UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`SAP AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`EXPRESS MOBILE, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-01145
`
`U.S. Patent No. 9,471,287
`
`____________
`
`DECLARATION OF HENRY H. HOUH, PH.D.
`
`SAP Exhibit 1004
`SAP v. Express Mobile, Inc.
`IPR2021-01145
`Page 00001
`
`

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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`Page
`
`TABLE OF CONTENTS
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`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ....................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS .............................................. 3
`
`BASIS OF MY OPINIONS AND MATERIALS CONSIDERED ..............11
`
`LEGAL STANDARDS ..............................................................................14
`
`A.
`
`B.
`
`Obviousness ......................................................................................14
`
`Claim Construction ...........................................................................18
`
`V.
`
`PRIORITY DATE AND A PERSON OF ORDINARY SKILL ..................20
`
`VI. ANALYSIS OF THE ’287 PATENT ..........................................................22
`
`A.
`
`B.
`
`C.
`
`Overview of the ’287 Patent .............................................................22
`
`Prosecution History...........................................................................25
`
`Claim Construction ...........................................................................28
`
`VII. THE CHALLENGED CLAIMS ARE INVALID .......................................31
`
`A.
`
`Ground 1: Huang Renders Obvious Claims 1, 3, 5-7, 11-13,
`15, 17, 19-21, and 24-27 ...................................................................32
`
`1.
`
`2.
`
`Overview of Huang (U.S. Patent Application Publication
`No. 2007/0118844) .................................................................32
`
`Invalidity of Claims 1, 3, 5-7, 11-13, 15, 17, 19-21 and
`24-27 Over Huang ..................................................................40
`
`i) Element [1.pre] ..................................................................40
`
`ii) Element [1.a] ....................................................................43
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`iii) Element [1.a.1] ................................................................44
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`iv) Element [1.a.2] ................................................................51
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`v) Element [1.a.3] .................................................................53
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`vi) Element [1.a.4] ................................................................60
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`vii) Element [1.a.5] ...............................................................65
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`viii) Element [1.b] .................................................................67
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`ix) Element [1.c] ...................................................................69
`
`i
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`IPR2021-01145 Page 00002
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`

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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`Table of Contents (continued)
`
`Page
`
`x) Element [1.d] ....................................................................76
`
`xi) Element [1.d.1] ................................................................80
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`xii) Element [1.d.2] ...............................................................83
`
`xiii) Element [1.e] .................................................................88
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`xiv) Element [1.f] .................................................................94
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`xv) Element [1.g] ................................................................ 100
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`xvi) Element [1.h] ............................................................... 107
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`xvii) Element [1.i] ............................................................... 111
`
`xviii) Element [1.j].............................................................. 114
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`xix) Element [1.k] ............................................................... 121
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`xx) Claim 3 ......................................................................... 126
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`xxi) Claim 5 ........................................................................ 129
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`xxii) Claim 6 ....................................................................... 130
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`xxiii) Claim 7 ...................................................................... 131
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`xxiv) Claim 11 .................................................................... 132
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`xxv) Claim 12 ..................................................................... 133
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`xxvi) Claim 13 .................................................................... 134
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`xxvii) Claim 15 ................................................................... 136
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`xxviii) Claim 17 .................................................................. 145
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`xxix) Claim 19 .................................................................... 146
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`xxx) Claim 20 ..................................................................... 146
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`xxxi) Claim 21 .................................................................... 147
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`xxxii) Claim 24 ................................................................... 148
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`xxxiii) Claim 25 .................................................................. 150
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`xxxiv) Claim 26 .................................................................. 151
`
`xxxv) Claim 27 ................................................................... 151
`
`B.
`
`Ground 2: Huang in view of Sanders Renders Obvious
`Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 ........................... 152
`
`ii
`
`IPR2021-01145 Page 00003
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`

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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`Table of Contents (continued)
`
`
`Page
`
`C. Grounds 3 and 4: Huang in View of Gong (Ground 3) and/or
`Further in View of Sanders (Ground 4) Renders Obvious
`Claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 ........................... 156
`
`D. Grounds 5-8: Huang in View of Bearman (Ground 5) and/or
`Further in View of Sanders (Ground 6), and/or Gong
`(Grounds 7-8) Renders Obvious Claims 3, 7, 17, and 21 ................ 163
`
`VIII. SECONDARY CONSIDERATIONS ....................................................... 169
`
`IX. CONCLUSION ........................................................................................ 170
`
`iii
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`IPR2021-01145 Page 00004
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`

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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`I, Henry H. Houh, Ph.D., declare under penalty of perjury:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained on behalf of SAP America, Inc. (“SAP”) to provide
`
`assistance regarding U.S. Patent No. 9,471,287 (“the ’287 patent,” Exhibit 1001) in
`
`connection with SAP’s Petition for Inter Partes Review.1 Specifically, I have been
`
`asked to consider the validity of claims 1, 3, 5-7, 11-13, 15, 17, 19-21, and 24-27 of
`
`the ’287 patent (“the Challenged Claims”). I have personal knowledge of the facts
`
`and opinions set forth in this declaration, and, if called upon to do so, I would testify
`
`competently thereto.
`
`2.
`
`I am being compensated for my time at my standard rate of $650 per
`
`hour. My compensation is based solely on the amount of time that I devote to
`
`activity related to this case and is in no way contingent on the nature of my findings,
`
`the presentation of my findings in testimony, or the outcome of this or any other
`
`proceeding. I have no personal or financial stake or interest in this proceeding. My
`
`opinions are based on my years of education, research and experience, as well as my
`
`investigation and study of relevant materials, including those cited herein.
`
`
`1 Where appropriate, I refer to exhibits that I understand are filed with the Petition
`
`for Inter Partes Review of the ’287 patent.
`
`
`
`1
`
`IPR2021-01145 Page 00005
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`3.
`
`I may rely upon these materials, my knowledge and experience, and/or
`
`additional materials to rebut arguments raised by the Patent Owner. Further, I may
`
`also consider additional documents and information in forming any necessary
`
`opinions, including documents that may not yet have been provided to me.
`
`4. My analysis of the materials produced in this proceeding is ongoing and
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`I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`
`
`2
`
`IPR2021-01145 Page 00006
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`II. BACKGROUND AND QUALIFICATIONS
`
`5.
`
`As indicated on my Curriculum Vitae attached as Exhibit A, I earned a
`
`Ph.D. in Electrical Engineering and Computer Science from the Massachusetts
`
`Institute of Technology (“MIT”) in 1998. I also earned a Master of Science degree
`
`in Electrical Engineering and Computer Science in 1991, a Bachelor of Science
`
`Degree in Electrical Engineering and Computer Science in 1990, and a Bachelor of
`
`Science Degree in Physics in 1989, all from MIT.
`
`6.
`
`I began my technical professional career in 1987 as an intern at AT&T
`
`Bell Laboratories. While working there in 1988, 1989, and 1990 as part of an MS
`
`degree/work program, my work led to six peer-reviewed papers and U.S. and
`
`European patents on which I was named as a coauthor or inventor.
`
`7.
`
`As part of my doctoral research at MIT from 1991-1998, I worked as a
`
`research assistant in the Telemedia Network Systems (“TNS”) group at the
`
`Laboratory for Computer Science. The TNS group built a high-speed gigabit ATM
`
`network and applications running over a network, such as remote video capture
`
`(including audio), processing, and display on computer terminals. Our high-speed
`
`data network carried multimedia data including video and audio data. Our system
`
`was operational by early to mid-1993, and some of our group (including myself)
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`presented a paper on our system in September 1993 at the 18th Conference on Local
`
`Computer Networks held in Minneapolis.
`
`3
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`8.
`
`I also created the TNS group’s web server, which at the time was one
`
`of the first several hundred web servers in existence, and the TNS group was the first
`
`group to initiate a remote video display over the World Wide Web. Vice President
`
`Al Gore visited our group in 1996 and received a demonstration of—and remotely
`
`drove—a radio controlled toy car with a wireless video camera mounted on it; the
`
`video was encoded by TNS-designed hardware, streamed over the TNS-designed
`
`network, and displayed using TNS-designed software. I co-authored and presented
`
`several papers on our system at the very first World Wide Web conference held at
`
`CERN in Geneva, Switzerland, the birth place of the WWW. The papers discussed
`
`our multimedia video demonstration and web pages that were generated dynamically
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`based on database contents.
`
`9.
`
`I authored or co-authored twelve papers and conference presentations
`
`on the TNS group’s research. I also co-edited the final report of the gigabit
`
`networking research effort with the Professor and Senior Research Scientist of the
`
`group, David Tennenhouse and David Clark, respectively. David Clark is generally
`
`considered to be one of the fathers of the Internet Protocol and served as Chief
`
`Protocol Architect for the Internet. With its focus on networking, the group,
`
`including myself, set up and maintained the network and computer systems,
`
`including the web servers.
`
`
`
`4
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`10.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I analyzed
`
`local-area and wide-area flows to show a more efficient method for routing packets
`
`in a network, based on traffic patterns at the time. My thesis also addressed realtime
`
`streamed audio and video. The network traffic that I analyzed was IP protocol traffic,
`
`including UDP and TCP.
`
`11. While I was working on my graduate degree, I started a web consulting
`
`company that developed web sites for several companies, including Data
`
`Communications Magazine and Bay Networks (later acquired by Nortel). We also
`
`developed web site management tools. I have continued to do web site development,
`
`both professionally and personally, and have used numerous content management
`
`frameworks. I have developed web sites using various platforms, including those
`
`that use AJAX calls to the server.
`
`12. From 1997 to 1999, I worked at NBX Corporation, which was acquired
`
`by 3Com Corporation in 1999. During my employment, I was a Senior Scientist and
`
`Engineer working in IP Telephony. NBX delivered the world’s first fully featured
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`business telephone system to run over a data network, the NBX100. NBX was one
`
`of the first business phone systems to be configurable via a web interface and was
`
`the market’s leading business phone system to run on a data network for several
`
`
`
`5
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
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`years following its introduction. Users and administrators had access to varying
`
`levels of configuration for the phone system. I along with two of NBX’s founders
`
`were awarded U.S. Patent No. 6,967,963 titled “Telecommunication method for
`
`ensuring on-time delivery of packets containing time sensitive data” for some of our
`
`inventions while working at NBX.
`
`13. After NBX, I worked at Teradyne, a test tool company primarily
`
`focused on semiconductors that had also acquired several software testing
`
`companies. I examined the markets and strategies for companies that Teradyne was
`
`evaluating for acquisition, which included web site testing and web services testing
`
`tools. These Teradyne divisions were divested into an independent company called
`
`Empirix, which was a leader in web site testing and monitoring.
`
`14. At Empirix, I also rearchitected and led the technical development of a
`
`new web site testing tool. The tool recorded web sessions scripts of the interaction
`
`with a web server and was able to replicate interactions simulating thousands or
`
`more users simultaneously accessing different parts of the web site. I also developed
`
`a JavaScript interpreter as part of the testing tool.
`
`15. During my time at Empirix, I was also invited to present several guest
`
`lectures in a software engineering course at MIT that focused on the development of
`
`web application software and web site design. I also mentored several class project
`
`
`
`6
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
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`groups in this class that focused on development of web-based applications that were
`
`partly based on Java. Java was designed so that programmers could design device-
`
`independent applications that could be run on a variety of different hardware
`
`platforms using Java Virtual Machines that were specific to each hardware platform.
`
`16.
`
`From 2004 to 2008, I was employed by BBN Technologies Corp., a
`
`technology
`
`research and development company
`
`located
`
`in Cambridge,
`
`Massachusetts. BBN Technologies is a world-renowned company with expertise in
`
`acoustics, speech recognition, and communications technology. BBN Technologies
`
`staff have pioneered many internetworking technologies and Internet applications,
`
`and built some of the world’s largest government and commercial data networks.
`
`17. My duties and responsibilities at BBN Technologies generally included
`
`commercialization of BBN Technology’s technologies, which included spinning off
`
`companies and growing commercial businesses in-house. More particularly, I was
`
`involved in utilizing the award-winning AVOKE STX speech recognition
`
`technology to create the public audio/video search engine EveryZing (formerly
`
`known as PodZinger) which was spun out into a stand-alone company now known
`
`as RAMP, Inc. PodZinger won the 2006 MITX Technology Award for best Web 2.0
`
`Application and was also named the 2006 Forbes Favorite Video & Audio Search
`
`Engine, beating out Google, Yahoo, and other companies. After managing the
`
`7
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`IPR2021-01145 Page 00011
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`creation of the initial prototype system, I was the Vice President of Operations and
`
`Technology when PodZinger included a full streaming audio and video search and
`
`streaming solution. I also re-launched an internal service as a web-site based
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`application that provided software as a service, by creating a web-based service
`
`platform, and was also involved in the Boomerang Mobile Shooter Detection project
`
`as the Vice President of Engineering for the program. The Boomerang system was
`
`deployed to Iraq and Afghanistan, and was credited with saving many lives.
`
`18.
`
`In 2012, I opened Einstein’s Workshop, a 7,000 square foot facility for
`
`teaching science, technology, engineering, and math to children. I installed and
`
`configured the telephone system, designed and programmed the web site, and
`
`designed and configured the network, which has grown to roughly 100 computers,
`
`multiple WiFi access points, firewalls, multiple wireless networks, and multiple
`
`facilities. We also created an educational 3D Computer-Aided Design program,
`
`which we spun out into a separate company, BlocksCAD, which is available on
`
`desktop computers and mobile devices. BlocksCAD has received grants from
`
`DARPA DSO and the USDA, and has participated in the LearnLaunch, MIT Play
`
`Labs, and MassChallenge accelerator programs. BlocksCAD currently has over
`
`110,000 registered users and 25,000 paid seats, and is used in schools throughout the
`
`US. We also have held classes teaching mobile app development to middle-school
`
`
`
`8
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`IPR2021-01145 Page 00012
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`

`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`and high-school students. I evaluated various mobile application development
`
`platforms and selected the appropriate one for our needs, and worked with the
`
`instructor to create the class.
`
`19.
`
`I am a named inventor on several patents and published patent
`
`applications that are related to VoIP technology, including: U.S. Patent No.
`
`6,967,963, entitled “Telecommunication Method for Ensuring On-time Delivery of
`
`Packets Containing Time- Sensitive Data”; U.S. Patent Application Publication No.
`
`20020015387, entitled “Voice Traffic Packet Capture and Analysis Tool for a Data
`
`Network”; and U.S. Patent No. 7,590,542, entitled “Method of Generating Test
`
`Scripts Using a Voice-Capable Markup Language.” I was a co-author on several
`
`publications describing the ATM network that our group built, including “The
`
`VuNet Desk Area Network: Architecture, Implementation, and Experience,”
`
`published in the IEEE Journal of Selected Areas in Communications in May 1995,
`
`and “Media-intensive data communications in a ‘desk-area’ network,” published in
`
`IEEE Communications magazine in August 1994. I also presented papers titled
`
`“Experience with the VuNet: A Network Architecture for a Distributed Multimedia
`
`System” at the 18th Conference on Local Computer Networks in September 1993
`
`and “Reducing the Complexity of ATM Host Interfaces,” at the Hot Interconnects II
`
`Symposium held at Stanford in August 1994.
`
`
`
`9
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`IPR2021-01145 Page 00013
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`

`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`20. A list of my papers, along with a more detailed summary of my
`
`background, experience, and awards can be found in my Curriculum Vitae (attached
`
`as Exhibit A).
`
`
`
`10
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`IPR2021-01145 Page 00014
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`

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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`III. BASIS OF MY OPINIONS AND MATERIALS CONSIDERED
`
`21.
`
`In reaching the conclusions described in this Declaration, I have relied
`
`on the documents and materials listed below and any other materials I refer to in this
`
`Declaration in support of my opinions. These materials comprise patents, related
`
`documents, and printed publications. Each of these materials is a type of document
`
`that experts in my field would have reasonably relied upon when forming their
`
`opinions and would have had access to either through the applicable patent office
`
`and/or well-known libraries, conferences, publications, organizations and websites
`
`in the field as further discussed herein.
`
`Exhibit No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`
`
`U.S. Patent No. 9,471,287 (“’287 patent”)
`
`File History of U.S. Patent No. 9,471,287
`
`File History of U.S. Patent No. 9,063,755
`
`U.S. Patent Publication No. 2007/0118844 (“Huang”)
`
`U.S. Patent Publication No. 2007/0079282 (“Nachnani”)
`
`U.S. Patent No. 6,938,077 (“Sanders”)
`
`U.S. Patent No. 6,915,306 (“Gong”)
`
`U.S. Patent Publication No. 2004/0260820A1 (“Bearman”)
`
`Declaration of Sylvia Hall-Ellis, Ph.D., including (1) at pages 33-
`67 Lee, et al., “Menu-Driven Systems.” Encyclopedia of
`Microcomputers, Vol. 11, p. 101-127, and (2) at pages 82-162
`
`11
`
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`Exhibit No.
`
`Description
`
`Shneiderman, et al., “Designing the User Interface: Strategies for
`Effective Human-Computer Interaction (4th Edition),” 2004.
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1020
`
`1022
`
`1026
`
`1027
`
`1028
`
`1029
`
`
`
`U.S. Patent No. 8,069,437 (“Aigner”)
`
`U.S. Patent No. 8,276,115 (“Bates”)
`
`U.S. Patent Publication No. 2006/0248121 (“Cacenco”)
`
`Shorter Oxford English Dictionary (6th Ed. 2007)
`
`Oxford Dictionary of Computing (6th Ed. 2008)
`
`Redline Comparison of ’755 and ’287 Patent Claims
`
`Redline Comparison of ’287 Patent claims 1, 3, 5-7, 11-13 to
`claims 15, 17, 19-21, 25-27
`
`Plaintiff Express Mobile, Inc.’s Disclosure of Asserted Claims and
`Infringement Contentions, Express Mobile, Inc. v. SAP SE, No.
`3:20-cv-08492-RS (N.D. Cal. Mar. 18, 2021)
`
`Claim Construction Memorandum Opinion, Shopify Inc. v.
`Express Mobile, Inc., No. 1:19-cv-439-RGA, D.I. 137 (D. Del.
`Jun. 23, 2020)
`
`Claim Construction Order, Shopify Inc. v. Express Mobile, Inc.,
`No. 1:19-cv-439-RGA, D.I. 142 (D. Del. Jun. 30, 2020)
`
`Claim Construction Memorandum Opinion, Express Mobile, Inc.
`v. GoDaddy.Com, LLC, No. 1:19-cv-1937-RGA, D.I. 121 (D. Del.
`Jun. 1, 2021)
`
`Claim Construction Memorandum Order, Express Mobile, Inc. v.
`GoDaddy.Com, LLC, No. 1:19-cv-1937-RGA, D.I. 129 (D. Del.
`Jun. 8, 2021)
`
`12
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`Exhibit No.
`
`Description
`
`U.S. Patent No. 6,779,153 (“Kagle”)
`
`U.S. Patent No. 8,595,186 (“Mandyam”)
`
`U.S. Patent No. 6,988,241 (“Guttman”)
`
`1030
`
`1031
`
`1032
`
`
`
`22. My opinions are also based upon my education, training, research,
`
`knowledge, and personal and professional experience.
`
`
`
`13
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`IPR2021-01145 Page 00017
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`IV. LEGAL STANDARDS
`
`A.
`
`Obviousness
`
`23.
`
`I understand that a claim may be invalid under 35 U.S.C. §103(a) if the
`
`subject matter described by the claim as a whole would have been obvious to a
`
`hypothetical person of ordinary skill in the art in view of a prior art reference or in
`
`view of a combination of references at the time the claimed invention was made.
`
`Therefore, I understand that obviousness is determined from the perspective of a
`
`hypothetical person of ordinary skill in the art and that the asserted claims of the
`
`patent should be read from the point of view of such a person at the time the claimed
`
`invention was made. I further understand that a hypothetical person of ordinary skill
`
`in the art is assumed to know and to have all relevant prior art in the field of endeavor
`
`covered by the patent in suit.
`
`24.
`
`I have also been advised that an analysis of whether a claimed invention
`
`would have been obvious should be considered in light of the scope and content of
`
`the prior art, the differences (if any) between the prior art and the claimed invention,
`
`and the level of ordinary skill in the pertinent art involved. I understand as well that
`
`a prior art reference should be viewed as a whole.
`
`25.
`
`I have also been advised that in considering whether an invention for a
`
`claimed combination would have been obvious, I may assess whether there are
`
`apparent reasons to combine known elements in the prior art in the manner claimed
`
`14
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`in view of interrelated teachings of multiple prior art references, the effects of
`
`demands known to the design community or present in the market place, and/or the
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`background knowledge possessed by a person having ordinary skill in the art. I
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`understand that other principles may be relied on in evaluating whether a claimed
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`invention would have been obvious, and that these principles include the following:
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` A combination of familiar elements according to known methods is likely to
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`be obvious when it does no more than yield predictable results;
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` When a device or technology is available in one field of endeavor, design
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`incentives and other market forces can prompt variations of it, either in the
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`same field or in a different one, so that if a person of ordinary skill can
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`implement a predictable variation, the variation is likely obvious;
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` If a technique has been used to improve one device, and a person of ordinary
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`skill in the art would recognize that it would improve similar devices in the
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`same way, using the technique is obvious unless its actual application is
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`beyond his or her skill;
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` An explicit or implicit teaching, suggestion, or motivation to combine two
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`prior art references to form the claimed combination may demonstrate
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`obviousness, but proof of obviousness does not depend on or require showing
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`a teaching, suggestion, or motivation to combine;
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
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` Market demand, rather than scientific literature, can drive design trends and
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`may show obviousness;
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` In determining whether the subject matter of a patent claim would have been
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`obvious, neither the particular motivation nor the avowed purpose of the
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`named inventor controls;
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` One of the ways in which a patent’s subject can be proved obvious is by noting
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`that there existed at the time of invention a known problem for which there
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`was an obvious solution encompassed by the patent’s claims;
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` Any need or problem known in the field of endeavor at the time of invention
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`and addressed by the patent can provide a reason for combining the elements
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`in the manner claimed;
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` “Common sense” teaches that familiar items may have obvious uses beyond
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`their primary purposes, and in many cases a person of ordinary skill will be
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`able to fit the teachings of multiple patents together like pieces of a puzzle;
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` A person of ordinary skill in the art is also a person of ordinary creativity, and
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`is not an automaton;
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` A patent claim can be proved obvious by showing that the claimed
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`combination of elements was “obvious to try,” particularly when there is a
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`design need or market pressure to solve a problem and there are a finite
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`
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
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`number of identified, predictable solutions such that a person of ordinary skill
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`in the art would have had good reason to pursue the known options within his
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`or her technical grasp; and
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` One should be cautious of using hindsight in evaluating whether a claimed
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`invention would have been obvious.
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`26.
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`I further understand that, in making a determination as to whether or
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`not the claimed invention would have been obvious to a person of ordinary skill, the
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`Board may consider certain objective factors if they are present, such as: commercial
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`success of products practicing the claimed invention; long-felt but unsolved need;
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`teaching away; unexpected results; copying; and praise by others in the field. These
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`factors are generally referred to as “secondary considerations” or “objective indicia”
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`of nonobviousness. I understand, however, that for such objective evidence to be
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`relevant to the obviousness of a claim, there must be a causal relationship (called a
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`“nexus”) between the claim and the evidence and that this nexus must be based on a
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`novel element of the claim rather than something in the prior art. I also understand
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`that even when they are present, secondary considerations may be unable to
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`overcome primary evidence of obviousness (such as motivation to combine with
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`predictable results) that is sufficiently strong.
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`
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`27.
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`I have been asked to consider the validity of the Challenged Claims. I
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`understand that for inter partes reviews, invalidity must be shown under a
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`preponderance of the evidence standard. I have concluded that each of the
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`Challenged Claims is invalid at least under 35 U.S.C. §103 based on the references
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`described below and as explained herein.
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`B. Claim Construction
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`28.
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`I have been informed that patent claims are construed from the
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`viewpoint of a person of ordinary skill in the art of the patent at the time of the
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`invention. I have been informed that patent claims generally should be interpreted
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`consistent with their plain and ordinary meaning as understood by a person of
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`ordinary skill in the art in the relevant time period (i.e., at the time of the purported
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`invention, or the so called “effective filing date” of the patent application), after
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`reviewing the patent claim language, the specification and the prosecution history
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`(i.e., the intrinsic record).
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`29.
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`I have further been informed that a person of ordinary skill in the art
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`must read the claim terms in the context of the claim itself, as well as in the context
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`of the entire patent specification. I understand that in the specification and
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`prosecution history, the patentee may specifically define a claim term in a way that
`
`differs from the plain and ordinary meaning. I understand that the prosecution
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`history of the patent is a record of the proceedings before the U.S. Patent and
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`
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
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`Trademark Office, and may contain explicit representations or definitions made
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`during prosecution that affect the scope of the patent claims. I understand that an
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`applicant may, during the course of prosecuting the patent application, limit the
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`scope of the claims to overcome prior art or to overcome an examiner’s rejection, by
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`clearly and unambiguously arguing to overcome or distinguish a prior art reference,
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`or to clearly and unambiguously disavow claim coverage.
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`30.
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`In interpreting the meaning of the claim language, I understand that a
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`person of ordinary skill in the art may also consider “extrinsic” evidence, including
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`expert testimony, inventor testimony, dictionaries, technical treatises, other patents,
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`and scholarly publications. I understand this evidence is considered to ensure that a
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`claim is construed in a way that is consistent with the understanding of those of
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`ordinary skill in the art at the time of the claimed invention. This can be useful for
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`a technical term whose meaning may differ from its ordinary English meaning. I
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`understand that extrinsic evidence may not be relied on if it contradicts or varies the
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`meaning of claim language provided by the intrinsic evidence, particularly if the
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`applicant has explicitly defined a term in the intrinsic record.
`
`
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`Declaration of Henry H. Houh, Ph.D.
`U.S. Patent No. 9,471,287
`
`V.
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`PRIORITY DATE AND A PERSON OF ORDINARY SKILL
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`31.
`
`In rendering the opinions set forth in this declaration, I was asked to
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`consider the patent claim and the prior art through the eyes of a person of ordinary
`
`skill in the art at the time of the alleged invention, which I understand is asserted to
`
`be either January 12, 2008 based on the Patent Owner’s claimed conception and
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`reduction to practice, or, alternatively, November 11, 2008. My analysis and
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`conclusions are the same regardless of whether the January 12, 2008 or November
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`11, 2008 dates are used.
`
`32.
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`I under