Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
`
`EXPERT DECLARATION OF DR. KEVIN NEGUS
`FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,757,718
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`DISH, Exh. 1012, p. 1
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`TABLE OF CONTENTS
`
`INTRODUCTION .....................................................................................................................3
`I.
`II. QUALIFICATIONS ..................................................................................................................6
`III. PERSON OF ORDINARY SKILL IN THE ART ..................................................................14
`IV. LEGAL UNDERSTANDING .................................................................................................15
`V. THE ‘021, ‘718 AND ‘061 PATENTS ...................................................................................20
`A.
`Overview of the ‘021, ‘718 and ‘061 Patents .....................................................20
`B.
`Asserted Claims and Priority Date .....................................................................32
`C.
`Objective Indicia of Non-obviousness ................................................................32
`VI. CLAIM CONSTRUCTION ....................................................................................................33
`VII.
`STATE OF THE ART .......................................................................................................39
`A.
`Kupiec (Ex. 1013) .................................................................................................39
`B.
`Cheyer (Ex. 1019) .................................................................................................59
`C.
`Kimura (Ex. 1015) ................................................................................................71
`D.
`Freeman (Ex. 1014) ..............................................................................................77
`VIII. OBVIOUSNESS OF THE ‘718 PATENT UNDER 35 U.S.C. § 103 DUE TO KUPIEC
`IN VIEW OF CHEYER AND KIMURA OR FREEMAN ...........................................................84
`IX. CONCLUSION .....................................................................................................................274
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`I.
`
`INTRODUCTION
`
`
`
`I, Dr. Kevin Negus, submit this declaration in support of a Petition for Inter
`
`Partes Review of United States Patent Nos. 6,757,718 (the “‘718 Patent”), owned by IPA
`
`Technologies L.L.C. (“IPA” or “Patent Owner”). I have been retained in this matter by Baker
`
`Botts LLP (“Counsel”) on behalf of DISH Network L.L.C. (“Petitioner”). Petitioner DISH
`
`Network L.L.C. and DISH Network Corporation (“DISH”) are the Real Parties-in-Interest to this
`
`Petition. DISH is a provider of direct broadcast satellite (DBS) services.
`
`
`
`I make this declaration based upon my personal knowledge. I am over the age of
`
`21 and am competent to make this declaration.
`
`
`
`The statements herein include my opinions and the bases for those opinions,
`
`which relate to at least the following documents of the pending inter partes review petition:
`
`§ U.S. Patent No. 6,742,021 by Christine Halverson, Luc Julia, Dimitris Voutsas, and Aden
`
`J. Cheyer, entitled “Navigating Network-Based Electronic Information Using Spoken
`
`Input with Multimodal Error Feedback” (the “‘021 Patent”) (Ex. 1001).
`
`§ File History for U.S. Patent No. 6,742,021 (Ex. 1002).
`
`§ U.S. Patent No. 6,757,718 by Christine Halverson, Luc Julia, Dimitris Voutsas, and
`
`Adam Cheyer, entitled “Mobile Navigation of Network-Based Electronic Information
`
`Using Spoken Input” (the “‘718 Patent”) (Ex. 1003).
`
`§ File History for U.S. Patent No. 6,757,718 (Ex. 1004).
`
`§ U.S. Patent No. 6,523,061 by Christine Halverson, Luc Julia, Dimitris Voutsas, and
`
`Adam Cheyer, entitled “System, Method, and Article of Manufacture for Agent-Based
`
`Navigation in a Speech-Based Data Navigation System” (the “‘061 Patent”) (Ex. 1005).
`
`§ File History for U.S. Patent No. 6,523,061 (Ex. 1006).
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`§ U.S. Patent No. 6,851,115 by Christine Halverson, Luc Julia, Dimitris Voutsas, and
`
`Adam Cheyer, entitled “Software-Based Architecture for Communication and
`
`Cooperation Among Distributed Electronic Agents” (the “‘115 Patent”) (Ex. 1007).
`
`§ File History for U.S. Patent No. 6,851,115 (Ex. 1008).
`
`§ File History for U.S. Patent Application No. 60/124,720 (Ex. 1009).
`
`§ File History for U.S. Patent Application No. 60/124,719 (Ex. 1010).
`
`§ File History for U.S. Patent Application No. 60/124,718 (Ex. 1011).
`
`§ U.S. Patent No. 5,500,920 by Julian M. Kupiec, entitled “Semantic Co-ocurrence
`
`Filtering for Speech Recognition and Signal Transcription Applications” (“Kupiec”) (Ex.
`
`1013).
`
`§ U.S. Patent No. 6,006,227 by Eric Freeman et al., entitled “Document Stream Operating
`
`System” (“Freeman”) (Ex. 1014).
`
`§ U.S. Patent No. 5,247,580 by Toshiyuki Kimura et al., entitled “Voice-operated remote
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`control system” (“Kimura”) (Ex. 1015).
`
`§ Complaint, IPA Technologies Inc. v. DISH Network Corp. et al., No. 1:16-cv-01170 (D.
`
`Del.) (“District Court Litigation”) (Ex. 1016).
`
`§ Non-patent literature publication by Adam J. Cheyer and Luc Julia, entitled “Multimodal
`
`Maps: An Agent-based Approach” (“Cheyer”) (Ex. 1019).
`
`
`
`My materials considered for forming my opinions herein have included at least
`
`the above-referenced documents.
`
`
`
`Although I am being compensated for my time at a rate of $500 per hour in
`
`preparing this declaration, the opinions herein are my own, and I have no stake in the outcome of
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`the review proceeding. My compensation does not depend in any way on the outcome of the
`
`Petitioner’s petition.
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`II.
`
`QUALIFICATIONS
`
`
`
`I am qualified by education and experience to testify as an expert in the field of
`
`telecommunications. Attached, as Attachment A, is a copy of my resume detailing my
`
`experience and education. Additionally, I provide the following overview of my background as it
`
`pertains to my qualifications for providing expert testimony in this matter.
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`
`
`I am a Full Professor of Electrical Engineering at Montana Tech University in
`
`Butte, MT. I lead a research program at Montana Tech to improve the delivery of mobile
`
`broadband communications services to rural and remote areas and to enable communications
`
`from sensors in challenging locations such as wildlife, drill holes, underground mines or long-
`
`haul electric transmission towers. I mentor, supervise and teach both senior undergraduate and
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`graduate students of Electrical Engineering in the general fields of telecommunications and
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`networking with an emphasis on wireless systems.
`
`
`
`In 1988, I received my Ph.D. in Engineering from the University of Waterloo in
`
`Canada. The Departments of Electrical Engineering and Mechanical Engineering jointly
`
`supervised my Ph.D. research on the modeling of bipolar semiconductor devices. My graduate
`
`course work was primarily in Electrical Engineering and included such subjects as
`
`semiconductor device physics and fabrication, wireless circuit design, and wireless propagation
`
`analysis. For my Ph.D. work, I received the Faculty Gold Medal in 1988 for the best Ph.D. thesis
`
`in the entire Faculty of Engineering across all Departments for that year. My Ph.D. thesis
`
`research also formed the basis of a paper published in 1989 that won the award for Best Paper in
`
`1989 for the IEEE (Institute of Electrical and Electronic Engineers) journal in which it was
`
`published.
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`
`
`In 1984 and 1985, respectively, I received the B.A.Sc. and M.A.Sc. Degrees in
`
`Mechanical Engineering from the University of Waterloo in Canada. My coursework and
`
`research work included, amongst many other topics, extensive embedded firmware development
`
`for automation applications and implementation of networks and communications protocols. For
`
`my M.A.Sc. Degree research and academic achievements, I received the prestigious University
`
`Gold Medal in 1985 for the best Masters thesis in the entire University of Waterloo for that year.
`
`
`
`In 1986, I joined the Palo Alto Research Center of Fairchild Semiconductor in
`
`Palo Alto, CA. At Fairchild, I participated in the development of devices and products for high-
`
`speed applications such as wired networking, RISC microprocessors and wireless
`
`communications.
`
`
`
`In 1988, I took the position of Member of the Technical Staff at Avantek, Inc. in
`
`Newark, CA. I was hired to develop products for both wireless and wired data networking
`
`applications. Some of the components I developed early in my career at Avantek were used for
`
`1st generation wireless local area network (WLAN) products, voice band modem equipment,
`
`wired data networking both in the LAN and WAN and 1st generation cellular handsets and base
`
`stations based on AMPS or TACS.
`
`
`
`In 1991, the Hewlett-Packard Company purchased Avantek, Inc. I continued to
`
`work for Hewlett-Packard until 1998 in such roles as IC Design Manager, Director of Chipset
`
`Development and Principal System Architect. In 1992, Hewlett-Packard assigned me to work on
`
`the “Field of Waves” project, which was a major multi-division effort to build WLAN products
`
`for mobile computers. The project was cancelled in 1993. However, the work I did on the
`
`project was leveraged into producing the world’s first IEEE 802.11 chipset, which my division at
`
`Hewlett-Packard first offered for sale in 1994. I led the project to develop and market this
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`chipset for many early WLAN product companies including Proxim, Symbol (now part of
`
`Motorola) and Aironet (now part of Cisco). I also helped coordinate efforts within Hewlett-
`
`Packard to guide extensive research projects on WLAN protocols and technology at Hewlett-
`
`Packard’s central research laboratories in Palo Alto, CA and Bristol, U.K.
`
`
`
`I developed or led the development of multiple chips and chipsets for 2G cellular
`
`radio systems based on GSM, IS-54 (TDMA), and IS-95 (CDMA). A number of these chips
`
`were directed solely to cellular mobile stations and done specifically for major Hewlett-Packard
`
`customers and cellular handset and module manufacturers such as Motorola, Ericsson and
`
`Siemens. I was also involved in the development of power amplifier chips and modules for
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`cellular mobile stations, cordless phones, wireless networking devices and cellular infrastructure
`
`products including those directed towards then emerging 3G cellular standards such as
`
`WCDMA, 1xRTT and EV-DO.
`
`
`
`During my time at Avantek and Hewlett-Packard, I also developed or led
`
`development teams for numerous chipsets or general purpose chips used in other wired and
`
`wireless communications applications such as fiber optic transceivers, cordless telephones, cable
`
`set-top receivers, wired networking equipment, cellular infrastructure equipment, voice band and
`
`broadband wired modems and satellite TV receivers.
`
`
`
`In 1998, I joined Proxim, Inc. in Mountain View, CA. At that time, Proxim was
`
`engaged in the development and sale of wired and wireless products for home and enterprise
`
`networking applications based on several different wired and wireless networking protocols. I
`
`stayed at Proxim through 2002 and was the Chief Technology Officer for this publicly-traded
`
`company at the time of my departure. During my career at Proxim, I led or participated in the
`
`development of many WLAN and WWAN products and/or chipsets for network adapters, OEM
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`design-in modules, access points, bridges, switches, and routers that used a wide variety of bus,
`
`LAN, or WAN wired interfaces. I have supervised many engineers including those responsible
`
`for embedded firmware development to implement various wired and wireless networking,
`
`reservation, and security protocols at the MAC layer and above, those responsible for HDL code
`
`creation of baseband chips to implement PHY and MAC algorithms, as well as other engineers
`
`that developed hardware reference designs, modem algorithms and chipsets.
`
`
`
`During my many years of development of products providing voice, data and/or
`
`streaming media capabilities, I have acquired a deep understanding of the cellular radio system,
`
`the Public Switched Telephone Network (PSTN) and the public Internet network architectures
`
`and protocols. A partial list of networking and telephony protocols that I am familiar with
`
`includes DHCP, SNMP, TCP, UDP, IP, SIP, ICMP, SS7, ISDN, ISUP, TCAP, and MTP.
`
`
`
`Over the past 30 years I have personally developed, modified, or analyzed
`
`numerous software or firmware modules for many different applications as well as supervised
`
`many engineers performing the same tasks. I have implemented or supervised the
`
`implementation of software and firmware code and/or hardware description language (HDL)
`
`code for many different communications protocols across all layers. I have developed or
`
`supervised the development of chips with both wireless baseband modem functionality and
`
`embedded processors including those licensed by ARM and MIPS. I have programmed with
`
`multiple high level languages for software and firmware code including C, C++, Fortran, Forth,
`
`BASIC, Pascal, Lisp and COBOL. I have developed products with HDL code including VHDL
`
`and Verilog. I also have firsthand experience with assembly language programming. I have
`
`personally designed a wide variety of analog, RF, and digital circuit elements at both the chip
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`and board level using various netlist-driven, schematic capture and manual or automated layout
`
`CAE/CAD tools.
`
`
`
`Since 2002, I have been an independent consultant and have provided services to
`
`a number of companies including some that have developed IEEE 802.11 products. In particular,
`
`from 2002 until 2007 I was Chairman of WiDeFi, Inc. – a company that developed chips and
`
`embedded firmware for 802.11 repeater products based on 802.11a, b, g and draft n amendments.
`
`From 2007-2011, I was Chairman of Tribal Shout – a company that delivered IP voice and audio
`
`streaming media using VoIP to any cellular or landline phone including those reachable only by
`
`the circuit-switched connections such as the PSTN and 2nd generation cellular radio. From
`
`2010-2016, I was Chairman and Chief Technology Officer of CBF Networks, Inc. (dba Fastback
`
`Networks) – a company that developed fiber extension products for backhaul of data networks
`
`including Wi-Fi, HSPA, CDMA2000, WiMAX and LTE cellular radio systems. I architected the
`
`products of Fastback Networks specifically around the re-use of chips originally developed and
`
`intended for LTE standards-based operation and for carrier-grade Ethernet network interface
`
`cards, switches and/or routers.
`
`
`
`I have been a Board Observer on behalf of the venture capital firm Camp
`
`Ventures at two companies that develop semiconductor components including one that
`
`developed technology specifically to improve the system performance of HSPA and LTE cellular
`
`radio systems (Quantance) and another that provides system on a chip (SOC) microcontrollers,
`
`OEM design-in modules and firmware with 802.11 and wired interfaces for embedded
`
`applications (GainSpan). I have also been a technology and/or business strategy advisor to
`
`multiple early stage companies that are developing such products as new wireless
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`communications security systems (AirTight), RFID radio systems (Mojix) and time/frequency
`
`reference components (SiTime).
`
`
`
`I have actively monitored or participated in the IEEE 802.11 standards process
`
`continuously since 1989. I am a listed contributor to the highly successful IEEE 802.11g
`
`standard published in 2003 that describes a wireless communications protocol in use worldwide
`
`by over 5 billion devices. In 2002 and 2003, I participated in the IEEE 802.11 Wireless Next
`
`Generation Committee that was responsible for launching the 802.11n standards development
`
`process.
`
`
`
`In 1996, I was assigned the responsibility within the Hewlett-Packard Company
`
`for developing the HomeRF standard for WLANs specifically for home networking applications.
`
`I eventually became Chairman of the Technical Subcommittee of HomeRF that wrote the
`
`HomeRF standard. The HomeRF standard was essentially a modification of the IEEE 802.11
`
`standard with significant changes to the PHY and MAC layers to lower cost and improve
`
`performance and security for home networking applications including integrated voice capability
`
`over both IP and circuit-switched connections. From 1998 to 2002, millions of wireless network
`
`adapters and access points from several different companies were shipped based upon
`
`compliance to the HomeRF standard.
`
`
`
`I have specific experience with many wired and wireless networking standards
`
`including IEEE 802.1 and 802.3 (the “Ethernet” family of wired LANs), IEEE 802.11 (the “Wi-
`
`Fi” family of wireless LANs), IEEE 802.15 (personal area networks or “PAN”), IEEE 802.16
`
`(also known as “WiMAX”), various cellular communications standards (such as IS-19, IS-41,
`
`IS-54, IS-95, IS-136, IS-826, IS-707, IS-856, IS-2000, CDPD, GSM, GPRS, EDGE, UMTS,
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`CAMEL, WCDMA, HSPA, and LTE), various cordless telephone standards (such as CT-2,
`
`DECT, and PHS), and other wired networking standards (such as DOCSIS, SONET and FDDI).
`
`
`
`I am an author or co-author of many papers that have been published in
`
`distinguished engineering journals or conferences such as those of the IEEE or ASME. An
`
`exemplary list of these publications is included in my resume, and I believe that this list includes
`
`all publications I have authored at least in the past ten years.
`
`
`
`I am also a former member of the Federal Communication Commission’s
`
`Technological Advisory Committee as an appointee of then Chairman Michael Powell. I have
`
`also served on the Wyoming Telecommunications Council as an appointee of then Governor Jim
`
`Geringer after confirmation by the Wyoming State Senate.
`
`
`
`I am named as an inventor on numerous U.S. patents all of which have related in
`
`at least some way to products for wired and/or wireless networks. I believe that the following is
`
`a complete list as of this date for my approximately 58 issued U.S. Patents: 4,839,717,
`
`5,111,455, 5,150,364, 5,436,595, 5,532,655, 6,587,453, 7,035,283, 7,085,284, 7,187,904,
`
`8,095,067, D704174, 8,238,318, 8,300,590, 8,311,023, 8,385,305, 8,422,540, 8,467,363,
`
`8,502,733, 8,638,839, 8,649,418, 8,761,100, 8,811,365, 8,824,442, 8,830,943, 8,872,715,
`
`8,897,340, 8,928,542, 8,942,216, 8,948,235, 8,982,772, 8,989,762, 9,001,809, 9,049,611,
`
`9,055,463, 9,178,558, 9,179,240, 9,226,315, 9,226,295, 9,252,857, 9,282,560, 9,313,674,
`
`9,325,398, 9,345,036, 9,350,411, 9,374,822, 9,408,215, 9,474,080, 9,490,918, 9,572,163,
`
`9,577,700, 9,577,733, 9,578,643, 9,609,530, 9,655,133, 9,712,216, 9,713,019, 9,713,155,
`
`9,713,157.
`
`
`
`During the past several years, I have provided expert testimony, reports or
`
`declarations in the cases of Agere v. Sony (on behalf of plaintiff Agere), Linex v. Belkin et al. (on
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`behalf of defendant Cisco), CSIRO v. Toshiba et al. (multiple related cases on behalf of plaintiff
`
`CSIRO), Freedom Wireless v. Cingular et al. (on behalf of plaintiff Freedom Wireless),
`
`Rembrandt v. HP et al. (on behalf of defendant HP), DNT v. Sprint et al. (on behalf of the
`
`defendants Sprint, T-Mobile, US Cellular, Verizon and Novatel), Teles v. Cisco (on behalf of
`
`defendant Cisco), WiAV v. HP (on behalf of defendant HP), SPH v. Acer et al. (on behalf of
`
`defendants Sony, Nokia, Motorola, Novatel, Sierra and Dell), LSI v. Funai (on behalf of plaintiff
`
`LSI), WiAV v. Dell and RIM (on behalf of the defendants Dell and RIM), Wi-LAN v. RIM (on
`
`behalf of defendant RIM), LSI v. Barnes & Noble (on behalf of plaintiff LSI), Novatel v.
`
`Franklin and ZTE (on behalf of plaintiff Novatel), LSI v. Realtek (on behalf of plaintiff LSI), Wi-
`
`LAN v. Apple et al. (on behalf of defendants Apple, Sierra and Novatel), EON v. Sensus et al. (on
`
`behalf of defendants Motorola, US Cellular and Sprint), M2M v Sierra et al. (multiple related
`
`cases on behalf of defendants Sierra and Novatel), Intellectual Ventures v. AT&T et al. (on behalf
`
`of defendants AT&T, T-Mobile and Sprint), Intellectual Ventures v. Motorola (on behalf of
`
`defendant Motorola), TQ Beta v. Dish et al. (on behalf of defendant Dish), Qurio v. Dish et al.
`
`(on behalf of defendant Dish), Fatpipe v. Talari (on behalf of the defendant Talari), EON v.
`
`Apple (on behalf of defendant Apple), Chrimar v. Dell (on behalf of defendant Dell), Nokia v.
`
`LGE (on behalf of plaintiff Nokia), PanOptis v. Blackberry (on behalf of defendant Blackberry),
`
`Customedia v. Dish et al. (on behalf of defendant Dish), Blackberry v. BLU (on behalf of
`
`plaintiff Blackberry), MTel v. Charter et al. (on behalf of defendants Charter, Time Warner, Cox
`
`and Bright House), Huawei v. Samsung (on behalf of plaintiff Huawei) and Alacritech v. Wistron
`
`(on behalf of defendant Wistron). I believe that the preceding list includes all cases that I have
`
`testified in as an expert at trial or by deposition at least during the past four years.
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`DISH, Exh. 1012, p. 13
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`III.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`
`
`I understand that the content of a patent (including its claims) and prior art should
`
`be interpreted the way a person of ordinary skill in the art (or “POSITA”) would have interpreted
`
`the material at the alleged time of invention.
`
`
`
`I understand that the “alleged time of invention” here is no earlier than the date
`
`that the applicants for the ‘021, ‘718 and ‘061 Patents first filed an application related to the
`
`‘021, ‘718 and ‘061 Patents in the United States Patent and Trademark Office, namely, Jan. 5,
`
`1999, as further discussed herein.
`
`
`
`It is my opinion that the person of ordinary skill in the art (or “POSITA”) at the
`
`time of the filing date of the ‘021, ‘718 and ‘061 Patents would have had at least a Bachelor of
`
`Science in Computer Science, Computer Engineering, Electrical Engineering, or an equivalent
`
`field as well as at least 2 years of academic or industry experience in any type of network
`
`equipment field.
`
`
`
`In addition to my testimony as an expert, I am prepared to testify as someone who
`
`actually practiced in the field from 1986 to present, who actually possessed at least the
`
`knowledge of a person of ordinary skill in the art in that time period, and who actually worked
`
`with others possessing at least the knowledge of a person of ordinary skill in the art in that time
`
`period.
`
`
`
`I understand that the person of ordinary skill is a hypothetical person who is
`
`assumed to be aware of all the pertinent information that qualifies as prior art. In addition, the
`
`person of ordinary skill in the art makes inferences and takes creative steps.
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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`IV.
`
`LEGAL UNDERSTANDING
`
`
`
`I have a general understanding of validity based on my experience with patents
`
`and my discussions with counsel.
`
`
`
`I have a general understanding of prior art and priority date based on my
`
`experience with patents and my discussions with counsel.
`
`
`
`I understand that inventors are entitled to a priority date up to one year earlier
`
`than an actual date of filing of a patent application that provides written description support for a
`
`particular claim to the extent that they can show complete possession of such a particular
`
`claimed invention at such an earlier priority date and reasonable diligence to reduce such a
`
`particular claimed invention to practice between such an earlier priority date and such an actual
`
`date of filing. I understand that if the Patent Owner contends that particular claims are entitled to
`
`such an earlier priority date than such an actual date of filing, then the Patent Owner has the
`
`burden to prove this contention with specificity.
`
`
`
`I understand that an invention by another must be made before the priority date of
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`a particular patent claim in order to qualify as “prior art” under 35 U.S.C. § 102 or § 103, that a
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`printed publication or a product usage must be publicly available before the priority date of a
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`particular patent claim in order to qualify as “prior art” under 35 U.S.C. § 102(a), that a printed
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`publication or a product usage or offer for sale must be publicly available more than one year
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`prior to the actual date of filing of a patent application that provides written description support
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`for a particular claim in the United States in order to qualify as “prior art” under 35 U.S.C. §
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`102(b), or that the invention by another must be described in an application for patent filed in the
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`United States before the priority date of a particular patent claim in order to qualify as “prior art”
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`- 15 -
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`DISH, Exh. 1012, p. 15
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`

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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`under 35 U.S.C. § 102(e). I understand that the Defendants have the burden of proving that any
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`particular reference or product usage or offer for sale is prior art.
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`
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`I have a general understanding of anticipation based on my experience with
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`patents and my discussions with counsel.
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`
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`I understand that anticipation analysis is a two-step process. The first step is to
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`determine the meaning and scope of the asserted claims. Each claim must be viewed as a whole,
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`and it is improper to ignore any element of the claim. For a claim to be anticipated under U.S.
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`patent law: (1) each and every claim element must be identically disclosed, either explicitly or
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`inherently, in a single prior art reference; (2) the claim elements disclosed in the single prior art
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`reference must be arranged in the same way as in the claim; and (3) the identical invention must
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`be disclosed in the single prior art reference, in as complete detail as set forth in the claim.
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`Where even one element is not disclosed in a reference, the anticipation contention fails.
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`Moreover, to serve as an anticipatory reference, the reference itself must be enabled, i.e., it must
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`provide enough information so that a person of ordinary skill in the art can practice the subject
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`matter of the reference without undue experimentation.
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`
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`I further understand that where a prior art reference fails to explicitly disclose a
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`claim element, the prior art reference inherently discloses the claim element only if the prior art
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`reference must necessarily include the undisclosed claim element. Inherency may not be
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`established by probabilities or possibilities. The fact that an element may result from a given set
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`of circumstances is not sufficient to prove inherency. I have applied these principles in forming
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`my opinions in this matter.
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`
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`I have a general understanding of obviousness based on my experience with
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`patents and my discussions with counsel.
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`- 16 -
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`DISH, Exh. 1012, p. 16
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`

`

`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
`
`
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`I understand that a patent claim is invalid under 35 U.S.C. § 103 as being obvious
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`only if the differences between the claimed invention and the prior art are such that the subject
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`matter as a whole would have been obvious at the time the invention was made to a person of
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`ordinary skill in that art. An obviousness analysis requires consideration of four factors: (1)
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`scope and content of the prior art relied upon to challenge patentability; (2) differences between
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`the prior art and the claimed invention; (3) the level of ordinary skill in the art at the time of the
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`invention; and (4) the objective evidence of non-obviousness, such as commercial success,
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`unexpected results, the failure of others to achieve the results of the invention, a long-felt need
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`which the invention fills, copying of the invention by competitors, praise for the invention,
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`skepticism for the invention, or independent development.
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`
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`I understand that a prior art reference is proper to use in an obviousness
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`determination if the prior art reference is analogous art to the claimed invention. I understand
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`that a prior art reference is analogous art if at least one of the following two considerations is
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`met. First a prior art reference is analogous art if it is from the same field of endeavor as the
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`claimed invention, even if the prior art reference addresses a different problem and/or arrives at a
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`different solution. Second, a prior art reference is analogous art if the prior art reference is
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`reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of
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`endeavor as the claimed invention.
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`
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`I understand that it must be shown that one having ordinary skill in the art at the
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`time of the invention would have had a reasonable expectation that a modification or
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`combination of one or more prior art references would have succeeded. Furthermore, I
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`understand that a claim may be obvious in view of a single prior art reference, without the need
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`to combine references, if the elements of the claim that are not found in the reference can be
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`- 17 -
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`DISH, Exh. 1012, p. 17
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`

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`Expert Declaration of Dr. Kevin Negus for Inter Partes Review of U.S. Patent No. 6,757,718
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`supplied by the knowledge or common sense of one of ordinary skill in the relevant art.
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`However, I understand that it is inappropriate to resolve obviousness issues by a retrospective
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`analysis or hindsight reconstruction of the prior art and that the use of “hindsight reconstruction”
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`is improper in analyzing the obviousness of a patent claim.
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`
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`I further understand that the law recognizes several specific guidelines that inform
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`the obviousness analysis. First, I understand that a reconstructive hindsight approach to this
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`analysis, i.e., the improper use of post-invention information to help perform the selection and
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`combination, or the improper use of the listing of elements in a claim as a blueprint to identify
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`selected portions of different prior art references in an attempt to show that the claim is obvious,
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`is not permitted. Second, I understand that any prior art that specifically teaches away from the
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`claimed subject matter, i.e., prior art that would lead a person of ordinary skill in the art to a
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`specifically different solution than the claimed invention, points to non-obviousness, and
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`conversely, that any prior art that contains any teaching, suggestion, or motivation to modify or
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`combine such prior art reference(s) points to the obviousness of such a modification or
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`combination. Third, while many combinations of the prior art might be “obvious to try”, I
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`understand that any obvious to try analysis will not render a patent invalid unless it is shown that
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`the possible combinations are: (1) sufficiently small in number so as to be reasonable to conclude
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`that the combination would have been selected; and (2) such that the combination would have
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`been believed to be one that would produce predictabl