`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`
`ROKU, INC. and VIZIO, INC.,
`Petitioners
`
`v.
`
`ANCORA TECHNOLOGIES, INC.,
`Patent Owner
`
`__________
`
`
`Case IPR2021-01406
`Patent No. 6,411,941
`
`______________
`
`
`
`
`
`DECLARATION OF DR. DAVID MARTIN
`
`
`
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`TABLE OF CONTENTS
`
`
`List of Exhibits ........................................................................................................... 4
`I.
`Qualifications and Professional Experience .................................................... 7
`II.
`Background of this Matter ............................................................................... 9
`III.
`Summary of Opinions Regarding the Validity of the ’941 Patent .................. 9
`IV. High-Level Description of Materials Studied ...............................................10
`V.
`Relevant Legal Principles ..............................................................................11
`A.
`Burden of Proof ...................................................................................11
`B.
`Anticipation .........................................................................................11
`C.
`Obviousness .........................................................................................14
`D.
`Claim Construction..............................................................................19
`E.
`Abstract Ideas ......................................................................................30
`F.
`The Manner of Rebuttal ......................................................................30
`G.
`The Level of Ordinary Skill in the Art and Person of Ordinary
`Skill in the Art .....................................................................................31
`H. Avoidance of Impermissible Hindsight ..............................................32
`I.
`Requirements for Asserting Obviousness ...........................................33
`VI. Summary of the ’941 Patent ..........................................................................34
`VII.
`’941 Patent Prosecution History ....................................................................46
`A. Ginter ...................................................................................................46
`B.
`Goldman ..............................................................................................50
`C.
`Beeble Hardware Stamping TechnologyTM Overview ........................52
`D. Misra ....................................................................................................52
`E.
`Ewertz ..................................................................................................56
`VIII. Reexamination of the ’941 Patent .................................................................64
`A.
`Schwartz ..............................................................................................65
`B.
`Lewis ...................................................................................................70
`IX. Claim Construction ........................................................................................74
`A.
`“Agent” ................................................................................................74
`The References Addressed in the Wolfe Declaration ...................................80
`A. Hellman ...............................................................................................80
`B.
`Chou ....................................................................................................88
`
`X.
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`Schneck................................................................................................91
`C.
`XI. General Comments on the Wolfe Declaration...............................................94
`A.
`Frequent Use of Impermissible Hindsight ..........................................94
`B.
`Inadequacy of Addressing the Expectation of Success .......................95
`XII. Rebuttal to Dr. Wolfe’s Opinions Regarding the ’941 Patent .......................96
`A.
`The Combination of Hellman, Chou, and/or Schneck Does Not
`Invalidate the Asserted Claims of the ’941 Patent ..............................97
`1.
`Using an Agent to Set Up a Verification Structure in the
`Erasable, Non-Volatile Memory of the BIOS ..........................98
`Alleged Memory of the BIOS .................................................109
`Alleged Encrypted Verification Structure ..............................117
`a.
`Alleged Public-Key Variant .........................................118
`b.
`Alleged Non-Public-Key Variant .................................121
`No Motivation to Combine with Chou ...................................123
`Dependent Claims ...................................................................124
`c.
`Claim 2 ..........................................................................124
`d.
`Claim 3 ..........................................................................124
`e.
`Claim 6 ..........................................................................126
`f.
`Claim 7 ..........................................................................126
`g.
`Claim 8 ..........................................................................127
`h.
`Claim 9 ..........................................................................127
`i.
`Claim 10 ........................................................................128
`j.
`Claim 11 ........................................................................128
`k.
`Claim 12 ........................................................................129
`l.
`Claim 13 ........................................................................131
`m.
`Claim 14 ........................................................................131
`n.
`Claim 16 ........................................................................132
`
`2.
`3.
`
`4.
`5.
`
`
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`List of Exhibits
`
`EXHIBIT NO. TITLE
`1001
`U.S. Patent No. 6,411,941 to Mullor et al. (“’941 Patent”)
`Image File Wrapper of U.S. Patent No. 6,411,941 (“File
`1002
`History”)
`1003
`Declaration of Andrew Wolfe, Ph.D. (“Wolfe Decl.”)
`1004
`U.S. Patent No. 4,658,093 (“Hellman”)
`1005
`U.S. Patent No. 5,892,906 (“Chou”)
`1006
`U.S. Patent No. 5,933,498 (“Schneck”)
`Scheduling Order, Ancora Techs., Inc. v. TCT Mobile (US), Inc.,
`1007
`No. 8:19-cv-2192 (C.D. Cal. Mar. 17, 2020) (ECF No. 34)
`In re: Coronavirus Public Emergency, Order Concerning Phased
`Reopening of the Court, General Order No. 20-09, United States
`District Court for the Central District of California, Aug. 6, 2020
`Civil Docket, Ancora Techs., Inc. v. Sony Mobile Commc’ns AB,
`No. 1:19-cv-01703 (D. Del.)
`Civil Docket, Ancora Techs., Inc. v. Lenovo Grp. Ltd., No. 1:19-
`cv-01712 (D. Del.)
`Claim Construction Order, Ancora Techs., Inc. v. Apple Inc., No.
`4:11-cv-06357 (N.D. Cal. Dec. 31, 2012) (ECF No. 107).
`Final Claim Constructions of the Court, Ancora Techs., Inc. v.
`LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. June 2, 2020)
`(ECF No. 69).
`Supplemental Claim Construction Order, Ancora Techs., Inc. v.
`LG Elecs., Inc., No. 1:20-cv-00034 (W.D. Tex. Aug. 19, 2020)
`(ECF No. 93).
`Joint Claim Construction and Prehearing Statement, Ancora
`Techs., Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-2192 (C.D.
`Cal. July 17, 2020) (ECF No. 49)
`European Patent Application No. EP 0766165A2 (“’165
`Application”)
`U.S. Patent No. 5,724,425 (“’425 Patent”)
`U.S. Patent No. 6,138,236 (“’236 Patent”)
`U.S. Patent No. 5,802,592 (“’592 Patent”)
`U.S. Patent No. 5,835,594 (“’594 Patent”)
`Civil Minutes re Telephonic Markman Hearing, Ancora Techs.,
`Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-02192 (C.D. Cal.
`
`1015
`1016
`1017
`1018
`1019
`1020
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
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`
`
`1021
`
`1022
`1023
`
`1024
`
`
`2001
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`2008
`2009
`
`2010
`
`2011
`2012
`
`Nov. 12, 2020) (ECF No. 66) (attaching “The Court’s Final
`Ruling on Claim Construction (Markman) Hearing,” but also
`ordering further meet and confer on subject).
`Civil Minutes re Telephonic Markman Hearing, Ancora Techs.,
`Inc. v. TCT Mobile (US), Inc., No. 8:19-cv-02192 (C.D. Cal.
`Nov. 19, 2020) (ECF No. 69) (confirming no change to “The
`Court’s Final Ruling on Claim Construction (Markman)
`Hearing”).
`Complaint, Ancora Techs., Inc. v. TCL Corp., et al., No. 4:19-
`cv-00624 (E.D. Tex. Aug. 27, 2019) (ECF No. 1)
`U.S. Patent No. 5,734,819 (“Lewis”)
`File Wrapper of Ex Parte Reexamination of U.S. Patent No.
`6,411,941, Control No. 90/010,560 (“’560 Reexam File
`Wrapper”)
`
`Microsoft Corporation’s Request for Ex Parte Reexamination
`Image File Wrapper, Control No. 90010560
`Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732 (Fed. Cir. 2014)
`Deposition Excerpts of Jon Weissman, Ancora Techs., Inc. v.
`HTC America, Inc., Case No. 2:16-cv-01919 (W.D. Wa. Sep. 9,
`2019)
`Declaration of Ian Jestice, Ancora Techs., Inc. v. HTC America,
`Inc., Case No. 2:16-cv-01919 (W.D. Wa. Aug. 26, 2019)
`Brief of Appellees HTC America, Inc. and HTC Corporation,
`Ancora Techs., Inc. v. HTC America, Inc., HTC Corp., Case No.
`18-1404 (Fed. Cir. Apr. 23, 2018)
`Declaration of Jon Weissman, Ancora Techns., Inc. v. HTC
`America, Inc., Case No. 2:16-cv-01919 (W.D. Wa. Sep. 4, 2019)
`Terplan, Kornel, Morreale, Patricia, THE TELECOMMUNICATIONS
`HANDBOOK, CRC Press, 2000
`COMPUTER USER’S DICTIONARY, Microsoft Press, 1998
`MICROSOFT COMPUTER DICTIONARY FOURTH EDITION, Microsoft
`Press,1999
`PC MAGAZINE ENCYCLOPEDIA, available at
`https://www.pcmag.com/encyclopedia (excerpt, definition of
`“Agent”)
`U.S. Patent No. 6,411,941 File History with Beeble White Paper
`Joint Claim Construction Chart, Ancora Techs., Inc. v. TCT
`Mobile (US) Inc., Huizhou TCL Mobile Commc’n Co., Ltd., and
`
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`
`2013
`
`2014
`2015
`
`2016
`
`2017
`
`2018
`2019
`2020
`2021
`
`2022
`
`2023
`
`2024
`2025
`2026
`2042
`
`2043
`
`2044
`2045
`
`2046
`
`Shenzhen TCL Creative Cloud Tech. Co., Ltd., Case No. 8:19-
`cv-02192 (Dkt. #49, 49-1, 49-2)
`Declaration of Dr. David Martin, Ph.D., Sony Mobile Commc’ns
`AB, Sony Mobile Commc’ns, Inc., Sony Elecs. Inc., and Sony
`Corp. v. Ancora Techs., Inc., IPR2021-00663, Ex. 2015 (PTAB
`Apr. 23, 2021)
`U.S. Patent No. 6,189,146 (Misra)
`U.S. Patent No. 5,479,639 (Ewertz)
`Decision Denying Institution of Inter Partes Review, Samsung
`Electronics Co., Ltd. and Samsung Electronics America, Inc. v.
`Ancora Technologies, Inc., IPR2020-01184
`Declaration of Ian Jestice, Ancora Technologies Inc. v. LG
`Electronics Inc., LG Electronics U.S.A. Inc., Samsung
`Electronics Co., Ltd., and Samsung Electronics America, Inc.,
`Case No. 1:20-cv-00034 (Dkt. # 44-8)
`Declaration of Dr. David Martin (May 3, 2022)
`U.S. Patent No. 5,892,900 (Ginter)
`U.S. Patent No. 5,734,819 (Lewis)
`U.S. Patent No. 6,153,835 (Schwartz)
`Ancora Techs. Inc. v. Apple, inc., Case No. 4:11-cv-06357 (Dkt.
`# 171-3) [Apple Inc.’s N.D. Cal. L.R. 3-3 (Invalidity)
`Disclosures]
`Petition, HTC Corp. v. Ancora Techs. Inc., Case No. CBM2017-
`00054, Paper 1 (PTAB May 26, 2017)
`Institution Decision, HTC Corp. v. Ancora Techs. Inc., Case No.
`CBM2017-00054, Paper 7 (PTAB Dec. 1, 2017)
`Croucher, “The BIOS Companion” (1997) (Excerpts)
`Transcript of Deposition of Dr. Andrew Wolfe (April 22, 2022)
`Barron’s Dictionary of Computing and Internet Terms (5th Ed.
`1996)
`Decision Granting Institution, Case No. IPR2020-01609, Paper
`7 (PTAB Feb. 16, 2021)
`Free On-Line Dictionary of Computing (June 6, 1999), available
`at http://foldoc.org/bios
`U.S. Patent No. 5,684,951 (Goldman)
`Paul C. Kocher, Timing Attacks on Implementations of Diffie-
`Hellman, RSA, DSS, and Other Systems, Proceedings of 16th
`Annual Int’l Cryptology Conf. (Aug. 18–22, 1996)
`
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`I, David Martin, hereby declare as follows:
`
`1.
`
`I am making this declaration at the request of Patent Owner, Ancora
`
`Technologies, Inc., to investigate and opine on certain issues relating to the Inter
`
`Partes review of U.S. Patent No. 6,411,941 (“the ’941 patent”). The Petition requests
`
`that the Patent Trial and Appeal Board (“PTAB” or “Board”) review and cancel
`
`claims 1–3, 6–14, and 16 of the ’941 patent.
`
`2.
`
`I am being compensated for my work in this matter at a rate of $525 per
`
`hour. My compensation in no way depends on the outcome of this proceeding.
`
`3.
`
`In preparation of this declaration, I have studied the exhibits as listed in
`
`the Exhibit List shown above.
`
`4.
`
`In forming the opinions expressed below, I have considered:
`
`a. The documents listed above as well as additional patents and
`
`documents referenced herein;
`
`b. The relevant legal standards, as described further below, and any
`
`additional documents cited in the body of this declaration; and
`
`c. My knowledge and experience based upon my work and study in this
`
`area as described below.
`
`Qualifications and Professional Experience
`
`I have provided my full background in the curriculum vitae that is
`
`I.
`
`5.
`
`attached to this Declaration as Appendix A.
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`6.
`
`In this report, I respond to the expert opinions provided by Dr. Andrew
`
`Wolfe in the declaration (“Wolfe Declaration” or “Ex. 1003”) submitted in IPR2021-
`
`01406 and filed by Roku, Inc. and Vizio, Inc. (hereinafter “Roku/Vizio” or
`
`“Petitioners”). I am submitting a similar analysis of Dr. Wolfe’s substantively
`
`identical declaration in IPR2021-01406 filed by Roku, Inc. and Vizio, Inc.
`
`(hereinafter “Roku/Vizio”). I responded to a similar declaration submitted by Dr.
`
`Wolfe and filed as Ex. 1003 in IPR2020-01609, in the context of my previous work
`
`in IPR2021-00663.
`
`7.
`
`This declaration is based on my study of the material that was available
`
`to me at the time of its writing. I reserve the right to update, supplement, or amend
`
`this rebuttal expert report in view of additional information obtained through
`
`discovery or other information that might become available between now and trial
`
`that is significant to the opinions set forth in herein.
`
`8.
`
`In this declaration, due to my understanding of the law, I am not
`
`offering an opinion regarding each cited reference or combination of references
`
`beyond responding to the opinions and evidence identified in the Wolfe Declaration.
`
`Further, I have not responded to each and every assertion made in the Wolfe
`
`Declaration and instead have focused on what I consider to be the clearest faults in
`
`its arguments and proofs. My decision not to address an issue or argument thus
`
`should not be understood as a tacit admission that I agree with or do not dispute the
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`positions of Dr. Wolfe or of the Nintendo or Roku/Vizio petitioners.
`
`9.
`
`I further note that, except where stated otherwise, I have assumed for
`
`purposes of my analysis that each reference or combination cited in the Wolfe
`
`Declaration actually constitutes prior art.
`
`II. Background of this Matter
`
`10.
`
`It is my understanding that Petitioners filed a Petition in IPR2021-
`
`01406, requesting an inter partes review (“IPR”) of claims 1−3, 6−14, and 16 (“the
`
`Challenged Claims”) of U.S. Patent No. 6,411,941. It is my understanding that
`
`Ancora filed a preliminary response to the Petition, which cited my declaration from
`
`IPR2021-00663. It is further my understanding the Patent Trial and Appeal Board
`
`instituted trial based on the Petition on February 22, 2022.
`
`III. Summary of Opinions Regarding the Validity of the ’941
`Patent
`
`11.
`
`In the Wolfe Declaration, Dr. Wolfe opined that claims 1–2, 11, and 13
`
`of the ’941 Patent are invalid as obvious based on U.S. Patent No. 4,658,093 (Ex.
`
`1004, hereinafter “Hellman”) in view of U.S. Patent No. 5,892,906 (Ex. 1005,
`
`hereinafter “Chou”), and that claims 1–3, 6–14, and 16 of the ’941 Patent are invalid
`
`as obvious based on Hellman in view of Chou and U.S. Patent No. 5,933,498 (Ex.
`
`1006, hereinafter “Schneck”). (Ex. 1003 at ¶ 27.)
`
`12.
`
`I disagree with many of Dr. Wolfe’s opinions. In this declaration, I
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`provide my opinions in response to the various allegations of invalidity made in the
`
`Wolfe Declaration, as well as the bases for my opinions. Based on my review of the
`
`’941 patent, the Wolfe Declaration, and the references addressed therein, it is my
`
`opinion that the references cited by Dr. Wolfe do not disclose every element of the
`
`Challenged Claims.
`
`13. All of the opinions contained within this declaration are based on my
`
`own personal knowledge and professional judgment. If called as a witness in this
`
`matter, I am prepared to testify about these opinions.
`
`IV. High-Level Description of Materials Studied
`
`14. Before writing this declaration, I studied the ’941 patent and its file
`
`history. I also studied the Wolfe Declaration and the references cited therein. I
`
`further considered additional material noted in this report.
`
`15.
`
`I have also reviewed claim constructions applied in related IPRs and
`
`district court lawsuits. (Ex. 1011, Ex. 1012, Ex. 1013, Ex. 1020, Ex. 1021, Ex. 2043.)
`
`16. For all terms found in the Challenged Claims, I have used the plain and
`
`ordinary meaning of the term as it would be understood by a person of ordinary skill
`
`in the art as of the time of the invention of the ’941 patent, as discussed below.
`
`17.
`
`I conclude that the Challenged Claims of the ’941 patent are not invalid
`
`in view of the asserted Hellman and Chou references, in the combination asserted
`
`by Dr. Wolfe, as discussed further below.
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`V. Relevant Legal Principles
`
`18. Although I am not an attorney, I have been advised by the attorneys for
`
`Ancora of certain legal principles as they relate to forming opinions as to the issues
`
`of validity of the Asserted Claims. I have applied this law to the facts set forth in this
`
`report in rendering my opinions. This section of my expert report provides my
`
`understanding of the legal principles that I have used in formulating my opinions.
`
`A. Burden of Proof
`
`19.
`
`It is my understanding that the petitioner in an inter partes review
`
`proceeding has the burden of proving a proposition of unpatentability by a
`
`preponderance of the evidence. I understand this to require the petitioner to show
`
`that there is a greater than 50% chance that the challenged claims are unpatentable.
`
`B. Anticipation
`
`20.
`
`I understand that “anticipation” under 35 U.S.C. § 102 exists only if a
`
`single prior art reference or product discloses or contains, expressly or inherently,
`
`each and every limitation of the claim at issue. In other words, every limitation of
`
`the claim must identically appear in a single prior art reference for the reference to
`
`anticipate that claim.
`
`21.
`
`I also understand that all elements of the claim must be disclosed in the
`
`reference as they are arranged in the claim. I also understand that, to be considered
`
`anticipatory, the prior art reference must be enabling and must describe the
`
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`patentee’s claimed invention sufficiently to have placed it in the possession of a
`
`person of ordinary skill in the field of invention. I further understand that the relevant
`
`standards for what constitutes “prior art,” for purposes of anticipation under the
`
`relevant paragraphs of §102, are as follows (emphases added):
`
`(a) [T]he invention was known or used by others in this country, or
`patented or described in a printed publication in this or a foreign
`country, before the invention thereof by the applicant for patent, or
`
`(b) [T]he invention was patented or described in a printed publication
`in this or a foreign country or in public use or on sale in this country,
`more than one year prior to the date of the application for patent in the
`United States, or
`
`. . .
`
`(e) [T]he invention was described in—(1) an application for patent,
`published under section 122(b), by another filed in the United States
`before the invention by the applicant for patent or (2) a patent granted
`on an application for patent by another filed in the United States
`before the invention by the applicant for patent, except that an
`international application filed under the treaty defined in section
`351(a) shall have the effects for the purposes of this subsection of an
`application filed in the United States only if the international
`application designated
`the United States and was published
`under Article 21(2) of such treaty in the English language
`
`. . .
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`(g)(2) [B]efore such person’s invention thereof, the invention was
`made in this country by another inventor who had not abandoned,
`suppressed, or concealed it. In determining priority of invention under
`this subsection, there shall be considered not only the respective dates
`of conception and reduction to practice of the invention, but also the
`reasonable diligence of one who was first to conceive and last to reduce
`to practice, from a time prior to conception by the other.
`
`22. To be “known or used by others in this country” under § 102(a), the
`
`knowledge or use of the invention must be accessible to the public. If a process is
`
`used in secret, and if the public is unable to learn the process by examining the
`
`product that is eventually sold, then that process is not publicly accessible.
`
`23.
`
`I understand that a “public use” under 35 U.S.C. § 102(b) may be
`
`established by showing a public, non-secret, non-experimental use of the invention
`
`in the United States prior to the critical date. Use of an invention may be public
`
`where it is exposed or demonstrated to persons other than the inventor, who are under
`
`no obligation of secrecy and where there is no attempt to keep the device from the
`
`public.
`
`24.
`
`I understand that, for purposes of § 102, the term “printed publication”
`
`means a publication that is sufficiently accessible to the public interested in the art.
`
`I understand that the critical factor for determining whether a reference constitutes a
`
`“printed publication” under § 102 is “public accessibility.” I further understand that
`
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`a reference is “publicly accessible” only if Petitioners make “a satisfactory showing
`
`that such document has been disseminated or otherwise made available to the extent
`
`that persons interested and ordinarily skilled in the subject matter or art, exercising
`
`reasonable diligence, can locate it and recognize and comprehend therefrom the
`
`essentials of the claimed invention without the need of further research or
`
`experimentation.” Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374, 1378 (Fed.
`
`Cir. 2006) (quoting I.C.E. Corp. v. Armco Steel Corp., 250 F. Supp. 738, 743
`
`(S.D.N.Y. 1966)).
`
`C. Obviousness
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`25.
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`I understand that, in order to be considered as “prior art” for purposes
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`of the § 103 obviousness inquiry, a reference must first qualify as “prior art” under
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`one of the definitions stated above in the context of § 102.
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`26.
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`In order to be considered as “prior art” for purposes of the § 103
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`obviousness inquiry, a reference must also be “analogous” to the Patent-in-Suit. I
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`understand that a reference is “analogous” if (1) the reference is from the same field
`
`of endeavor as the claimed invention (even if it addresses a different problem); or
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`(2) the reference is reasonably pertinent to the problem faced by the inventor (even
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`if it is not in the same field of endeavor as the claimed invention).
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`27.
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`I understand that the relevant standard for obviousness is as follows:
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`A patent may not be obtained though the invention is not identically
`disclosed or described as set forth in section 102 of this title, if the
`differences between the subject matter sought to be patented and the
`prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary
`skill in the art to which said subject matter pertains. Patentability shall
`not be negatived by the manner in which the invention was made.
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`35 U.S.C. § 103(a) (pre-America Invents Act); Manual of Patent Examining
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`Procedure § 2141.
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`28. Stated another way, to show that a patent is “obvious” based on an
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`alleged prior art reference or a combination of such references, it must be shown that
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`a person of ordinary skill in the art would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention, and that such
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`person of ordinary skill in the art would have had a reasonable expectation of success
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`in doing so. To do this, a Defendant must show how and why a skilled artisan would
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`have had a reason to combine the interrelated teachings of the prior art references.
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`29. Petitioners may show that a claim is invalid for obviousness under 35
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`U.S.C. § 103 if they demonstrate that two or more prior art references in combination
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`disclose, expressly or inherently, every claim limitation so as to render the claim, as
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`a whole, obvious. Alternatively, Petitioners may show that a claim is invalid for
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`obviousness under 35 U.S.C. § 103 if a single prior art reference combined with the
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`knowledge of one of ordinary skill in the art discloses every claim limitation so as
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`to render the claim, as a whole, obvious.
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`30.
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`It is my understanding that in assessing the obviousness of claimed
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`subject matter, one should evaluate obviousness over the prior art from the
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`perspective of one of ordinary skill in the art at the time that invention was made
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`(and not from the perspective of either a layman or a genius in that art). The question
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`of obviousness is to be determined based on:
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`(a) The scope and content of the prior art;
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`(b) The difference or differences between the subject matter of the
`claim and the prior art (whereby in assessing the possibility of
`obviousness one should consider the manner in which a patentee and/or
`a Court has construed the scope of a claim);
`
`(c) The level of ordinary skill in the art at the time of the alleged
`invention of the subject matter of the claim; and,
`
`(d) Any relevant objective factors (the “secondary considerations”)
`indicating non-obviousness. It is also my understanding that the United
`States Supreme Court clarified the law of obviousness in KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398 (2007) (“KSR” herein). I have read that
`opinion and incorporate it here by reference. Based on KSR, it is my
`understanding that to determine whether it would have been obvious to
`combine known elements in a manner claimed in a patent, one may
`consider such things as the interrelated teachings of multiple patents,
`the effects of demands known to the design community or present in
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`the marketplace, and the background knowledge of one with ordinary
`skill in the art. The secondary considerations at issue may include
`commercial success of a product using the invention, if that commercial
`success is due to the invention; long-felt need for the invention;
`evidence of copying of the claimed invention; industry acceptance;
`initial skepticism; failure of others; and praise of the invention.
`
`31.
`
`I also understand that while an analysis of any teaching, suggestion, or
`
`motivation to combine elements from different prior art references is useful in an
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`obviousness analysis, the overall inquiry must be expansive and flexible.
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`32.
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`I further understand that it is impermissible to use a hindsight
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`reconstruction of references to reach the claimed invention without any explanation
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`as to how or why the references would be combined to produce the claimed
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`invention.
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`33. Moreover, I understand that a patent composed of several elements is
`
`not proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art. But multiple prior art references or elements
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`may, in some circumstances, be combined to render a patent claim obvious. I
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`understand that I should consider whether there is an “apparent reason” to combine
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`the prior art references or elements in the way the Challenged Claim does. Requiring
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`a reason for the prior art combination protects against distortion caused by hindsight.
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`Along the same lines, one cannot use the Patent-in-Suit as a blueprint to piece
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`together the prior art in order to combine the right ones in the right way as to create
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`the claimed invention(s).
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`34. To determine whether there is such an “apparent reason” to combine
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`the prior art references or elements in the way that a Challenged Claim does, it may
`
`be necessary to look to the interrelated teaching of multiple references, to the “effects
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`of demands known to the design community or present in the marketplace, and to
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`the background knowledge possessed by a person having ordinary skill in the art.”
`
`KSR at 418.
`
`35.
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`I also understand that when the prior art teaches away from combining
`
`prior art references or certain known elements, discovery of a successful means of
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`combining them is more likely to be non-obvious. A prior art reference may be said
`
`to teach away from a claim when a person of ordinary skill, upon reading the
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`reference, would be discouraged from following the path set out in the claim or
`
`would be led in a direction divergent from the path that was taken by the claim.
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`Additionally, a prior art reference may teach away from a claimed invention when
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`substituting an element within that prior art reference for a claim element would
`
`render the claimed invention inoperable.
`
`36.
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`It is my further understanding that given the presumption that an
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`allowed patent claim is valid, in order to assert that an allowed patent claim is
`
`invalidated by one or more prior art references, it is necessary to show that a
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`reference (or an appropriate combination of references):
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`(a) Is (are) properly considered as being prior art to the patent
`containing the claim, and
`
`(b) Discloses (disclose) each and every limitation of that claim either
`expressly or inherently.
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`D. Claim Construction
`
`37. To determine whether the Challenged Claims are valid in light of the
`
`prior art, it is necessary to understand the meaning of the various claim terms. I
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`understand that claims of a patent are to be construed based on their claim language,
`
`the patent’s specification, and the patent’s file history. I understand that one also
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`may look at extrinsic evidence to help decipher the meaning and construction of the
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`claims, including, but not limited to, sources such as appropriate dictionaries, the
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`general knowledge of one skilled in the art, treatises, white papers, relevant journals,
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`etc., as long as that extrinsic evidence does not contradict the patent’s claims, file
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`history, or specification.
`
`38.
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`I further understand that a patentee may choose to be his/her own
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`lexicographer and define a term differently tha