`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`
`SAMSUNG ELECTRONICS CO., LTD.
`Petitioner
`
`v.
`
`
`HUAWEI TECHNOLOGIES CO., LTD.
`Patent Owner
`
`___________________
`
`Case IPR2017-TBD
`Patent No. 8,885,587
`___________________
`
`
`
`
`
`
`
`
`PETITIONER’S EXHIBIT 1003
`DECLARATION OF DAVID LYON, PH.D.
`
`
`
`
`
`Samsung Exhibit 1003
`
`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`Page
`
`PROFESSIONAL BACKGROUND ............................................................... 1
`
`SCOPE OF THE ENGAGEMENT ................................................................. 7
`
`III. LEGAL STANDARD ..................................................................................... 9
`
`A.
`
`B.
`
`C.
`
`Claim Interpretation .............................................................................. 9
`
`Prior Art ............................................................................................... 11
`
`Anticipation ......................................................................................... 12
`
`D. Obviousness ......................................................................................... 12
`
`E.
`
`Date of Invention ................................................................................. 17
`
`IV. BACKGROUND OF THE TECHNOLOGY ................................................ 18
`
`A.
`
`B.
`
`C.
`
`3GPP Organization .............................................................................. 19
`
`Network Architecture for 3GPP Wireless Telephony ......................... 22
`
`Downlink Scheduling .......................................................................... 25
`
`D. Hybrid Automatic Repeat Request (“HARQ”) ................................... 27
`
`E.
`
`Carrier Aggregation ............................................................................. 29
`
`V.
`
`THE ’587 PATENT ....................................................................................... 31
`
`VI. PROSECUTION HISTORY OF THE ’587 PATENT .................................. 35
`
`A. USPTO Examination ........................................................................... 36
`
`VII. CLAIM INTERPRETATION OF THE ’587 PATENT................................ 38
`
`A.
`
`“system-linked downlink component carrier” (Claims 3-5,
`9-11) .................................................................................................... 38
`
`B.
`
`“non-system-linked downlink component carrier” (Claims 3, 9) ....... 39
`
`VIII. OVERVIEW OF THE PRIOR ART ............................................................. 39
`
`A.
`
`B.
`
`C.
`
`Baldemair ............................................................................................ 40
`
`TS 36.213 ............................................................................................ 44
`
`Damnjanovic ....................................................................................... 46
`
`IX. CLAIMS 3-5 AND 9-11 OF THE ’587 PATENT ARE OBVIOUS IN
`VIEW OF THE PRIOR ART ........................................................................ 47
`
`A.
`
`Baldemair Renders Obvious Claims 3-5 and 9-11 .............................. 48
`
`
`
`
`
`Samsung Exhibit 1003, Page i
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`

`

`
`
`B.
`
`C.
`
`Baldemair In View of TS 36.213 Renders Obvious Claims 3-5
`and 9-11 ............................................................................................... 74
`
`Damnjanovic In View of Baldemair Renders Obvious Claims
`3-5 and 9-11 ......................................................................................... 85
`
`X.
`
`CONCLUSION ............................................................................................ 103
`
`
`
`
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`Samsung Exhibit 1003, Page ii
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`

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`
`
`I, David Lyon, do hereby declare and say as follows:
`
`1.
`
`I have been asked to provide testimony as to what one of ordinary
`
`skill in the art would have understood with respect to the patent at issue and
`
`various prior art. I provide this testimony below.
`
`I.
`
`PROFESSIONAL BACKGROUND
`
`2.
`
`I have personal knowledge of the facts contained in this Declaration,
`
`am of legal age, and am otherwise competent to testify.
`
`3.
`
`I hold three degrees in Electrical Engineering from the Massachusetts
`
`Institute of Technology (“MIT”): a Bachelor of Science and Master of Science,
`
`both earned in June of 1970, and a Doctor of Philosophy (Ph.D.) earned in
`
`September of 1972.
`
`4.
`
`At MIT, I was awarded a Hertz Foundation fellowship, which
`
`provided full financial support during my entire graduate education. In 1974,
`
`while employed full time in industry, I accepted an invitation from MIT’s
`
`Department of Electrical Engineering to teach a graduate level course in
`
`mathematical communication theory. My original notes and exercises on practical
`
`methods in digital telecommunications were used by subsequent teachers of that
`
`subject at MIT.
`
`5.
`
`I have more than forty years of industrial experience that began with
`
`cooperative work assignments arranged through MIT’s co-op work/study program
`
`
`
`
`
`Samsung Exhibit 1003, Page 1
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`

`

`
`
`then known as Course VI-2-A. My three assignments ran from 1967 through 1969
`
`at three different facilities of AT&T’s Bell Laboratories. My first professional
`
`publication resulted from my work in 1969 at Bell Labs’ Murray Hill Facility.
`
`This publication dealt with certain challenging aspects of using pulsed laser light
`
`sources for long haul telecommunications.
`
`6.
`
`From 1972 through 1981, I worked in dual roles as both Director of
`
`Research and Development and Director of Product Management for Intertel, Inc.,
`
`a pioneering company in the field of telephone line communications, which was
`
`headquartered in Massachusetts. The products that my development group
`
`produced set new worldwide benchmarks in the field, including the design and
`
`production of real-time network control systems capable of monitoring and
`
`correcting faults in complex interactive data networks.
`
`7.
`
`Starting in 1982, with my appointment as a Director of Engineering at
`
`Linkabit, a wholly owned division of M/A-Com, Inc., located in San Diego,
`
`California, I became intensely focused on radio-linked (also called “RF” for radio
`
`frequency) digital communications. From 1982 to 1987, the groups that I led
`
`designed and introduced to the industry the first full-duplex, satellite-based, digital
`
`communication systems capable of fully replacing alternative land-based
`
`transmission media. Since we were inventing a new type of wide area networking
`
`system we had to reimagine and create an entire protocol stack along with the
`
`
`
`
`
`Samsung Exhibit 1003, Page 2
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`

`

`
`
`related hardware technologies. At the physical, media access control (MAC), and
`
`transport layers we successfully innovated the routing, addressing, security,
`
`multiplexing, and media conversion and compression techniques that were
`
`required. Our first customer for these systems, which were comprised of so-called
`
`“Very Small Aperture Satellite Systems (“VSAT’s”), was the world market leader
`
`in oil exploration services, Schlumberger Limited. Later, with further refinements
`
`that we made to the networking technologies and the deliverable products, we
`
`captured many Fortune 100 companies as customers, including Wal-Mart, Exxon,
`
`and Southland Corporation.
`
`8. While at Linkabit, I also served as a technical consultant to other
`
`product development groups. One of the projects to which I contributed was a
`
`digital wireless broadband system designed for International Mobile Machines
`
`(IMM). IMM was a predecessor of InterDigital, Inc., a company whose
`
`intellectual property figures prominently in the current cellular industry.
`
`9.
`
`In 1987, along with four co-founders, I started Pacific Communication
`
`Sciences, Inc. (“PCSI”). I served as the CEO from our inception until 1996 and
`
`stayed very active in both technical and product management. During that period,
`
`PCSI became well known for its innovative and pioneering work in digital
`
`telecommunications. In 1993 we merged with a public company, Cirrus Logic
`
`
`
`
`
`Samsung Exhibit 1003, Page 3
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`

`

`
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`Incorporated, and continued to operate PCSI as a wholly owned subsidiary of
`
`Cirrus Logic.
`
`10. While at PCSI we were retained and funded by McCaw Cellular
`
`Communications, Inc. to help create the world’s first operational digital packet
`
`data system to operate over cellular communication channels. This system was
`
`named Cellular Digital Packet Data (CDPD), and PCSI became a leading provider
`
`of the base station equipment used by cellular carriers to provide CDPD data
`
`services to their subscribers. Two of our customers were AT&T Wireless (who
`
`had acquired McCaw Cellular in 1994) and Bell Atlantic Mobile Network (later
`
`merged into Verizon Wireless in 2004).
`
`11. PCSI also was retained by DDI Corporation and Kyocera, both of
`
`Japan, to help create their innovative Personal Handyphone Service (PHS) in
`
`Japan, a micro-cellular personal communication system. Starting in 1991, PCSI
`
`devised and perfected the system design and subsystem specifications for this
`
`mobile system, and later became a leading supplier of chipsets for PHS handsets
`
`and software for DDI’s base stations. Starting in 1995, we shipped millions of
`
`handset chipsets and supplied software to tens of thousands of PHS base stations.
`
`12.
`
`In 1996, I began my consulting company, Sage Strategies,
`
`(www.sagestrategies.net), which I continue to operate today. My assignments
`
`have included both technical and management work. From 1998 to 2008, I served
`
`
`
`
`
`Samsung Exhibit 1003, Page 4
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`

`

`
`
`first as CEO of Silicon Wave, and then subsequently as a Vice President of RF
`
`MicroDevices (“RFMD”, now called Qorvo), which acquired Silicon Wave in
`
`2004. Silicon Wave was a pioneer in short range radio linked data
`
`communications and a leader in the development of the Bluetooth standards and
`
`conforming products. During the period from 1998 through 2004, our group
`
`contributed heavily to the ongoing development of the Bluetooth system standards,
`
`working actively with other Bluetooth adopted companies (including Intel and
`
`Microsoft). Security methods which defended against unauthorized access, passive
`
`eavesdropping, and man-in-the-middle attacks were devised and incorporated in
`
`the standard in that timeframe. RFMD is an industry leader in the supply of radio
`
`frequency components for cellular subscriber devices and base stations. My work
`
`at RFMD included technical and marketing management of business units engaged
`
`in various RF system and component products.
`
`13. My work from 1996 to the present has been focused largely on
`
`broadband communication technologies with emphasis on wireless and cable based
`
`systems. Such systems have included different types of digital cellular networks
`
`and devices, and short range systems including Bluetooth, wireless LAN (“Wi-
`
`Fi”), and near field communication (“NFC”). I have also worked as an active
`
`advisor to Sansay, Inc., a pioneer in Session Border Control (SBC) functionality as
`
`used in Voice over Internet Protocol (VoIP) systems. A SBC can be categorized as
`
`
`
`
`
`Samsung Exhibit 1003, Page 5
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`

`

`
`
`an especially sophisticated type of Internet security gateway, whose functions
`
`include protection of both customer intranets and carrier’s core networks from
`
`unauthorized access, toll fraud, and from various types of active attacks including
`
`distributed denial of service (DDoS).
`
`14.
`
`I have stayed heavily focused on applications of my engineering skills
`
`in industry, but I have occasionally found time to teach and lecture at universities
`
`around the United States. As referenced above, I developed and taught a course on
`
`“Principles of Communication” at MIT in 1974 and later I co-wrote and co-taught
`
`a course in “Digital Communications and Satellite Systems” in 1983 in the
`
`Department of Electrical Engineering at the University of California San Diego.
`
`From 1995 to 1997, I was a lecturer on the topic of wireless communication
`
`technologies for the “Executive Short Course for CNOs: Managing the IT
`
`Infrastructure for Global Competitiveness” at MIT’s Sloan School of Management.
`
`My other university-level teaching experience is listed in my CV.
`
`15.
`
`I am a named inventor on seven United States Patents, which are
`
`listed in my CV. These seven patents cover inventions in the field of
`
`telecommunications and computer networking and have been referenced more than
`
`two hundred and fifty times in subsequently issued United States patents. I have
`
`authored or co-authored over fifty professional papers and conference
`
`contributions.
`
`
`
`
`
`Samsung Exhibit 1003, Page 6
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`

`

`
`
`16. My qualifications and publications are set forth more fully in my
`
`curriculum vitae attached as Exhibit 1010.
`
`II.
`
`SCOPE OF THE ENGAGEMENT
`
`17.
`
`I have been retained by Quinn Emanuel Urquhart & Sullivan LLP on
`
`behalf of Samsung Electronics Co., Ltd. (“Samsung” or “Petitioner”) to provide
`
`analysis and opinions in connection with U.S. Patent No. 8,885,587 (“the ’587
`
`Patent”). I have also been asked to evaluate whether one of ordinary skill in the art
`
`would, at the time of the invention, have considered certain technologies and prior
`
`art to be relevant or material to determining the validity of claims 3-5 and 9-11 of
`
`the ’587 Patent.
`
`18. All of the opinions I express in this Declaration have been made from
`
`the standpoint of a person of ordinary skill in the field of the ’587 Patent at the
`
`time of the invention. I consider that a person of ordinary skill in the art at the time
`
`of invention would have would have at least (1) a Bachelor’s or Master’s degree in
`
`electrical engineering, computer science, or a related field and (2) at least two
`
`years experience working with cellular telephony systems. I had those capabilities
`
`myself and had also taught, hired, and managed engineers with those capabilities at
`
`the time of the earliest possible priority date of the ’587 Patent.
`
`
`
`
`
`Samsung Exhibit 1003, Page 7
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`

`

`
`
`19. My opinions are based on my experience and knowledge and the
`
`information I have reviewed as of the date of this declaration. In connection with
`
`my analysis, I have reviewed the following exhibits:
`
`No.
`
`1001
`
`1002
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1011
`
`1013
`
`1014
`
`Exhibit
`
`U.S. Patent No. 8,885,587 to Chen et al. (‘587 Patent)
`
`File History of U.S. Patent No. 8,885,587 (‘587 File History)
`
`U.S. Patent No. 8,472,368 to Baldemair et al. (“Baldemair”)
`
`Provisional Application No. 61/250,962 to Baldemair et al.
`(“Baldemair ‘962”)
`
`3GPP TS 36.213 V8.5.0 (2008-12)
`3rd Generation Partnership Project; Technical Specification
`Group Radio Access Network; Evolved Universal Terrestrial
`Radio Access (E-UTRA); Physical layer procedures (Release
`8), available at
`https://portal.3gpp.org/desktopmodules/Specifications/Specific
`ationDetails.aspx?specificationId=2427 (last accessed
`5/8/2017) (“TS 36.213”)
`
`U.S. Patent Application Publication 2009/0245194 A1 to
`Damnjanovic et al. (“Damnjanovic”)
`
`Huawei Techs. Co. Ltd. v. Samsung Elecs. Co., Ltd. et al., Case
`No. 3:16-cv-02787, Dkt. 1 (N.D. Cal. May 24, 2016) (“Huawei
`District Court Complaint”)
`
`Huawei Techs. Co. Ltd. v. Samsung Elecs. Co., Ltd. et al., Case
`No. 3:16-cv-02787, Dkt. 124 (N.D. Cal. Apr. 7, 2017) (“Joint
`Claim Construction Statement”)
`
`Huawei Infringement Contentions for the ’587 Patent (“’587
`Infringement Contentions”)
`
`ERIK DAHLMAN ET AL., 3G EVOLUTION, HSPA AND LTE FOR
`MOBILE BROADBAND (2nd Ed. 2008) (“Dahlman”)
`
`About 3GPP Home, 3GPP: A Global Initiative, available at
`
`
`
`
`
`Samsung Exhibit 1003, Page 8
`
`

`

`
`
`1015
`
`1016
`
`
`
`20.
`
`http://www.3gpp.org/about-3gpp/about-3gpp (last accessed
`5/3/2017) (“About 3GPP”)
`
`ERIK DAHLMAN ET AL., 4G LTE/LTE-ADVANCED FOR MOBILE
`BROADBAND (2011) (“Dahlman 4G”)
`
`3GPP TDoc R1-074408, Ack/Nack repetition and Implicit
`Resource Allocation for PUCCH, (Shanghai, China, Oct. 8-12,
`2007), available at
`http://www.3gpp.org/DynaReport/TDocExMtg--R1-50b--
`26482.htm (last accessed 5/8/2017) (“R1-074408”)
`
`I am being compensated for my time spent on the present matter at a
`
`rate of $500 per hour. My compensation is not in any way contingent on my
`
`performance, the result of this proceeding, or any of the issues involved therein. I
`
`am also being reimbursed for expenses incurred as a result of activities performed
`
`as an expert.
`
`III. LEGAL STANDARD
`
`A. Claim Interpretation
`
`21.
`
`I am not a Patent Attorney and I do not opine in this paper on any
`
`particular methodology for interpreting patent claims. My opinions are limited to
`
`what I believe a person of ordinary skill in the art would have understood the
`
`meaning of certain claim terms to be based on the patent documents. I use the
`
`principles below, however, as a guide in formulating my opinions.
`
`22.
`
`I understand that it is a basic principle of patent law that assessing the
`
`validity of a patent claim involves a two-step analysis. In the first step, the claim
`
`
`
`
`
`Samsung Exhibit 1003, Page 9
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`

`

`
`
`language must be properly construed to determine its scope and meaning. In the
`
`second step, the claim as properly construed, must be compared to the alleged prior
`
`art to determine whether the claim is valid.
`
`23.
`
`I understand that the words of a patent claim have their plain and
`
`ordinary meaning for a person skilled in the art at the time of the invention. This
`
`meaning must be ascertained from a reading of the patent documents, paying
`
`special attention to the language of the claims, the written specifications, and the
`
`prosecution history. I understand that an inventor may attribute special meanings
`
`to some terms by defining those terms or by otherwise incorporating such
`
`meanings in these documents.
`
`24. My methodology for determining the meaning of claim phrases was
`
`first to carefully study the patent. In particular, I studied the claims themselves,
`
`followed by a study of the background, detailed specification, figures, and other
`
`patent content. Next, I reviewed the file histories looking for any clarifications or
`
`limitations that might be attached to claim terms. In some circumstances, I looked
`
`at other documents, such as references applied by the patent office.
`
`25.
`
`I understand that in an inter partes review, claim terms are given their
`
`broadest reasonable interpretation in light of the specification of the patent in
`
`which they appear. I understand that under the broadest reasonable interpretation
`
`standard, claim terms are presumed to be given their ordinary and customary
`
`
`
`
`
`Samsung Exhibit 1003, Page 10
`
`

`

`
`
`meaning as understood by one of ordinary skill in the art in the context of the
`
`entire disclosure at the time of the invention. I understand that one must be careful
`
`not to read a specific embodiment appearing in the written description into the
`
`claim if the claim language is broader than the embodiment. I further understand
`
`that any special definition for a claim term must be set forth with reasonable
`
`clarity, deliberateness, and precision. I have considered each of the claim terms
`
`using the broadest reasonable interpretation standard.
`
`B.
`
`26.
`
`Prior Art
`
`It is my understanding that only information which satisfies one of the
`
`categories of prior art set forth in 35 U.S.C. § 102 may be used in any invalidity
`
`analysis under §§ 102 or 103. Therefore, if information is not properly classified
`
`as prior art under one of the subsections of § 102 of the Patent Code, then it may
`
`not be considered in an anticipation or obviousness determination. It is also my
`
`understanding that, for inter partes review, applicable prior art is limited to patents
`
`and printed publications.
`
`27.
`
`I understand that the earliest effective filing date for the ’587 Patent is
`
`December 3, 2009. I understand that any art published before December 3, 2009 is
`
`prior art, unless the petitioner can demonstrate that the patent owner did not validly
`
`claim priority to the Chinese application filed on December 3, 2009.
`
`
`
`
`
`Samsung Exhibit 1003, Page 11
`
`

`

`
`
`C. Anticipation
`
`28.
`
`I understand that to anticipate a patent claim under 35 U.S.C. § 102, a
`
`single asserted prior art reference must disclose each and every element of the
`
`claimed invention, either explicitly or inherently, to a person of ordinary skill in
`
`the art. I understand that a disclosure of an asserted prior art reference can be
`
`“inherent” if the missing element is necessarily present or is the inevitable outcome
`
`of the process and/or thing that is explicitly described in the asserted prior art
`
`reference.
`
`D. Obviousness
`
`29.
`
`I am also 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 whole would have been obvious at the time of the
`
`invention to a person having ordinary skill in the art to which the subject matter
`
`pertains. Obviousness, as I understand, is based on the scope and content of the
`
`prior art, the differences between the prior art and the claim, the level of ordinary
`
`skill in the art, and secondary indications of non-obviousness to the extent they
`
`exist.
`
`30.
`
`I understand that whether there are any relevant differences between
`
`the prior art and the claimed invention is to be analyzed from the view of a person
`
`of ordinary skill in the art at the time of the invention. A person of ordinary skill in
`
`
`
`
`
`Samsung Exhibit 1003, Page 12
`
`

`

`
`
`the art is a hypothetical person who is presumed to be aware of all of the relevant
`
`art at the time of the invention. The person of ordinary skill is not an automaton,
`
`and may be able to fit together the teachings of multiple patents employing
`
`ordinary creativity and the common sense that familiar items may have obvious
`
`uses in another context or beyond their primary purposes.
`
`31.
`
`In analyzing the relevance of the differences between the claimed
`
`invention and the prior art, I understand that I must consider the impact, if any, of
`
`such differences on the obviousness or non-obviousness of the invention as a
`
`whole, not merely some portion of it. The person of ordinary skill faced with a
`
`problem is able to apply his or her experience and ability to solve the problem and
`
`also look to any available prior art to help solve the problem.
`
`32. An invention is obvious if a person of ordinary skill in the art, facing
`
`the wide range of needs created by developments in the field, would have seen an
`
`obvious benefit to the solutions tried by the applicant. When there is a design need
`
`or market pressure to solve a problem and there are a finite number of identified,
`
`predictable solutions, it would 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 would improve similar devices in
`
`the same way, using the technique would have been obvious.
`
`
`
`
`
`Samsung Exhibit 1003, Page 13
`
`

`

`
`
`33.
`
`I understand that I do not need to look for precise teaching in the prior
`
`art directed to the subject matter of the claimed invention. I understand that I may
`
`take into account the inferences and creative steps that a person of ordinary skill in
`
`the art would have employed in reviewing the prior art at the time of the invention.
`
`For example, if the claimed invention combined elements known in the prior art
`
`and the combination yielded results that were predictable to a person of ordinary
`
`skill in the art at the time of the invention, then this evidence would make it more
`
`likely that the claim was obvious. On the other hand, if the combination of known
`
`elements yielded unexpected or unpredictable results, or if the prior art teaches
`
`away from combining the known elements, then this evidence would make it more
`
`likely that the claim that successfully combined those elements was not obvious. I
`
`understand that hindsight must not be used when comparing the prior art to the
`
`invention for obviousness.
`
`1. Motivation to Combine
`
`34. Obviousness may be shown by demonstrating that it would have been
`
`obvious to modify what is taught in a single piece of prior art to create the patented
`
`invention. Obviousness may also be shown by demonstrating that it would have
`
`been obvious to combine the teachings of more than one item of prior art. I
`
`understand that a claimed invention may be obvious if some teaching, suggestion
`
`or motivation exists that would have led a person of ordinary skill in the art to
`
`
`
`
`
`Samsung Exhibit 1003, Page 14
`
`

`

`
`
`combine the invalidating references. I also understand that this suggestion or
`
`motivation may come from sources such as explicit statements in the prior art, or
`
`from the knowledge of a person having ordinary skill in the art. Alternatively, any
`
`need or problem known in the field at the time and addressed by the patent may
`
`provide a reason for combining elements of the prior art. I also understand that
`
`when there is a design need or market pressure, and there are a finite number of
`
`predictable solutions, a person of ordinary skill may be motivated to apply both his
`
`skill and common sense in trying to combine the known options in order to solve
`
`the problem.
`
`35.
`
`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;
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`Samsung Exhibit 1003, Page 15
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`•
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`•
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`•
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`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);
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`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; or
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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.
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`2.
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`Secondary Considerations
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`36. As noted above, I understand that certain objective factors, sometimes
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`known as “secondary considerations,” may also be taken into account in
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`determining whether a claimed invention would have been obvious. In most
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`instances, these secondary considerations of non-obviousness are raised by the
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`patentee. In that context, the patentee argues an invention would not have been
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`obvious in view of these considerations, which include: (a) commercial success of
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`a product due to the merits of the claimed invention; (b) a long-felt, but unsatisfied
`
`need for the invention; (c) failure of others to find the solution provided by the
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`claimed invention; (d) deliberate copying of the invention by others; (e)
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`unexpected results achieved by the invention; (f) praise of the invention by others
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`skilled in the art; (g) lack of independent simultaneous invention within a
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`comparatively short space of time; (h) teaching away from the invention in the
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`Samsung Exhibit 1003, Page 16
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`prior art. I also understand that these objective indications are only relevant to
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`obviousness if there is a connection, or nexus, between them and the invention
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`covered by the patent claims.
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`37.
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`I understand that certain “secondary considerations,” such as
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`independent invention by others within a comparatively short space of time,
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`indicates obviousness. I also understand that secondary considerations of non-
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`obviousness are inadequate to overcome a strong showing on the primary
`
`considerations of obviousness. For example, where the inventions represented no
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`more than the predictable use of prior art elements according to their established
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`functions, the secondary considerations are inadequate to establish non-
`
`obviousness.
`
`38.
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`I understand that the Patent Owner has not identified any evidence of
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`secondary considerations in the related district court litigation. I reserve the right
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`to present rebuttal testimony if and when the Patent Owner presents such evidence.
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`E. Date of Invention
`
`39.
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`I understand that absent clear and convincing evidence of invention
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`date prior to the filing date of a patent, the invention date of the patent is presumed
`
`to be its filing date. A prior invention requires a complete conception of the
`
`invention and a reduction to practice of that invention. The patentee has the
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`
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`Samsung Exhibit 1003, Page 17
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`burden of establishing by clear and convincing evidence a date of conception
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`earlier than the filing date of the patent.
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`40. Conception is the formation in the mind of the inventor of a definite
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`and permanent idea of the complete and operative invention. Conception must be
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`proved by corroborating evidence which shows that the inventor disclosed to
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`others his complete thought expressed in such clear terms as to enable those skilled
`
`in the art to make the claimed invention. The inventor must also show possession
`
`of every feature recited in the claims, and that every limitation was known to the
`
`inventor at the time of the alleged conception. Furthermore, the patentee must
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`show that he or she has exercised reasonable diligence in later reducing the
`
`invention to practice, either actual or constructive. The filing of a patent
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`application can serve as a constructive reduction to practice.
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`IV. BACKGROUND OF THE TECHNOLOGY
`
`41. The ’587 Patent relates to cellular communications. Specifically, the
`
`’587 Patent claims that the technology disclosed in this patent is related to
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`technology developed and generated by 3GPP. Ex. 1001 at 1:25-43. Furthermore,
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`it is clear from the Huawei District Court Complaint that Huawei believes its
`
`invention to be directly related to 3GPP standards. See, e.g., Ex. 1008 at ¶¶21-40.
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`Below is a summary of the 3GPP organization and the state of the relevant
`
`technology as of the priority date of the ’587 Patent.
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`
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`
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`Samsung Exhibit 1003, Page 18
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`
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`A.
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`3GPP Organization
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`42. As described on the website for the 3rd Generation Partnership Project
`
`(3GPP), “[t]he 3GPP unites [Seven] telecommunications standard development
`
`organizations (ARIB, ATIS, CCSA, ETSI, TSDSI, TTA, TTC), known as
`
`‘Organizational Partners’ and provides their members with a stable environment to
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`produce the Reports and Specification that define 3GPP technologies.” Ex. 1014
`
`at 1. 3GPP standards “cover[] cellular telecommunications network technologies,
`
`including radio access, the core transport network, and service capabilities -
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`including work on codecs, security, quality of service - and thus provides complete
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`system specifications.” Id.
`
`43. As cellular telecommunications technology developed rapidly in the
`
`late eighties and nineties, manufacturers and carriers began to realize that
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`standardization was necessary to ensure user mobility and manufacturing
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`economies stemming from the common requirements defined in the specifications.
`
`44.
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`“3GPP specifications and studies are contribution-driven, by member
`
`companies, in Working Groups and at the Technical Specification Group level.
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`The three Technical Specification Groups (TSG) in 3GPP are: Radio Access
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`Networks (RAN), Services & Systems Aspects (SA), Core Network & Terminals
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`(CT).” Ex. 1014 at 1. Major changes to the 3GPP standards are measured in
`
`
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`Samsung Exhibit 1003, Page 19
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`“Releases,” and certain groups of releases are informally referred to as a
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`generation.
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`Generation
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`Release
`
`“2G”
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`“3G”
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`“4G” or “LTE”
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`Release 98
`
`Release 99
`
`Release 4
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`Release 5
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`Release 6
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`Release 7
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`Release 8
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`Release 9
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`“LTE-A”
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`Release