UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`BRADIUM TECHNOLOGIES LLC,
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`CASE: IPR2017-01818
`Patent No. 9,641,645 B2
`
`
`
`
`
`
`
`
`
`
`
`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
`
`
`
`own knowledge and true; that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under 18 U.S.C. 1001 and that such willful false
`
`statements may jeopardize the validity of the application or any patent issued
`
`thereon.
`
`I declare under the penalty of perjury that all statements made in this
`
`Declaration are true and correct.
`
`
`
`Executed July 19, 2017 in Douglas, Massachusetts.
`
`
`
`
`/William R. Michalson/
`William R. Michalson
`
`Microsoft Corp. Exhibit 1005
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`
`
`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-
`
`Microsoft Corp. Exhibit 1005
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`B.
`
`C.
`
`
`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.
`
`-ii-
`
`Microsoft Corp. Exhibit 1005
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`B.
`
`C.
`
`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-
`
`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
`
`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
`
`Appendix B
`
`Appendix C
`
`Appendix D
`
`U.S. Patent 4,972,319 (Delorme)
`
`Appendix F
`
`Appendix G
`
`Appendix H
`
`Appendix I
`
`Appendix J
`
`Appendix K
`
`Appendix L
`
`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
`
`U.S. Patent 5,798,770 (Baldwin)
`
`Appendix P
`
`U.S. Patent No. 5,987,256 (Wu et al)
`
`-iv-
`
`Microsoft Corp. Exhibit 1005
`
`

`

`
`Appendix R
`
`Appendix S
`
`Appendix T
`
`Appendix X
`
`Appendix Y
`
`Appendix Z
`
`Appendix AA
`
`Appendix BB
`
`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
`
`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
`
`-v-
`
`Microsoft Corp. Exhibit 1005
`
`

`

`
`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)
`
`
`
`
`
`
`-vi-
`
`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
`
`INTRODUCTION
`1. My name is William R. Michalson. I am a professor of electrical and
`
`
`I.
`
`computer engineering at Worcester Polytechnic Institute in Massachusetts.
`
`2.
`
`I have been engaged by Microsoft Corporation (“Microsoft”) to
`
`5
`
`investigate and opine on certain issues relating to U.S. Patent No. 9,641,645 B2
`
`(the “’645 Patent”) entitled “Optimized Image Delivery Over Limited Bandwidth
`
`Communication Channels” in Microsoft’s Petition for Inter Partes Review of the
`
`’645 Patent (“Microsoft IPR Petition”) which requests the Patent Trial and Appeal
`
`Board (“PTAB”) to review and cancel all claims of the ’645 Patent—claims 1-36
`
`10
`
`(“Challenged Claims”).
`
`3.
`
`I have also been engaged by Microsoft to investigate and opine on
`
`certain issues relating to six other patents that are related to the ’645 Patent—U.S.
`
`Patent Nos. 7,908,343 B2 (“the ’343 Patent”), 7,139,794 B2 (“the ’794 Patent”),
`
`8,924,506 B2 (“the ’506 Patent”), 9,253,239 B2 (“the ’239 Patent”); 9,641,644 B2
`
`15
`
`(“the ’644 Patent”); and 9,635,136 B2 (“the ’136 Patent”)—in additional petitions
`
`for inter partes review by Microsoft. I understand that Bradium Technologies
`
`LLC (“Bradium”) has asserted the ’794, ’343, ’506, and ’239 Patents against
`
`Microsoft in an on-going patent infringement lawsuit, No. 1:15-cv-00031-RGA,
`
`filed in the U.S. District Court for the District of Delaware on January 9, 2015 and
`
`1
`
`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
`
`amended to add the ’239 Patent on March 14, 2016. I understand that the ’644,
`
`’645, and ’136 Patents have not yet been asserted in litigation against Microsoft.
`
`4.
`
`I understand that the ’645 Patent was purportedly assigned to
`
`Bradium. Bradium is therefore referred to as the “Patent Owner” in this
`
`5
`
`declaration.
`
`5.
`
`In this declaration, I will first discuss the technology background
`
`related to the ’645 Patent and then provide my analyses and opinions regarding
`
`claims 1-36 of the ’645 Patent. The discussion of the technology background
`
`includes an overview of that technology as it was known before December 2000,
`
`10
`
`which I understand as the earliest priority date claimed by the ’645 Patent. This
`
`overview provides some of the bases for my opinions with respect to the ’645
`
`Patent.
`
`6.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`15
`
`continue my investigation and study, which may include a review of documents
`
`and information that may be produced, as well as testimony from depositions that
`
`may not yet be taken.
`
`7.
`
`In forming my opinions, I have relied on information and evidence
`
`identified in this declaration, including the ’645 Patent, the prosecution history of
`
`20
`
`the ’645 Patent, and prior art references listed as Exhibits to the Microsoft IPR
`
`2
`
`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
`
`Petition and listed as appendices of this declaration. The Appendices to this
`
`declaration include a number of references known to those in the art to describe
`
`technical concepts relevant to the subject matter of this declaration, and include
`
`(for example) patents, technical publications, and industry standards. In my
`
`5
`
`opinion, an expert or a person of ordinary skill in the art in the subject matter
`
`relevant to this declaration would consider each of the Appendices to this
`
`declaration relevant to the subject matter of this declaration and would reasonably
`
`rely on such materials to form an opinion as to the state of the art prior to
`
`December 27, 2000, the interpretation of the prior art references relied upon in
`
`10
`
`Microsoft’s petition, and the obviousness of the claims challenged in the petition. I
`
`have also relied on my own personal experience in the field of computer graphics,
`
`which includes the design and development of computer graphic hardware,
`
`software, and display systems.
`
`II.
`
`15
`
`SUMMARY OF OPINIONS
`8.
`
`Claims 1-36 of the ’645 Patent relate to a system and method for
`
`dynamic visualization of image data transferred through a communications
`
`channel. For the reasons explained below, none of the features described in Claims
`
`3
`
`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
`1-36 of the ’645 Patent were novel as of either October 1999 or December 2000,1
`
`nor does the ’645 Patent teach a novel and non-obvious way of combining these
`
`known features.
`
`9.
`
`Claims 1-36 of the ’645 Patent relate to well-known technologies in
`
`5
`
`the computer industry such as multi-resolution hierarchical maps, image
`
`compression, packetized data transmission, and three-dimensional (3D) graphics
`
`rendering. No element of Claims 1-36 is novel, and Claims 1-36 do not bring these
`
`elements together in a way that brings any benefit beyond what a person of
`
`ordinary skill in art would expect from the known functions of the individual
`
`
`1 I understand that the inventors alleged during the prosecution of U.S. Patent No.
`
`7,644,131 that “the herein invention was first defined in October 1999.” See, e.g.
`
`IPR2016-00448, Ex. 2064. However, this statement related to a different
`
`application and no corroboration was provided for the assertion of this date. I refer
`
`to this date only because it is the earliest invention date which I am aware of
`
`3DVU or Bradium having asserted. Nothing in this declaration should be taken as
`
`an admission that the subject matter claimed in the ’645 Patent was actually
`
`invented on this date, and I reserve the right to offer rebuttal testimony if Bradium
`
`seeks to argue or present evidence of an invention date prior to the effective filing
`
`date for any claim.
`
`4
`
`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
`
`components. Claims 1-36 describe techniques that were well-known in the field,
`
`and combine them in ways that would have been readily apparent to a person of
`
`ordinary skill in the art with predictable results.
`
`10.
`
`It is my opinion that each of Claims 1-36 is invalid under the
`
`5
`
`patentability standard of 35 U.S.C. § 103 as I understand it and as explained to me
`
`by Microsoft’s counsel. Within this declaration I discuss specific grounds of
`
`invalidity of Claims 1-36; however, my opinion that Claims 1-36 are invalid under
`
`35 U.S.C. § 103 is not limited to these specific grounds, and indeed, it is my
`
`opinion that Claims 1-36 would have been invalid in light of the general
`
`10
`
`knowledge of a person of ordinary skill in the art at the time of the alleged
`
`invention.
`
`11. For purposes of my analyses in this declaration only, I provide my
`
`proposed construction of certain terms in Claims 1-36 in detail in a later part of this
`
`declaration.
`
`15
`
`12. The subsequent sections of this declaration will first provide my
`
`qualifications and experience and then describe details of my analyses and
`
`observations.
`
`5
`
`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
`
`III. QUALIFICATIONS AND EXPERIENCE
`A. Education and Work Experience
`13.
`
`I received a Ph.D. degree in Electrical Engineering in 1989 and a
`
`Master of Science degree in Electrical Engineering in 1985 from the Worcester
`
`5
`
`Polytechnic Institute. I received a Bachelor of Science degree in Electrical
`
`Engineering from Syracuse University in 1981.
`
`14.
`
`I have more than twenty years of experience in the fields of electrical
`
`engineering, computer systems, navigation systems, and communications systems.
`
`My experience includes the design, implementation and use of geographic
`
`10
`
`information systems (“GIS”), as well as the design, implementation and use of
`
`navigation systems relying on GPS and other positioning system technologies. I
`
`also have extensive experience in computer communication and data processing
`
`systems as well as systems for the efficient transmission of digital images and
`
`other data. Additionally, I have experience in the design and implementation of
`
`15
`
`hardware and software systems used to render image data for display.
`
`15.
`
`I have published 16 papers in technical journals and 97 papers in
`
`technical conferences. I hold eight U.S. patents in the fields of handheld GPS
`
`(Global Positioning System), portable geolocation devices, and communication
`
`networks. I have also authored one book chapter relating to optical interconnect
`
`6
`
`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
`
`networks for massively parallel computers. I became a Senior Member of the
`
`Institute of Electrical and Electronics Engineers (IEEE) in 2003.
`
`16. My experience spans from product designs and R&D in industry,
`
`teaching, research and development in an educational and research institution to
`
`5
`
`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
`
`computer display hardware for various applications, including air traffic control
`
`applications.
`
`17. After leaving Raytheon Company, I joined the Worcester Polytechnic
`
`10
`
`Institute and became a full-time faculty member there in 1991. My research at
`
`WPI focuses on navigation systems and related technologies. I am the director of
`
`WPI’s Robot Navigation and Control Laboratory.
`
`18. My research projects at WPI cover various technologies and include
`
`(1) a system using tracking and communications technologies to track shipping
`
`15
`
`containers, (2) an automotive based system that combined GPS and map data in an
`
`automotive environment, (3) a remote hazard detection system using GPS and
`
`radio communications, and (4) a differential GPS system that combined GPS and
`
`radio technologies to determine the precise path of vehicles operating off-road
`
`during forest operations.
`
`7
`
`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
`
`19.
`
`I have worked as a consultant in the navigation and communication
`
`systems fields, e.g., in the context of space shuttle docking operations, transfer of
`
`traffic information to GPS devices, combinations of GPS and cellular
`
`communications for tracking purposes, and map-based handheld tracking devices.
`
`5
`
`20.
`
`I am familiar with numerous GIS and mapping products that existed
`
`in the market since the late 1980s, including systems and software developed by
`
`Etak, Microsoft, DeLorme, and others. In the conduct of my research and other
`
`work, I have routinely used commercially available GIS and mapping products and
`
`have developed mapping and visualization software for specialized applications.
`
`10
`
`Additionally, I have used and incorporated database systems such as Microsoft
`
`Access, Borland Paradox, Oracle, SQL and others in my research and have
`
`incorporated database systems into other hardware and software systems for use in
`
`storing and retrieving GIS-related data.
`
`21.
`
`I have done extensive research work in communications and
`
`15
`
`networking system design, and have worked with all of the digital, analog and
`
`software components needed to build communications and navigation systems.
`
`My work with communications and networking protocols began in the mid-1980s
`
`with TCP/IP over packet radio. I have used these and other communications and
`
`networking protocols extensively in conducting my research. In addition, my work
`
`20
`
`on GPS and navigation systems involved implementing low-latency
`
`8
`
`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
`
`communications to support differential techniques that allow a GPS receiver to
`
`provide more accurate positioning information.
`
`22.
`
`I have extensive experience with the development and maintenance of
`
`server computers, including the installation and maintenance of web servers and
`
`5
`
`file servers, as well as the design, development, test, and maintenance of web
`
`based applications. These applications typically employ C/C++, Java, JavaScript,
`
`PHP, HTML, MySQL, and etc. I am also experienced with server-client systems
`
`where the client computer exchanges navigation and/or geographical information
`
`with server computer through a wired and/or wireless network.
`
`10
`
`23. My curriculum vitae, which provides a detailed summary of my
`
`education, work experience, publication, teaching history, and etc. is attached to
`
`this declaration as Appendix A.
`
`B. Compensation
`24.
`
`I am being compensated for the services I am providing in this and
`
`15
`
`other Microsoft IPR petitions. The compensation is not contingent upon my
`
`performance, the outcome of this inter partes review or any other proceedings, or
`
`any issues involved in or related to this inter partes review or any other
`
`proceedings.
`
`9
`
`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
`C. Documents and Other Materials Relied Upon
`25. The documents on which I rely for the opinions expressed in this
`
`declaration are documents and materials identified in this declaration, including the
`
`’645 Patent, patents related to the ’645 Patent, the prosecution histories for the
`
`5
`
`’645 Patent and other patents related to the ’645 Patent, the prior art references and
`
`information discussed in this declaration, including the references attached as
`
`exhibits to the IPR Petition for the ’645 Patent: TerraVision II: Visualizing
`
`Massive Terrain Databases in VRML by M. Reddy et al., IEEE Computer
`
`Graphics and Applications, March/April 1999 (Ex. 1004), U.S. Patent 5,956,039 to
`
`10
`
`Woods et al. (“Woods”) (Ex. 1003), U.S. Patent 7,324,228 B2 to Chiarabini et al.
`
`(“Chiarabini”) (Ex. 1006); The MAGIC Project: From Vision to Reality by Barbara
`
`Fuller et al., IEEE Network, May/June 1996 (“Fuller”) (Ex. 1011), and any other
`
`references specifically identified in this declaration, in their entirety, even if only
`
`portions of these documents are discussed here in an exemplary fashion. I have
`
`15
`
`also considered certain arguments made by Bradium and its hired experts,
`
`including Dr. Peggy Agouris, in IPRs of related patents, which do not change my
`
`opinion that the claims of the ’645 Patent are obvious.2
`
`
`2 I understand that Microsoft’s burden of proof for institution of an IPR does not
`
`extend to rebutting every possible counter-argument, so I will not discuss every
`
`10
`
`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
`
`an unexpired patent, a claim subject to inter partes review receives the “broadest
`
`5
`
`reasonable interpretation in light of the specification of the patent in which it
`
`appears.”
`
`B. Anticipation
`27. Microsoft’s counsel has advised that in order for a patent claim to be
`
`valid, the claimed invention must be novel. Microsoft’s counsel has further
`
`10
`
`advised that if each and every element of a claim is disclosed in a single prior art
`
`reference, then the claimed invention is anticipated, and the invention is not
`
`patentable according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013.
`
`In order for an invention in a claim to be anticipated, all of the elements and
`
`limitations of the claim must be shown in a single prior reference, arranged as in
`
`15
`
`the claim. A claim is anticipated only if each and every element as set forth in the
`
`claim is found, either expressly or inherently described, in a single prior art
`
`
`argument previously made by Bradium or its expert in previous IPRs. However, I
`
`reserve the right to offer testimony in rebuttal to any arguments or evidence
`
`submitted by Bradium in this proceeding.
`
`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
`
`claim limitation must necessarily be present in the reference.
`
`C. Obviousness
`28. Microsoft’s counsel has also advised me that obviousness under pre-
`
`5
`
`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
`
`understand that where a prior art reference does not disclose all of the limitations
`
`of a given patent claim, that patent claim is invalid if the differences between the
`
`claimed subject matter and the prior art reference are such that the claimed subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`10
`
`person having ordinary skill in the relevant art. Obviousness can be based on a
`
`single prior art reference or a combination of references that either expressly or
`
`inherently disclose all limitations of the claimed invention. In an obviousness
`
`analysis, it is not necessary to find precise teachings in the prior art directed to the
`
`specific subject matter claimed because inferences and creative steps that a person
`
`15
`
`of ordinary skill in the art would employ can be taken into account.
`
`29.
`
`I understand that obviousness is not driven by a rigid formula, but is a
`
`flexible inquiry that reflects the fact that a person of ordinary skill in the art
`
`exercising ordinary creativity may find a variety of reasons to combine the
`
`teachings of different references. I understand that a non-exclusive list of possible
`
`20
`
`factors that may give a person of ordinary skill in the art a reason to combine
`
`12
`
`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
`
`predictable results; simple substitution of known elements to obtain predictable
`
`results; use of known techniques to improve similar devices in the same way;
`
`applying known techniques to known devices ready for improvement to yield
`
`5
`
`predictable results; choosing from a finite number of identified, predictable
`
`solutions, with a reasonable expectation of success; known work in one field of
`
`endeavor prompting variations of it for use in the same field; and teaching in the
`
`prior art that would have led one of ordinary skill to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`10
`
`V. LEVEL OF ORDINARY SKILL IN THE ART
`30.
`
`I understand from Microsoft’s counsel that the claims and
`
`specification of a patent must be read and construed through the eyes of a person of
`
`ordinary skill in the art at the time of the priority date of the claims. I have also
`
`been advised that to determine the appropriate level of a person having ordinary
`
`15
`
`skill in the art, the following factors may be considered: (a) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (b) the
`
`sophistication of the technology in question, and the rapidity with which
`
`innovations occur in the field; (c) the educational level of active workers in the
`
`field; and (d) the educational level of the inventor.
`
`13
`
`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
`
`recognized problem” of how to reduce the latency for transmitting full resolution
`
`images over the Internet on an “as needed” basis, particularly for “complex
`
`images” such as “geographic, topographic, and other highly detailed maps.” Ex.
`
`5
`