Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.,
`Petitioner
`
`v.
`
`EXPRESS MOBILE INC.
`Patent Owner
`
`
`
`Case No. IPR2021-01457
`U.S. Patent No. 9,928,044
`Issue Date: March 27, 2018
`
`Title: Systems and Methods for Programming Mobile Devices
`
`DECLARATION OF VIJAY K. MADISETTI, PH.D.
`
`
`
`
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`1
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`Facebook's Exhibit No. 1002
`Page 001
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`

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`Table of Contents
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`Page
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`
`
`I. 
`
`II. 
`III. 
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 6 
`A.  Qualifications and Experience ............................................................. 6 
`B.  Materials Considered .......................................................................... 13 
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 14 
`STATEMENT OF LEGAL PRINCIPLES ................................................... 16 
`A. 
`Claim Construction ............................................................................ 16 
`B. 
`Obviousness ........................................................................................ 18 
`IV.  THE ’044 PATENT ...................................................................................... 24 
`A.  Overview of the Specification ............................................................ 24 
`B. 
`The Challenged Claims ...................................................................... 26 
`CLAIM CONSTRUCTION ......................................................................... 26 
`V. 
`VI.  APPLICATION OF THE PRIOR ART TO CHALLENGED
`CLAIMS ....................................................................................................... 28 
`A. 
`Brief Summary of Prior Art ............................................................... 29 
`1. 
`Anderson [EX1003] ................................................................. 29 
`2. 
`Bowers [EX1004] .................................................................... 35 
`3. 
`Jacobs [EX1005] ...................................................................... 37 
`4. 
`Ambrose-Haynes [EX1006] ..................................................... 38 
`5. 
`Geary [EX1011] ....................................................................... 41 
`6. 
`NFS Administration [EX1007] ................................................ 44 
`7.  Witkowski [EX1013] ............................................................... 46 
`Ground 1: Obviousness of Claims 1, 2, 5-7, and 12 Over
`Anderson, Bowers, Jacobs Ambrose-Haynes, and Geary .................. 48 
`1. 
`Claim 1 ..................................................................................... 48 
`(a) 
`“computer memory storing:” (Claim 1[a]) .................... 53 
`
`B. 
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`2
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`Facebook's Exhibit No. 1002
`Page 002
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`

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`Table of Contents
`(continued)
`
`Page
`
`(1) 
`
`(2) 
`
`(3) 
`
`“a) symbolic names required for evoking
`one or more web components each related to
`a set of inputs and outputs of a web service
`obtainable over a network, where the
`symbolic names are character strings that do
`not contain either a persistent address or
`pointer to an output value accessible to the
`web service,” (Claim 1[a][i]) .............................. 60 
`“where each symbolic name has an
`associated data format class type
`corresponding to a subclass of User
`Interface (UI) objects that support the data
`format type of the symbolic name, and
`where each symbolic name has a preferred
`UI object, and” (Claim 1[a][ii])........................... 73 
`“b) an address of the web service;” (Claim
`1[a][iii]) ............................................................... 86 
`“an authoring tool configured to:” (Claim 1[b]) ........... 86 
`“define a UI object for presentation on the display,
`where said defined UI object corresponds to a web
`component included in said computer memory
`selected from a group consisting of an input of the
`web service and an output of the web service,”
`(Claim 1[b][i]) ............................................................... 87 
`“where each defined UI object is either: 1) selected
`by a user of the authoring tool; or 2) automatically
`selected by the system as the preferred UI object
`corresponding to the symbolic name of the web
`component selected by the user of the authoring
`tool,” (Claim 1[b][ii]) .................................................... 92 
`“access said computer memory to select the
`symbolic name corresponding to the web
`component of the defined UI object,” (Claim
`1[b][iii]) ......................................................................... 94 
`3
`
`
`
`
`
`
`
`
`(b) 
`(c) 
`
`(d) 
`
`(e) 
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`

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`Table of Contents
`(continued)
`
`Page
`
`(f) 
`
`(g) 
`
`(h) 
`
`(i) 
`
`(j) 
`
`(k) 
`
`(l) 
`
`(m) 
`
`“associate the selected symbolic name with the
`defined UI object, where the selected symbolic
`name is only available to UI objects that support
`the defined data format associated with that
`symbolic name,” (Claim 1[b][iv]) ................................. 98 
`“store information representative of said defined
`UI object and related settings in a database;”
`(Claim 1[b][v]) ............................................................. 104 
`“retrieve said information representative of said
`one or more said UI object settings stored in said
`database; and” (Claim 1[b][vi]) ................................... 109 
`“build an application consisting of one or more
`web page views from at least a portion of said
`database utilizing at least one player, where said
`player utilizes information stored in said database
`to generate for the display of at least a portion of
`said one or more web pages,” (Claim 1[b][vii]) .......... 110 
`“wherein when the application and player are
`provided to the device and executed on the device,
`and” (Claim 1[c]) ......................................................... 119 
`“when the user of the device provides one or more
`input values associated with an input symbolic
`name to an input of the defined UI object,” (Claim
`1[c][i]) .......................................................................... 120 
`“the device provides the user provided one or more
`input values and corresponding input symbolic
`name to the web service,” (Claim 1[c][ii]) .................. 121 
`“the web service utilizes the input symbolic name
`and the user provided one or more input values for
`generating one or more output values having an
`associated output symbolic name,” (Claim
`1[c][iii]) ........................................................................ 127 
`
`4
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`Table of Contents
`(continued)
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`Page
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`
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`(n) 
`
`“and the player receives the output symbolic name
`and corresponding one or more output values and
`provides instructions for the display of the device
`to present an output value in the defined UI
`object.” (Claim 1[c][iv]) .............................................. 132 
`Claim 2 ................................................................................... 135 
`2. 
`Claim 5 ................................................................................... 135 
`3. 
`Claim 6 ................................................................................... 136 
`4. 
`Claim 7 ................................................................................... 137 
`5. 
`Claim 12 ................................................................................. 137 
`6. 
`Ground 2: Obviousness of Claim 11 Over Anderson, Bowers,
`Jacobs, Ambrose-Haynes and Geary, in Further View of NFS
`Administration .................................................................................. 139 
`1. 
`Claim 11 ................................................................................. 139 
`D.  Grounds 3-4: Obviousness in view of Witkowski ........................... 147 
`VII.  NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .... 150 
`VIII.  CONCLUSION ........................................................................................... 154 
`
`C. 
`
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`5
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`Facebook's Exhibit No. 1002
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`I, Vijay K. Madisetti, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I received my Bachelor of Technology (Honors) in Electronics and
`
`Electrical Communication Engineering at the Indian Institute of Technology (IIT) in
`
`Kharagpur, India in 1984. I obtained my Ph.D. in Electrical Engineering and
`
`Computer Science at the University of California, Berkeley, in 1989. I received the
`
`Demetri Angelakos Outstanding Graduate Student Award from the University of
`
`California, Berkeley and the IEEE/ACM Ira M. Kay Memorial Paper Prize in 1989.
`
`2.
`
`I am a tenured Professor in Electrical and Computer Engineering at the
`
`Georgia Institute of Technology (“Georgia Tech”). I am knowledgeable and familiar
`
`with wireless communications, microprocessor architecture, hardware, RF, cellular
`
`networks, ASIC design, computer engineering, embedded systems, digital signal
`
`processing, and associated software and firmware design for wireless and
`
`telecommunications terminals and base stations. I have created and taught
`
`undergraduate and graduate courses in hardware and software design for signal
`
`processing and wireless communication circuits at Georgia Tech for the past twenty
`
`years. Additionally, I have been active in the areas of wireless communications,
`
`digital signal processing, integrated circuit design (analog & digital), software
`
`engineering, system‐level design methodologies and tools, and software systems. I
`6
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`have been the principal investigator (“PI”) or co‐PI in several active research
`
`programs in these areas, including DARPA's Rapid Prototyping of Application
`
`Specific Signal Processors, the State of Georgia's Yamacraw Initiative, the United
`
`States Army's Federated Sensors Laboratory Program, and the United States Air
`
`Force Electronics Parts Obsolescence Initiative. I have received an IBM Faculty
`
`Award and NSF's Research Initiation Award.
`
`3.
`
`I have designed several specialized computer and communication
`
`systems over the past two decades at Georgia Tech for tasks such as wireless audio
`
`and video processing and protocol processing for portable platforms, such as cell
`
`phones and PDAs. I have worked on designing systems that are efficient from
`
`performance, size, weight, area, and thermal considerations. I have developed
`
`courses and classes for the industry on these topics, and many of my lectures in
`
`advanced computer system design, developed under the sponsorship of the United
`
`States Department of Defense in the late 1990s, are available for educational use at
`
`"http://www.eda.org/rassp" and have been used by several U.S. and international
`
`universities as part of their course work. Some of my recent publications in the area
`
`of design of wireless communications systems and associated protocols are listed in
`
`Exhibit A. I graduated more than 20 Ph.D. students that now work as professors or
`
`in technical positions around the world.
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`
`4.
`
`I have been an active consultant to industry and various research
`
`laboratories (including Massachusetts Institute of Technology Lincoln Labs and
`
`Johns Hopkins University Applied Physics Laboratory). My consulting work for
`
`MIT Lincoln Labs involved high resolution imaging for defense applications, where
`
`I worked in the area of prototyping complex and specialized computing systems. My
`
`consulting work for the Johns Hopkins Applied Physics Lab (“APL”) mainly
`
`involved localization of objects in image fields, where I worked on identifying
`
`targets in video and other sensor fields and identifying computer architectures and
`
`circuits for power and space‐efficient designs.
`
`5.
`
`I have founded three companies in the areas of embedded software,
`
`military chipsets involving imaging technology, and wireless communications. I
`
`have supervised the Ph.D. dissertations of over twenty engineers in the areas of
`
`computer engineering, signal processing, communications, rapid prototyping, and
`
`system‐level design methodology, of which five have resulted in thesis prizes or
`
`paper awards. The first of the companies I founded, VP Technologies, offers
`
`products in the area of semiconductor integrated circuits, including building
`
`computing systems for imaging systems for avionics electronics for the United
`
`States Air Force and the US Navy, since 1995. I remain a director of VP
`
`Technologies. The second of these companies, Soft Networks, LLC, offers software
`
`
`
`8
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
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`for multimedia and wireless computing platforms, including the development of a
`
`set‐top box for Intel that decodes MPEG‐2 video streams, wireless protocol stacks,
`
`and imaging codecs for multimedia phones. The technology involved with the
`
`design, development, and implementation of the Intel set‐top box included parsing
`
`the bit streams, decoding communications protocols, extracting image and video
`
`data, and then processing for subsequent display or storage. The third of these
`
`companies, Elastic Video, uses region of interest based video encoding or decoding
`
`for capturing high quality video at very low bit rates, with primary application for
`
`wireless video systems.
`
`6.
`
`I have authored more than sixty refereed journal publications and
`
`around forty peer reviewed conference publications. I have been active in research
`
`in the area of wireless and mobile communications and some of my recent peer‐
`
`reviewed publications in this area include: (i) Mustafa Turkboylari & Vijay K.
`
`Madisetti, Effect of Handoff Delay on the System Performance of TDMA Cellular
`
`Systems, Proceedings of the Fourth IEEE Conference on Mobile and Wireless
`
`Communications Network 411‐15 (Sept. 9‐11, 2002); (ii) Loran A. Jatunov & Vijay
`
`K. Madisetti, Computationally‐Efficient SNR Estimation for Bandlimited Wideband
`
`CDMA Systems, 5 IEEE Transactions on Wireless Communications, no. 12 (2006)
`
`at 3480‐91; and (iii) Nimish Radio, Ying Zhang, Mallik Tatipamula & Vijay K.
`
`
`
`9
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`Madisetti, Next Generation Applications on Cellular Networks: Trends, Challenges,
`
`and Solutions, 100 Proceedings of the IEEE, no. 4 (April 2012) at 841‐54. I have
`
`extensive experience analyzing, designing, and testing systems based on 3GPP
`
`Technical Specifications, including specifications describing WCDMA and HSDPA
`
`technologies. I have been active in the area of location‐based services and wireless
`
`localization techniques since the mid‐1990s, and have authored several papers on
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`location‐based services, including, Vijay K. Madisetti et al., Mobile Fleet
`
`Application Using SOAP and System on Devices (SyD) Middleware Technologies,
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`Communications, Internet, and Information Technology (2002) at 426‐31. I have
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`served as associate editor or on the editorial board for technical journals, including
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`IEEE Transactions on Circuits & Systems II, International Journal in Computer
`
`Simulation, and International Journal in VLSI Signal Processing.
`
`7.
`
`I have authored or co‐authored several books, including VLSI Digital
`
`Signal Processors (IEEE Press 1995) and the Digital Signal Processing Handbook
`
`(CRC Press, 1998, 2010). I co‐authored Quick‐Turnaround ASIC Design in VHDL
`
`(Kluwer Academic Press 1996) and Platform‐Centric Approach to System‐on‐Chip
`
`(SoC) Design (Springer 2004). I am also the editor of several books, including the
`
`three‐volume DSP Handbook set: Volume 1: Digital Signal Processing
`
`Fundamentals, Volume 2: Video, Speech, and Audio Signal Processing and
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`Associated Standards, and Volume 3: Wireless, Networking, Radar, Sensory Array
`
`Processing, and Nonlinear Signal Processing, published in 2010 by CRC Press, Boca
`
`Raton, Florida. More recently I have authored Cloud Computing (2014, CreateSpace
`
`Press), and Internet of Things (2014, CreateSpace), and the book, Cloud Computing,
`
`was nominated as a Notable Book of 2014 by the Association of Computing
`
`Machinery (ACM) in July 2015.
`
`8. My experience is relevant to this case. I have been working in the area
`
`of wireless communications and signal processing, since the early 1980s. In 1983‐
`
`84, I designed and prototyped a very low RF frequency (VLF) receiver for submarine
`
`communications utilizing MSK (Minimum Shift Key) modulation/demodulation
`
`techniques in hardware. I have developed wireless baseband and protocol stack
`
`software and assembly code for a leading telecommunications handset vendor that
`
`focused on efficient realization of speech codecs and echo‐cancellation. My work in
`
`this regard included creation of software code, and analysis and revision of existing
`
`software code. In the early 2000‐2001 timeframe, I designed three GSM multiband
`
`mobile phones for a leading telecom equipment manufacturer in Asia.
`
`9.
`
`I have been elected a Fellow of the IEEE, for contributions to embedded
`
`computing systems. The Fellow is the highest grade of membership of the IEEE, a
`
`world professional body consisting of over 300,000 electrical and electronics
`
`
`
`11
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`engineers, with only one‐tenth of one percent (0.1%) of the IEEE membership being
`
`elected to the Fellow grade each year. Election to Fellow is based upon votes cast
`
`by existing Fellows in IEEE. I have also been awarded the 2006 Frederick Emmons
`
`Terman Medal by the American Society of Engineering Education for contributions
`
`to Electrical Engineering, including authoring a widely used textbook in the design
`
`of VLSI digital signal processors. I was awarded VHDL International Best PhD
`
`Dissertation Advisor Award in 1997 and the NSF RI Award in 1990. I was Technical
`
`Program Chair for both the IEEE MASCOTS in 1994 and the IEEE Workshop on
`
`Parallel and Distributed Simulation in 1990. In 1989 I was recognized with the Ira
`
`Kay IEEE/ACM Best Paper Award for Best Paper presented at the IEEE Annual
`
`Simulation Symposium.
`
`10.
`
`I have submitted approximately thirty invention disclosures and
`
`provisional patents over the past ten years. None of them are patents yet.
`
`11.
`
`I have testified as an expert witness before. Over the past six years, I’ve
`
`testified as an expert in more than 20 proceedings. About half of the proceedings in
`
`which I have testified as an expert were in the area of 2G/3G/4G wireless receiver
`
`design, including six to seven in the area of digital physical layer design.
`
`12.
`
`13.
`
`I have attached a more detailed list of my qualifications as Exhibit A.
`
`I am being compensated for my time working on this matter at my
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`standard hourly rate plus expenses. I do not have any personal or financial stake or
`
`interest in the outcome of the present proceeding, and the compensation is not
`
`dependent on the outcome of this IPR and in no way affects the substance of my
`
`statements in this Declaration.
`
`B. Materials Considered
`14. The analysis that I provide in this Declaration is based on my education
`
`and experience in the field of computer systems, as well as the documents I have
`
`considered, including U.S. Patent No. 9,928,044 B2 (“’044 patent”) [EX1001] and
`
`its prosecution history. The ’044 patent states on its face that it issued from an
`
`application filed on September 17, 2017, and claims priority to a series of
`
`applications, the earliest being a provisional application filed on April 7, 2008. For
`
`purposes of this Declaration, I have assumed April 7, 2008 as the effective filing
`
`date for the ’044 patent. I have cited to or considered the following documents in
`
`my analysis below:
`
`Description of Document
`
`Exhibit
`No.
`1001 U.S. Patent No. 9,928,044 B2 to Rempell et al.
`1002 Reserved.
`1003 Excerpts from Gail Anderson & Paul Anderson, Java Studio Creator
`Field Guide (2d ed. 2006)
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`
`Description of Document
`
`Exhibit
`No.
`1004 Excerpts from Bob Bowers & Steve Lane, Advanced FileMaker Pro 6
`Web Development (2003)
`1005 Excerpts from Sas Jacobs, Foundation XML for Flash (2006)
`1006 Excerpts from Nicole Ambrose-Haynes et al., Professional
`ColdFusion 5.0 (2001)
`1007 Excerpts from UNIX® System V NFS Administration (1993)
`1008 Excerpts from IBM Dictionary of Computing (1994)
`1009 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1010 Affidavit from the Internet Archive
`1011 Excerpts from David Geary et al., Core JavaServer Faces (2004)
`1012 Excerpts from The New Penguin Dictionary of Computing (2001)
`1013 U.S. Patent No. 6,125,360 to Andrew Witkowski et al. (filed July 2,
`1998, issued September 26, 2000)
`1014 Reserved.
`1015 Reserved.
`1016 Reserved.
`1017 Reserved.
`1018 Reserved.
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`15.
`I understand that an assessment of claims of the ’044 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`earliest claimed priority date, which I understand is April 7, 2008. 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) 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.
`
`16.
`
`In my opinion, a person of ordinary skill in the art as of April 2008
`
`would have possessed at least a bachelor’s degree in software engineering, computer
`
`science, computer engineering, or electrical engineering with at least two years of
`
`experience in web-based software application development, including experience in
`
`developing software and systems for interfacing with external data sources (e.g., web
`
`services) to transmit, request, and retrieve information (such as text and images) over
`
`a computer network (or equivalent degree or experience). 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’s of science degree) and less technical experience
`
`or (2) less formal education and more technical or professional experience in the
`
`fields listed above. Acquired as part of the person’s basic computer education and/or
`
`experience, as the ’044 patent makes clear, a person of ordinary skill in the art would
`
`
`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
`have had a working knowledge about various ways to implement websites capable
`
`of accepting inputs from web browsers and providing webpages to browsers upon
`
`request.
`
`17. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my more than 20 years of experience in computer science,
`
`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.
`
`18. 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 ’044 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of April 2008.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`19. The following sets forth my understanding of the legal principles of
`
`claim construction from counsel. I understand that under the legal principles, claim
`
`terms are generally given their ordinary and customary 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
`16
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
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`application. I further understand that the person of ordinary skill in the art is deemed
`
`to read the claim term not only in the context of the particular claim in which a claim
`
`term appears, but in the context of the entire patent, including the specification.
`
`20.
`
`I am informed by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of those
`
`terms.
`
`21.
`
`I am further informed by counsel that other claims of the patent in
`
`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the 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
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`useful guide in understanding the meaning of particular claim terms.
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`22.
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`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
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`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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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
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`be consulted in construing the claim terms, such as my expert testimony.
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`23.
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`I have been informed by counsel that, in Inter Partes Review (IPR)
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`proceedings, a claim of a patent shall be construed using the same claim construction
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`standard that would be used to construe the claim in a civil action filed in a U.S.
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`district court (which I understand is called the “Phillips” claim construction
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`standard), including construing the claim in accordance with the ordinary and
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`customary meaning of such claim as understood by one of ordinary skill in the art
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`and the prosecution history pertaining to the patent.
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`24.
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`I have been instructed by counsel to apply the “Phillips” claim
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`construction standard for purposes of interpreting the claims in this proceeding, to
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`the extent they require an explicit construction. The description of the legal
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`principles set forth above thus provides my understanding of the “Phillips” standard
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`as provided to me by counsel.
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`B. Obviousness
`25. The following sets forth my understanding of the legal principles of
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`obviousness from counsel. I understand that a patent claim is obvious if, as of the
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`critical date (i.e., either the earliest claimed priority date (pre-AIA) or the effective
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`filing date (AIA)), it would have been obvious to a person having ordinary skill in
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`the field of the technology (the “art”) to which the claimed subject matter belongs.
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
`
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`26.
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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 facts known as “secondary considerations”
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`such as commercial success, unexplained 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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`27.
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`I understand that a reference qualifies as prior art for obviousness
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`purposes when it is analogous to the claimed invention. The test for determining
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`what art is analogous is: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addressed, and (2) if the reference is not within the field
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.
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`28.
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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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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
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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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`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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`29.
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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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`30.
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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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`
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`Declaration of Vijay K. Madisetti, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 9,928,044 B2
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`a reason to combine prior art referenc