`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`
`NOKIA OF AMERICA CORPORATION
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner
`
`
`__________________________________________________________________
`
`DECLARATION OF PAUL S. MIN, PH.D
`
`
`Case No. IPR2018-0XXXX
`__________________________________________________________________
`
`
`
`NAC1003
`Page 1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`Introduction & Summary of Opinions ............................................................. 1
`
`Background/Qualifications .............................................................................. 2
`
`III. Documents and Materials Considered ............................................................. 6
`
`IV. Legal Principles ............................................................................................... 7
`
`V.
`
`Challenged Claims of ʼ828 Patent ................................................................. 13
`
`VI. Person of Ordinary Skill in the Art ................................................................ 20
`
`VII. Technology Background ................................................................................ 21
`
`VIII. Prior Art References ...................................................................................... 39
`
`IX. Claim Construction ........................................................................................ 40
`
`X.
`
`Invalidity Analysis of the ʼ828 Patent ........................................................... 40
`
`A.
`
`Independent claim 1 is obvious. .......................................................... 40
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`A method performed by user equipment (UE), the
`method comprising: .................................................................. 41
`
`receiving, by the UE, an indication of whether
`accumulation of transmit power control (TPC)
`commands is enabled; ............................................................... 41
`
`determining, by the UE, a path loss of a downlink
`channel; ..................................................................................... 42
`
`receiving, on a single physical channel by the UE if
`accumulation is enabled, an allocation of a scheduled
`uplink resource and a TPC command, wherein the TPC
`command is accumulated with other received TPC
`commands; ................................................................................ 43
`
`calculating, by the UE if accumulation is enabled,
`transmit power in association with an uplink
`communication based on both the path loss and the
`accumulated TPC commands; and ............................................ 47
`
`receiving, on the single physical channel by the UE if
`accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data at a power level
`calculated by the UE based on the path loss. ............................ 48
`
`
`
`i
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`NAC1003
`Page 2
`
`

`

`B.
`
`Dependent claim 5 is obvious. ............................................................ 50
`
`1.
`
`2.
`
`The method according to claim 1,............................................. 50
`
`wherein the determining the path loss further includes
`computing a difference between a signaled transmit
`power and a measured received power of the downlink
`channel. ..................................................................................... 50
`
`C.
`
`Dependent claim 6 is obvious. ............................................................ 51
`
`1.
`
`2.
`
`The method according to claim 1,............................................. 51
`
`wherein the calculated transmit power is based on a
`selected transport format. .......................................................... 51
`
`D.
`
`Independent claim 8 is obvious. .......................................................... 52
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`A user equipment (UE) characterized in that: .......................... 52
`
`circuitry is configured to receive, by the UE, an
`indication of whether accumulation of transmit power
`control (TPC) commands is enabled; ........................................ 52
`
`circuitry is configured to determine a path loss of a
`downlink channel; ..................................................................... 52
`
`the circuitry is further configured to receive, on a single
`physical channel if accumulation is enabled, an allocation
`of a scheduled uplink resource and a TPC command,
`wherein the TPC command is accumulated with other
`received TPC commands; ......................................................... 52
`
`circuitry is configured to calculate, by the UE if
`accumulation is enabled, transmit power in association
`with an uplink communication based on both the path
`loss and the accumulated TPC commands; and ........................ 52
`
`the circuitry is further configured to receive, on the
`single physical channel by the UE if accumulation is not
`enabled, an allocation of a scheduled uplink resource to
`transmit data at a power level calculated by the UE based
`on the path loss. ......................................................................... 53
`
`E.
`
`Dependent claim 12 is obvious. .......................................................... 53
`
`1.
`
`The UE of claim 8, .................................................................... 53
`
`
`
`ii
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`NAC1003
`Page 3
`
`

`

`2.
`
`wherein the determination of the path loss further
`includes a computation of a difference between signaled
`transmit power and a measured received power of the
`downlink channel. ..................................................................... 53
`
`F.
`
`Dependent claim 13 is obvious. .......................................................... 53
`
`1.
`
`2.
`
`The UE of claim 8, .................................................................... 53
`
`wherein the calculated transmit power is based on a
`selected transport format. .......................................................... 53
`
`G.
`
`Independent claim 15 is obvious. ........................................................ 54
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`A method performed by a wireless network, the method
`comprising: ................................................................................ 54
`
`sending, by the wireless network, an indication of
`whether accumulation of transmit power control (TPC)
`commands is enabled; ............................................................... 54
`
`determining, by a user equipment (UE), a path loss of a
`downlink channel; ..................................................................... 54
`
`receiving, on a single physical channel by the UE if
`accumulation is enabled, an allocation of a scheduled
`uplink resource and a TPC command, wherein the TPC
`command is accumulated with other received TPC
`commands; ................................................................................ 54
`
`calculating, by the UE if accumulation is enabled,
`transmit power in association with an uplink
`communication based on both the path loss and the
`accumulated TPC commands; and ............................................ 54
`
`receiving, on the single physical channel by the UE if
`accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data to the wireless network
`at a power level calculated by the UE based on the path
`loss............................................................................................. 54
`
`H. Dependent claim 19 is obvious ........................................................... 55
`
`1.
`
`2.
`
`The method of claim 15, ........................................................... 55
`
`wherein the determining the path loss further includes
`computing a difference between a signaled transmit
`
`
`
`iii
`
`NAC1003
`Page 4
`
`

`

`power an a measured received power of the downlink
`channel. ..................................................................................... 55
`
`I.
`
`Dependent claim 20 is obvious ........................................................... 55
`
`1.
`
`2.
`
`The method of claim 15, ........................................................... 55
`
`wherein the calculated transmit power is based on a
`selected transport format. .......................................................... 55
`
`J.
`
`Independent claim 22 is obvious ......................................................... 55
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`A wireless network characterized in that: ................................. 56
`
`the wireless network is configured to send an indication
`of whether accumulation of transmit power control (TPC)
`commands is enabled; ............................................................... 56
`
`a user equipment (UE) characterized in that:............................ 56
`
`circuitry is configured to determine, by the UE, a path
`loss of a downlink channel; ....................................................... 56
`
`circuitry is configured to receive, on a single physical
`channel if accumulation is enabled, an allocation of a
`scheduled uplink resource and a TPC command, wherein
`the TPC command is accumulated with other received
`TPC commands; ........................................................................ 56
`
`circuitry is configured to calculate, by the UE if
`accumulation is enabled, transmit power in association
`with an uplink communication based on both the path
`loss and the accumulated TPC commands; and ........................ 56
`
`the circuitry is further configured to receive, on the
`single physical channel by the UE if accumulation is not
`enabled, an allocation of a scheduled uplink resource to
`transmit data to the wireless network at a power level
`calculated by the UE based on the path loss. ............................ 56
`
`K. Dependent claim 26 is obvious. .......................................................... 57
`
`1.
`
`2.
`
`The wireless network of claim 22, ............................................ 57
`
`wherein the determination of the path loss further
`includes a computation of a difference between a
`signaled transmit power and a measured received of the
`downlink channel. ..................................................................... 57
`
`
`
`iv
`
`NAC1003
`Page 5
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`

`

`L.
`
`Dependent claim 27 is obvious ........................................................... 57
`
`1.
`
`2.
`
`The wireless network of claim 22, ............................................ 57
`
`wherein the calculated transmit power is based on the
`selected transport format. .......................................................... 57
`
`M.
`
`Independent claim 29 is obvious ......................................................... 57
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`A method performed by a network device, the method
`comprising: ................................................................................ 58
`
`sending, by the network device, an indication of whether
`accumulation of transmit power control (TPC)
`commands is enabled; ............................................................... 58
`
`sending, on a single physical channel by the network
`device if accumulation is enabled, an allocation of a
`scheduled uplink resource and a TPC command to be
`accumulated with other received TPC commands at a
`user equipment (UE); ................................................................ 58
`
`receiving, by the network device if accumulation is
`enabled, uplink communication at a transmit power,
`wherein the transmit power is calculated at the UE based
`on both a determined path loss of a downlink channel and
`the accumulated TPC commands; and ...................................... 58
`
`sending, on the single physical channel to the UE if
`accumulation is not enabled, an allocation of a scheduled
`uplink resource to transmit data to the network device at
`a power level calculated at the UE based on the path loss. ...... 58
`
`N. Dependent claim 33 is obvious ........................................................... 59
`
`1.
`
`2.
`
`The method of claim 29, ........................................................... 59
`
`wherein the determining the path loss further includes
`computing a difference between a signaled transmit
`power an a measured received power of the downlink
`channel. ..................................................................................... 59
`
`O. Dependent claim 34 is obvious ........................................................... 59
`
`1.
`
`2.
`
`The method of claim 29, ........................................................... 59
`
`wherein the calculated transmit power is based on a
`selected transport format. .......................................................... 59
`
`
`
`v
`
`NAC1003
`Page 6
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`

`

`P.
`
`Independent claim 36 is obvious ......................................................... 59
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`A network device characterized in that: ................................... 59
`
`circuitry is configured to send, by the network device, an
`indication of whether accumulation of transmit power
`control (TPC) commands is enabled; ........................................ 59
`
`the circuitry is further configured to send, on a single
`physical channel if accumulation is enabled, an allocation
`of a scheduled uplink resource and a TPC command to be
`accumulated with other received TPC commands at a
`user equipment (UE); ................................................................ 60
`
`circuitry is configured to receive, if accumulation is
`enabled, uplink communication at a transmit power,
`wherein the transmit power is calculated at the UE based
`on both a determined path loss of a downlink channel and
`the accumulated TPC commands; and ...................................... 60
`
`the circuitry is further configured to send, on the single
`physical channel if accumulation is not enabled, an
`allocation of a scheduled uplink resource to transmit data
`to the network device at a power level calculated at the
`UE based on the path loss. ........................................................ 60
`
`Q. Dependent claim 40 is obvious. .......................................................... 60
`
`1.
`
`2.
`
`The network device of claim 36,............................................... 60
`
`wherein the determining the path loss further includes
`computing a difference between a signaled transmit
`power an a measured received power of the downlink
`channel. ..................................................................................... 60
`
`R.
`
`Dependent claim 41 is obvious. .......................................................... 61
`
`1.
`
`2.
`
`The network device of claim 36,............................................... 61
`
`wherein the calculated transmit power is based on a
`selected transport format. .......................................................... 61
`
`XI. Ground 2: Claims 2, 9, 16, 23, 30, and 37 Obvious Based on Zeira
`292 in combination with Whinnett and R1-99151 ........................................ 61
`
`A. Dependent claim 2 is obvious. ............................................................ 61
`
`1.
`
`The method according to claim 1,............................................. 61
`
`
`
`vi
`
`NAC1003
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`

`

`2.
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 61
`
`B.
`
`Dependent claim 9 is obvious. ............................................................ 62
`
`1.
`
`2.
`
`The UE of claim 8, .................................................................... 62
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 62
`
`C.
`
`Dependent claim 16 is obvious. .......................................................... 63
`
`1.
`
`2.
`
`The method of claim 15, ........................................................... 63
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 63
`
`D. Dependent claim 23 is obvious. .......................................................... 63
`
`1.
`
`2.
`
`The wireless network of claim 22, ............................................ 63
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 63
`
`E.
`
`Dependent claim 30 is obvious. .......................................................... 63
`
`1.
`
`2.
`
`The method of claim 29, ........................................................... 63
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 63
`
`F.
`
`Dependent claim 37 is obvious. .......................................................... 63
`
`1.
`
`2.
`
`The network device of claim 36,............................................... 63
`
`wherein the TPC command is a multilevel TPC
`command. .................................................................................. 64
`
`XII. Motivations to combine Zeira 292, Whinnett, and R1-99151 ....................... 64
`
`XIII. Public Availability of R1-99151 and other 3GPP References ...................... 72
`
`A.
`
`B.
`
`C.
`
`R1-99151 (NAC1007) was available to members of the general
`public as of at least March 12, 1999, without any restrictions. .......... 78
`
`3GPP TS 25.302 V6.1.0 was available to members of the
`general public as of at least March 23, 2004, without any
`restrictions. .......................................................................................... 83
`
`3GPP TS 25.221 V6.1.0 was available to members of the
`general public as of at least June 17, 2004, without any
`restrictions. .......................................................................................... 88
`
`
`
`vii
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`NAC1003
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`

`

`D.
`
`3GPP TS 25.211 V6.1.0 was available to members of the
`general public as of at least June 17, 2004, without any
`restrictions. .......................................................................................... 93
`
`
`
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`NAC1003
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`

`

`I.
`
`Introduction & Summary of Opinions
`
`1. My name is Paul Min. I submit this declaration on behalf of Nokia of
`
`America Corporation (“Petitioner”), which I understand is challenging the validity
`
`of claims 1-2, 5-6, 8-9, 12-13, 15-16, 19-20, 22-23, 26-27, 29-30, 33-34, 36-37, 40-
`
`41 (“the challenged claims”) of U.S. Patent No. 8,897,828 (“the ʼ828 patent”) in a
`
`petition for inter partes review.
`
`2.
`
`I have been asked to provide an opinion on the validity of the
`
`challenged claims. In my opinion, for the reasons in the following sections, the
`
`challenged claims are invalid on the following grounds:
`
`(1) Claims 1, 5-6, 8, 12-13, 15, 19-20, 22, 26-27, 29, 33-34, 36, 40-
`
`41 are obvious in view of the Zeira 292 reference (NAC1005) in
`
`combination with the Whinnett reference (NAC1006);
`
`(2) Claims 2, 9, 16, 23, 30, 37 are obvious in view of the Zeira 292
`
`reference (NAC1005) in combination with the Whinnett
`
`reference (NAC1006) and the R1-99151 reference (NAC1007).
`
`3.
`
`I have also been asked to provide an opinion on whether NAC1005,
`
`NAC1006, and NAC1007 to the petition were available to interested members of the
`
`public before August 12, 2004, which is the claimed priority date of the ʼ828 patent.
`
`In my opinion, for the reasons in the following sections:
`
`04029-00011/10338767.1
`
`NAC1003
`Page 10
`
`

`

`(1) NAC1005 (the Zeira 292 reference) was available to members of
`
`the general public, including interested members of the public,
`
`without restriction as of at least April 27, 2004 with a published
`
`patent application available as of October 23, 2003;
`
`(2) NAC1006 (the Whinnett reference) was filed April 30, 2003, as
`
`a patent application and published November 4, 2004; and
`
`(3) NAC1007 (the R1-99151 reference) was available to members
`
`of the general public, including interested members of the public,
`
`without restriction as of at least March 24, 1999
`
`II. Background/Qualifications
`
`4.
`
`NAC1004, to this declaration is my curriculum vitae, which sets forth
`
`my qualifications.
`
`5.
`
`I received a B.S. degree in Electrical Engineering in 1982, an M.S.
`
`degree in Electrical Engineering in 1984, and a Ph.D. degree in Electrical
`
`Engineering in 1987 from the University of Michigan in Ann Arbor. I received
`
`several academic honors, including my B.S. degree with honors, a best graduate
`
`student award and a best teaching assistant award during my M.S. study, and a best
`
`paper award from a major international conference for reporting results from my
`
`Ph.D. thesis.
`
`
`
`2
`
`NAC1003
`Page 11
`
`

`

`6.
`
`After receiving my Ph.D., I worked at Bellcore in New Jersey from
`
`August 1987 until August 1990. At Bellcore, I was responsible for evolving the
`
`public switched telephone network (POTS) into a multi-services voice and data
`
`network that incorporated packet switches, optical technologies, and wireless
`
`technologies.
`
`7.
`
`In September 1990, I joined the faculty at Washington University in St.
`
`Louis. In July 1996, I was promoted to an Associate Professor of Electrical
`
`Engineering with tenure. I am currently a Senior Professor at Washington
`
`University of the Electrical and Systems Engineering. I have also served as the Chair
`
`of the Graduate Curriculum (2000-2002) and the Chair of the Undergraduate
`
`Curriculum (2011-2014) for the Electrical and Systems Engineering department.
`
`8.
`
`At Washington University,
`
`I have conducted
`
`research
`
`in
`
`communication, computing, and related electronic hardware and software. My
`
`research group has pioneered a new paradigm for designing electronic circuits that
`
`can alleviate the speed and performance mismatch against optical technology. I have
`
`received several grants from the U.S. Federal Agencies, including the National
`
`Science Foundation, the Air Force Office of Scientific Research, the Defense
`
`Advanced Research Project Agency, and numerous contracts from companies and
`
`organizations around the world. Specifically related to the technology matters in
`
`this Investigation, I have researched a variety of wireless communication
`
`
`
`3
`
`NAC1003
`Page 12
`
`

`

`technologies, including CDMA, WCDMA, OFDM, FDD, SC-FDMA, and TDD. I
`
`have an extensive background and experience in each of these technologies.
`
`9.
`
`As a faculty member at Washington University, I have taught a number
`
`of courses in electronics, communication, and computing at both the undergraduate
`
`and graduate levels. For example, I have taught communication theory (Washington
`
`University ESE 471), transmission and multiplexing (Washington University ESE
`
`571), and signaling and control of communication networks (Washington University
`
`ESE 572).
`
`10.
`
`I have supervised nearly 100 graduate students, 12 of whom received a
`
`doctoral degree under my guidance. A number of doctoral theses that I have
`
`supervised relate specifically to WCDMA and LTE technologies. In particular, my
`
`students and I have published a number of peer-reviewed articles on resource
`
`allocation, scheduling, modulation, mobility management, power control, and
`
`multiplexing. Several of these articles received accolades in the field. For example,
`
`in 2011, we received a best paper award in 3G WCDMA-related mobility and
`
`resource management at the prestigious Mobility 2011 international conference.
`
`11.
`
`In addition to my responsibilities as a university faculty member, I have
`
`founded two companies. In May 1997, I founded MinMax Technologies, Inc., a
`
`fabless semiconductor company that developed switch fabric integrated circuit chips
`
`for the Internet. In March 1999, I founded Erlang Technology, Inc., a fabless
`
`
`
`4
`
`NAC1003
`Page 13
`
`

`

`semiconductor company that focused on the design and development of integrated
`
`circuit chips and software for the Internet. One of Erlang’s products received a best
`
`product of the year award in 2004 from a major trade journal for the electronics
`
`industry.
`
`12. Outside my own start-up companies, I have also served in various
`
`technology and business advisor roles for other companies and organizations around
`
`the world. I was the main technical author for one of two winning proposals to the
`
`Korean government for CDMA wireless service licenses (1996). I was responsible
`
`for designing a commercial scale IS-95 CDMA cellular network, which I understand
`
`to be one of the earliest such networks deployed in the world. I worked with
`
`numerous engineers and scientists around the world to implement this commercial-
`
`scale cellular network before IS-95 CDMA was widely accepted. This provided me
`
`with extensive insight into various components of CDMA technology, which by and
`
`large are used in WCDMA network. I have also been involved in a semiconductor
`
`company that specializes in semiconductor memories such as flash EEPROMs as a
`
`board member and as a technical advisor (2007-2011).
`
`13.
`
`I am a named inventor on nine U.S. patents, many of which are directly
`
`related to resource allocation, packet processing, and network designing. I have
`
`extensively published technical papers in international conferences and journals,
`
`technical memoranda and reports, and given a number of seminars and invited talks.
`
`
`
`5
`
`NAC1003
`Page 14
`
`

`

`Many of these papers are specifically within the context of the 3GPP standard. I have
`
`organized several international conferences and served as an international journal
`
`editor.
`
`14.
`
`I am a member of and have been actively involved in a number of
`
`professional organizations. For example, I have served as the Chair of the Saint
`
`Louis Section of the IEEE with more than 3,000 members (2014), and a member of
`
`the Eta Kappa Nu Honor Society for electrical engineers. I have also been an
`
`Ambassador of the McDonnell International Scholars Academy (2007-2013).
`
`15.
`
`In my 30+ years of experience with telecommunications technology, I
`
`have acquired significant knowledge about telecommunications systems industry
`
`standards, standard setting organizations such as 3GPP, and the rules and document
`
`policies that those organizations have in place to develop industry standards.
`
`III. Documents and Materials Considered
`
`16. The Exhibit List in the corresponding petition lists materials that I have
`
`considered in rendering the opinions that I express in this declaration.1 I have also
`
`reviewed, and navigated through, portions of the websites for 3GPP (www.3gpp.org)
`
`and ETSI (www.etsi.org) that are identified in this declaration. In forming my
`
`opinions, I have also relied on my experience and education.
`
`
`1 For convenience, this declaration refers to certain documents by the exhibit numbers that I
`understand Petitioners use in their petition.
`
`
`
`6
`
`NAC1003
`Page 15
`
`

`

`IV. Legal Principles
`
`17.
`
`I am not an attorney. I offer no opinions on the law. But counsel has
`
`informed me of legal standards that apply to the issue of patent validity. I have
`
`applied these standards in arriving at my conclusions.
`
`18.
`
`I understand that in an inter partes review the petitioner has the burden
`
`of proving a proposition of unpatentability by a preponderance of the evidence. I
`
`understand this standard is different from the standard that applies in a district court,
`
`where I understand a challenger bears the burden of proving invalidity by clear and
`
`convincing evidence.
`
`19.
`
`I understand that a patent claim is invalid based on anticipation if a
`
`single prior art reference discloses all of the features of that claim, and does so in a
`
`way that enables one of ordinary skill in the art to make and use the invention. Each
`
`of the claim features may be expressly or inherently present in the prior art reference.
`
`I understand that if the prior art necessarily functions in accordance with, or includes
`
`a claim’s feature, then that prior art inherently discloses that feature. I have relied
`
`on this understanding in expressing the opinions set forth below.
`
`20.
`
`I understand that a prior art reference describes the claimed invention
`
`if it either expressly or inherently describes each and every feature set forth in the
`
`claim; i.e., in determining whether a single item of prior art anticipates a patent
`
`claim, one should take into consideration not only what is expressly disclosed in that
`
`
`
`7
`
`NAC1003
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`item, but also what is inherently present as a natural result of the practice of the
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`system or method disclosed in that item.
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`21.
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`I understand that to establish inherency, the evidence must make clear
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`that the missing descriptive matter is necessarily present in the item of prior art and
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`that it would be so recognized by persons of ordinary skill in the art. I also
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`understand that prior art use of the claimed patented invention that was accidental,
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`unrecognized, or unappreciated at the time of filing can still be an invalidating
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`anticipation.
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`22.
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`I understand that although multiple prior art references may not be
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`combined to show anticipation, additional references may be used to interpret the
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`allegedly anticipating reference and shed light on what it would have meant to those
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`skilled in the art at the time of the invention. These additional references must make
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`it clear that the missing descriptive matter in the patent claim is necessarily present
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`in the allegedly anticipating reference, and that it would be so recognized by persons
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`of ordinary skill in the art.
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`23.
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`I understand that a patent may not be valid even though the invention
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`is not identically disclosed or described in the prior art if the differences between the
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`subject matter sought to be patented and the prior art are such that the subject matter
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`as a whole would have been obvious to a person having ordinary skill in the art in
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`the relevant subject matter at the time the invention was made.
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`24. To determine if a claim is obvious, the following factors should be
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`considered: (1) the level of ordinary skill in the art at the time the invention was
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`made; (2) the scope and content of the prior art; (3) the differences between the
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`claimed invention and the prior art; and (4) secondary considerations, including
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`evidence of commercial success, long-felt but unsolved need, unsuccessful attempts
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`by others, copying of the claimed invention, unexpected and superior results,
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`acceptance and praise by others, independent invention by others, and the like.
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`25. For example, I understand that the combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than yield
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`predictable results. I also understand that an obviousness analysis need not seek out
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`precise teachings directed to the specific subject matter of the challenged claim
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`because a court can take account of the inferences and/or creative steps that a person
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`of ordinary skill in the art would employ.
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`26.
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`I understand that the obviousness determination of an invention turns
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`on whether a hypothetical person with ordinary skill and full knowledge of all the
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`pertinent prior art, when faced with the problem to which the claimed invention is
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`addressed, would be led naturally to the solution adopted in the claimed invention
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`or would naturally view that solution as an available alternative. Facts to be
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`evaluated in this analysis include:
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` The scope and contents of the prior art;
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` Differences between the prior art and the claims at issue;
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` The level of ordinary skill in the pertinent art; and
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` Evidence of objective factors suggesting or negating obviousness.
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`27.
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`I understand that the following rationales may be used to determine
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`whether a piece of prior art can be combined with other prior art or with other
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`information within the knowledge of one of ordinary skill in the art:
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` Combining prior art elements according to known methods to yield
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`predictable results;
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` Simple substitution of one known element for another to obtain predictable
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`results;
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` Use of known techniques to improve similar devices (methods, or products)
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`in the same way;
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` Applying a known technique to a known device (method, or product) ready
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`for improvement to yield predictable results;
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` “Obvious to try