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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
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`
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`
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`
`
`CASE: IPR2017-01818
`Patent No. 9,641,645 B2
`
`
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 9,641,645 B2
`
`
`Microsoft Corp. Exhibit 1005
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`I hereby declare that all the statements made in this Declaration are of my
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`
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`own knowledge and true; that all statements made on information and belief are
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`believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false
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`statements may jeopardize the validity of the application or any patent issued
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`thereon.
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`I declare under the penalty of perjury that all statements made in this
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`Declaration are true and correct.
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`
`
`Executed July 19, 2017 in Douglas, Massachusetts.
`
`
`
`
`/William R. Michalson/
`William R. Michalson
`
`Microsoft Corp. Exhibit 1005
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`
`
`TABLE OF CONTENTS
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`Page
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`LIST OF APPENDICES ........................................................................................ IV
`I.
`INTRODUCTION .......................................................................................... 1
`II.
`SUMMARY OF OPINIONS .......................................................................... 3
`III. QUALIFICATIONS AND EXPERIENCE .................................................... 6
`A.
`Education and Work Experience .......................................................... 6
`B.
`Compensation ....................................................................................... 9
`C.
`Documents and Other Materials Relied Upon ................................... 10
`IV. STATEMENT OF LEGAL PRINCIPLES ................................................... 11
`A.
`Claim Construction ............................................................................ 11
`B.
`Anticipation ........................................................................................ 11
`C.
`Obviousness ........................................................................................ 12
`LEVEL OF ORDINARY SKILL IN THE ART .......................................... 13
`V.
`VI. TECHNOLOGY BACKGROUND OF THE ’645 PATENT ...................... 17
`A. Data Communications Over the Internet ............................................ 19
`B.
`Data Communications in Wireless Mobile Systems .......................... 22
`C.
`Image Tiles and Image Pyramids ....................................................... 23
`D.
`Compression of Image Tiles .............................................................. 33
`E.
`Progressive Image Resolution Enhancement ..................................... 35
`F.
`Three-Dimensional Graphics ............................................................. 37
`1.
`Overview of 3D Computer Graphics principles ...................... 37
`2.
`Texture ..................................................................................... 43
`3.
`Virtual Reality Modeling Language (VRML) ......................... 47
`G. Mip-Maps ........................................................................................... 48
`H.
`Storage of image data ......................................................................... 54
`VII. OVERVIEW OF THE ’645 PATENT ......................................................... 56
`
`-i-
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`Microsoft Corp. Exhibit 1005
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`
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`TABLE OF CONTENTS
`(continued)
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`Page
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`B.
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`C.
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`VIII. IDENTIFICATION OF THE PRIOR ART AND SUMMARY OF
`OPINIONS .................................................................................................... 62
`A.
`Reddy .................................................................................................. 62
`B. Woods ................................................................................................. 64
`C.
`Chiarabini ........................................................................................... 64
`D.
`Fuller ................................................................................................... 67
`IX. CLAIM CONSTRUCTION ......................................................................... 68
`A.
`“Wireless Portable Device” in All Claims Except Claims 6, 10,
`18, 22, 30, and 34-36 .......................................................................... 69
`“Thereby Enabling Efficient Use of Network Bandwidth in
`Conditions of Network Latency” in Claims 8, 20, and 32 ................. 70
`“Configure[d/s] ... as a server to provide access to [the] at least
`some image parcels [received by the wireless portable device]”
`in Claims 7, 19, and 31 ....................................................................... 71
`“Image Parcel” in Claims 1-4, 7-8, 12-16, 19-20, 25-28, 31-32,
`and 36 ................................................................................................. 74
`All Remaining Claim Terms .............................................................. 76
`E.
`X. UNPATENTABILITY OF CLAIMS 1-36 OF THE ’645 PATENT ........... 77
`A. GROUND 1: CLAIMS 1-7, 9-11, 13-19, 21-23, 25-31, AND
`33-35 ARE UNPATENTABLE UNDER 35 U.S.C. § 103(a)
`AS BEING OBVIOUS OVER REDDY IN VIEW OF WOODS ..... 77
`1.
`Overview of Asserted References ............................................ 78
`2. Motivations to Combine Reddy and Woods ............................ 98
`3.
`Independent Claim 1 Is Obvious ........................................... 106
`4.
`Independent Claim 13 Is Obvious ......................................... 123
`5.
`Independent Claim 25 Is Obvious ......................................... 126
`6.
`Dependent Claims 2, 14, and 26 Are Obvious ...................... 129
`7.
`Dependent Claims 3, 15, and 27 Are Obvious ...................... 134
`8.
`Dependent Claims 4, 16, and 28 Are Obvious ...................... 136
`
`D.
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`-ii-
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`Microsoft Corp. Exhibit 1005
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`
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`TABLE OF CONTENTS
`(continued)
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`Page
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`
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`B.
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`C.
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`9.
`Dependent Claims 5, 17, and 29 Are Obvious ...................... 137
`10. Dependent Claims 6, 18, and 30 Are Obvious ...................... 140
`11. Dependent Claims 7, 19, and 31 Are Obvious ...................... 144
`12. Dependent Claims 9, 21, and 33 Are Obvious ...................... 145
`13. Dependent Claims 10, 22, and 34 Are Obvious .................... 151
`14. Dependent Claims 11, 23, and 35 Are Obvious .................... 152
`GROUND 2: CLAIMS 8, 20, AND 32 ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103(a) AS BEING
`OBVIOUS OVER REDDY IN VIEW OF WOODS AND
`CHIARABINI .................................................................................. 155
`1.
`The Reddy-Woods-Chiarabini Combination ......................... 155
`2. Motivations to Combine ........................................................ 156
`3.
`Dependent Claims 8, 20, and 32 are Obvious ....................... 157
`GROUND 3: CLAIMS 12, 24, AND 36 ARE
`UNPATENTABLE UNDER 35 U.S.C. § 103(a) AS BEING
`OBVIOUS OVER REDDY IN VIEW OF WOODS AND
`FULLER ........................................................................................... 166
`1.
`The Reddy-Woods-Fuller Combination ................................ 166
`2. Motivations to Combine Reddy, Woods, and Fuller ............. 167
`3.
`Dependent Claims 12, 24, and 36 Are Obvious .................... 169
`XI. CONCLUSION ........................................................................................... 170
`
`
`-iii-
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`Microsoft Corp. Exhibit 1005
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`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`LIST OF APPENDICES
`
`Curriculum Vitae of William R. Michalson
`Excerpt of Hanan Samet, The Design and Analysis of Spatial
`Data Structures, University of Maryland (1989)
`U.S. Patent No. 5,263,136 (DeAguiar et al)
`
`
`
`Appendix A
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`Appendix B
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`Appendix C
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`Appendix D
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`U.S. Patent 4,972,319 (Delorme)
`
`Appendix F
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`Appendix G
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`Appendix H
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`Appendix I
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`Appendix J
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`Appendix K
`
`Appendix L
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`Appendix M
`
`Appendix N
`
`International Telegraph and Telephone Consultative Committee
`(“CCITT”) Recommendation T.81, September 1992
`Ken Cabeen & Peter Gent, Image Compression and the
`Discrete Cosine Transform
`M. Antonini, Image Coding Using Wavelet Transform , IEEE
`Transactions on Image Processing, Vol. 1, No. 2, April 1992.
`
`U.S. Patent No. 5,321,520 (Inga et al)
`
`U.S. Patent No. 6,182,114 (Yap et al.)
`
`U.S. Patent No. 5,179,638 (Dawson et al)
`Lance Williams, Pyramidal Parametrics, Computer Graphics,
`vol. 17, no. 3, July 1983
`
`OpenGL Standard Version 1.1, March 1997, available:
`https://www.opengl.org/documentation/specs/version1.1/glspec
`1.1/node84.html#SECTION00681100000000000000
`H. Hoppe, Progressive Meshes, SIGGRAPH ’96: Proceedings
`of the 23rd annual conference on computer graphics and
`interactive techniques, pp. 99-108
`
`Appendix O
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`U.S. Patent 5,798,770 (Baldwin)
`
`Appendix P
`
`U.S. Patent No. 5,987,256 (Wu et al)
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`-iv-
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`Microsoft Corp. Exhibit 1005
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`
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`Appendix R
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`Appendix S
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`Appendix T
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`Appendix X
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`Appendix Y
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`Appendix Z
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`Appendix AA
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`Appendix BB
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`Appendix EE
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`Boris Rabinovich & Craig Gotsman, Visualization of Large
`Terrains in Resource-Limited Computing Environments (1997)
`User Datagram Protocol (UDP) (Windows CE 5.0, Microsoft,
`Available: https://msdn.microsoft.com/en-
`us/library/ms885773.aspx [Accessed April 28, 2015]
`
`OpenGL Standard Version 1.2.1, April 1999, available:
`https://www.opengl.org/documentation/specs/version1.2/opengl
`1.2.1.pdf
`
`George H. Forman and John Zahorjan, “The challenges of
`mobile computing,” Computer vol. 27, no. 4, pp. 38, 47 (April
`1994)
`K. Brown and S. Singh, A Network Architecture for Mobile
`Computing, INFOCOM ’96, Fifteenth Annual Joint Conference
`of the IEEE Computer Societies, Networking the Next
`Generation, Proceedings IEEE vol. 3, pp. 1388-139
`
`Kreller, B. et al “UMTS: a middleware architecture and mobile
`API approach,” Personal Communications, IEEE, vol. 5, no. 2,
`pp. 32-38 (April 1998)
`
`Hansen, J. et al, “Real-time synthetic vision cockpit display for
`general aviation,” AeroSense ’99, International Society for
`Optics and Photonics, 1999
`
`U.S. Patent No. 5,760,783 to Migdal et al (“Migdal”)
`Theresa-Marie Rhyne, A Commentary on GeoVRML: A Tool
`for 3D Representation of GeoReferenced Data on the Web,
`International Journal of Geographic Information Sciences, issue
`4 of volume 13, 1999
`
`Appendix GG
`
`GeoTIFF Format Specification Revision 1.0
`
`Appendix HH
`
`TIFF Revision 6.0, dated June 3, 1992.
`
`Appendix II
`
`FlashPix Format Specification v1.0, dated September 11, 1996
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`-v-
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`Microsoft Corp. Exhibit 1005
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`Appendix KK
`
`Appendix LL
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`The Virtual Reality Modeling Language ISO/IEC 14772-
`1:1997
`
`Marc H. Brown and Robert A. Shillner, “DeckScape: an
`experimental Web browser,” Computer Networks and ISDN
`Systems 27 (1995) 1097-1104
`
`Appendix NN
`
`IPR2016-00448 and IPR2016-00449, transcript of April 18,
`2017 hearing (non-confidential portions)
`
`
`
`
`
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`-vi-
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`INTRODUCTION
`1. My name is William R. Michalson. I am a professor of electrical and
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`
`I.
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`computer engineering at Worcester Polytechnic Institute in Massachusetts.
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`2.
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`I have been engaged by Microsoft Corporation (“Microsoft”) to
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`5
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`investigate and opine on certain issues relating to U.S. Patent No. 9,641,645 B2
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`(the “’645 Patent”) entitled “Optimized Image Delivery Over Limited Bandwidth
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`Communication Channels” in Microsoft’s Petition for Inter Partes Review of the
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`’645 Patent (“Microsoft IPR Petition”) which requests the Patent Trial and Appeal
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`Board (“PTAB”) to review and cancel all claims of the ’645 Patent—claims 1-36
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`10
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`(“Challenged Claims”).
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`3.
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`I have also been engaged by Microsoft to investigate and opine on
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`certain issues relating to six other patents that are related to the ’645 Patent—U.S.
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`Patent Nos. 7,908,343 B2 (“the ’343 Patent”), 7,139,794 B2 (“the ’794 Patent”),
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`8,924,506 B2 (“the ’506 Patent”), 9,253,239 B2 (“the ’239 Patent”); 9,641,644 B2
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`15
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`(“the ’644 Patent”); and 9,635,136 B2 (“the ’136 Patent”)—in additional petitions
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`for inter partes review by Microsoft. I understand that Bradium Technologies
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`LLC (“Bradium”) has asserted the ’794, ’343, ’506, and ’239 Patents against
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`Microsoft in an on-going patent infringement lawsuit, No. 1:15-cv-00031-RGA,
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`filed in the U.S. District Court for the District of Delaware on January 9, 2015 and
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`1
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`amended to add the ’239 Patent on March 14, 2016. I understand that the ’644,
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`’645, and ’136 Patents have not yet been asserted in litigation against Microsoft.
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`4.
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`I understand that the ’645 Patent was purportedly assigned to
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`Bradium. Bradium is therefore referred to as the “Patent Owner” in this
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`5
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`declaration.
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`5.
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`In this declaration, I will first discuss the technology background
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`related to the ’645 Patent and then provide my analyses and opinions regarding
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`claims 1-36 of the ’645 Patent. The discussion of the technology background
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`includes an overview of that technology as it was known before December 2000,
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`10
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`which I understand as the earliest priority date claimed by the ’645 Patent. This
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`overview provides some of the bases for my opinions with respect to the ’645
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`Patent.
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`6.
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`This declaration is based on the information currently available to me.
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`To the extent that additional information becomes available, I reserve the right to
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`15
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`continue my investigation and study, which may include a review of documents
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`and information that may be produced, as well as testimony from depositions that
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`may not yet be taken.
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`7.
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`In forming my opinions, I have relied on information and evidence
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`identified in this declaration, including the ’645 Patent, the prosecution history of
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`20
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`the ’645 Patent, and prior art references listed as Exhibits to the Microsoft IPR
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`2
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`Petition and listed as appendices of this declaration. The Appendices to this
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`declaration include a number of references known to those in the art to describe
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`technical concepts relevant to the subject matter of this declaration, and include
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`(for example) patents, technical publications, and industry standards. In my
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`5
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`opinion, an expert or a person of ordinary skill in the art in the subject matter
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`relevant to this declaration would consider each of the Appendices to this
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`declaration relevant to the subject matter of this declaration and would reasonably
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`rely on such materials to form an opinion as to the state of the art prior to
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`December 27, 2000, the interpretation of the prior art references relied upon in
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`10
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`Microsoft’s petition, and the obviousness of the claims challenged in the petition. I
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`have also relied on my own personal experience in the field of computer graphics,
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`which includes the design and development of computer graphic hardware,
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`software, and display systems.
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`II.
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`15
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`SUMMARY OF OPINIONS
`8.
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`Claims 1-36 of the ’645 Patent relate to a system and method for
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`dynamic visualization of image data transferred through a communications
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`channel. For the reasons explained below, none of the features described in Claims
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`3
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`Microsoft Corp. Exhibit 1005
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`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`1-36 of the ’645 Patent were novel as of either October 1999 or December 2000,1
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`nor does the ’645 Patent teach a novel and non-obvious way of combining these
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`known features.
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`9.
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`Claims 1-36 of the ’645 Patent relate to well-known technologies in
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`5
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`the computer industry such as multi-resolution hierarchical maps, image
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`compression, packetized data transmission, and three-dimensional (3D) graphics
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`rendering. No element of Claims 1-36 is novel, and Claims 1-36 do not bring these
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`elements together in a way that brings any benefit beyond what a person of
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`ordinary skill in art would expect from the known functions of the individual
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`1 I understand that the inventors alleged during the prosecution of U.S. Patent No.
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`7,644,131 that “the herein invention was first defined in October 1999.” See, e.g.
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`IPR2016-00448, Ex. 2064. However, this statement related to a different
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`application and no corroboration was provided for the assertion of this date. I refer
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`to this date only because it is the earliest invention date which I am aware of
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`3DVU or Bradium having asserted. Nothing in this declaration should be taken as
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`an admission that the subject matter claimed in the ’645 Patent was actually
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`invented on this date, and I reserve the right to offer rebuttal testimony if Bradium
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`seeks to argue or present evidence of an invention date prior to the effective filing
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`date for any claim.
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`4
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`components. Claims 1-36 describe techniques that were well-known in the field,
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`and combine them in ways that would have been readily apparent to a person of
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`ordinary skill in the art with predictable results.
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`10.
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`It is my opinion that each of Claims 1-36 is invalid under the
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`5
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`patentability standard of 35 U.S.C. § 103 as I understand it and as explained to me
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`by Microsoft’s counsel. Within this declaration I discuss specific grounds of
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`invalidity of Claims 1-36; however, my opinion that Claims 1-36 are invalid under
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`35 U.S.C. § 103 is not limited to these specific grounds, and indeed, it is my
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`opinion that Claims 1-36 would have been invalid in light of the general
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`10
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`knowledge of a person of ordinary skill in the art at the time of the alleged
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`invention.
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`11. For purposes of my analyses in this declaration only, I provide my
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`proposed construction of certain terms in Claims 1-36 in detail in a later part of this
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`declaration.
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`12. The subsequent sections of this declaration will first provide my
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`qualifications and experience and then describe details of my analyses and
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`observations.
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`5
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`13.
`
`I received a Ph.D. degree in Electrical Engineering in 1989 and a
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`Master of Science degree in Electrical Engineering in 1985 from the Worcester
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`5
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`Polytechnic Institute. I received a Bachelor of Science degree in Electrical
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`Engineering from Syracuse University in 1981.
`
`14.
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`I have more than twenty years of experience in the fields of electrical
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`engineering, computer systems, navigation systems, and communications systems.
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`My experience includes the design, implementation and use of geographic
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`10
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`information systems (“GIS”), as well as the design, implementation and use of
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`navigation systems relying on GPS and other positioning system technologies. I
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`also have extensive experience in computer communication and data processing
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`systems as well as systems for the efficient transmission of digital images and
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`other data. Additionally, I have experience in the design and implementation of
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`15
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`hardware and software systems used to render image data for display.
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`15.
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`I have published 16 papers in technical journals and 97 papers in
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`technical conferences. I hold eight U.S. patents in the fields of handheld GPS
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`(Global Positioning System), portable geolocation devices, and communication
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`networks. I have also authored one book chapter relating to optical interconnect
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`6
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`networks for massively parallel computers. I became a Senior Member of the
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`Institute of Electrical and Electronics Engineers (IEEE) in 2003.
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`16. My experience spans from product designs and R&D in industry,
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`teaching, research and development in an educational and research institution to
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`5
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`technology consulting to industry. I was an engineer at Raytheon Company for ten
`
`years from 1981 to 1991. During this period, I worked on projects related to
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`computer display hardware for various applications, including air traffic control
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`applications.
`
`17. After leaving Raytheon Company, I joined the Worcester Polytechnic
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`10
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`Institute and became a full-time faculty member there in 1991. My research at
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`WPI focuses on navigation systems and related technologies. I am the director of
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`WPI’s Robot Navigation and Control Laboratory.
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`18. My research projects at WPI cover various technologies and include
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`(1) a system using tracking and communications technologies to track shipping
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`15
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`containers, (2) an automotive based system that combined GPS and map data in an
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`automotive environment, (3) a remote hazard detection system using GPS and
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`radio communications, and (4) a differential GPS system that combined GPS and
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`radio technologies to determine the precise path of vehicles operating off-road
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`during forest operations.
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`7
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`Microsoft Corp. Exhibit 1005
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`
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`19.
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`I have worked as a consultant in the navigation and communication
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`systems fields, e.g., in the context of space shuttle docking operations, transfer of
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`traffic information to GPS devices, combinations of GPS and cellular
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`communications for tracking purposes, and map-based handheld tracking devices.
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`5
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`20.
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`I am familiar with numerous GIS and mapping products that existed
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`in the market since the late 1980s, including systems and software developed by
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`Etak, Microsoft, DeLorme, and others. In the conduct of my research and other
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`work, I have routinely used commercially available GIS and mapping products and
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`have developed mapping and visualization software for specialized applications.
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`10
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`Additionally, I have used and incorporated database systems such as Microsoft
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`Access, Borland Paradox, Oracle, SQL and others in my research and have
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`incorporated database systems into other hardware and software systems for use in
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`storing and retrieving GIS-related data.
`
`21.
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`I have done extensive research work in communications and
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`15
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`networking system design, and have worked with all of the digital, analog and
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`software components needed to build communications and navigation systems.
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`My work with communications and networking protocols began in the mid-1980s
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`with TCP/IP over packet radio. I have used these and other communications and
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`networking protocols extensively in conducting my research. In addition, my work
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`20
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`on GPS and navigation systems involved implementing low-latency
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`8
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`Microsoft Corp. Exhibit 1005
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`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
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`communications to support differential techniques that allow a GPS receiver to
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`provide more accurate positioning information.
`
`22.
`
`I have extensive experience with the development and maintenance of
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`server computers, including the installation and maintenance of web servers and
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`5
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`file servers, as well as the design, development, test, and maintenance of web
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`based applications. These applications typically employ C/C++, Java, JavaScript,
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`PHP, HTML, MySQL, and etc. I am also experienced with server-client systems
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`where the client computer exchanges navigation and/or geographical information
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`with server computer through a wired and/or wireless network.
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`10
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`23. My curriculum vitae, which provides a detailed summary of my
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`education, work experience, publication, teaching history, and etc. is attached to
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`this declaration as Appendix A.
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`B. Compensation
`24.
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`I am being compensated for the services I am providing in this and
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`other Microsoft IPR petitions. The compensation is not contingent upon my
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`performance, the outcome of this inter partes review or any other proceedings, or
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`any issues involved in or related to this inter partes review or any other
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`proceedings.
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`9
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`Microsoft Corp. Exhibit 1005
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`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`C. Documents and Other Materials Relied Upon
`25. The documents on which I rely for the opinions expressed in this
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`declaration are documents and materials identified in this declaration, including the
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`’645 Patent, patents related to the ’645 Patent, the prosecution histories for the
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`5
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`’645 Patent and other patents related to the ’645 Patent, the prior art references and
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`information discussed in this declaration, including the references attached as
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`exhibits to the IPR Petition for the ’645 Patent: TerraVision II: Visualizing
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`Massive Terrain Databases in VRML by M. Reddy et al., IEEE Computer
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`Graphics and Applications, March/April 1999 (Ex. 1004), U.S. Patent 5,956,039 to
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`10
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`Woods et al. (“Woods”) (Ex. 1003), U.S. Patent 7,324,228 B2 to Chiarabini et al.
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`(“Chiarabini”) (Ex. 1006); The MAGIC Project: From Vision to Reality by Barbara
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`Fuller et al., IEEE Network, May/June 1996 (“Fuller”) (Ex. 1011), and any other
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`references specifically identified in this declaration, in their entirety, even if only
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`portions of these documents are discussed here in an exemplary fashion. I have
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`15
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`also considered certain arguments made by Bradium and its hired experts,
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`including Dr. Peggy Agouris, in IPRs of related patents, which do not change my
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`opinion that the claims of the ’645 Patent are obvious.2
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`2 I understand that Microsoft’s burden of proof for institution of an IPR does not
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`extend to rebutting every possible counter-argument, so I will not discuss every
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`10
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`Microsoft Corp. Exhibit 1005
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`IV. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`26. Microsoft’s counsel has advised that, when construing claim terms of
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`an unexpired patent, a claim subject to inter partes review receives the “broadest
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`5
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`reasonable interpretation in light of the specification of the patent in which it
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`appears.”
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`B. Anticipation
`27. Microsoft’s counsel has advised that in order for a patent claim to be
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`valid, the claimed invention must be novel. Microsoft’s counsel has further
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`10
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`advised that if each and every element of a claim is disclosed in a single prior art
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`reference, then the claimed invention is anticipated, and the invention is not
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`patentable according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013.
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`In order for an invention in a claim to be anticipated, all of the elements and
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`limitations of the claim must be shown in a single prior reference, arranged as in
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`15
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`the claim. A claim is anticipated only if each and every element as set forth in the
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`claim is found, either expressly or inherently described, in a single prior art
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`argument previously made by Bradium or its expert in previous IPRs. However, I
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`reserve the right to offer testimony in rebuttal to any arguments or evidence
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`submitted by Bradium in this proceeding.
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`11
`
`Microsoft Corp. Exhibit 1005
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`reference. In order for a reference to inherently disclose a claim limitation, that
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`claim limitation must necessarily be present in the reference.
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`C. Obviousness
`28. Microsoft’s counsel has also advised me that obviousness under pre-
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`5
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`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
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`understand that where a prior art reference does not disclose all of the limitations
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`of a given patent claim, that patent claim is invalid if the differences between the
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`claimed subject matter and the prior art reference are such that the claimed subject
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`matter as a whole would have been obvious at the time the invention was made to a
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`10
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`person having ordinary skill in the relevant art. Obviousness can be based on a
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`single prior art reference or a combination of references that either expressly or
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`inherently disclose all limitations of the claimed invention. In an obviousness
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`analysis, it is not necessary to find precise teachings in the prior art directed to the
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`specific subject matter claimed because inferences and creative steps that a person
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`15
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`of ordinary skill in the art would employ can be taken into account.
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`29.
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`I understand that obviousness is not driven by a rigid formula, but is a
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`flexible inquiry that reflects the fact that a person of ordinary skill in the art
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`exercising ordinary creativity may find a variety of reasons to combine the
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`teachings of different references. I understand that a non-exclusive list of possible
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`20
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`factors that may give a person of ordinary skill in the art a reason to combine
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`12
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`Microsoft Corp. Exhibit 1005
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`
`references includes combining elements according to known methods to yield
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`predictable results; simple substitution of known elements to obtain predictable
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`results; use of known techniques to improve similar devices in the same way;
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`applying known techniques to known devices ready for improvement to yield
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`5
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`predictable results; choosing from a finite number of identified, predictable
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`solutions, with a reasonable expectation of success; known work in one field of
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`endeavor prompting variations of it for use in the same field; and teaching in the
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`prior art that would have led one of ordinary skill to combine prior art reference
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`teachings to arrive at the claimed invention.
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`10
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`30.
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`I understand from Microsoft’s counsel that the claims and
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`specification of a patent must be read and construed through the eyes of a person of
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`ordinary skill in the art at the time of the priority date of the claims. I have also
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`been advised that to determine the appropriate level of a person having ordinary
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`15
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`skill in the art, the following factors may be considered: (a) the types of problems
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`encountered by those working in the field and prior art solutions thereto; (b) the
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`sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`13
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`Microsoft Corp. Exhibit 1005
`
`
`
`DECLARATION OF PROF. WILLIAM R. MICHALSON
`IN SUPPORT OF IPR PETITION OF U.S. PATENT NO. 9,641,645 B2
`PTAB CASE NO. IPR2017-01818
`31. The “Background” section of the ’645 Patent describes a “well
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`recognized problem” of how to reduce the latency for transmitting full resolution
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`images over the Internet on an “as needed” basis, particularly for “complex
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`images” such as “geographic, topographic, and other highly detailed maps.” Ex.
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`5
`