UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Hewlett Packard Enterprise Company,
`Petitioner
`
`v.
`
`Intellectual Ventures II, LLC,
`Patent Owner.
`
`Patent No. 6,816,464 to Scott et al.
`
`IPR Case No.: IPR2021-01378
`
`DECLARATION OF MATTHEW B. SHOEMAKE, Ph.D.
`
`Hewlett Packard Enterprise Co. Ex. 1003, Page 1 of 114
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`IPR2021-01378
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`

`

`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`
`TABLE OF CONTENTS
`
`TABLE OF EXHIBITS ...........................................................................................iv
`INTRODUCTION AND QUALIFICATIONS .............................................. 7
`I.
`Educational Background ...................................................................... 9
`A.
`Professional Experience ....................................................................... 9
`B.
`Expert Consulting Experience ............................................................ 12
`C.
`Patents and Publications ..................................................................... 13
`D.
`Other Relevant Qualifications ............................................................ 13
`E.
`II. METHODOLOGY; MATERIALS CONSIDERED .................................... 16
`III. OVERVIEW AND LEGAL STANDARDS ................................................ 17
`Person of Ordinary Skill in the Art .................................................... 17
`A.
`Anticipation ........................................................................................ 18
`B.
`Obviousness ........................................................................................ 19
`C.
`IV. LEVEL OF ORDINARY SKILL IN THE ART .......................................... 22
`KNOWLEDGE OF A POSITA .................................................................... 24
`V.
`The ping Program ............................................................................... 24
`A.
`Routing Tables ................................................................................... 27
`B.
`VI. OVERVIEW OF THE ’464 PATENT ......................................................... 29
`Priority Date ....................................................................................... 29
`A.
`Overview of the ’464 Patent ............................................................... 29
`B.
`Prosecution History ............................................................................ 32
`C.
`The Challenged Claims ...................................................................... 33
`D.
`Claim Construction............................................................................. 33
`E.
`VII. OVERVIEW OF PRIOR ART ..................................................................... 34
`Yaakov (Ex-1004) .............................................................................. 34
`A.
`Hultgren (Ex-1005) ............................................................................ 37
`B.
`Pitts (Ex-1007) ................................................................................... 39
`C.
`
`ii
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`
`
`
`
`
`
`b.
`
`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`Bordonaro (Ex-1008) ......................................................................... 40
`D.
`VIII. ANALYSIS ................................................................................................... 42
`GROUND 1: Yaakov in view of Hultgren and Bordonaro
`A.
`render obvious the Challenged Claims .............................................. 42
`Scope and Content of the Prior Art and Rationale for
`
`Combining ................................................................................ 42
`Using Routing Tables .............................................................. 43
`Sending IP data packets to determine network
`performance ............................................................................. 52
`Using a tables to store or display route information ................ 59
`Challenged Claims 1-2, 4-5 and 20 ......................................... 62
`a.
`Background relating to “route quality metric” and
`“route statistics” ............................................................. 72
`The potential claim construction dispute relating to
`“transmitting” and “receiving” “quality
`measurement packets” ................................................... 74
`Background on Yaakov’s RTU and MS probes ............ 77
`Yaakov in view of Bordonaro discloses limitations
`1.2-1.3 according to their plain and ordinary
`meaning .......................................................................... 85
`Yaakov discloses limitations 1.2-1.3 under
`Patentee’s apparent litigation construction .................... 89
`GROUND 2: Yaakov in view of Hultgren, Bordonaro and Pitts
`render obvious claim 19 ................................................................... 112
`IX. DECLARATION IN LIEU OF OATH ...................................................... 114
`
`
`
`c.
`d.
`
`e.
`
`B.
`
`iii
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`
`TABLE OF EXHIBITS
`
`Exhibit
`1001
`
`Description
`U.S. Patent No. 6,816,464 (“the ’464 patent”)
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`File history of U.S. Patent No. 6,816,464 (“’464 FH”)
`
`Declaration of Matthew B. Shoemake, Ph.D. (“Shoemake Decl.”)
`
`U.S. Patent No. 6,748,433 to Yaakov (“Yaakov”)
`
`WO 98/58474 to Hultgren (“Hultgren”)
`“Plaintiff’s Opening Claim Construction Brief,” Intellectual
`Ventures II LLC v. VMware, Inc., 1:20-cv-00457-ADA (W.D.
`Tex.)
`D. Pitts et al. Red Hat Linux 6 Unleashed: From Knowledge to
`Mastery. SAMS (1999). (“Pitts”)
`
`ISBN 0-672-31689-7
`Library of Congress Catalog Card Number 99-62403
`U.S. Patent No. 6,868,094 to Bordonaro (“Bordonaro”)
`K. England et al. The SQL Server 7.0 Handbook: A Guide to
`Microsoft Database Computer. Digital Press (1999) (“England-
`SQL”)
`
`ISBN 1-55558-201-X
`Library of Congress Catalog Card Number 99-30942
`QA76.9.D3E64 1999
`005.75’85-dc21
`File History of abandoned U.S. Patent App. No. 10/978,824
`
`U.S. Provisional Patent App. No. 60/204,945 (“Yam-Prov”)
`European Patent Application Publication No. EP 1156621A2 to
`Yam et al. (“Yam-EP”)
`Duncan Hall Declaration (“Hall Decl.”)
`
`iv
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`
`Exhibit
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`1027
`
`1028
`1029
`
`Description
`
`May 11, 2000 capture of
`http://www.ectel.com/fs_gen.asp?sector=products
`(Hall Decl. at Ex-A, pp. 4-6)
`March 3, 2001 capture of http://ectel.com/quali_net.html
`(Hall Decl. at Ex-A, pp. 7-10)
`U.S. Copyright Office Record for Ex-1007-Pitts
`
`U.S. Library of Congress Record for Ex-1007-Pitts
`
`U.S. Copyright Office Record for Ex-1009-England-SQL
`
`U.S. Library of Congress Record for Ex-1009-England-SQL
`Patent Owner’s Infringement Contentions in Intellectual Ventures
`I LLC v. Hewlett Packard Enterprise Co., No. 6:21-cv-00226
`(W.D. Tex.)
`Curriculum Vitae for Matthew B. Shoemake, Ph.D.
`September 2, 2021 letter to Patentee’s counsel stipulating to non-
`use of IPR grounds prior art in District Court
`Lex Machina docket report for District Judge Alan D Albright of
`the U.S. District Court for the Western District of Texas showing
`12 docket entries for December 7, 2022
`U.S. Patent No. 5,764,756
`The Story of the Ping Program
`(https://ftp.arl.army.mil/~mike/ping.html)
`1997 version of the FreeBSD Manual Pages
`(https://www.freebsd.org/cgi/man.cgi?query=ping&apropos=
`0&sektion=8&manpath=FreeBSD+4.0-
`RELEASE&arch=default&format=html)
`Ramteke, Timothy, Networks, Pearson College Div (1994), First
`Edition
`ISBN-10: 013958059X
`Library of Congress Catalog Card Number 93-41893
`U.S. Patent No. 5,627,776
`U.S. Patent No. 6,215,774
`
`v
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`
`Exhibit
`1030
`
`1031
`
`Description
`Library of Congress Catalog for Ex-1027 “Networks,” by Timothy
`Ramteke
`Public Catalog record for Ex-1027 “Networks,” by Timothy
`Ramteke from the U.S. Copyright Office
`
`vi
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`I, Matthew B. Shoemake, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`I am over the age of 21 and am competent to make this declaration.
`1.
`
`2.
`
`I have been retained on behalf of Hewlett Packard Enterprise Company
`
`(“HPE”) to provide my opinions regarding the validity of certain claims of U.S.
`
`Patent No. 6,816,464 (“the ’464 patent”). I submit this declaration based on my
`
`personal knowledge and in support of HPE’s inter partes review Petition (the
`
`“Petition”) against the ’464 patent.
`
`3.
`
`I have been asked to provide my independent analysis of the ’464 patent
`
`in light of the materials cited below and my knowledge and experience in this field
`
`during the relevant period. I have been asked to consider whether the references
`
`cited in the Petition anticipate and/or render obvious the invention described by
`
`claims 1-2, 4-5, and 19-20 of the ’464 patent.
`
`4.
`
`I am being compensated according to my normal hourly rate for my
`
`time providing my independent analysis in this aforementioned IPR proceeding, but
`
`my compensation is not contingent in any way on the content of my analysis or the
`
`outcome of this proceeding. I am not, and never was, an employee or agent of HPE.
`
`5. My findings, as explained below, are based on my study, experience,
`
`and background discussed below, informed by my extensive experience in the fields
`
`7
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`of mobile systems, computer software, networking, and user experience design at
`
`the pertinent timeframe. My findings are also based on my education as a computer
`
`scientist and electrical engineer, in addition to the subsequent decades of work in
`
`research and development in these fields. As described in more detail below, based
`
`on my experiences, I understand and know of the capabilities of persons of ordinary
`
`skill in the fields of computer software, networking, and user experience design in
`
`2000, when the application to which the ’464 patent claims priority was filed.
`
`Indeed, I have relevant personal knowledge and experience, in addition to working
`
`directly with many such persons in these fields during that time frame. I have also
`
`relied on my review and analysis of the prior art cited in the Petition, information
`
`provided to me in connection with this case, and information I have independently
`
`reviewed.
`
`6.
`
`Attached as Exhibit 1021 is my curriculum vitae, which includes a more
`
`detailed statement of my professional qualifications,
`
`including education,
`
`publications, honors and awards, professional activities, consulting engagements,
`
`and other relevant experience. While I incorporate Exhibit 1021 by reference, below
`
`is a brief summary of my background, including my background and experience
`
`relevant to this case.
`
`8
`
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`Educational Background
`A.
`7.
`I graduated magna cum laude from Texas A&M University with
`
`bachelor’s degrees in both electrical engineering and computer science in 1994. I
`
`also have a master’s degree (1997) and a Ph.D. in electrical engineering from Cornell
`
`University (1999).
`
`Professional Experience
`B.
`8. While I was completing my undergraduate degree, and for one year
`
`thereafter, I worked as an intern and engineer in the digital signal processing group
`
`at Texas Instruments, Inc. in Stafford, Texas. Digital signal processing is the use of
`
`digital processing, such as by computers or by more specialized digital signal
`
`processors, to perform a wide variety of signal processing operations. Digital signal
`
`processing is used in telecommunications and navigation applications (among other
`
`applications). Processors that I worked on at Texas Instruments during this time
`
`period were used in, for example, voice processing, image processing, fax machines,
`
`voiceband modems, wireless communications, digital radio receivers, display
`
`systems, and anti-lock brakes on cars and aircraft. I left Texas Instruments in 1995
`
`to continue my graduate studies at Cornell.
`
`9.
`
`Shortly after I received my M.S. in electrical engineering, in 1997, I
`
`joined the founding team of Alantro Communications, Inc., a manufacturer of
`
`semiconductor products. While employed by Alantro, I served as an engineer and
`
`9
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`engineering manager in the development of HDSL2 modems, cable modems, 2.4
`
`GHz cordless phones, and Wi-Fi technologies. More specifically, I managed the
`
`baseband systems team where I developed 802.11b-compliant physical layer
`
`technology. Today, this technology is referred to as Wi-Fi 1, i.e., the first generation
`
`of Wi-Fi. I also led the first development of 802.11a OFDM technology at Alantro.
`
`IEEE 802.11a technology is now referred to as Wi-Fi 2 and relates to, among other
`
`things, 5 GHz communications. Amongst other things, I was responsible for building
`
`and designing physical layer communication systems at Alantro. These physical
`
`layers were responsible for transmitting and receiving messages both across wires
`
`and wirelessly.
`
`10. Texas Instruments acquired Alantro in 2000. I had by that time
`
`completed my Ph.D. and became the manager of Texas Instruments’ Wireless
`
`Networking Branch in the Texas Instruments DSP Solutions R&D Center from 2000
`
`to 2003. While manager of this group, I developed technologies for quality of
`
`service in Wi-Fi networks as well as Bluetooth and Wi-Fi coexistence technology.
`
`Also, during this period, I worked on the first smartphone with Wi-Fi, i.e., the Nokia
`
`9100 Communicator. I also worked on VoIP for non-cellular, Wi-Fi enabled phones
`
`while at Texas Instruments. I also worked on Wi-Fi protocols for service
`
`differentiation that would allow prioritization of time-sensitive traffic such as VoIP.
`
`10
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`11. The 802.11 solutions that I built at Alantro and Texas Instruments
`
`shipped in numerous products including Intel’s Centrino brand of Wi-Fi products
`
`and in Dell, D-Link, Linksys, Nokia, and many other products. The descendants of
`
`those products are still sold by Texas Instruments today.
`
`12. While at Texas Instruments, I also led an effort to lower the power
`
`consumption of Wi-Fi specifically so Wi-Fi could be added to mobile phones and
`
`smartphones. That activity involved engineers from Texas Instruments in California,
`
`North Carolina, Texas, and Israel.
`
`13.
`
`In 2003, I founded WiQuest Communications, Inc. and was the
`
`President and CEO of WiQuest from 2003 to 2008. At WiQuest, I developed and
`
`sold the world’s first wireless docking system for notebook computers and the
`
`world’s first 1 Gbps ultrawideband chipset. I also developed the world’s first
`
`wireless VGA/DVI system for notebook computers. This technology was
`
`incorporated into products developed by several major computer and electronics
`
`manufacturers such as Dell, Toshiba, Lenovo, Belkin, D-Link, and Kensington. I
`
`built the company from inception to 120 employees. I managed a diverse group of
`
`employees that were located in Texas, India, California, Taiwan, and Japan.
`
`14.
`
`In 2008, I founded Biscotti Inc., a designer and manufacturer of high-
`
`definition, Wi-Fi based video calling systems for the home. Biscotti products
`
`11
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`operated using wireless networks. The products were small and mobile. The
`
`products used cloud-based servers for video calling, directory services, software
`
`updates, and device configuration. Biscotti designed web, HDTV and smartphone
`
`user interfaces. Minimizing server utilization and power consumption were
`
`important design goals of Biscotti’s products. Biscotti’s products used VoIP and
`
`video over IP. Protocols such as SIP, XMPP, STUN, TURN, ICE, RTP and RTCP
`
`were used in our products. I served as the CEO of Biscotti Inc. through 2018.
`
`C.
`15.
`
`Expert Consulting Experience
`In about 2008, large companies began calling on me to serve as an
`
`expert and to testify in wireless patent litigation cases due to my background and
`
`experience, initially for Wi-Fi-related matters. Starting in 2008 and continuing
`
`thereafter, I have served in an expert capacity in trials where my expertise in
`
`communication systems and standards were needed by judges and juries. Clients that
`
`have used my services include Cisco, Intel, Broadcom, Apple, Texas Instruments,
`
`Samsung, BlackBerry, NXP, FujiFilm, Sharp, Sprint, AT&T, Dell, Realtek, HTC,
`
`Canon, Honda, Verizon, Mercedes-Benz, Wistron, Mitsubishi, Google, Harmon, T-
`
`Mobile, HP, Mitsubishi, and Caltech.
`
`16. After working in this expert capacity as a sole proprietor for many
`
`years, I incorporated Peritum LLC in 2016. Today, I continue providing expert
`
`12
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`engineering, consulting, and technical services via Peritum.
`
`17.
`
`I have testified as an expert in many cases involving wired and wireless
`
`communications, transmission of messages, power efficiency, and/or wireless
`
`location technology.
`
`D.
`18.
`
`Patents and Publications
`I am a named inventor on over thirty patents, including patents related
`
`to wireless communications systems and various aspects of data communications
`
`systems including encoding, decoding, and transmission of information. A list of
`
`those patents appears in Exhibit 1021.
`
`19.
`
`I have authored, co-authored, and contributed to many technical papers
`
`and publications, most in the area of data communications. A list of those
`
`publications appears in Exhibit 1021.
`
`E. Other Relevant Qualifications
`I have been a member of the Institute of Electrical and Electronic
`20.
`
`Engineers (“IEEE”) since 1991. In 1999, I was elected as the Chairperson of the
`
`IEEE 802.11g Study Group where I led a committee of twenty engineers to set
`
`project requirements for IEEE 802.11g. Subsequently, from 2000 to 2003, I was the
`
`Chairperson of the IEEE 802.11g Task Group (now Wi-Fi 3) where I led a committee
`
`of over 200 engineers to set standards for 54 Mbps data rates in the 2.4 GHz band in
`
`a way that was backward compatible with the IEEE 802.11b standard. From 2003 to
`
`13
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`2004, I was the Chairperson of the IEEE 802.11n Task Group (Wi-Fi 4) where I led
`
`a committee of over 300 engineers through the initial stages of standardization of
`
`data rate enhancements in excess of 100 Mbps.
`
`21. My experience with computer servers, clients and user interfaces goes
`
`back to 1989 while at Texas A&M. My study of protocols such as HTTP, FTP, TCP,
`
`and UDP dates back to the early 1990s. My familiarity with ping and traceroute
`
`programs also dates back at least to my undergraduate education at Texas A&M in
`
`the early 1990s. I began programming computers myself at the age of 10 using a TI-
`
`99/4A computer. I have experience with user interface design for products such as
`
`DSP evaluation kits, Wi-Fi access points, Wi- Fi cameras, Wireless USB products,
`
`and web portals.
`
`22.
`
`I have expertise in error correction coding a form of coding of
`
`information and signals for the purpose of making them resilient to noise and
`
`interference. I have expertise in protocols that are designed to mitigate noise and
`
`interference such as spread spectrum technologies and ARQ. I am familiar with the
`
`theory of propagation of electromagnetic waves and antennas including concepts
`
`such as signal-to-noise ratio. I am familiar with concepts such as frequency-division
`
`and time-division used to allocate wireless resources for avoidance of interference.
`
`I am also familiar with concepts such carrier-sense multiple access with collision
`
`14
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`avoidance (CSMA/CA) as used in Wi-Fi systems. I am also familiar with concepts
`
`of beacons used in networks such as Wi-Fi. I am familiar with channel access
`
`protocols such as IEEE 802.11’s distributed coordination function (DCF). I am
`
`familiar with techniques for mitigating interference between wireless devices such
`
`as the 802.11 virtual carrier sense mechanism (NAV). I am familiar with concepts
`
`related to cell site planning, coverage, and interference mitigation between cells. I
`
`am familiar with concepts of carrier sense, listen-before-talk, collisions, and
`
`collision avoidance mechanisms. I am familiar with FCC regulations such as the
`
`regulation for use of so-called “unlicensed spectrum” in the ISM and U-NII bands.
`
`I am familiar with physical layer transmission and reception techniques channel
`
`coding, modulation, upconversion, down-conversion, channel estimation, carrier
`
`offset, timing offset, MIMO, OFDM and OFDMA, adjacent channel rejection, and
`
`signal detection. I am familiar with Maxwell’s laws and Friis transmission equation.
`
`23.
`
`I am familiar with VoIP having worked on it at numerous companies
`
`including Texas Instruments and Biscotti Inc. I am familiar with concepts related to
`
`VoIP including packetization of audio, compression of audio, packet delay, packet
`
`loss, packet jitter, error concealment, jitter buffers, the causes of packet delay, jitter
`
`and loss, techniques for minimizing delay, techniques such as jitter buffers for
`
`mitigating the impact of jitter, and the general bounds of when such network artifacts
`
`15
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`begin to become perceivable to humans. I am familiar with protocols for establishing
`
`VoIP calls such as SIP. I am familiar with messaging protocols such as XMPP. I am
`
`familiar with protocols for transporting real-time data over the Internet such as RTP
`
`and RTCP. I am familiar with concepts such as perceptual audio coding, lossy audio
`
`coding, lossless audio coding, and techniques for measuring degradation in audio
`
`quality including subjective scoring systems such as MOS scores and quantitative
`
`methods such a signal-to-noise ratios. I am familiar with numerous techniques for
`
`prioritizing voice traffic on IP-based networks including QoS tagging such as that
`
`defined in IEEE 802.1p, preemption, and statistical channel access techniques such
`
`as those standardized in IEEE 802.11e. I was a teaching assistant at Cornell
`
`University for a court on digital audio processing.
`
`24.
`
`I served on the External Advisory Committee for the Texas A&M
`
`University Department of Electrical and Computer Engineering from 2006 to 2020.
`
`II. METHODOLOGY; MATERIALS CONSIDERED
`I have relied upon my education, knowledge, and experience with
`25.
`
`computer software and hardware, networking, and user experience design, as well
`
`as the other materials as discussed in this declaration in forming my opinions.
`
`26. For this work, I have been asked to review the ’464 patent including the
`
`specification and claims 1-2, 4-5, and 19-20 (“the Challenged Claims”). I have
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`considered claims other than the Challenged Claims of the ’464 patent in the context
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`of claim construction, but I have not considered the validity of any claims other than
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`the Challenged Claims. In developing my opinions relating to the ’464 patent, I have
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`considered the materials cited herein, including those itemized in the “Table of
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`Exhibits” list preceding this declaration. I have been told by counsel that the prior
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`art cited herein (e.g., Yaakov, Hultgren, Bordonaro, Pitts) qualifies as prior art to the
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`’464 patent under U.S. law.
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`III. OVERVIEW AND LEGAL STANDARDS
`In formulating my opinions, I have been instructed to apply certain
`27.
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`legal standards. I am not a lawyer. I do not expect to offer any testimony regarding
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`what the law is. Instead, the following sections summarize the law as I have been
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`instructed to apply it in formulating and rendering my opinions found later in this
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`declaration. I understand that, in an inter partes review proceeding, patent claims
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`may be deemed unpatentable if it is shown that they were anticipated by a single
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`patent or printed publication or rendered obvious by one or more prior art patents or
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`printed publications. I understand that questions of claim clarity (definiteness) and
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`enablement cannot be considered as a ground for considering the patentability of a
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`claim in these proceedings.
`
`A.
`28.
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`Person of Ordinary Skill in the Art
`I understand that the ’464 patent and the teachings of the prior art are
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`evaluated from the perspective of a person of ordinary skill in the art (“POSITA”).
`
`I understand that the factors considered in determining the ordinary level of skill in
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`the art include: (i) the levels of education and experience of persons working in the
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`field; (ii) the types of problems encountered in the field; and (iii) the sophistication
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`of the technology. I may also consider, if available, the education level of the
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`inventor, prior art solutions to the problems encountered in the art, and the rapidity
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`with which innovations are made in the relevant art.
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`29.
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`I understand that a person of ordinary skill in the art is not a specific
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`real individual, but rather a hypothetical individual having the qualities reflected by
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`the factors above. This hypothetical person has knowledge of all prior art in the
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`relevant field and takes from each reference what it would teach to a person having
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`the skills of a POSITA.
`
`B. Anticipation
`I understand that a patent claim may be invalid as “anticipated” if each
`30.
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`and every feature of the claim is found, expressly or inherently, in a single item of
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`prior art, such as in a single prior art patent or printed publication. In determining
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`whether the single item of prior art anticipates the claim, one considers not only what
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`is expressly/implicitly disclosed in the particular item of prior art, but also what is
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`inherently present or disclosed in that prior art or what inherently results from its
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`practice.
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`C. Obviousness
`I understand that a claim may be invalid if the subject matter described
`31.
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`by the claim as a whole would have been obvious to a POSITA in view of a prior art
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`reference, or in view of a combination of references at the time the claimed invention
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`was made. Therefore, I understand that obviousness is determined from the
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`perspective of a POSITA, and that the asserted claims of the patent should be read
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`from the point of view of such a person at the time the claimed invention was made.
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`I further understand that a POSITA is assumed to know and to have all relevant prior
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`art in the field of endeavor covered by the patent in suit and all analogous prior art.
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`I understand that obviousness in an inter partes review proceeding is evaluated using
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`a preponderance of the evidence standard, which means that the claims must be more
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`likely obvious than nonobvious.
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`32.
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`I also understand that an analysis of whether a claimed invention would
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`have been obvious should be considered in light of the scope and content of the prior
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`art, the differences (if any) between the prior art and the claimed invention, and the
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`level of ordinary skill in the pertinent art involved. I understand as well that a prior
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`art reference should be viewed as a whole. I understand that in considering whether
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`an invention for a claimed combination would have been obvious, I may assess
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`whether there are apparent reasons to combine known elements in the prior art in the
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`manner claimed in view of interrelated teachings of multiple prior art references, the
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`effects of demands known to the design community or present in the marketplace,
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`and/or the background knowledge possessed by a POSITA. I also understand that
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`other principles may be relied on in evaluating whether a claimed invention would
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`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
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`to 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 POSITA can implement a
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`predictable variation, the variation is likely obvious;
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`• If a technique has been used to improve one device, and a POSITA would
`
`have recognized that it would improve similar devices in the same way,
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`using the technique is obvious unless its actual application is 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
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`Declaration of Matthew B. Shoemake, Ph.D.
`IPR2021-01378
`U.S. Patent No. 6,816,464
`showing a teaching, suggestion, or motivation to combine;
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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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`• One of the ways