UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`DELL INC.,
`ZTE (USA) INC.,
`and
`ZTE CORPORATION,
`Petitioners,
`
`v.
`
`3G LICENSING S.A.,
`Patent Owner.
`
`Case No. IPR2020-01157
`
`U.S. Patent No. 7,274,933
`
`DECLARATION OF DR. APOSTOLOS K. KAKAES IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,274,933
`
`Dell Inc., Ex. 1003
`
`

`

`TABLE OF CONTENTS
`
`Page
`ASSIGNMENT ................................................................................................ 1
`I.
`QUALIFICATIONS AND EXPERIENCE ..................................................... 1
`II.
`III. APPLIED LEGAL PRINCIPLES ................................................................... 9
`Anticipation ........................................................................................... 9
`A.
`Obviousness ......................................................................................... 10
`B.
`C.
`Claim Construction Standard .............................................................. 14
`PERSON OF ORDINARY SKILL IN THE ART ........................................ 15
`IV.
`V. MATERIALS CONSIDERED ...................................................................... 16
`STATE OF THE ART ................................................................................... 16
`VI.
`Cellular Networks and Relevant Standards ......................................... 17
`A.
`1.
`Fundamental Concepts .............................................................. 19
`AMPS ........................................................................................ 28
`2.
`IS-54 and IS-136 ....................................................................... 34
`3.
`4.
`IS-95 .......................................................................................... 39
`5.
`GSM .......................................................................................... 44
`GPRS and EDGE ...................................................................... 49
`6.
`7.
`UMTS and 3GPP ...................................................................... 51
`8.
`LTE ........................................................................................... 58
`B. Mobile Devices .................................................................................... 59
`SIM Cards in Mobile Devices................................................... 60
`1.
`Memory in Mobile Devices ...................................................... 65
`2.
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`4.
`
`C.
`
`Computer Instructions on Mobile Devices ............................... 66
`3.
`Displays on Mobile Devices ..................................................... 66
`4.
`Scanning and Selecting a Network ..................................................... 67
`1.
`Network Identifiers ................................................................... 68
`Location Areas and Location Area Code (LAC) ...................... 71
`2.
`Process of Scanning and Selecting a Cell ................................. 76
`3.
`a.
`Radio Considerations ...................................................... 77
`Network Selection Considerations ................................. 79
`b.
`Preference for Certain Networks Over Other Networks
`and the Concept of Roaming ..................................................... 90
`Network Lists, Including PLMN Lists ..................................... 95
`5.
`Displaying Network Names ................................................................ 96
`D.
`VII. BACKGROUND OF THE ’933 PATENT ................................................... 98
`Summary of the ’933 Patent ................................................................ 98
`A.
`Background and Admitted Prior Art to the ’933 Patent ........... 98
`1.
`2.
`Alleged Invention of the ’933 Patent ......................................101
`File History of the ’933 Patent ..........................................................105
`B.
`VIII. OVERVIEW OF CONCLUSIONS .............................................................107
`IX. ANALYSIS OF BASES OF INVALIDITY ...............................................109
`A.
`Grounds of Invalidity Based on McElwain .......................................110
`Overview of Prior Art References ..........................................110
`1.
`a.
`McElwain ......................................................................110
`b.
`Uchida ...........................................................................116
`
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`
`3.
`
`3.
`
`b.
`
`c.
`
`d.
`
`Hicks .............................................................................119
`c.
`2. Motivations to Combine .........................................................124
`a. McElwain and Uchida ..................................................124
`b. McElwain and Hicks ....................................................128
`c. McElwain, Uchida, and Hicks ......................................131
`Specific Grounds of Invalidity ................................................133
`a.
`Ground 1: Claims 1-3, 6-8, 11-13 & 19 Would Have
`Been Obvious Over McElwain .....................................133
`Ground 2: Claims 1-3, 6-8, 11-13 & 19 Would Have
`Been Obvious Over McElwain in Combination with
`Uchida ...........................................................................157
`Ground 3: Claims 4, 9, 14 Would Have Been
`Obvious Over McElwain in Combination with
`Uchida and Hicks ..........................................................165
`Ground 4: Claims 1-4, 6-9, 11-14 & 19 Would Have
`Been Obvious Over McElwain in Combination with
`Hicks .............................................................................168
`Grounds of Invalidity Based on 3GPP Standards .............................174
`1.
`Overview of Prior Art References ..........................................174
`2. Motivations to Combine .........................................................187
`a.
`Reasons to Combine the 3GPP Standards ....................187
`b.
`Reasons to Combine 3GPP Standards and McElwain .187
`Specific Grounds of Invalidity ................................................190
`a.
`Ground 5: Claims 1-4, 6-9, 11-14 & 19 Would Have
`Been Obvious Over the 3GPP Standards and
`McElwain ......................................................................190
`X. ADDITIONAL REMARKS ........................................................................215
`
`B.
`
`iii
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`
`
`TABLE OF APPENDICES
`
`
`Description
`
`Document
`Appendix A Curriculum Vitae
`Appendix B Text of Challenged Claims
`
`
`TABLE OF EXHIBITS
`
`
`Exhibit
`1001
`1002
`1004
`1005
`1006
`1007
`
`1008
`
`1009
`
`1010
`1011
`
`1012
`
`1013
`
`1014
`
`Description
`U.S. Patent No. 7,274,933 (“the ’933 patent”)
`Copy of Prosecution History of the ’933 patent
`U.S. Patent Appl. Publ. No. 2003/0022689 (“McElwain”)
`U.S. Patent Appl. Publ. No. 2004/0204136 (“Uchida”)
`U.S. Patent No. 7,027,813 (“Hicks”)
`3rd Generation Partnership Project; Technical Specification Group
`Core Network; NAS Functions related to Mobile Station (MS) in
`idle mode (Release 5) (3GPP TS 23.122 V5.2.0) (“TS-23.122”)
`3rd Generation Partnership Project; Technical Specification Group
`Services and System Aspects – Service aspects; Service principles
`(Release 5) (3GPP TS 22.101 V5.8.0) (“TS-22.101”)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals; Characteristics of the USIM Application (Release 5)
`(3GPP TS 31.102 V5.3.0) (“TS-31.102”)
`Declaration of Craig Bishop
`Complaint for Patent Infringement, No. 1:19-cv-01247-LPS
`(D. Del. July 1, 2019)
`Complaint for Patent Infringement, No. 3:19-cv-01694 (N.D. Tex.
`July 15, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01140-MN
`(D. Del. June 20, 2019)
`Complaint for Patent Infringement, No. 1:19-cv-01144-MN
`(D. Del. June 20, 2019)
`
`iv
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`
`
`
`
`
`Exhibit
`1015
`
`1016
`1017
`1018
`1019
`1020
`1021
`
`1022
`
`1023
`
`1024
`1025
`1026
`1027
`1028
`
`Description
`Amended Complaint for Patent Infringement, No. 1:20-cv-20813
`(S.D. Fl. Feb. 25, 2020)
`EIA/TIA-553 Standard (AMPS)
`Excerpts from EIA/TIA/IS-54 Standard (Digital AMPS)
`Excerpts from TIA/EIA/136.1 Standard
`Excerpts from TIA/EIA/IS-136.2-A Standard
`Excerpts from TIA/EIA/IS-95 Standard
`Excerpts from T. Halonen et al., “GSM, GPRS and EDGE
`Performance: Evolution Towards 3G/UMTS” (2d ed. Wiley 2003)
`3rd Generation Partnership Project; Technical Specification Group
`Terminals Specification of the Subscriber Identity Module – Mobile
`Equipment (SIM - ME) interface (Release 1999) (3GPP TS 11.11
`V8.6.0) (“TS-11.11”)
`Excerpts from A. Mehrotra, “GSM System Engineering”
`(Artech House 1997)
`U.S. Patent No. 5,950,130 (“the ’130 patent”)
`U.S. Patent No. 5,862,471 (“the ’471 patent”)
`U.S. Patent No. 6,195,532 (“Bamburak”)
`U.S. Patent Appl. Publ. No. 2001/0001875 (“Hirsch”)
`U.S. Patent Appl. Publ. No. 2002/0111180 (“Hogan”)
`
`v
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`Dell Inc., Ex. 1003
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`
`
`I, Dr. Apostolos K. “Paul” Kakaes, hereby declare as follows:
`
`I. ASSIGNMENT
`I have been retained on behalf of Dell, Inc., ZTE (USA) Inc., and ZTE
`
`1.
`
`Corporation (collectively, “Petitioners”) to offer technical opinions related to U.S.
`
`Patent No. 7,274,933 (“the ’933 patent”) (Ex. 1001). I understand that Petitioners
`
`are requesting that the Patent Trial and Appeal Board (“PTAB” or “Board”) institute
`
`an inter partes review (“IPR”) proceeding of the ’933 patent.
`
`2.
`
`I have been asked to provide my independent analysis of the ’933 patent
`
`in light of the prior art patents and publications cited below.
`
`3.
`
`I am not, and never have been, an employee of any of the Petitioners. I
`
`received no compensation for this Declaration beyond my normal hourly
`
`compensation based on my time actually spent analyzing the ’933 patent, the prior
`
`art patents and publications cited below, and issues related thereto, and I will not
`
`receive any added compensation based on the outcome of any IPR or other
`
`proceeding involving the ’933 patent.
`
`II. QUALIFICATIONS AND EXPERIENCE
`I am over the age of 18 and am competent to write this Declaration. I
`
`4.
`
`have personal knowledge, or have developed knowledge of these technologies based
`
`upon education, training, or experience, of the matters set forth herein.
`
`1
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`5. My CV, which includes my complete education and work experience,
`
`is included as Appendix A hereto. I describe several relevant aspects of my
`
`experience below.
`
`6.
`
`I have almost forty (40) years of experience in electrical engineering
`
`and computer science and in fixed and mobile communications networks. I attended
`
`the University of Colorado from 1974 to 1980, during which I earned a Bachelor of
`
`Science (B.S.) and a Master of Science (M.S.) in applied mathematics with a minor
`
`in electrical engineering. I attended the Polytechnic Institute of New York between
`
`1982 and 1988, during which I earned a Doctor of Philosophy (Ph.D.) in electrical
`
`engineering, with a thesis titled “Topological Properties and Design of Multihop
`
`Packet Radio Networks.” While pursuing the Ph.D. degree, I held a joint
`
`appointment as Special Research Fellow and Adjunct Instructor at the Polytechnic
`
`Institute of New York between 1985 and 1986.
`
`7.
`
`Between 1982 and 1987, I worked at AT&T Bell Laboratories in
`
`Holmdel, New Jersey. While at AT&T Bell Laboratories, I worked on modeling,
`
`analysis, design, and performance evaluation of voice and data networks. I
`
`developed algorithms for DNHR (Dynamic, Non-Hierarchical Routing) used in the
`
`telephone network. I also analyzed advanced data services and formulation of long-
`
`term plans for development of enhanced data services and network design tools to
`
`support such services.
`
`2
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`
`8.
`
`I was an Assistant Professor of Electrical Engineering and Computer
`
`Science at The George Washington University (GWU), Washington, D.C., between
`
`1987 and 1994. During my association with GWU, I taught graduate courses in the
`
`area of communication engineering, including communication theory, coding theory,
`
`voice and data networking, and mobile communications.1 I also received several
`
`research awards/grants, including the prestigious NSF Research Initiation Award.
`
`9.
`
`In 1988, I founded Cosmos Communications Consulting Corporation
`
`(“Cosmos”), which is a private communications engineering consulting firm
`
`specializing in mobile communications, and I have been the President of the
`
`company since its founding. Since 1994, I have worked full-time at Cosmos. At
`
`Cosmos, among various activities, I have consulted on high level technology-related
`
`issues and trends to corporate entities, governmental agencies, and international
`
`organizations, such as the United Nations. I have provided technical consultancy to
`
`engineering firms, operators, and equipment vendors on issues related to existing or
`
`evolving technologies for mobile communications, and to the investment
`
`community on issues related to both fixed and wireless communications
`
`technologies. I have served as consultant on both civil and criminal legal cases,
`
`
` 1 In the early 1990s I developed and taught the first course on Mobile
`
`Communications taught at GWU to Electrical Engineering graduate students.
`
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`
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`including several patent infringement cases both at the ITC and in district court. I
`
`also participated as a technical consultant in the analysis of large patent portfolios
`
`for the purposes of due diligence, sales, and merger and acquisition activities for
`
`some of the largest companies in the mobile communications space. These projects
`
`spanned a multidimensional spectrum of technologies in both fixed and mobile
`
`communications as they have evolved over the past more than thirty (30+) years.
`
`10. Over the course of my career, I have authored and co-authored some
`
`thirty (30) publications on various aspects of fixed and mobile communications, as
`
`noted in my curriculum vitae. I am a member of the Institute of Electrical and
`
`Electronics Engineers (IEEE) and actively involved in the Communications Society
`
`and the Information Theory Society of IEEE. Between 1991 and 1992, I served as
`
`the Secretary of IEEE Communications Society National Capital Area Chapter.
`
`Between 1992 and 1993, I was the Vice-Chair of IEEE Communications Society
`
`National Capital Area Chapter. I was the Vice-Chair of the Communication Theory
`
`Technical Committee of the Communications Society of the IEEE for the 1993-1996
`
`term, and Treasurer of the Communication Theory Technical Committee of the
`
`Communications Society of the IEEE for the 1996-1999 term.
`
`11.
`
`I have served as a reviewer for the IEEE, book editors, other technical
`
`publications, and various National Science Foundation (NSF) Panels. I have
`
`organized technical sessions in technical conferences, including the IEEE
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`International Conference on Communications
`
`(ICC) and
`
`IEEE Global
`
`Communications Conference (Globecom). I served as the Technical Program Chair
`
`for the Communication Theory Mini-Conference in 1992.
`
`12.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`publications are listed on my CV (attached as Appendix A).
`
`13. During my work at Cosmos, I have provided expert advice and
`
`conducted extensive training for practicing engineers in the field in diverse
`
`networking technology areas, including Wireless Local Area Networks (LAN),
`
`Metropolitan Area Networks (MAN), and Personal Area Networks (PAN)
`
`technologies, paging networks, ad hoc networks, including IEEE 802.11 (Wi-Fi),
`
`IEEE 802.16 (WiMAX), HIPERLAN, Bluetooth, Near Field Communications, and
`
`IrDA (Infrared Data Association). My experience includes detailed in-depth analysis
`
`of cellular networks operating with any of the available access technologies as
`
`standardized in various standards, broadly known as AMPS, GSM, GPRS, EDGE
`
`(EGPRS); North American TDMA IS-54 and IS-136, iDEN, IS-95, UMTS, HSPA,
`
`and LTE, some of which are also referred to as “1G,” “2G,” “2.5G,” “3G,” and “4G.”
`
`I have experience in the design and implementation of voice and data networking
`
`(circuit switching, packet switching
`
`including
`
`the evolving all-IP-based
`
`technologies), traffic engineering, RF design, Quality of Service (QoS) and resource
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`allocation, MAC protocols, as well as in the design of core networks, both user plane
`
`and control plane.
`
`14. Specifically, during the past approximately 35 years, I have been lucky
`
`enough to be part of the community of engineers that have contributed to the
`
`astounding growth of the mobile communications industry. It started from a niche
`
`industry that was thought of as being something for the “rich and the famous” to
`
`becoming one of the most wide-spread household concepts, providing useful tools
`
`to all segments of the global society, from the wealthy suburbs of New York to the
`
`poorest neighborhoods in Africa and everywhere in between.
`
`15. My involvement in this industry included providing consulting services
`
`to company executives who needed to make deployment plans, taking into
`
`consideration the strengths and weaknesses of the technology, economics, user
`
`value, etc. As such, I have developed a deep understanding of all aspects of a given
`
`technology, its features, added value, and the like. In addition, my consulting
`
`services included developing courses for the companies that were at the forefront of
`
`this developing technology. By definition, this new, previously non-existent
`
`technology was not taught in university courses, as it was too new. Having
`
`developed hundreds of courses over the years and taught thousands of engineers (and
`
`non-engineers alike), I have a solid understanding and knowledge of the technical
`
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`developments and how their importance fits in the larger puzzle of a fast-developing
`
`technology.
`
`16. While deployment and implementation of the technology presented an
`
`important set of questions and problems to a given company’s leadership, the
`
`necessity of progress entailed another set of difficult issues. The decision to move
`
`on and abandon a technology which has been good to the company and its customers
`
`is not easy. In some ways, change is more difficult than the status quo. However,
`
`the status quo can lead to stagnation. Thus in my work, one of the very challenging,
`
`and interesting, components have been my consulting services to company leaders
`
`on the issues involved in migrating from one telecommunications technology to the
`
`next, including from 1G to 2G, from 2G to 3G, and from 3G to 4G.2
`
`17.
`
`I had to develop a deep understanding (and convey it to the appropriate
`
`executives) of the strengths that a new “generation” was bringing to the table, as
`
`well as the transition issues and costs that invariably came with a decision to
`
`implement it.
`
`18. My consulting included providing training to engineers in the field that
`
`were deploying the various networks. For example, I developed courses and provided
`
`training and consulting to the engineers deploying some of the earliest GSM networks
`
`
` 2 A summary of these technologies will be presented below in Section VI.
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`in Germany and France, to be followed by many countries in Europe and around the
`
`world, including the USA when it was decided that GSM would be used in the USA.
`
`Successful deployments of the initial GSM systems were followed by deployments of
`
`GPRS and EDGE, which was then followed by deployments of 3G UMTS systems
`
`world-wide. Of course, the 3G systems were followed by the currently most wide-
`
`spread deployments of 4G systems, also referred to as LTE, world-wide. Thus, my
`
`experience includes a deep understanding of the entirety of each system that we
`
`broadly refer to as “1G,” “2G,” ‘‘3G,” and/or “4G.”
`
`19. As my career developed, I also became involved in matters related to
`
`intellectual property, and specifically to patents in the space of communication
`
`engineering and mobile communications specifically. I have served as an expert
`
`witness in a number of cases and testified in a number of trials/hearings, having
`
`obviously performed the relevant analysis. Thus, I have developed a comprehensive
`
`understanding of what it means for a patent to be found invalid, or what so-called
`
`“prior art” teaches and what the scope and content of prior art in the
`
`telecommunications field is. Besides my experience in the litigation context, I have
`
`advised a number of companies in the broader context of patents in related
`
`intellectual property issues. I have analyzed large and small patent portfolios on
`
`behalf of companies that were interested in acquiring some or all of a given portfolio.
`
`In some cases, my analysis led the companies that had retained me to determine that
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`they were not interested in pursuing the contemplated acquisition. In others, it led to
`
`a “deal,” and in some cases a multi-billion dollar deal.
`
`III. APPLIED LEGAL PRINCIPLES
`In forming my analysis and conclusions expressed in this Declaration,
`
`20.
`
`I have applied the legal principles described in the following paragraphs, which were
`
`provided to me by Counsel for Petitioners.3
`
`A. Anticipation
`21.
`I understand that patents or printed publications that qualify as prior art
`
`can be used to invalidate a patent claim as anticipated.
`
`22.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a limitation-
`
`by-limitation basis.
`
`
` 3 I understand that the patent laws were amended by the America Invents Act
`
`(AIA), but that the earlier statutory requirements still apply to pre-AIA patents.
`
`I have been informed that the ’933 patent is a pre-AIA patent, so the pre-AIA
`
`requirements control. Unless otherwise stated, my understanding of the law
`
`about patent invalidity as set forth in this Declaration relates to the pre-AIA
`
`requirements.
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`23.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all limitations of the claim are disclosed in that
`
`prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`24.
`
`I understand that anticipation in an IPR must be proven by a
`
`preponderance of the evidence.
`
`B. Obviousness
`25.
`I understand that even if a patent is not anticipated, it is still invalid if
`
`the differences between the claimed subject matter and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person of ordinary skill in
`
`the art (“POSITA”) at the time the invention was made.
`
`26.
`
`I understand that a person of ordinary skill in the art at the time of the
`
`claimed invention provides a reference point from which the prior art and claimed
`
`invention should be viewed. This reference point is applied instead of someone
`
`using his or her own insight or hindsight in deciding whether a claim is obvious.
`
`27.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as: (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, and so
`
`forth.
`
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`28.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand further that prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but that at other times the linkage between two or more prior art references is simple
`
`common sense.
`
`29.
`
`I further understand that the obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`30.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve similar
`
`devices in the same way, using the technique would have been obvious unless its
`
`actual application is beyond his or her skill.
`
`31.
`
`I also understand that practical and common-sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art seeking to overcome a problem through invention will often
`
`be able to fit together the teachings of multiple publications. I understand that the
`
`obviousness analysis therefore considers the inferences and creative steps that a
`
`person of ordinary skill in the art would employ under the circumstances.
`
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`32.
`
`I understand that a particular combination may be shown to be obvious
`
`to combine merely by showing that it was obvious to try the combination. For
`
`example, when there is a design need or market pressure to solve a problem and there
`
`are a finite number of identified, predictable solutions, a POSITA has good reason
`
`to pursue the known options within his or her technical grasp because the result is
`
`likely the product not of innovation but of ordinary skill and common sense.
`
`33. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market forces
`
`can prompt variations of it, either in the same field or a different one. If a person of
`
`ordinary skill in the art can implement a predictable variation, the patent claim is
`
`likely obvious.
`
`34.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a POSITA, not just the patentee.
`
`Accordingly, I understand that any need or problem known to those of ordinary skill
`
`in the field of endeavor at the time of invention and addressed by the patent can
`
`provide a reason for combining the elements in the manner claimed.
`
`35.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
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`found explicitly or inherently in the reference but can be supplied by the knowledge
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`or common sense of one of ordinary skill in the art.
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`36.
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`I understand that secondary indicia of non-obviousness may include
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`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
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`the patent; (2) commercial success of processes covered by the patent;
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`(3) unexpected results achieved by the invention; (4) praise of the invention by
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`others skilled in the art; (5) taking of licenses under the patent by others;
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`(6) deliberate copying of the invention; (7) failure of others to find a solution to the
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`long felt need; and (8) skepticism by experts. I understand that evidence of
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`secondary indicia of non-obviousness, if available, should be considered as part of
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`the obviousness analysis.
`
`37.
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`I also understand that there must be a relationship between any such
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`secondary considerations and
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`the
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`invention.
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` I further understand
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`that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`38.
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`In sum, my understanding is that prior art teachings are properly
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`combined where a person of ordinary skill in the art having the understanding and
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`knowledge reflected in the prior art and motivated by the general problem facing the
`
`inventor, would have been led to make the combination of elements described in the
`
`claims. Under this analysis, the prior art references themselves, or any need or
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`problem known in the field of endeavor at the time of the invention, can provide a
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`reason for combining the elements of multiple prior art references in the claimed
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`manner.
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`39.
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`I understand that obviousness in an IPR must be proven by a
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`preponderance of the evidence.
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`C. Claim Construction Standard
`40.
`I understand that terms appearing in the patent claims are to be
`
`interpreted according to their “ordinary and customary meaning” in an IPR
`
`proceeding. In determining the ordinary and custom meaning, the words of a claim
`
`are first given their plain meaning as they would have been understood by a person
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`of ordinary skill in the art at the time of the alleged invention, in light of the
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`specification and file history. I understand that even treatises and dictionaries may
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`be consulted, albeit under limited circumstances, to determine the meaning attributed
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`by a person of ordinary skill in the art to a claim term at the time of the alleged
`
`invention. I have followed this approach in my analysis and have applied the
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`ordinary and customary meaning of those terms throughout my analysis in this
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`declaration.
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`41.
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`I understand that the words of the claims should be interpreted as they
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`would have been understood by a person of ordinary skill in the art at the time the
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`alleged invention was made (not today). Counsel has instructed me that for the
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`purposes of this declaration, I should assume that the ’933 patent is entitled to the
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`benefit of foreign application No. EP 03255483, filed September 3, 2003. I have
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`followed this instruction for the purposes of this Declaration. However, the plain
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`meanings/interpretations that I employed in my analysis below would have also been
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`correct if the date of invention was anywhere from the filing date of the foreign
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`priority application (September 3, 2003) to the filing date of the U.S. application that
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`issued as the ’933 patent (September 2, 2004).
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`I have been informed that a person of ordinary skill in the art is a
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`42.
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`hypothetical person who is presumed to have the skill and experience of an ordinary
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`worker in the field at the time of the alleged invention. Based on my knowledge and
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`experience in the field and my review of the ’933 patent and file history, a POSITA
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`at the time of the alleged invention (September 2003) would have had a degree in
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`electrical engineering or a similar discipline, with at least three years of relevant
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`industry or research experience (or additional education). The relevant experience
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`would include a working understanding of the then-existing wireless cellular
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`communications standards.
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`43. Based on my educational and employment background, I am qualified
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`to provide opinions concerning what a POSITA would have known and understood
`
`around September 2003. Indeed, as reflected in my qualifications above, I more than
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`qualified as a person of ordinary skill in the art as of the relevant dates of the
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`’933 patent.
`
`V. MATERIALS CONSIDERED
`I have considered information from various sources in forming my
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`44.
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`opinions. I have drawn on my decades of experience in this field. I have employed
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`methods and analyses of a type reasonably relied upon by experts in my field in
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`forming opinions or inferences on the subject. Additionally, in preparing this
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`Declaration, I have relied upon the exhibits listed at the beginning of this
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`Declaration, any documents and other information cited herein, and the following
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`patents and file histories related to the ’933 patent:
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` U.S. Patent No. 7,460,868 and associated file history;
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` U.S. Patent No. 7,596,375 and associated file history;
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` U.S. Patent No. 8,275,374 and associated file history;
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` U.S. Patent No. 8,472,955 and associated file history; and
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` U.S. Patent No. 8,948,756 and associated file history.
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`VI. STATE OF THE ART
`In this Section, I present an overview of the most relevant aspects of
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`45.
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`the techn