Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`BUMBLE TRADING LLC,
`Petitioner
`
`v.
`
`KINECTUS LLC,
`Patent Owner
`
`
`
`Case No. IPR2021-00766
`
`U.S. Patent No. 9,763,070 B2
`
`Filing Date: January 19, 2017
`Issue Date: September 12, 2017
`
`Title: SYSTEMS AND METHODS FOR ESTABLISHING COMMUNICATIONS BETWEEN
`MOBILE DEVICE USERS
`
`
`DECLARATION OF CHRISTOPHER M. SCHMANDT
`
`
`
`
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`I.
`
`V.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`A. Qualifications and Experience ............................................................. 1
`B. Materials Considered ............................................................................ 4
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 10
`II.
`III. STATEMENT OF LEGAL PRINCIPLES ................................................... 12
`A.
`Claim Construction............................................................................. 12
`B. Obviousness ........................................................................................ 14
`IV. RELEVANT TECHNOLOGY BACKGROUND ....................................... 19
`A.
`The Rise of Mobile Web Browsing and the Advent of Mobile
`User Interfaces and Mobile Applications ........................................... 19
`The History of Gestures “Swiping” and “Dragging” ......................... 25
`B.
`C. Online and Mobile Profile Matching Apps ........................................ 32
`THE ’070 PATENT ...................................................................................... 37
`A. Overview of the Specification ............................................................ 37
`B.
`The Prosecution History ..................................................................... 40
`C.
`The Challenged Claims ...................................................................... 41
`VI. APPLICATION OF THE PRIOR ART TO ASSERTED CLAIMS ........... 43
`A.
`Brief Summary of Prior Art ............................................................... 44
`B.
`Claims 1-4, 6-9, 14-16, 19-20, 22, 24, 26, 28-30, and 33-36 are
`obvious ............................................................................................... 52
`C. Ground 1: Analysis of Claims 1, 3-4, 22, 29, 35, and 36 Based
`on Stackpole ....................................................................................... 53
`D. Ground 2: Analysis of Claims 1-4, 22, 29, 35, and 36 Based on
`Stackpole in View of Wohlert .......................................................... 103
`Ground 3: Analysis of Claims 1, 3-4, 6-9, 22, 29, 35, and 36
`Based on Stackpole in View of Savjani ........................................... 111
`Ground 4: Analysis of Claims 1-4, 6-9, 22, 29, 35 and 36 Based
`on Stackpole in view of Savjani and Wohlert .................................. 133
`
`E.
`
`F.
`
`
`
`i
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`
`
`I.
`
`J.
`
`G. Ground 5: Analysis of Claims 24, 26 and 28 Based on
`Stackpole in View of Robson ........................................................... 135
`H. Ground 6: Analysis of Claims 24, 26 and 28 Based on
`Stackpole in View of Robson, Savjani and Wohlert ........................ 138
`Ground 7: Analysis of Claims 1, 14, 15, 16, 19, 20, 30, 33, and
`34 Based on Stackpole in View of Ishizawa .................................... 140
`Ground 8: Analysis of 1, 14, 15, 16, 19, 20, 30, 33, and 34
`Based on Stackpole in View of Wohlert and Ishizawa .................... 160
`VII. SECONDARY CONSIDERATIONS ........................................................ 161
`VIII. CONCLUSION ........................................................................................... 161
`
`
`
`
`
`ii
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`

`

`Declaration of Christopher M. Schmandt in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`I, Christopher M. Schmandt, declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`In 2019 I retired from my position as a Principal Research Scientist at
`1.
`
`the Media Laboratory at Massachusetts Institute of Technology (“M.I.T.”), after 40
`
`years of employment by MIT. In that role, I also served as faculty for the M.I.T.
`
`Media Arts and Sciences academic program. I have more than 40 years of
`
`experience in the field of Media Technology, and was a founder of the M.I.T. Media
`
`Laboratory.
`
`2.
`
`I received my Bachelor of Science degree in Electrical Engineering and
`
`Computer Science from M.I.T in 1978, and my Master of Science degree in Visual
`
`Studies (Computer Graphics), also from M.I.T. I began my employment at M.I.T. in
`
`1980, initially at the Architecture Machine Group, which was an early computer
`
`graphics research lab. In 1985 I helped found the Media Laboratory and continued
`
`to work there until my retirement. I ran a research group titled “Living Mobile.” My
`
`research spans distributed communication and collaborative systems, with an
`
`emphasis on multi-media and user interfaces; as well as pioneering work I systems
`
`that provide location-based services. I have more than 70 published conference and
`
`journal papers and one book in these fields.
`
`
`
`1
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`3.
`
`In my faculty position, I taught courses and directly supervised student
`
`research and theses at the Bachelors, Masters, and Ph.D. level. I oversaw the Masters
`
`and Ph.D. thesis programs for the entire Media Arts and Sciences academic program.
`
`Based on the above experience and qualifications, I have a solid understanding of
`
`the knowledge and perspective of a person of ordinary skill in this technical field
`
`since at least 1980.
`
`4.
`
`During my career, a number of aspects of my research were directly
`
`relevant to the matter in the contested patent. When I worked at the predecessor to
`
`the Media Lab, the Architecture Machine Group, I worked on very early interactive
`
`computer graphics systems. As this was before the widespread presence of the
`
`computer mouse, much of our work used touch sensitive surfaces and screens, much
`
`as modern mobile phones use. My EECS BS thesis, titled “Pages Without Paper,”
`
`was perhaps the first e-book reader, and allowed a user to swipe on a touch pad to
`
`turn pages; right-to-left to move forward a page and left-to-right to move to the
`
`previous page. Although the thesis refers to these as “flipping,” it is the same gesture
`
`as is sometimes called “swiping.”
`
`5.
`
`Some years later, in the mid-1990s, I was a member of the Media Lab
`
`News in the Future project. In this area, I worked on matching user interests in news
`
`articles, based on personal preference profiles as well as learning from the history of
`
`
`
`2
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`what the users read. Similar techniques were also applied to filtering email and voice
`
`messages. This is related to matching algorithms that may allow people to meet
`
`others who meet personal criteria.
`
`6.
`
`For many years my research included pioneering work in location based
`
`services, such as learning where one traveled and who or what resources such might
`
`be found en route, as well as sharing location information with others in various
`
`ways. Additionally, in 1988 with my grad students I developed the first real time
`
`spoken driving direction system, a very early precursor to the common in-vehicle
`
`voice navigation systems in use today.
`
`7. My Curriculum Vitae is submitted herewith as Appendix A.
`
`8.
`
`I have been retained by counsel for Petitioner to provide my expert
`
`opinion in connection with the above-captioned proceeding. More particularly, I
`
`have been asked to provide my opinion about the state of the art of the technology
`
`described in U.S. Patent No. 9,763,070 (“’070 patent” or “’070”) [Ex. 1001] and on
`
`the patentability of certain claims of this patent in light of certain prior art references
`
`discussed below. I am being compensated at a rate of $500 per hour for my study
`
`and other work in this matter. I am also being reimbursed for reasonable and
`
`customary expenses associated with my work in this investigation. My
`
`
`
`3
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony. The following is my written report on these topics.
`
`9.
`
`Throughout my Declaration, all of my opinions about obviousness are
`
`expressed from the point of view of a person of ordinary skill in the art prior to the
`
`priority date of the claims of the ʼ070 patent.
`
`B. Materials Considered
`10. The analysis that I provide in this Declaration is based on my education,
`
`research and experience, as well as the documents I have considered, including U.S.
`
`the ʼ070 patent and its prosecution history (Ex. 1009). The ’070 patent states on its
`
`face that it issued from an application that was one of a series of continuation
`
`applications that date back to a first non-provisional patent application filed on
`
`January 17, 2013 which ultimately issued as U. S. Patent No. 9,294,428. That earlier
`
`patent application claims priority to three provisional patent applications, the earliest
`
`of which was filed on January 18, 2012, application no. 61/587,946. I am informed
`
`that during the concurrent litigation between the Patent Owner and the Petitioner,
`
`the Patent Owner has identified the date of the alleged invention as December 30,
`
`2011. For the purposes of my analysis in this Declaration, I have assumed December
`
`
`
`4
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`30, 2011 as the priority date.1 I have cited to the following documents in my analysis
`
`below:
`
`Exhibit
`No.
`
`Description of Document
`
`1001 U.S. Patent No. 9,763,070 B2 to Christopher Andrew Nordstrom, et al.
`(filed January 19, 2017, issued September 12, 2017) (“’070” or “’070
`patent”)
`
`
`1 I am not offering an opinion that the ’070 patent should be entitled to this earlier
`
`priority date. I have formed no opinion as to whether the challenged claims are
`
`supported by the various provisional applications. Nor have I formed an opinion as
`
`to whether those claims can properly be afforded this alleged invention date, as the
`
`prior art on which I rely predates December 30, 2011. Moreover, my opinions as to
`
`the level of ordinary skill in the art, and all of the opinions presented in my
`
`Declaration, would remain the same whether December 30, 2011, or the date of the
`
`filing of the earliest provisional application (January 18, 2012), or the date of the
`
`filing of the first of the series of non-provisional patent applications (January 17,
`
`2013), or any date in between was established as the date of invention for purposes
`
`of the challenged claims. In the event the Patent Owner later asserts an even earlier
`
`date in an attempt to predate the prior art, I reserve my right to respond to such
`
`assertion as appropriate.
`
`
`
`5
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`Exhibit
`No.
`
`Description of Document
`
`1002 Declaration of Christopher Schmandt (“Schmandt”)
`
`1003 U.S. Pat. Publication No. US 2008/0140650 (filed November 28,
`2007, published June 12, 2008) (“Stackpole”)
`
`1004 U.S. Pat. Publication No. US 2011/0219310 (filed March 1, 2011,
`published September 8, 2011) (“Robson”)
`
`1005 U.S. Pat. Publication No. US 2009/0271212 (filed April 29, 2009,
`published October 29, 2009) (“Savjani”)
`
`1006 U.S. Pat. Publication No. US 2010/0146462 (filed November 9, 2009,
`published June 10, 2010) (“Ishizawa”)
`
`1007 U.S. Pat. No. 9,230,285 to Wohlert, et al. (filed December 11, 2011,
`issued January 5, 2016) (“Wohlert”)
`
`1008 Complaint, KinectUs LLC v. Bumble Trading, LLC, Case No. 6:20-cv-
`942-ADA (W.D. Tex.)
`
`1009
`
`1010
`
`File History of the ’070 patent
`
`Scheduling Order, KinectUs LLC v. Bumble Trading, LLC, Case No.
`6:20-cv-942-ADA (W.D. Tex.) (February 4, 2021)
`
`1011 Answer to Amended Complaint and Amended Counterclaims,
`KinectUs LLC v. Bumble Trading, LLC, Case No. 6:20-cv-942-ADA
`(W.D. Tex.) (February 12, 2021)
`
`1012 Disclosure of Asserted Claims and Infringement Contentions,
`KinectUs LLC v. Bumble Trading, LLC, Case No. 6:20-cv-942-ADA
`(W.D. Tex.) (February 5, 2021)
`
`1013 Amended Disclosure of Asserted Claims and Infringement
`Contentions, KinectUs LLC v. Bumble Trading, LLC, Case No. 6:20-
`cv-942-ADA (W.D. Tex.) (February 18, 2021)
`
`
`
`6
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`Exhibit
`No.
`
`Description of Document
`
`1014 Claim Listing for the ’070 patent
`
`1015 U.S. Patent Publication No. 2011/0087974 to Charles Kulas (filed
`December 17, 2010, published April 14, 2011) (“Kulas”)
`
`1016 U.S. Patent Publication No. 2012/0272186 to Joel Kraut (filed March
`8, 2012, published October 25, 2012) (“Kraut”)
`
`1017 U.S. Patent Publication No. 2006/0026521 to Steve Hotelling et al.
`(filed July 30, 2004, published February 2, 2006) (“Hotelling”)
`
`1018 U.S. Patent No. 8,059,101 to Wayne Westerman et al. (filed June 22,
`2007, issued November 15, 2011) (“Westerman”)
`
`1019 U.S. Patent No. 7,479,949 to Steven Jobs et al. (filed April 11, 2008,
`issued January 20, 2009) (“Jobs”)
`
`1020 U.S. Patent Publication No. 2013/0047115 to Charles Migos et al.
`(filed August 17, 2012, published February 21, 2013) (“Migos”)
`
`1021 U.S. Patent No. 8,095,879 to Magnus Goertz (filed December 10,
`2002, issued January 10, 2012) (“Goertz”)
`
`1022 U.S. Patent Publication No. 2012/0017180 to Dominic Flik et al. (filed
`October 28, 2009, published January 19, 2012) (“Flik”)
`
`1023 U.S. Patent Publication No. 2009/0002335 to Imran Chaudhri (filed
`June 26, 2008, published January 1, 2009) (“Chaudhri”)
`
`1024 U.S. Patent Publication No. 2012/0290978 to John Devecka (filed
`May 14, 2012, published November 15, 2012) (“Devecka”)
`
`1025 U.S. Patent No. 9,733,811 to Sean Rad et al. (filed October 21, 2013,
`issued August 15, 2017) (“Rad”)
`
`1026 U.S. Patent 6,529,136 to Kevin Cao et al. (filed February 28, 2001,
`issued March 4, 2003) (“Cao”)
`
`
`
`7
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`Exhibit
`No.
`
`Description of Document
`
`1027 U.S. Patent 6,549,768 to Federico Fraccaroli (filed August 24, 1999,
`issued April 15, 2003) (“Fraccaroli”)
`
`1028 U.S. Patent 6,618,593 to Charles Drutman et al. (filed September 8,
`2000, issued September 9, 2003) (“Drutman”)
`
`1029 U.S. Patent Application No. 2005/0181803 to Christopher Weaver et
`al. (filed February 17, 2004, published August 18, 2005) (“Weaver”)
`
`1030 U.S. Patent Application No. 2005/0250552 to Nathan Eagle et al.
`(filed May 5, 2005, published November 10, 2005) (“Eagle”)
`
`1031 Charles Newark-French, Mobile Apps Put the Web in Their Rear-view
`Mirror, FLURRY (June 20, 2011),
`https://web.archive.org/web/20110924031931/http:/blog.flurry.com/bi
`d/63907/Mobile-Apps-Put-the-Web-in-Their-Read-view-Mirror
`
`1032
`
`Julie Spira, Top 10 Best Mobile Dating Apps of 2012, CYBER-DATING
`EXPERT, https://cyberdatingexpert.com/mobiledating2012/ (last visited
`Mar. 14, 2019)
`
`1033 Charles Newark-French, Mobile Dating Apps: The Second (Lady)
`Killer App Category, FLURRY (Aug. 2011),
`https://web.archive.org/web/20110811173903/http:/blog.flurry.com/bi
`d/68668/Mobile-Dating-Apps-The-Second-Lady-Killer-App-Category
`
`1034 U.S. Patent 7,071,842 to James Brady Jr. (filed June 27, 2003, issued
`July 4, 2006) (“Brady”)
`1035 U.S. Patent No. 8,606,297 B1 to Joel Simkhai, et al. (filed Mar. 24,
`2011, issued Dec. 10, 2013) (“Simkhai”)
`Jinjer Simon, Windows CE 2 for Dummies, IDG Books Worldwide,
`Inc. (1997)
`
`1036
`
`1037
`
`Felix Richter, Digital Camera Sales Dropped 87% Since 2010, Statista
`(February 7, 2020)
`
`
`
`8
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`Exhibit
`No.
`
`Description of Document
`
`1038 Ben Gilbert, It’s been over 12 years since the iPhone debuted – look
`how primitive the first one seems today, Insider (July 22, 2019)
`
`1039 Dan Frommer, 10 Ways the iPhone Changed Smartphones Forever,
`Business Insider (June 19, 2009)
`
`1040 Kit Eaton, You Are Now Entering the Touchscreen Smartphone Era,
`Fast Company (November 05, 2009)
`
`1041 Dean Takahashi, Touchscreen market growing 10 times faster than
`other displays, VentureBeat (August 17, 2011)
`
`1042 Gordon Kurtenbach et al., User Learning and Performance with
`Marking Menus, Human Factors in Computing Systems
`
`1043
`
`Sachin Kosla, Phone number list of Facebook friends, Digimantra
`(November 12, 2010)
`
`1044 Find people by their family name on Facebook,
`https://www.labnol.org/internet/find-people-by-family-name-on-
`facebook/9338/ (August 6, 2009)
`
`1045 News Release, KODAK SLICE Touchscreen Camera,
`https://store.kodak.com/store/ekconsus/en_US/pd/SLICE_Touchscree
`n_Camera/productID.169976000
`
`1046 KODAK SLICE Touchscreen Camera, Extended User Guide
`
`1047 News Release, KODAK SLICE Touchscreen Camera Lets You Share
`and Relive Moments Instantly, PR Newswire (January 6, 2011)
`
`1048 News Release, Kodak unveils SLICE touchscreen camera (January 6,
`2010)
`
`1049 Cannon Power Shot S90 (February 23, 2010)
`
`1050 Canon PowerShot ELPH 500 HS Camera - Express Review
`
`
`
`9
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`
`Exhibit
`No.
`
`Description of Document
`
`1051 Digital Camera Buyers Guide – Techlicious (June 12, 2011)
`
`1052 Chris Davies, Samsung CL65 12.2MP digicam with WiFi Bluetooth
`and GPS (August 13, 2009)
`
`1053 MG Siegler, Textie: A Handsome, Simple Messaging App From the
`Guys Behind Tweetie and Borange, TechCrunch (April 29, 2009)
`
`1054 U.S. Patent Publication No. 2009/0176517 to Gregory Christie et al.
`(filed Jan. 26, 2008, published July 9, 2009) (“Christie”)
`
`1055
`
`File History For Stackpole (U.S. Pat. Publication No. US
`2008/0140650), Sept. 22, 2008 Preliminary Amendment
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`I understand that an assessment of claims of the ’070 patent should be
`11.
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is alleged to be December 30,
`
`2011.2
`
`12.
`
`I have also been advised that to determine the appropriate level of a
`
`person having ordinary skill in the art, the following factors may be considered: (1)
`
`
`2 As explained in footnote 1, all of the opinions presented in my Declaration would
`
`remain the same whether December 2011, January 2012, January 2013, or any date
`
`in between was the date of invention for purposes of the challenged claims.
`
`
`
`10
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (2) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (3) the educational level of active
`
`workers in the field; and (4) the educational level of the inventor.
`
`13.
`
`In my opinion, a person of ordinary skill in the art as of December 2011
`
`(the alleged priority date of the ’070 patent) would have possessed at least a
`
`bachelor’s degree in computer science or an equivalent field requiring learning
`
`computation principles, and two years of experience in building software
`
`applications employing client/server communication architectures, database queries
`
`and graphical user interfaces. A person could also have qualified as a person of
`
`ordinary skill in the art with some combination of (1) more formal education (such
`
`as a Master of Science degree) and less technical experience, or (2) less formal
`
`education and more technical or professional experience in the fields listed above.
`
`14. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 40 years of experience in the field of computer
`
`science, multimedia, and Web technology, my understanding of the basic
`
`qualifications that would be relevant to an engineer or scientist tasked with
`
`investigating methods and systems in the relevant area, and my familiarity with the
`
`backgrounds of colleagues, co-workers, and employees, both past and present. I also
`
`
`
`11
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`note that in describing the alleged invention the ’070 patent refers to underlying
`
`technology that is itself not overly sophisticated. The specification notes that the
`
`alleged invention of the ’070 patent can be practiced in an environment that includes
`
`a social networking environment were two or more mobile device users can
`
`communicate with one another over a network in conjunction with a computer
`
`system. (’070 patent, 6:34-44.) The computer system can include a collaboration
`
`system described as employing hardware and/or program code stored in memory
`
`that is executed by a processor in the computer system. (’070 patent, 7:9-41.) The
`
`specification ascribes certain functionality to the collaboration system (e.g., ’070
`
`patent, 7:42-10:19) but does so in the context of relying on high level flow charts
`
`such as those shown in Figures 2, 5 and 6.
`
`15. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’070 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of December 2011.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`I have been instructed by counsel that a purpose of claim construction
`16.
`
`is determine what a person of ordinary skill in the art would have understood the
`
`claim terms to mean. Claim terms are generally given their ordinary and customary
`12
`
`
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`meaning, which is the meaning that the term would have to a person of ordinary skill
`
`in the art in question at the time of the invention, i.e., as of the effective filing date
`
`of the patent application. Additionally, the person of ordinary skill in the art is
`
`deemed to read a claim term not only in the context of the particular claim in which
`
`the disputed term appears, but in the context of the entire patent, including the
`
`specification. I am further informed that the patent specification may be highly
`
`relevant to the claim construction and has been described as the single best guide to
`
`the meaning of a disputed term. For terms that do not have a customary meaning
`
`within the art, the specification usually supplies the best context for understanding
`
`the meaning of those terms.3
`
`17.
`
`I am further informed that other claims of the patent in question can
`
`also be valuable sources of information as to the meaning of a claim term. Because
`
`
`3 I understand that, in Inter Partes Review (IPR) proceedings filed after November
`
`13, 2018, claims are generally construed according to the “Phillips” claim
`
`construction standard, and not the broadest reasonable interpretation (BRI) standard
`
`that previously governed IPRs. The description of the legal principles set forth in
`
`the text, therefore, provides my understanding of the “Phillips” claim construction
`
`standard as provided by counsel.
`
`
`
`13
`
`

`

`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
`
`claim terms are normally used consistently throughout the patent, the usage of a term
`
`in one claim can often illuminate the meaning of the same term in other claims.
`
`Differences among claims can also be a useful guide in understanding the meaning
`
`of particular claim terms.
`
`18.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
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`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
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`be consulted in construing the claim terms, such as my expert testimony.
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`19.
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`In my analysis of the claims and the prior art below, I have applied the
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`ordinary and customary meaning of the claim terms in light of the specification and
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`prosecution history.
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`B. Obviousness
`20. Counsel has advised me that under pre-AIA 35 U.S.C. § 103, effective
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`before March 16, 2013, a patent claim may be found invalid as obvious if, at the time
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`when the invention was made, the subject matter of the claim, considered as a whole,
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`would have been obvious to a person having ordinary skill in the field of the
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`technology (the “art”) to which the claimed subject matter belongs. I have been
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`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
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`advised that this pre-AIA rule applies to the claims of the ’070 patent because it
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`claims priority to an application filed prior to March 16, 2013.
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`21.
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`I understand that the following factors should be considered in
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`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
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`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
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`art. I also understand that certain other factors known as “secondary considerations”
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`such as commercial success, unexpected results, long felt but unsolved need,
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`industry acclaim, simultaneous invention, copying by others, skepticism by experts
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`in the field, and failure of others may be utilized as indicia of nonobviousness. I
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`understand, however, that secondary considerations should be connected, or have a
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`“nexus”, with the invention claimed in the patent at issue.
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`22.
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`I understand that a person of ordinary skill in the art is assumed to have
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`knowledge of all prior art. I understand that one skilled in the art can combine
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`various prior art references based on the teachings of those prior art references, the
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`general knowledge present in the art, or common sense. I understand that a
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`motivation to combine references may be implicit in the prior art, and there is no
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`requirement that there be an actual or explicit teaching to combine two references.
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`Thus, one may take into account the inferences and creative steps that a person of
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`ordinary skill in the art would employ to combine the known elements in the prior
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`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
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`art in the manner claimed by the patent at issue. I understand that one should avoid
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`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
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`this does not mean that a person of ordinary skill in the art for purposes of the
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`obviousness inquiry does not have recourse to common sense.
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`23.
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`I understand that when determining whether a patent claim is obvious
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`in light of the prior art, neither the particular motivation for the patent nor the stated
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`purpose of the patentee is controlling. The primary inquiry has to do with the
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`objective reach of the claims, and that if those claims extend to something that is
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`obvious, then the entire patent claim is invalid.
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`24.
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`I understand one way that a patent can be found obvious is if 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 a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
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`understand that a person of ordinary skill is also a person of at least ordinary
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`creativity. I understand when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp. If these finite number of predictable solutions lead to the anticipated
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`success, I understand that the invention is likely the product of ordinary skill and
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`common sense, and not of any sort of innovation. I understand that the fact that a
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`combination was obvious to try might also show that it was obvious, and hence
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`invalid, under the patent laws. I understand that if a patent claims a combination of
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`familiar elements according to known methods, the combination is likely to be
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`obvious when it does no more than yield predictable results. Thus, if a person of
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`ordinary skill in the art can implement a predictable variation, an invention is likely
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`obvious. I understand that combining embodiments disclosed near each other in a
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`prior art reference would not ordinarily require a leap of inventiveness.
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`25.
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`I have been advised by counsel that obviousness may be shown by
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`demonstrating that it would have been obvious to modify what is taught in a single
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`piece of prior art to create the patented invention. Obviousness may also be shown
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`by demonstrating that it would have been obvious to combine the teachings of more
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`than one item of prior art. I have been advised by counsel that a claimed invention
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`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
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`may be obvious if some teaching, suggestion, or motivation exists that would have
`
`led a person of ordinary skill in the art to combine the invalidating references.
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`Counsel has also advised me that this suggestion or motivation may come from the
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`knowledge of a person having ordinary skill in the art, or from sources such as
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`explicit statements in the prior art. Alternatively, any need or problem known in the
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`field at the time and addressed by the patent may provide a reason for combining
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`elements of the prior art. Counsel has advised me that when there is a design need
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`or market pressure, and there are a finite number of predictable solutions, a person
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`of ordinary skill may be motivated to apply common sense and his skill to combine
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`the known options in order to solve the problem.
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`26.
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`I understand the following are examples of approaches and rationales
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`that may be considered in determining whether a piece of prior art could have been
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`combined with other prior art or with other information within the knowledge of a
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`person having ordinary skill in the art:
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`(1) Some teaching, motivation, or suggestion in the prior art that would have
`
`led a person of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings to arrive at the claimed invention;
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`(2) Known work in one field of endeavor may prompt variations of it for use
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`in the same field or a different field based on design incentives or other market
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`Declaration of Christopher M. Schmandt in Support
`of Petition for Inter Partes Review of
`U.S. Patent No. 9,763,070 B2
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`forces if the variations would have been predictable to a person of ordinary
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`skill in the art;
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`(3) C