 is Anticipated by the Arbaugh Patent.................................................. 135
`J.
`Claim 12 is Anticipated or Rendered Obvious by the Arbaugh Patent .............. 136
`K.
`Claim 13 is Anticipated by the Arbaugh Patent.................................................. 138
`L.
`Claim 14 is Anticipated by the Arbaugh Patent.................................................. 139
`M.
`Claim 16 is Anticipated by the Arbaugh Patent.................................................. 141
`XIV. OVERVIEW OF THE JABLON PATENT .................................................................... 143
`XV.
`THE JABLON PATENT IS PRIOR ART ...................................................................... 147
`XVI. THE JABLON PATENT INVALIDATES ALL ASSERTED CLAIMS OF THE ’941
`PATENT ......................................................................................................................... 147
`A.
`Claim 1 is Anticipated by the Jablon Patent ....................................................... 148
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`Claim 2 is Anticipated by the Jablon Patent ....................................................... 164
`B.
`Claim 3 is Anticipated or Rendered Obvious by the Jablon Patent .................... 166
`C.
`Claim 6 is Anticipated by the Jablon Patent ....................................................... 176
`D.
`Claim 7 is Anticipated by the Jablon Patent ....................................................... 178
`E.
`Claim 8 is Anticipated by the Jablon Patent ....................................................... 180
`F.
`Claim 9 is Anticipated by the Jablon Patent ....................................................... 182
`G.
`Claim 10 is Anticipated by the Jablon Patent ..................................................... 185
`H.
`Claim 11 is Anticipated by the Jablon Patent ..................................................... 186
`I.
`Claim 12 is Anticipated by the Jablon Patent ..................................................... 186
`J.
`Claim 13 is Anticipated by the Jablon Patent ..................................................... 187
`K.
`Claim 14 is Anticipated by the Jablon Patent ..................................................... 187
`L.
`Claim 16 is Anticipated by the Jablon Patent ..................................................... 189
`M.
`XVII. OVERVIEW OF THE CHOU PATENT (U.S. PATENT NO. 5,892,906) .................... 191
`XVIII. THE CHOU PATENT IS PRIOR ART .......................................................................... 192
`XIX. THE COMBINATION OF THE ARBAUGH PATENT AND THE CHOU PATENT
`INVALIDATES ALL ASSERTED CLAIMS OF THE ’941 PATENT ........................ 192
`THE COMBINATION OF THE JABLON PATENT AND THE CHOU PATENT
`INVALIDATES ALL ASSERTED CLAIMS OF THE ’941 PATENT ........................ 195
`XXI. OVERVIEW OF THE MIROV PATENT (U.S. PATENT NO. 6,138,236) .................. 197
`XXII. THE MIROV PATENT IS PRIOR ART ........................................................................ 198
`XXIII. THE COMBINATION OF THE ARBAUGH PATENT AND THE MIROV PATENT
`INVALIDATES ALL ASSERTED CLAIMS OF THE ’941 PATENT ........................ 198
`XXIV. THE COMBINATION OF THE JABLON PATENT AND THE MIROV PATENT
`INVALIDATES ALL ASSERTED CLAIMS OF THE ’941 PATENT ........................ 200
`XXV. OVERVIEW OF U.S. PATENT NO. 6,153,835 TO SCHWARTZ............................... 202
`XXVI. OVERVIEW OF “USING SECURE COPROCESSORS,” B. YEE, SCHOOL OF
`COMPUTER SCIENCE, CARNEGIE MELLON UNIVERSITY, 1994 ...................... 204
`A.
`Claim 1 is Rendered Obvious by the Combination of Schwartz and Yee .......... 207
`B.
`Claim 2 Is Rendered Obvious by the Combination of Schwartz and Yee .......... 219
`C.
`Claim 6 Is Rendered Obvious by the Combination of Schwartz and Yee .......... 220
`D.
`Claim 7 Is Rendered Obvious by the Combination of Schwartz and Yee .......... 221
`E.
`Claim 8 Is Rendered Obvious by the Combination of Schwartz and Yee ......... 221
`
`XX.
`
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`Claim 9 Is Rendered Obvious by the Combination of Schwartz and Yee ......... 222
`F.
`Claim 10 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 223
`G.
`Claim 11 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 224
`H.
`Claim 12 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 224
`I.
`Claim 13 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 225
`J.
`Claim 14 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 226
`K.
`Claim 16 Is Rendered Obvious by the Combination of Schwartz and Yee ....... 226
`L.
`Motivation to Combine Schwartz and Yee and/or POSITA knowledge ............ 227
`M.
`OVERVIEW OF THE CHRISTESON PATENT .............................................. 239
`XXVII.
`OVERVIEW OF THE HELLMAN PATENT ................................................... 240
`XXVIII.
`XXIX. HELLMAN IN COMBINATION WITH CHOU OR CHRISTESON INVALIDATES
`CLAIMS 1, 2, 6, 7, AND 11-13 OF THE ’941 PATENT AS OBVIOUS ..................... 246
`A.
`Claim 1 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 246
`Claim 2 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 258
`Claim 6 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 259
`Claim 7 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 260
`Claim 11 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 261
`Claim 12 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 261
`Claim 13 Is Rendered Obvious by Hellman in Combination with Chou or
`Christeson ........................................................................................................... 262
`XXX. SECONDARY CONSIDERATIONS ............................................................................ 262
`XXXI. INCREMENTAL VALUE OF THE ALLEGED INVENTION OF THE ’941 PATENT
`......................................................................................................................................... 266
`XXXII.
`CONCLUSION ................................................................................................... 271
`
`D.
`
`B.
`
`C.
`
`E.
`
`F.
`
`G.
`
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`I.
`
`INTRODUCTION
`
`1.
`
`My name is Suzanne Barber. I have been retained as a technical expert by
`
`Morgan, Lewis & Bockius LLP on behalf of Defendants LG Electronics Inc. and LG Electronics
`
`U.S.A., Inc. (collectively, “LGE”) to provide my opinions regarding the invalidity of claims 1-3,
`
`6-14, and 16 (the “Asserted Claims”) of U.S. Patent No. 6,411,941 (“the ’941 Patent”).
`
`2.
`
`Specifically, I was requested to consider issues regarding invalidity of the
`
`Asserted Claims and specifically address the following topics: the level of skill of persons who
`
`would have worked in the field around the time of the alleged invention; and if the claims are
`
`invalid as anticipated or obvious based on one or more prior art references.
`
`3.
`
`Regarding whether the claims are invalid as anticipated or obvious, I have been
`
`asked to compare the subject matter recited for the Asserted Claims to publications, systems, and
`
`patents that qualify as prior art to the ’941 Patent. I have been asked to express my opinion on
`
`the differences, if any, between the subject matter recited in each of those claims and each of the
`
`foregoing items. To the extent I conclude there are any differences, I have also been asked to
`
`express my opinion on whether the subject matter recited in each of those claims would have
`
`been obvious to a person of ordinary skill in the art in light of the technical information available
`
`to such a person at the time the patent application was filed.
`
`4.
`
`I reserve the right to modify or supplement my opinions, as well as the basis for
`
`my opinions, based on the nature and content of the documentation, data, proof and other
`
`evidence or testimony that the Court, the Plaintiff or its experts may present or based on any
`
`additional discovery or other information provided to me or found by me in this matter.
`
`5.
`
`My opinions in this regard are set forth in this Report and in the accompanying
`
`Appendices.
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`6.
`
`I am being compensated for my time at the rate of $750.00 per hour. This
`
`compensation is not contingent upon my performance, the outcome of this matter, or any issues
`
`involved in or related to this matter.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`7.
`
`I have extensive experience in the field of cybersecurity, artificial intelligence,
`
`information security, privacy, digital identity, digital trust, and software engineering.
`
`8.
`
`I am currently the AT&T Endowed Professor in Electrical and Computer
`
`Engineering at The University of Texas, Founding Director of the Center for Identity at The
`
`University of Texas, and Director of the Master’s Degree Program in Information Security and
`
`Privacy at The University of Texas.
`
`9.
`
`I have over 35 years of experience working in the software industry that began
`
`during my work at the Robotics Institute at Carnegie Mellon University in Pittsburgh, PA and
`
`has been carried through my research as a Professor at The University of Texas and in my role as
`
`a Senior Advisor to the U.S. Department of Homeland Security. My experience relevant to this
`
`case includes my work in software engineering, digital identity, cybersecurity, digital trust and
`
`information security and privacy.
`
`10.
`
`I graduated with honors in 1985 with a B.S. degree in Engineering Science from
`
`Trinity University in San Antonio, TX. After working at the Robotics Institute at Carnegie
`
`Mellon in Pittsburgh, PA, I began my Master’s degree in Electrical Engineering at The
`
`University of Texas at Arlington where I graduated with honors in 1988. I continued my
`
`education and research to uniquely combine software engineering and artificial intelligence to
`
`complete my PhD degree at The University of Texas at Arlington in 1992.
`
`11.
`
`I began my career as a Research Associate at The Robotics Institute at Carnegie
`
`Mellon in Pittsburgh PA where I specialized in artificial intelligence and software engineering to
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`build “smart” robotic systems. In 1986, I began work at the Automation and Robotics Research
`
`Institute (ARRI) in Fort Worth, Texas as a Faculty Associate where I combined expertise in
`
`software engineering, artificial intelligence, and software security for research sponsors such as
`
`the U.S. Air Force, National Institute of Standards and Technology (NIST). SEMATECH, and
`
`the National Science Foundation. While highly unusual for a top tier university to hire within its
`
`own University System, I was fortunate to be hired as an Assistant Tenure Track Professor in the
`
`Electrical and Computer Engineering Department at The University of Texas in Austin in
`
`September 1992. At this time, I launched the Laboratory for Intelligent Processes and Systems
`
`focusing on agent-based artificial intelligence systems for a wide range of applications including
`
`cybersecurity, manufacturing, unmanned aerial vehicles, healthcare, emergency response
`
`management, epidemiological surveillance, maritime domain awareness, and others.
`
`12.
`
`In 1995, I co-founded the Executive Master’s degree program in Software
`
`Engineering for working professionals with the degree granted by the Electrical and Computer
`
`Engineering Department at The University of Texas. Professionals from over 200 companies
`
`received their M.S. degrees from this M.S. degree program while I was Director and responsible
`
`for the academic curriculum, scheduling, fiscal planning, budget oversight, and student academic
`
`counseling. I also taught Requirements Engineering and Software Architecture classes in this
`
`Executive Software Engineering M.S. degree program.
`
`13.
`
`In September of 1997, I was granted tenure and promoted to the rank of Associate
`
`Professor in Electrical and Computer Engineering at The University of Texas. In September
`
`2002, I was promoted to the rank of Professor and awarded the honor of the AT&T Endowed
`
`Professorship. Between 2004 and 2010, I served as the Director of Software Engineering at The
`
`University of Texas where I was responsible for strategic planning for educational and research
`
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`programs, faculty and student recruiting and mentorship. I also served as Director of Software
`
`Engineering Research Center at The University of Texas.
`
`14.
`
`To address the significant challenges posed by the use and abuse of sensitive data
`
`identifying people, devices and organizations, I founded the Center for Identity at The University
`
`of Texas (UT CID) in 2010. The Center for Identity serves as a research center of excellence
`
`empowering individuals and organizations to make well-informed and intentional decisions with
`
`regard to the personal data they collect, use, share, and protect with the aim of increasing trust,
`
`convenience security and privacy. The Center is a public-private partnership bringing together
`
`partners from corporations, government, and academia. As the founding and current Director of
`
`the UT CID, I am responsible for strategic vision, leading research projects, and building
`
`partnerships with faculty, corporate, and government leaders.
`
`15.
`
`In 2015, I founded the Executive M.S. degree program in Information Security
`
`and Privacy (MSISP) for working professionals to provide a multi-disciplinary curriculum
`
`encompassing technology, policy, legal, business and social science disciplines. The MSISP
`
`degree is granted by the School of Information at The University, ranked in the Top 5 in the
`
`Nation. As the MSISP Director, I am responsible for the strategic vision, academic curriculum,
`
`scheduling, fiscal planning, budget oversight, and student academic counseling. In 2019, I was
`
`appointed by the Department of Homeland Security as a Senior Advisor to offer expertise and
`
`guidance related to identity management, biometrics and software engineering. During my time
`
`at The University of Texas from 1992 to present, I have taught Introduction to Electrical and
`
`Computer Engineering, Control Theory, Manufacturing Systems, Requirements Engineering,
`
`Software Architectures, and Information Security and Privacy. My research has been sponsored
`
`by Verizon, U.S. Army, National Science Foundation, Office of Naval Research, State of Texas,
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`U.S. Congress, Central Intelligence Agency, Defense Threat Reduction Agency (DTRA),
`
`Department of Defense, Defense Advanced Research Projects Agency (DARPA), Naval Surface
`
`Warfare Agency, TransUnion, Schlumberger and others. My research has resulted in
`
`publications in the fields of cybersecurity, artificial intelligence, information security, privacy,
`
`digital identity, digital trust, and software engineering in numerous refereed journals, book
`
`chapters and refereed conference proceedings. My research advances at the Center for Identity
`
`have also been featured in popular media articles in Forbes, Austin American Statesman, Dallas
`
`Morning News, Austin Business Journal, San Antonio Express News, Texas CEO Monthly,
`
`Credit Union Times, Christian Science Monitor, CBS Austin, CNBC.com, Wall Street Journal,
`
`and others.
`
`16.
`
`I am a Senior member of the Institute of Electrical and Electronics Engineers
`
`(IEEE), and member of the Advanced Computing Machinery (ACM), American Association for
`
`Artificial Intelligence, American Society of Engineering Education, and Society of Women
`
`Engineers.
`
`17.
`
`18.
`
`I am a lifetime member of the Sigma Xi and Phi Kappa Phi honor societies.
`
`I have submitted declarations in conjunction with IPR, Markman, and litigation. I
`
`have also been retained as a technical expert in other matters subject to confidentiality
`
`agreements, unrelated to any of the parties named in this matter.
`
`19.
`
`Further details on my education and work experience, including a list of all
`
`publications authored by me in the previous ten years and a list of all other cases in which I have
`
`previously given testimony in the past four years are contained in my curriculum vitae (CV),
`
`which is attached to this Report as Appendix A.
`
`III.
`
`DOCUMENTS AND OTHER MATERIALS RELIED UPON
`
`20.
`
`In forming the opinions set forth in this Report, I have reviewed the documents
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`listed Appendix B, in addition to the documents cited in this Report and Appendices that are not
`
`listed there.
`
`21.
`
`Additionally, I have utilized my own experience and expertise, including that
`
`regarding the knowledge and capabilities of a person of ordinary skill in the relevant art in the
`
`timeframe of the claimed priority date of the ’941 Patent.
`
`22.
`
`Further, I am personally and professionally aware of Dr. Scott Nettles, including
`
`by way of having worked with him at the University of Texas. In my opinion, he qualifies as an
`
`expert in the field of network, computer, and software engineering and is knowledgeable of the
`
`level of skill in the art. I have reviewed the Invalidity Expert Report of Dr. Scott Nettles and the
`
`materials cited therein. Where I agree with his reasoning and conclusions, I have incorporated
`
`some or all of his analysis. For some discussions below, I re-confirm that my conclusions are
`
`aligned with Dr. Nettles, and in other places I have also included additional opinions as
`
`appropriate.
`
`23. Moreover, I have reviewed the Declarations of Dr. Eres Zadok and Dr. Andrew
`
`Wolfe in Support of Petitions for Inter Partes Review of the ’941 Patent respectively filed by
`
`Samsung Electronics Co., Ltd. and TCT Mobile (US) Inc. Those Declarations address the
`
`invalidity of the ’941 Patent and some of the references discussed here. Again, where I agree
`
`with their reasoning and conclusions, I have incorporated some or all of their analysis. In other
`
`places I have also included additional opinions as appropriate.
`
`IV.
`
`Relevant Patent Law and Legal Standards
`
`A.
`
`24.
`
`Date of Invention
`
`The ’941 Patent issued from U.S. Patent Application No. 09/164,777 filed
`
`October 1, 1998, and expired on October 1, 2018. The ’941 Patent purports to claim priority to
`
`Israel Application No. 124,571, filed May 21, 1998. I have been asked to use this as the earliest
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`priority date for purposes of my invalidity analysis. However, I note that, in its Final
`
`Infringement Contentions, Ancora claims an earliest priority date for the ’941 Patent of March
`
`31, 1997. As discussed below, it is my opinion that this date is incorrect and the ’941 Patent’s
`
`earliest priority date is May 21, 1998. However, even assuming the 1997 date is accurate, much
`
`of the prior art I rely upon in my opinion would predate Ancora’s alleged priority date.
`
`B.
`
`25.
`
`Anticipation
`
`I am informed and understand that a patent claim is invalid under 35 U.S.C.
`
`§ 1021 if all elements of the claim are disclosed in a single prior art reference.
`
`26.
`
`I understand that to establish anticipation, a prior art reference must disclose
`
`every element of the patent claim at issue, either explicitly or inherently. In addition, the
`
`anticipating reference must enable one skilled in the art to make and use the invention without
`
`undue experimentation.
`
`27.
`
`I understand that a reference that does not expressly disclose a claim limitation
`
`may nevertheless “inherently” disclose the limitation if the matter not expressly disclosed is
`
`necessarily present in the system or method described in the reference. I also understand that the
`
`fact that a certain result or characteristic may occur or be present in the prior art is not sufficient
`
`to establish the inherency of that result or characteristic.
`
`C.
`
`28.
`
`Obviousness
`
`I am informed and understand that a patent claim is invalid under 35 U.S.C. § 103
`
`if the differences between the invention and the prior art are such that the subject matter as a
`
`1 I have been informed and understand that the references in this Report to 35 U.S.C. §§ 102 and
`103 refer to their respective pre-AIA versions. See America Invents Act, P.L. 112-29 (Sept. 16,
`2011) at § 3(n) (amendments to 35 U.S.C. §§ 102 and 103 take effect and apply to applications
`that contain or contained at any time a claim with an effective filing date on or after March 16,
`2013).
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`whole would have been obvious at the time of the invention to a POSITA to which the subject
`
`matter pertains. Obviousness, as has been explained to me, is based on (i) the scope and content
`
`of the prior art, (ii) the differences between the prior art and the claim, (iii) the level of ordinary
`
`skill in the art, and, (iv) any secondary indicia of non-obviousness (e.g., “secondary
`
`considerations” such as commercial success in the market place of the claimed invention), to the
`
`extent that they exist.
`
`29.
`
`I further understand that obviousness may be shown by showing that it would
`
`have been obvious to combine the teachings of more than one item of prior art. In determining
`
`whether a piece of prior art could have been combined with other prior art or with other
`
`information within the knowledge of a person having ordinary skill in the art, the following are
`
`examples of approaches and rationales that may be considered:
`
` Combining prior art elements according to known methods to yield predictable
`results;
` Simple substitution of one known element for another to obtain predictable results;
` Use of a known technique to improve similar devices (methods, or products) in the
`same way;
` Applying a known technique to a known device (method, or product) ready for
`improvement to yield predictable results;
` Applying a technique or approach that would have been obvious to try (choosing
`from a finite number of identified, predictable solutions, with a reasonable
`expectation of success);
` Known work in one field of endeavor may prompt variations of it for use in either the
`same field or a different one based on design incentives or other market forces if the
`variations would have been predictable to a person having ordinary skill in the art;
`and
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` Some teaching, suggestion, or motivation in the prior art that would have led one of
`ordinary skill to modify the prior art reference or to combine prior art reference
`teachings to arrive at the claimed invention.
`I further understand that an invention may be obvious if one of ordinary skill in
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`30.
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`the art, facing a wide range of needs created by developments in the field, would have seen an
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`obvious benefit to the solutions tried by the applicant. When there is a design need or market
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`pressure to solve a problem and there are a finite number of identified, predictable solutions, it
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`may be obvious to a person of ordinary skill to try the known options. If a technique has been
`
`used to improve one device, and a person of ordinary skill in the art would recognize that it
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`would improve similar devices in the same way, using the technique would have been obvious.
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`31.
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`I further understand that a person of ordinary skill in the art is a hypothetical
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`person who is presumed to be aware of all of the relevant art at the time of the invention. The
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`person of ordinary skill is not an automaton, and may be able to fit together the teachings of
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`multiple patents and/or printed publications employing ordinary creativity and the common sense
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`that familiar items may have uses in another context or beyond their primary purposes.
`
`32.
`
`I also understand that when considering the obviousness of a patent claim, one
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`should consider whether a teaching, suggestion, or motivation to combine the references exists
`
`so as to avoid impermissibly applying hindsight when combining or modifying the prior art. I
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`understand this test should not be applied rigidly, but that the test can be important to avoid such
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`hindsight.
`
`33.
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`I also understand that one of ordinary skill in the art must have a reasonable
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`expectation of success in combining or modifying prior art references.
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`34.
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`I also understand that all elements of a claim must be considered in an
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`obviousness analysis.
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`D.
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`35.
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`Indefiniteness
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`I further understand that a patent must “conclude with one or more claims
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`particularly pointing out and distinctly claiming the subject matter which the applicant regards as
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`[the] invention.” 35 U.S.C. § 112, ¶ 2 (pre-AIA). I understand that the indefiniteness standard
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`was recently articulated by the United States Supreme Court in Nautilus, Inc. v. Biosig
`
`Instruments, Inc., 134 S. Ct. 2120 (2014), which I understand held that a “patent is invalid for
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`indefiniteness if its claims, read in light of the specification and the prosecution history, fail to
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`inform, with reasonable certainty, those skilled in the art about the scope of the invention.” I
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`understand that indefiniteness is to be evaluated from the perspective of someone of ordinary
`
`skill in the relevant art at the time the patent was filed, reading the claims in light of the patent’s
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`specification and prosecution history.
`
`E.
`
`36.
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`Standard of Proof
`
`I understand that the standard to prove invalidity in a district court proceeding is
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`by clear and convincing evidence. I understand that this standard is satisfied if that to be proved
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`is highly probable or reasonably certain. T