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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`FedEx Corp.
`Petitioner
`
`v.
`
`Intellectual Ventures II LLC and OL Security Limited Liability Company
`Patent Owners
`
`_____________________________
`
`U.S. Patent No. 9,047,586
`_____________________________
`
`Declaration of Mark Reboulet
`in Support of Petition for Inter Partes Review of
`U.S. Patent No. 9,047,586
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` of 146
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`Exhibit 2103 Page 1
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`IV Exhibit 2103
`FedEx v. IV
`Case IPR2017-02043
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
`
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`Table of Contents
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`Introduction ................................................................................................. 5
`
`I.
`
`II.
`
`Summary of My Opinions ............................................................................ 7
`
`III. Qualifications and Background ...................................................................20
`
`IV. Materials Considered ..................................................................................22
`
`V.
`
`Legal Standards ..........................................................................................23
`
`A.
`
`B.
`
`Claim Construction ...........................................................................24
`
`Obviousness Under 35 U.S.C. § 103 .................................................25
`
`VI. Overview of the ’586 Patent .......................................................................26
`
`VII. Person of Ordinary Skill in the Art..............................................................31
`
`VIII. Claim Construction .....................................................................................33
`
`A.
`
`Claim 16: “means for receiving an electronic document
`comprising a plurality of bar codes, wherein the plurality of bar
`codes encode respective data tags and data items, and wherein
`at least one of the data tags includes an identifier identifying
`one of the data items” .......................................................................34
`
`B.
`
`Claim 16: “means for decoding the plurality of bar codes to
`recover the respective data tags and data items” ................................35
`
`IX. Combinations of ANSI, Ett , and UPS Render Obvious Claims 7, 8,
`12, 13, 16, 18, and 19 ..................................................................................38
`
`A. Overview of ANSI .............................................................................38
`
`i.
`
`ii.
`
`Message Envelopes .................................................................40
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`Format Envelopes ...................................................................41
`
`iii. Data Elements and Data Identifiers .........................................44
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`iv.
`
`v.
`
`Encoding Data Elements and Data Identifiers Into Bar
`Codes ......................................................................................46
`
`Decoding Bar Codes to Recover Data Elements and Data
`Identifiers................................................................................51
`
`B.
`
`
`
`Overview of Ett ................................................................................51
`
`i.
`
`ii.
`
`Data Processing System ..........................................................51
`
`Creating Electronic Representations of Bar Coded
`Information .............................................................................52
`
`iii. Bar Code Fonts .......................................................................54
`
`iv.
`
`Sending Electronic Representations of Bar Coded
`Information .............................................................................55
`
`v.
`
`Decoding Bar Codes ...............................................................56
`
`C.
`
`
`Overview of UPS ..............................................................................57
`
`i.
`
`ii.
`
`iii.
`
`iv.
`
`UPS and ANSI .........................................................................57
`
`Labeling System and Labels ...................................................58
`
`Linear Bar Codes Encoding Data Identifiers and Data
`Elements .................................................................................59
`
`Two-Dimensional MaxiCode Bar Codes Encoding Data
`Identifiers and Data Elements .................................................60
`
`D.
`
` Motivation to Combine ANSI and Ett ................................................62
`
`E.
`
` Motivation to Combine ANSI and UPS .............................................65
`
`F.
`
`
`
`The Combination of ANSI and Ett Renders Obvious Each
`Element of Claims 7, 8, 12, 13, 16, 18, and 19 under 35 U.S.C.
`§ 103 .................................................................................................68
`
`i.
`
`ii.
`
`Claim 7 ...................................................................................68
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`Claim 8 ...................................................................................82
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`iii. Claim 12 .................................................................................83
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`iv.
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`Claim 13 .................................................................................85
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`v.
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`Claim 16 .................................................................................91
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`vi.
`
`Claim 18 ............................................................................... 102
`
`vii. Claim 19 ............................................................................... 106
`
`G.
`
`
`
`The Combination of ANSI and UPS Renders Obvious Each
`Element of Claims 7, 12, 16, 18, and 19 under 35 U.S.C. § 103 ...... 108
`
`i.
`
`ii.
`
`Claim 7 ................................................................................. 108
`
`Claim 12 ............................................................................... 124
`
`iii. Claim 16 ............................................................................... 126
`
`iv.
`
`Claim 18 ............................................................................... 132
`
`v.
`
`Claim 19 ............................................................................... 137
`
`H.
`
`
`
`The Combination of ANSI, UPS, and Ett Renders Obvious Each
`Element of Claims 8 and 13 under 35 U.S.C. § 103 ........................ 139
`
`i.
`
`ii.
`
`Claim 8 ................................................................................. 139
`
`Claim 13 ............................................................................... 140
`
`X.
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`Conclusion ................................................................................................ 146
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`I.
`
`INTRODUCTION
`
`1.
`
`I, Mark Reboulet, submit this Declaration to state my opinions on the
`
`matters described below.
`
`2.
`
`I have been retained by the Petitioner as an independent expert in this
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`proceeding before the United States Patent and Trademark Office.
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`3.
`
`I understand that this proceeding involves U.S. Patent No. 9,047,586
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`(“the ’586 patent”), and I have been asked to provide my opinions as to the
`
`patentability of the claims of the ’586 patent. A copy of the ’586 patent is provided
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`as Exhibit 1001.
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`4.
`
`This Declaration sets forth my opinions that I have formed in this
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`proceeding based on my study of the evidence, my understanding as an expert in
`
`the field, and my education, training, research, knowledge, and personal and
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`professional experience.
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`5.
`
`I am being compensated for my time at the rate of $100 per hour for
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`my work. This compensation is in no way contingent upon the nature of my
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`findings, the presentation of my findings in testimony, or the outcome of this
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`proceeding.
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`6.
`
`I have been asked to provide my opinion on whether certain claims of
`
`the ’586 patent would have been obvious based on certain prior art references.
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`Based on the combination of prior art references discussed in this Declaration, it is
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`my opinion that one of ordinary skill in the art would find claims 7, 8, 12, 13, 16,
`
`18, and 19 of the ’586 patent to have been obvious.
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`7.
`
`The analysis below presents the technical subject matter described in
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`the ’586 patent, as well as some background known in the art at the priority date of
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`the ’586 patent. It also presents my opinions regarding the scope and patentability
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`of the ’586 patent based on certain references that I considered.
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`II.
`
`SUMMARY OF MY OPINIONS
`
`8.
`
`The ’586 patent describes methods and systems for “creating
`
`electronic and/or printed documents with tagged bar coded information,” such as
`
`that shown in Figure A below, that can be “decod[ed]...from a variety of video
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`displays and/or printed media.” (Ex. 1001 at 1:19-24, 4:50-65.) The ’586 patent
`
`explains that the tagged bar codes include each of “data tags” and “data items.”
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`(See, e.g., id. at 10:34-35.)
`
`
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`
`
`
`Data Item
`
`Data Item
`
`Bar Code
`
`Bar Code
`
`Data
`Tag
`
`Data
`Tag
`
`Figure A: Annotated ’586 Patent Figure 2
`Depicting Data Tags, Data Items, and Bar Codes
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`Patent No. 9,047,586
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`In one embodiment, as illustrated in Figure A, the data tags (annotated
`
`9.
`
`in green) may take the form of “function key tags’ F01, F02, F03, etc.,” and the
`
`data items (annotated in orange) may take the form of “first name data,” “last name
`
`data,” and “age data.” (Id. at 6:9, 16-18.) As shown in Figure A, the ’586 patent
`
`explains, “the ‘function key tag’ for first name data is F01, the ‘function key tag’
`
`for last name data is F02, and the ‘function key tag’ for age data is F03.” (Id.
`
`at 6:16-18) As further shown in Figure A, each bar code (annotated in red) may
`
`encode the data tag (e.g., the function key tag F01) and the data item (e.g., the first
`
`name data BRUCE).
`
`10.
`
`In another embodiment, as illustrated in Figure B, the data tags may
`
`alternatively take the form of alphabetical tags. (Id. at 6:33-36.) As shown in
`
`Figure B, “the data tag for the first name ‘John’ is the letters ‘DAC’,” and “the last
`
`name ‘Smith’ is tagged with the letters ‘DAB.’” (Id.) The data tags “DAC” and
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`“DAB” are annotated in green, while the data items “John” and “Smith” are
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`annotated in orange.
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`Patent No. 9,047,586
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`Data Tag
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`Data Tag
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`
`
`Data Item
`
`Data Item
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`
`
`11.
`
`Figure B: Annotated ’586 Patent Figure 8
`Depicting Data Tags and Data Items
`
`In my opinion, and as I show in my analysis in this Declaration, the
`
`
`
`methods and systems described and claimed in the ’586 patent were not new or
`
`were obvious as of the priority date of the ’586 patent.
`
`12. At the time the ’586 patent was filed, it would have been obvious to
`
`one skilled in the art that bar codes could encode data tags and data items, as
`
`described and claimed in the ’586 patent. By that time, a number of bar code
`
`symbologies had been developed and were used across many industries. (Ex. 1006
`
`at 13.) These symbologies included one-dimensional, or “linear” bar codes, as well
`
`as two-dimensional bar codes. (Id. at 16-18.) One such two-dimensional bar code
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`Patent No. 9,047,586
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`was known as the MaxiCode bar code, which was developed by United Parcel
`
`Service (UPS) in 1993. (Id. at 14, 55-56.)
`
`13. At the time the ’586 patent was filed, the American National
`
`Standards Institute (ANSI) had developed a standard format for data streams
`
`encoded in bar codes on shipping labels. (Id. at 13, 75.) This standard was known
`
`as the ANSI MH10.8.M standard. (Id. at 75.) The standard described in ANSI
`
`(Ex. 1002) is a “standard for two-dimensional symbols” that is “intended to be
`
`used with [ANSI MH10.8M] when implementing two-dimensional symbols.”
`
`(Ex. 1002 at iii.) One such two-dimensional symbol is the MaxiCode bar code. (Id.
`
`at, e.g., 6.1.6.3.)
`
`14. ANSI teaches that bar codes, including both linear bar codes and two-
`
`dimensional MaxiCode bar codes, can include data items known as “data
`
`elements” that are identified by data tags known as “Data Identifiers.” (Id. at
`
`4.3.6.) As ANSI explains, a Data Identifier is “[a] specified character, or string of
`
`characters, that defines the intended use of the data element that follows.” (Id. at
`
`3.18.) In ANSI, Data Identifiers are those defined in another standard developed by
`
`ANSI, the ANSI MH10.8.2 standard described in Data Identifier Standard
`
`(Exhibit 1007). As ANSI explains, “[f]or the purposes of this standard [ANSI], Data
`
`Identifier shall mean the alphanumeric identifiers as defined in ANSI MH10.8.2.”
`
`(Ex. 1002 at 3.18.)
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`Patent No. 9,047,586
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`In particular, in ANSI, each data element in a bar code is “preceded by
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`15.
`
`[an] appropriate Data Identifier (DI).” (Id. at 4.3.6.) For example, as shown below
`
`in Figure C, in the data stream “3S0662742MV96421234,” a data element
`
`“0662742MV96421234” (annotated in orange) is preceded by the Data Identifier
`
`“3S” (annotated in green). (Id. at 3.18, 7.6.) As ANSI explains, the Data Identifier
`
`“3S” “defines the intended use of the data element that follows.” (Id. at 3.18.)
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`According to the Data Identifier Standard, the Data Identifier “3S” defines the
`
`intended use of the data element as a “Unique Package Identification.” (Ex. 1007
`
`
`at 17.) Accordingly, as shown below, the Data Identifier “3S” defines the intended
`
`
`use of the data element “0662742MV96421234” as a “Package ID.”
`
`Data Identifier
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`Data Element
`
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`
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`Figure C: Annotated ANSI Data Stream
`Depicting Data Identifier and Data Element
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`16. ANSI further teaches that the data elements and Data Identifiers can be
`
`encoded into bar codes and included in a label, as shown in Figure D. For example,
`
`data elements and Data Identifiers can be encoded into linear bar codes or two-
`
`dimensional MaxiCode bar codes, each of which is shown in Figure D (annotated
`
`in red). (Id. at 7.8.) As shown in Figure D, the intended use of the data element can
`
`be indicated on the label using what is called a “Short Title” (annotated in purple)
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`corresponding to the Data Identifier. (Ex. 1007 at 46-48.) Short Titles, like the
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`Data Identifiers themselves, are defined in the Data Identifier Standard. (Id.) As
`
`shown, the intended use of the data element “0662742MV96421234” as a
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`“Package ID” is indicated by the Short Title “PKG ID.” (Id. at 48.)
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`Bar Code
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`
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`
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`Bar Code
`
`Figure D: Annotated ANSI Label Depicting
`Bar Codes Encoding Data Identifiers and Data Elements
`
`17. Also at the time the ’586 patent was filed, it would have been obvious
`
`to one skilled in the art that bar codes encoding data tags and data items, as
`
`described and claimed in the ’586 patent, could be created, scanned, and decoded,
`
`as described and claimed in the ’586 patent.
`
`18. By that time, labels including bar coded information could be created
`
`using software, and electronic representations of bar coded information could be
`
`sent from the software to a printer for printing. (Ex. 1006 at 137, 231.) Example
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`printers for printing such labels are shown below. (Id. at 139, 145.) As the caption
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`for Figure 10-11 indicates, printers were equipped to interact with “software for
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`creating bar code images.” (Id. at 139.)
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`Patent No. 9,047,586
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`19. One example of software for creating bar codes is described in Ett
`
`(Ex. 1003). According to Ett, “code modules” stored in “memory” can create “bit
`
`map[s]” that include electronic representations of bar coded information. (Ex. 1003
`
`at 4:31-34, 38-40.) These “bit maps” can be sent to a “printer,” allowing the bar
`
`codes to be “output in paper form.” (Id. at 4:40-44.)
`
`20. Another example of software for creating bar codes is described in
`
`UPS (Ex. 1004). UPS describes “exact specifications for [customers] to follow
`
`when generating [their own] bar code...labels” using a “labeling system” that
`
`includes both “software” and a “printer.” (Ex. 1004 at 1.)
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`21. Also by the time the ’586 patent was filed, labels including bar coded
`
`information could be scanned and decoded to recover the bar coded information.
`
`(Ex. 1007 at 79 (describing “system[s] used to extract information encoded in a bar
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`code and convert it into computer-compatible digital data.”).) Example systems for
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`scanning and decoding bar codes are shown below. (Id. at 79, 87.)
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`22. One example of a system for scanning and decoding bar codes is
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`described in ANSI. ANSI describes a “scanner” defined as “an electronic device to
`
`acquire and convert light from the symbol elements, e.g., bars and spaces, of a
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`symbol into electrical signals for processing by [a] decoder.” (Ex. 1002 at 3.42.)
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`ANSI also described a “decoder” defined as “an electronic package that receives
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`the signal from the scanner, performs [an] algorithm to interpret the signals into
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`meaningful data and provides the interface to other devices.” (Id. at 3.20.)
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`23. Another example of a system for scanning and decoding bar codes is
`
`described in Ett. Ett describes a “reading station,” shown below, that includes a
`
`computer and a “scanner.” (Ex. 1003 at Figure 9.) According to Ett, the scanner
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`can “creat[e] a graphic bit map of the area covered by the bar code pattern” and
`
`“processing algorithms...well known in the art” can “decode the pattern” to recover
`
`the bar coded information. (Ex. 1003 at 6:38-41, 51-55.)
`
`24. Thus, at the time the ’586 patent was filed, it would have been
`
`
`
`obvious to one skilled in the art that bar codes could encode data tags and data
`
`items, as described and claimed in the ’586 patent. Moreover, it would have been
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`obvious to one skilled in the art that bar codes encoding data tags and data items,
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`Patent No. 9,047,586
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`as described and claimed in the ’586 patent, could be created, scanned, and
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`decoded, as described and claimed in the ’586 patent.
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`25.
`
`In summary, in my opinion the Data Identifiers, data elements, and
`
`“intended use” or Short Titles disclosed in ANSI disclose or at least render obvious
`
`the claimed “data tags,” “data items,” and “data fields,” as indicated in Table 1.
`
`Moreover, based on the systems described in ANSI, Ett, and UPS, the creation,
`
`scanning, and decoding of labels including bar codes encoding Data Identifiers and
`
`data elements would have been obvious to one skilled in the art at the time the
`
`’586 patent was filed.
`
`’586 Patent
`data tag
`
`data item
`
`data field
`
`ANSI
`Data Identifier
`
`data element
`
`“intended use” or Short Title
`
`Table 1: Mapping Terms Between ’586 Patent and Prior Art
`
`26. As I discuss in detail below, combinations of ANSI, Ett, and UPS
`
`disclose or render obvious every limitation of claims 7, 8, 12, 13, 16, 18, and 19 of
`
`the ’586 patent. In particular, as I explain below, each of the claim elements of
`
`these claims of the ’586 patent existed and was well-known in the prior art.
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`Moreover, the prior art shows that the ’586 patent claims nothing more than the
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`Patent No. 9,047,586
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`combinations of familiar elements in well-known methods. These combinations are
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`the product of ordinary skill and common sense, and not of any sort of innovation.
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`Patent No. 9,047,586
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`III. QUALIFICATIONS AND BACKGROUND
`
`27.
`
`I possess the knowledge, skills, experience, training and the education
`
`to form an expert opinion and provide testimony in this case. A detailed record of
`
`my professional qualifications is set forth in my curriculum vitae attached to this
`
`Declaration as Appendix A.
`
`28.
`
`I expect to further testify, if asked, regarding the subject matter set
`
`forth in this Declaration.
`
`29.
`
`I have more than 35 years of experience in the fields of logistics,
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`automatic identification and data capture (AIDC), and supply chain engineering. In
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`1982, I obtained a Bachelor of Science (“B.Sc.”) in Business Administration
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`(Marketing) from the University of Cincinnati in Cincinnati, Ohio. In 1993, I
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`obtained a Master’s of Science (“M.Sc.”) degree in Logistics Management from
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`the Air Force Institute of Technology at the Wright Patterson Air Force Base in
`
`Ohio.
`
`30.
`
`I am currently employed as the President of Reboulet & Associates
`
`LLC, a consulting firm based in Tipp City, Ohio, focusing on AIDC, including
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`Item Unique Identification (IUID) as used by the Department of Defense (DOD),
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`Unique Device Identification (UDI) as used by the Food and Drug Administration,
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`and data capture and traceability in manufacturing generally.
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`I have more than 27 years of experience working with AIDC.
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`31.
`
`Beginning in 1982 after graduation, I worked with the Foreign Military Sales
`
`program at the DOD in the area of supply chain management, ultimately being
`
`promoted in 1987 to serve as the first program manager for the DOD’s
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`Microcircuit Technology in Logistics Applications (MITLA) program. The
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`MITLA program sought to leverage and standardize commercial Radio Frequency
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`Identification (RFID), Personal Computer Memory Card International Association
`
`(PCMCIA) cards, and Integrated Circuit (IC) cards across logistics functions at the
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`DOD. As program manager for the MITLA program, I worked on the
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`standardization and adoption of RFID to provide in-transit visibility for global
`
`supply chains, as well as the standardization of IC cards for commercial and DOD
`
`applications. Beginning in 1994, I led the newly-formed Air Force Automatic
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`Identification Technology Program Management Office, a consolidation of the
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`MITLA program and the Logistics Marking and Automated Reading Symbols
`
`(LOGMARS) program, which was responsible for bar coding within the Air Force
`
`and the DOD.
`
`32.
`
`I have been involved in several committees at the American National
`
`Standards Institute (ANSI) and the International Organization for Standardization
`
`(ISO) during my career. I became a voting member of the ANSI X3T6 Technical
`
`Working Group in 1994, working to develop the INCITS 256 standard for RFID.
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`This standard was later adopted as the ISO / International Electrotechnical
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`Commission (IEC) 18000-7.0 standard. I was also involved in the ANSI
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`MH10/SC8 subcommittee beginning in October 1993. As a member of the ANSI
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`MH10/SC8 subcommittee, I worked to develop several standards for two-
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`dimensional bar code symbols, including the ANSI MH10.8.1 standard, the ANSI
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`MH10.8.2 standard described in Data Identifier Standard (Ex. 1007), and the
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`standard described in ANSI (Ex. 1002).
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`33.
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`In 1998, I was inducted into the AIDC 100, an organization of
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`professionals who have contributed to the growth and advancement of the AIDC
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`industry. I received the Don Percival Award from this organization in 2007 in
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`recognition of my contributions to the AIDC industry.
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`34. Additional details of my background are set forth in my curriculum
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`vitae, attached as Appendix A to this Declaration, which provides a more complete
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`description of my educational background and work experience.
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`IV. MATERIALS CONSIDERED
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`35. The analysis that I provide in this Declaration is based on my
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`education and experience in the logistics, AIDC, and supply chain engineering
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`industries, as well as the documents I have considered, including the ’586 patent,
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`which states on its face that it issued from an application filed on March 9, 2012, in
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`turn claiming priority back to an earliest application filed on May 30, 2001. For
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`Patent No. 9,047,586
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`purposes of this Declaration, I have assumed May 30, 2001, as the effective filing
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`date for the ’586 patent. I have reviewed, considered, and cited to in my analysis
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`below the following documents:
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`Exhibit No.
`
`Title of Document
`
`1001
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`1002
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`U.S. Patent No. 9,047,586 to Bruce D. Melick et al.
`
`American National Standard for Material Handling—Unit Loads
`and Transport Packages—Two-Dimensional Symbols, ANSI
`10.8.3M-1996 (“ANSI”).
`
`1003
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`U.S. Patent No. 5,298,731 to Ett (“Ett”).
`
`Guide to Bar Coding with UPS For Customers Generating Bar Code
`Labels, Version III (“UPS”).
`
`ROGER C. PALMER, THE BAR CODE BOOK (3d ed. 1995)
`(selected pages).
`
`American National Standard—Data Identifier and Application
`Identifier Standard, ANSI 10.8.2-1995 (“Data Identifier Standard”).
`
`Prosecution History of U.S. Patent Application No. 13/417,128.
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`1004
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`1006
`
`1007
`
`1015
`
`
`V. LEGAL STANDARDS
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`36.
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`In forming my opinions and considering the subject matter of the
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`’586 patent and its claims in light of the prior art, I am relying on certain legal
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`principles that counsel in this case explained to me. My understanding of these
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`concepts is summarized below.
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`37.
`
`I understand that the claims define the invention. I also understand
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`that an unpatentability analysis is a two-step process. First, the claims of the patent
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`are construed to determine their meaning and scope. Second, after the claims are
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`construed, the content of the prior art is compared to the construed claims.
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`38.
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`I understand that a claimed invention is only patentable when it is
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`new, useful, and non-obvious in light of the “prior art.” That is, the invention, as
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`defined by the claims of the patent, must not be anticipated by or rendered obvious
`
`by the prior art.
`
`39. For purposes of this Declaration, I have been asked to opine only on
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`certain issues regarding the technology at issue, the level of ordinary skill in the
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`art, the scope of the ’586 patent claims, and obviousness. I have been informed of
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`the following legal standards, which I have applied in forming my opinions.
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`A. Claim Construction
`
`40.
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`I understand that the United States Patent and Trademark Office
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`interprets claim terms of an unexpired patent based on the broadest reasonable
`
`interpretation in light of the patent’s specification. Thus, I have been informed that
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`for each claim term construed in this proceeding, I should use the “broadest
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`reasonable interpretation” that would have been understood by one of ordinary
`
`skill in the art when reading the specification and prosecution history of the
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`’586 patent at the time of the alleged invention of the ’586 patent.
`
`41.
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`I understand that the use of the word “means” in a claim triggers a
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`rebuttable presumption that it is written in a “means-plus-function” format. I also
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`understand that means-plus-function claim terms are limited to the corresponding
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`structure, material, or acts described in the specification, and their equivalents, that
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`perform the claimed function. Further, I understand that when a means-plus-
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`function term refers to software, the corresponding structure may be in the form of
`
`an algorithm, such as a flow chart.
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`B. Obviousness Under 35 U.S.C. § 103
`
`42.
`
`I have been advised that a patent claim may be unpatentable as
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`obvious under 35 U.S.C. § 103 if the differences between the subject matter
`
`patented and the prior art are such that the subject matter as a whole would have
`
`been obvious to a person of ordinary skill in the art at the time the invention was
`
`made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`the prior art; (2) the level of ordinary skill in the field of the invention; (3) the
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`differences between the claimed invention and the prior art; and (4) any objective
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`evidence of non-obviousness.
`
`43.
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`I also have been advised that combining familiar elements according
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`to known methods and in a predictable way is likely to suggest obviousness when
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`such a combination would yield predictable results.
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`VI. OVERVIEW OF THE ’586 PATENT
`
`44. The ’586 patent describes methods and systems for “creating
`
`electronic and/or printed documents with tagged bar coded information” that can
`
`be “decod[ed]...from a variety of video displays and/or printed media.” (Ex. 1001
`
`at 1:19-24.)
`
`45. According to the ’586 patent, a “tagged bar code” includes “data tags”
`
`that are “used to identify data,” also referred to as “data items,” in the bar code.
`
`(Id. at 6:3-4.)
`
`46.
`
`In one embodiment, as illustrated in Figure E (which is an annotated
`
`version of Figure 2 of the ’586 patent), the data tags (annotated in green) may take
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`the form of “‘function key tags’ F01, F02, F03, etc.” (Id. at 6:9.) The data items
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`(annotated in orange) may take the form of data used to populate “data fields”
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`(annotated in purple), including “first name data,” “last name data,” and “age
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`data.” (Id. at 6: 16-18.)
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`47.
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`In particular, as shown in Figure E, the “function key tag”—that is,
`
`the data tag—for the data item “Bruce” is “F01.” (Id.) Similarly, the “function key
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`tag”—that is, the data tag—for the data item “Smith” is “F02.” (Id.)
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`48. As further shown in Figure E, the data tags (“F01,” “F02”) and the
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`data items (“Bruce,” “Smith”) are encoded into bar codes (annotated in red). While
`
`Figure E depicts linear bar codes, the ’586 patent explains that the bar codes
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`encoding tagged bar code data can take linear or two-dimensional formats. (Id. at
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`4:35-38.)
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`Data
`Tag
`
`
`
`
`
`
`
`
`
`
`
`Data
`Field
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`Data
`Tag
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`Data
`Field
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`Data Item
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`Data Item
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`Bar Code
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`Bar Code
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`
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`Figure E: Annotated ’586 Patent Figure 2
`Depicting Data Tags, Data Items, Data Fields, and Bar Codes
`
`49.
`
`In another embodiment, as illustrated in Figure C (which is an
`
`annotated version of Figure 8 of the ’586 patent), the data tags (annotated in green)
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`may instead take the form of alphabetical tags. (Id. at 6:33-36.) As shown in
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`Figure C, the data tag for the data item “Smith” (annotated in orange) is “DAB.”
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`(Id.) Similarly, the data tag for the data item “John” (annotated in orange) is
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`“DAC.” (Id.) The data tags and data items shown in Figure C are likewise encoded
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`into bar codes, the ’586 patent explains. (Id. at 30-36.)
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`Patent No. 9,047,586
`Declaration of Mark Reboulet
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`Data Tag
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`Data Tag
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`Data Item
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`Data Item
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`
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`Figure C: Annotated ANSI Data Stream
`Depicting Data Identifier and Data Element
`
`50.
`
`Independent claim 7 recites the concept of tagged bar codes via a
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`“computer-readable storage device” that is configured for “creating an electronic
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`document having a plurality of bar codes.” (Id. at 10:29-34 (claim 7).) Further,
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`claim 7 specifies that “the plurality of bar codes encode respective data tags and
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`data items” and “at least one of the data