IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Inter Partes Review of:
`U.S. Patent No. 6,926,670
`Issued: August 09, 2005
`Application No.: 10/054,330
`Filing Date: January 22, 2002
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`)
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`For: Wireless MEMS Capacitive Sensor for Physiologic Parameter
`Measurement
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`DECLARATION OF MARK ALLEN
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`Abbott
`Exhibit 1024
`Page 001
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`CONTENTS
`INTRODUCTION ........................................................................................... 1
`BACKGROUND AND QUALIFICATIONS ................................................. 2
`DOCUMENTS CONSIDERED IN FORMING MY OPINIONS .................. 6
`UNDERSTANDING OF LEGAL PRINCIPLES ........................................... 8
`Understanding of Legal Principles Relevant to Anticipation and
`Obviousness ........................................................................................... 8
`Person of Ordinary Skill in the Art ..................................................... 11
`OVERVIEW OF THE ’670 PATENT .......................................................... 13
`The ’670 Patent ................................................................................... 13
`Background Regarding LC Tank Resonators as
`Implantable Sensors .................................................................. 14
`The Alleged Invention of the ’670 Patent ................................. 21
`The Challenged Claims ....................................................................... 28
`Prosecution History ............................................................................. 28
`CLAIM CONSTRUCTION .......................................................................... 29
`“integrated inductor” ........................................................................... 29
`“[said sensing device] being a micro electromechanical system
`(MEMS)” ............................................................................................. 36
`OVERVIEW OF THE PRIOR ART ............................................................. 39
`Overview—Akar (Ex. 1010) ............................................................... 39
`Overview—Petersen (Ex. 1006) ......................................................... 42
`Petersen, Claim 21 .................................................................... 49
`Overview—Park (Ex. 1008) ................................................................ 57
`Overview—Allen-379 (Ex. 1009) ....................................................... 61
`Overview—Renaud (Ex. 1011) ........................................................... 68
`CLAIMS 1-4, 21, 26-27, AND 31 ARE ANTICIPATED BY AKAR ......... 70
`Claim 1 ................................................................................................ 70
`[1pre]—“An implantable microfabricated sensor device
`for measuring a physiologic parameter of interest within
`a patient, said sensor comprising:” ........................................... 70
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`Abbott
`Exhibit 1024
`Page 002
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`[1a]—“an implantable sensing device, said sensing
`device being a micro electromechanical system (MEMS)
`comprising” ............................................................................... 72
`[1b]—“a substrate,” .................................................................. 73
`[1c]—“an integrated inductor formed on the substrate,”.......... 75
`[1d]—“at least one sensor responsive to the physiologic
`parameters and being formed at least in part on the
`substrate,” .................................................................................. 78
`[1e]—“a plurality of conductive paths electrically
`connecting said integrated inductor with said sensor,” ............ 81
`[1f]—“said integrated inductor, said sensor and said
`conductive paths cooperatively defining an LC tank
`resonator.” ................................................................................. 84
`Claims 2 and 3 ..................................................................................... 85
`Claim 4 ................................................................................................ 87
`Claim 21 .............................................................................................. 88
`Claims 26 and 27 ................................................................................. 88
`Claim 31 .............................................................................................. 92
` CLAIMS 1-4, 21, 26 AND 31 ARE ANTICIPATED BY PETERSEN ....... 95
`Claim 1 ................................................................................................ 95
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`[1pre]—“An implantable microfabricated sensor device
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`for measuring a physiologic parameter of interest within
`a patient, said sensor comprising:” ........................................... 95
`[1a]—“an implantable sensing device, said sensing
`device being a micro electromechanical system (MEMS)
`comprising” ............................................................................... 96
`[1b]—“a substrate,” .................................................................. 97
`[1c]—“an integrated inductor formed on the substrate,”.......... 98
`[1d]—“at least one sensor responsive to the physiologic
`parameters and being formed at least in part on the
`substrate,” ................................................................................ 102
`[1e]—“a plurality of conductive paths electrically
`connecting said integrated inductor with said sensor,” .......... 109
`[1f]—“said integrated inductor, said sensor and said
`conductive paths cooperatively defining an LC tank
`resonator.” ............................................................................... 114
`Claims 2 and 3 ................................................................................... 117
`Claim 4 .............................................................................................. 121
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`Abbott
`Exhibit 1024
`Page 003
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`Claim 21 ............................................................................................ 122
`Claim 26 ............................................................................................ 127
`Claim 31 ............................................................................................ 132
`CLAIMS 26-27 ARE RENDERED OBVIOUS BY PETERSEN AND
`RENAUD ..................................................................................................... 137
`Claims 26 and 27 ............................................................................... 137
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` Motivations to Combine Petersen with Renaud ................................ 142
` CLAIMS 1-4, 21, AND 31 ARE ANTICIPATED BY PARK ................... 147
`Claim 1 .............................................................................................. 147
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`[1pre]—“An implantable microfabricated sensor device
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`for measuring a physiologic parameter of interest within
`a patient, said sensor comprising:” ......................................... 147
`[1a]—“an implantable sensing device, said sensing
`device being a micro electromechanical system (MEMS)
`comprising” ............................................................................. 148
`[1b]—“a substrate,” ................................................................ 149
`[1c]—“an integrated inductor formed on the substrate,”........ 151
`[1d]—“at least one sensor responsive to the physiologic
`parameters and being formed at least in part on the
`substrate,” ................................................................................ 155
`[1e]—“a plurality of conductive paths electrically
`connecting said integrated inductor with said sensor,” .......... 157
`[1f]—“said integrated inductor, said sensor and said
`conductive paths cooperatively defining an LC tank
`resonator.” ............................................................................... 160
`Claims 2 and 3 ................................................................................... 160
`Claim 4 .............................................................................................. 162
`Claim 21 ............................................................................................ 163
`Claim 31 ............................................................................................ 165
` CLAIMS 26-27 ARE RENDERED OBVIOUS BY PARK AND
`RENAUD ..................................................................................................... 169
`Claims 26 and 27 ............................................................................... 169
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` Motivations to Combine Park with Renaud ...................................... 175
` CLAIMS 1-5, 21-25, 28-29, 31 ARE ANTICIPATED BY
`ALLEN-379 ................................................................................................. 180
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`Abbott
`Exhibit 1024
`Page 004
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`Claim 1 .............................................................................................. 180
`[1pre]—“An implantable microfabricated sensor device
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`for measuring a physiologic parameter of interest within
`a patient, said sensor comprising:” ......................................... 180
`[1a]—“an implantable sensing device, said sensing
`device being a micro electromechanical system (MEMS)
`comprising” ............................................................................. 183
`[1b]—“a substrate,” ................................................................ 185
`[1c]—“an integrated inductor formed on the substrate,”........ 186
`[1d]—“at least one sensor responsive to the physiologic
`parameters and being formed at least in part on the
`substrate,” ................................................................................ 190
`[1e]—“a plurality of conductive paths electrically
`connecting said integrated inductor with said sensor,” .......... 194
`[1f]—“said integrated inductor, said sensor and said
`conductive paths cooperatively defining an LC tank
`resonator.” ............................................................................... 197
`Claims 2 and 3 ................................................................................... 198
`Claim 4 .............................................................................................. 202
`Claim 5 .............................................................................................. 203
`Claim 21 ............................................................................................ 204
`Claim 22 ............................................................................................ 205
`Claims 23 and 25 ............................................................................... 208
`Claim 24 ............................................................................................ 210
`Claims 28 and 29 ............................................................................... 211
`Claim 31 ............................................................................................ 214
` CLAIMS 26-27 ARE RENDERED OBVIOUS BY ALLEN-379
`AND RENAUD ........................................................................................... 219
`Claims 26 and 27 ............................................................................... 219
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` Motivation to Combine Allen-379 and Renaud ................................ 223
` CONCLUSION ............................................................................................ 228
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`Abbott
`Exhibit 1024
`Page 005
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`
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`INTRODUCTION
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`1.
`
`I have been retained as an expert witness on behalf of Abbott
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`Laboratories, Abbott Laboratories, Inc., St. Jude Medical, Inc., and CardioMEMS
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`LLC (collectively, “Abbott” or “Petitioner”) in the above-captioned inter partes
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`review (“IPR”) relating to U.S. Patent No. 6,926,670 (“the ’670 patent”) (Ex. 1001).
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`The ’670 patent relates to implantable inductor-capacitor (LC) resonant sensor
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`devices.
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`2.
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`I understand that Abbott is petitioning for IPR of claims 1-5, 21-29, and
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`31 of the ’670 patent and requests that the United States Patent and Trademark Office
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`(“PTO”) cancel those claims.
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`3.
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`In preparing this Declaration, I have reviewed the ’670 patent and
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`considered the documents identified in Section 5 in light of the general knowledge
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`in the relevant art. In forming my opinions, I relied upon my education, knowledge,
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`and experience (including my extensive research and development experience with
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`vascular stents) and considered the level of ordinary skill in the art as discussed
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`below.
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`4.
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`I am being compensated for my time in connection with this IPR at my
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`standard consulting rate, which is $625.00 per hour, plus actual expenses. My
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`compensation is not dependent in any way upon the outcome of this matter.
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`Abbott
`Exhibit 1024
`Page 006
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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` BACKGROUND AND QUALIFICATIONS
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`5.
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`I received a B.A. degree in Chemistry, a B.S.E. degree in Chemical
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`Engineering, and a B.S.E. degree in Electrical Engineering from the University of
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`Pennsylvania, and a S.M. and Ph.D. (1989) from the Massachusetts Institute of
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`Technology. From 1989 to 2013, I was a member of the faculty of the School of
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`Electrical and Computer Engineering of the Georgia Institute of Technology,
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`ultimately holding the rank of Regents' Professor and the J.M. Pettit Professorship
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`in Microelectronics. In 2013, I joined the University of Pennsylvania faculty as the
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`Alfred Fitler Moore Professor of Electrical and Systems Engineering, as well as was
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`named the founding director of the Singh Center for Nanotechnology at Penn.
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`6. As
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`discussed
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`below, my
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`technical
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`expertise
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`is
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`in
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`microelectromechanical systems (MEMS), microfabrication technologies for
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`MEMS, and the application of MEMS in multiple fields, including biomedical
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`implants and microfabricated inductors.
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`7. At the beginning of my academic career in 1989, I founded my research
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`group, the Microsensors and Microactuators Group. This group, consisting of
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`graduate students and postdoctoral associates of both the Georgia Institute of
`
`Technology and the University of Pennsylvania, has been in continuous existence
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`since that time. Although the composition as well as the specific research topics of
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`the group have changed over time, the group has maintained a focus since its
`
`2
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`Abbott
`Exhibit 1024
`Page 007
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`founding on the development of new microfabrication technologies and their
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`application to MEMS.
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`8.
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` Between the beginning of my academic career in 1989 and the year
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`1996, I published multiple papers in the field of MEMS, in journals such as the
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`Institute of Electrical and Electronics Engineers
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`(IEEE)
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`Journal of
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`Microelectromechanical Systems and
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`the Journal of Micromechanics and
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`Microengineering, on integrated inductor and integrated magnetic actuator
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`technologies. These publications established my research group as one of the
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`pioneers in micromachined magnetics. I published multiple proceedings articles in
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`the three major conferences in MEMS at the time: the Solid State Sensor and
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`Actuator Workshop (known in the field as the ‘Hilton Head’ workshop), the IEEE
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`Microelectromechanical Systems Conference, and the International Conference on
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`Solid State Sensors and Actuators (known in the field as the ‘Transducers’
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`conference), including an invited paper in this latter conference in 1993.
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`9.
`
`In 1994 my student and I gave a plenary address to the IEEE Applied
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`Power Electronics Conference and Exposition on the topic of micromachined
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`inductors.
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`10.
`
`In 1996, I was the co-chair of the 1996 IEEE Microelectromechanical
`
`Systems Conference. As mentioned above, this was, and still is today, one of the
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`3
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`Abbott
`Exhibit 1024
`Page 008
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`most important conferences in the MEMS field. Election to this post is typically
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`based on reputation in, and contributions to, the conference and the field of MEMS.
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`11.
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`I am co-founder of multiple MEMS-related companies, including
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`CardioMEMS, Axion Biosystems, and EnaChip.
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`12. CardioMEMS was founded in 2001 has commercialized wireless
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`implantable microsensors for treatment of aneurysms and congestive heart failure –
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`ultimately becoming the first MEMS-based medical device transducer FDA-
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`approved for permanent human implantation. CardioMEMS received the 2006
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`Company of the Year award from Small Times magazine and the 2006 Frost and
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`Sullivan Patient Monitoring Product Innovation of the Year Award, and its wireless
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`aneurysm pressure monitor was highlighted by the FDA in its 2005 ODE annual
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`report as a cleared medical device likely to have a significant impact on patient care.
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`CardioMEMS completed a 550‐ patient clinical trial for its second product, a
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`MEMS-based wireless implantable hemodynamic monitor for patients with
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`congestive heart failure. After receiving FDA approval for its hemodynamic monitor,
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`CardioMEMS was acquired by St. Jude Medical (now Abbott) in 2014.
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`13. Axion Biosystems, founded in 2008, is a privately held company in
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`Atlanta, GA. It is commercializing microelectrode arrays for in-vitro electrogenic
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`cell interfacing, for use in scientific study of neural and cardiac cells, as well as
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`4
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`Abbott
`Exhibit 1024
`Page 009
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`pharmaceutical screening. In 2012, Axion won the Tibbetts Award, which honors
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`outstanding small businesses, from the U.S. Small Business Administration.
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`14. EnaChip was launched in 2017 and is focused on exploiting
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`electroplatable, nanoengineered materials for the realization of ultracompact power
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`supplies. In particular, Enachip is using these nanoengineered materials as the
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`magnetic core of integrated inductors to produce multiwatt power supplies on a chip.
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`15.
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`I have graduated approximately 50 PhD students and approximately 24
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`postdoctoral associates from the MSMA Group in the field of MEMS. Together with
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`this group, I have published approximately 400 technical articles in the field of
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`MEMS. I hold approximately sixty U.S. patents in the MEMS area. Approximately
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`20 of those patents were filed prior to January 22, 2001, which as discussed below I
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`understand is the earliest possible filing priority date of the challenged ’670 patent.
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`One such patent of mine is U.S. Patent No. 6,278,379, which in my opinion
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`anticipates challenged claims 1-5, 21-25, 28-29, and 31 of the ’670 patent as
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`discussed in detail in Sections VII.D and XIII below.
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`16. The work of the my research group has been cited approximately
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`25,000 times as estimated by Google Scholar.
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`17.
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`In addition to the above, I have maintained my leadership position
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`within the MEMS community. I was co-chair of the 2012 Power MEMS Conference,
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`and chair of the 2016 Solid State Sensors, Actuators, and Microsystems Conference
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`5
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`Abbott
`Exhibit 1024
`Page 010
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`(‘Hilton Head’). In 2020 I will chair the IEEE PwrSoC (‘Power Supply on a Chip’)
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`conference.
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`18.
`
`I was Editor-in-Chief of the Journal of Micromechanics and
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`Microengineering (a publication of the Institute of Physics) from 2009-2013, and am
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`currently a member of the editorial board of Microsystems and Nanoengineering
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`(Nature Publishing Group), both important journals in the MEMS field.
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`19.
`
`I am a Fellow of the IEEE, with the citation “for contributions to micro
`
`and nanofabrication technologies for microelectromechanical systems.”
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`20.
`
`I received the 2016 IEEE Daniel P. Noble award in emerging
`
`technologies, with the citation “For contributions to research and development,
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`clinical translation, and commercialization of biomedical microsystems.”
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`21.
`
`I was elected to the U.S. National Academy of Inventors in 2017.
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`22. Additional details are provided in my CV, attached as Ex. 1025.
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` DOCUMENTS CONSIDERED IN FORMING MY OPINIONS
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`23.
`
`In addition to the information identified above (e.g., ¶ 3) and elsewhere
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`in this Declaration, in forming my opinions, I have considered the following
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`documents:
`
`Description
`Ex. No.
`1001 U.S. Patent No. 6,926,670 (“’670 Patent”)
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`6
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`Abbott
`Exhibit 1024
`Page 011
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`Description
`Ex. No.
`1002 Prosecution history for U.S. Patent Application No. 10/054,330 (“’670
`FH”)
`
`1003 U.S. Provisional Patent Application No. 60/263,327 (“’327
`provisional”)
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`1004 U.S. Provisional Patent Application No. 60/278,634 (“’634
`provisional”)
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`1005 RESERVED
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`1006 U.S. Patent No. 6,939,299 (“Petersen”)
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`1007 U.S. Provisional Patent Application No. 60/170,450 (“Petersen
`provisional”)
`
`1008 Eun-Chul Park et al., Hermetically Sealed Inductor-Capacitor (LC)
`Resonator For Remote Pressure Monitoring, 37 Jpn. J. Appl. Phys.
`7124 (1998) (“Park”)
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`1009 U.S. Patent No. 6,278,379 (“Allen-379”)
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`1010 Orhan Şevket Akar, Silicon Micromachined Capacitive Pressure
`Sensors for Industrial and Biomedical Applications (Sept. 1998)
`(Master’s thesis, Graduate School of Natural and Applied Sciences of
`the Middle East Technical University) (“Akar”)
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`1011 U.S. Patent No. 5,488,869 (“Renaud”)
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`1012 U.S. Patent No. 7,182,736 (“Roy”)
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`1013 U.S. Patent No. 6,023,961 (“Discenzo”)
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`1014 U.S. Patent No. 6,428,713 (“Christenson”)
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`1015 U.S. Patent No. 3,958,558 (“Dunphy”)
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`1016 U.S. Patent No. 4,026,276 (“Chubbuck”)
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`1017 U.S. Patent No. 4,127,110 (“Bullara”)
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`7
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`Abbott
`Exhibit 1024
`Page 012
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`Description
`Ex. No.
`1018 U.S. Patent No. 6,201,980 (“Darrow”)
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`1019 R. Puers et al., Electrodeposited Copper Inductors for Intraocular
`Pressure Telemetry, 10 J. Micromech. Microeng. 124 (2000) (“Puers”)
`
`1020 Timothy J. Harpster et al., A Passive Wireless Integrated Humidity
`Sensor, 14th IEEE International Conference on Micro
`Electromechanical Systems 553 (2001) (“Harpster”)
`
`1021 Marc Madou, Fundamentals of Microfabrication (1997) (excerpted)
`(“Madou”)
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`1025 Curriculum Vitae of Mark Allen
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`1026 Orhan Akar et al., A Wireless Batch Sealed Absolute Capacitive
`Pressure Sensor, Eurosensors XIV, The 14th European Conference on
`Solid-State Transducers 585 (Aug. 2000) (“Akar-2000”)
`
`1027 Orhan Akar & Tayfun Akin, Micromachined Capacitive Silicon
`Pressure Sensor for Industrial and Biomedical Applications, Electrical
`and Electronics, Computer Engineering 7th National Congress (1997)
`(including certified English translation and original Turkish version of
`article)
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`
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` UNDERSTANDING OF LEGAL PRINCIPLES
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` Understanding of Legal Principles Relevant to Anticipation and
`Obviousness
`I understand that a prior art reference can anticipate a patent claim when
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`24.
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`the prior art’s disclosure renders the recited claim elements not novel. I understand
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`that in order to anticipate a patent claim, a prior art reference must teach each and
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`8
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`Abbott
`Exhibit 1024
`Page 013
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`every element of the claim, expressly or inherently, with the same arrangement as in
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`the claims.
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`25.
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`In analyzing anticipation, I understand that it is important to consider
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`the scope of the claims, the level of skill in the relevant art, and the scope and content
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`of the prior art.
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`26.
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`I understand that a prior art reference can render a patent claim obvious
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`to one of ordinary skill in the art if the differences between the subject matter set
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`forth in the patent claim and the prior art are such that the subject matter of the claim
`
`would have been obvious at the time the claimed invention was made.
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`27.
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`In analyzing obviousness, I understand that it is important to consider
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`the scope of the claims, the level of skill in the relevant art, the scope and content of
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`the prior art, the differences between the prior art and the claims, and any secondary
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`considerations.
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`28.
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`I understand that when the claimed subject matter involves combining
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`pre-existing elements to yield no more than one would expect from such an
`
`arrangement, the combination is obvious. I also understand that in assessing whether
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`a claim is obvious one must consider whether the claimed improvement is more than
`
`the predictable use of prior art elements according to their established functions. I
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`understand that there need not be a precise teaching in the prior art directed to the
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`specific subject matter of a claim because one can take account of the inferences and
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`9
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`Abbott
`Exhibit 1024
`Page 014
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`creative steps that a person of skill in the art would employ. I further understand
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`that a person of ordinary skill is a person of ordinary creativity, not an automaton.
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`29.
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`I understand that obviousness cannot be based on the hindsight
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`combination of components selectively culled from the prior art. I understand that
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`in an obviousness analysis, neither the motivation nor the avowed purpose of the
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`inventors controls the inquiry. Any need or problem known in the field at the time
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`of the invention and addressed by the patent can provide a reason for combining
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`elements. For example, I understand that it is important to consider whether there
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`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that known techniques
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`can have obvious uses beyond their primary purposes, and that in many cases a
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`person of ordinary skill can fit the teachings of multiple pieces of prior art together
`
`like pieces of a puzzle.
`
`30.
`
`I understand that, when there is a reason to solve a problem and there
`
`is a finite number of identified, predictable solutions, a person of ordinary skill has
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`good reason to pursue the known options within his or her technical grasp. I further
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`understand that, if this leads to the anticipated success, it is likely the product not of
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`innovation but of ordinary skill and common sense, which bears on whether the
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`claim would have been obvious.
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`10
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`Abbott
`Exhibit 1024
`Page 015
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`31.
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`I understand that secondary considerations can include, for example,
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`evidence of commercial success of the invention, evidence of a long-felt need that
`
`was solved by an invention, evidence that others copied an invention, or evidence
`
`that an invention achieved a surprising or unexpected result. I further understand
`
`that such evidence must have a nexus, or causal relationship to the elements of a
`
`claim, in order to be relevant. I am unaware of any such secondary considerations
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`for the ’670 patent. To the extent that Patent Owner were to allege, for example, the
`
`commercial success of Petitioner’s products as evidence of secondary considerations,
`
`I disagree. First, I understand that Petitioner denies that the accused CardioMEMS
`
`products infringe any claims of the ’670 patent. Second, I am not aware of any nexus
`
`linking the commercial success of the accused CardioMEMS products to the alleged
`
`invention of the ’670 patent (as compared to other, non-claimed elements). To the
`
`extent that Patent Owner puts forth any secondary considerations in these IPRs, I
`
`reserve the right to rebut those considerations with rebuttal evidence.
`
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`32.
`
`Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the art (“POSITA”) is a
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`hypothetical person who is presumed to be aware of all pertinent art, possesses
`
`conventional wisdom in the art, is a person of ordinary creativity, and has common
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`sense. I understand that this hypothetical person is considered to have the normal
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`11
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`Abbott
`Exhibit 1024
`Page 016
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`skills and knowledge of a person in a certain technical field (including knowledge
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`of known problems and desired features in the field).
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`33.
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`I have been asked to focus my analysis on claims 1-5, 21-29, and 31 of
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`the ’670 patent, and prior art relating thereto, from the perspective of such a person
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`at the time of the alleged inventions. I understand that the earliest possible filing
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`priority date for the ’670 patent is January 22, 2001, the date of the provisional
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`application referenced on the face of the ’670 patent and to which it purports to claim
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`priority to.
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`34.
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`It is my opinion that a person of ordinary skill in the art in the 2001
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`time frame would have had at least a bachelor’s degree in electrical or mechanical
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`engineering (or equivalent) and at least two years’ industry experience, or equivalent
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`research. Alternatively, a POSITA could substitute directly relevant additional
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`education for experience, e.g., an advanced degree relating to the design of
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`implantable medical devices, or an advanced degree in electrical or mechanical
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`engineering (or equivalent), with at least one year of industry experience.
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`35. As of January 22, 2001, I would have qualified as at least a POSITA
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`and my opinions herein are informed by my own knowledge based on my personal
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`experiences and observing others of various skill levels (including those above and
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`below the level of a POSITA). In particular, I was actively engaged in the field of
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`the ’670 patent at the time of the alleged invention. For example and as discussed
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`12
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`below, I am an inventor of a prior art patent (“Allen-379,” Ex. 1009) that anticipates
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`claims 1-5, 21-25, 28-29, and 31 of the ’670 patent, and also renders obvious claims
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`26 and 27 in view of Renaud.
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`36. Nevertheless, my opinions below are not restricted to the precise
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`definition of a POSITA above. The claims of the ’670 patent are directed to a
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`common LC resonant sensor design that was well-known and taught by numerous
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`prior art references including my own prior art patents as well as at least the other
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`references discussed below. Thus my opinions below would apply under any
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`reasonable definition of a POSITA.
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` OVERVIEW OF THE ’670 PATENT
` The ’670 Patent
`37. The ’670 patent is entitled “Wireless MEMS Capacitive Sensor for
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`Physiologic Parameter Measurement” and names Collin A. Rich, Yafan Zhang,
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`Nader Najafi, Matthew Z. Straayer, and Sonbol Massoud-Ansari as inventors.
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`The ’670 patent was filed in the United States on January 22, 2002 and issued on
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`August 9, 2005. The ’670 patent claims priority to provisional application nos.
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`60/263,327 (“’327 provisional,” Ex. 1003), filed January 22, 2001, and 60/278,634
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`(“’634 provisional,” Ex. 1004), filed March 26, 2001. The ’670 patent generally
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`relates to “an implantable microfabricated sensor device and system for measuring
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`a physiologic parameter of interest within a patient.” ’670 patent, Abstract. More
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`13
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`Declaration in Support of Inter Partes Review of USP 6,926,670
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`particularly, the ’670 patent is directed to an implantable device consisting of a
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`capacitive sensor, an integrated inductor, and conductive paths connecting the
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`capacitive sensor and inductor to define an LC tank resonator. Id.
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`Background Regarding LC Tank Resonators as
`Implantable Sensors
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`38. As the ’670 patent admits, LC tank resonators were “well-known to
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`those knowledgeable in the art” for use as wireless implantable sensors in biomedical
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`applications. ’670 patent, 1:35-45. An LC tank resonator, also referred to in the art
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`as simply an “LC resonant circuit,” in an implantable sensor device includes three
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`general features: (1) a capacitor (represented by the letter C) that, in the case of
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`the ’670 patent, varies with some physical parameter (e.g., pressure) forming a
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`capacitive “sensor”; (2) an inductor (represented by the letter L) that operates as an
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`antenna for wireless communication with an external readout