`
`Filed on behalf of:
`
`Petitioner
`By: Megan Thisse O’Gara (Lead Counsel)
` Megan.OGara@Troutman.com
`
`Nicholas J. Gallo (First Back-up Counsel)
`
`Nicholas.Gallo@Troutman.com
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`CONTENT SQUARE SAS,
`Petitioner,
`
`v.
`
`MEDALLIA INC.,
`Patent Owner.
`_________________
`
`Case IPR2022-00316
`Patent 8,886,552
`_________________
`
`
`DECLARATION OF RAVIN BALAKRISHNAN, PH.D.
`
`
`
`Content Square 1002
`Content Square v Medallia Inc.
`IPR2022-00316
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`
`
`TABLE OF CONTENTS
`
`I.
`
`Page
`
`INTRODUCTION AND QUALIFICATIONS ........................................................... 1
`A. Qualifications and Experience ........................................................... 1
`B. Materials Considered .......................................................................... 6
`II.
`PERSON OF ORDINARY SKILL IN THE ART (“POSITA”) ............................... 7
`III. STATEMENT OF LEGAL PRINCIPLES .................................................. 9
`A. Claim Construction ............................................................................. 9
`B. Obviousness ........................................................................................ 11
`IV. THE ‘552 PATENT .......................................................................................... 16
`A. Overview of the Specification ........................................................... 16
`B. The Provisional Application ............................................................. 21
`C. The Challenged Claims ..................................................................... 24
`V. APPLICATION OF THE PRIOR ART TO THE CHALLENGED CLAIMS OF THE
`‘552 PATENT .................................................................................................. 26
`A. Brief Summary of the Prior Art ...................................................... 26
`1.
`Nickerson [Ex. 1005] ............................................................... 26
`2.
`Salle [Ex. 1006] ........................................................................ 32
`3.
`Error [Ex.1007] ....................................................................... 33
`B. Ground 1: Challenged Claims 1-19 are Rendered Obvious by
`Nickerson and Error ......................................................................... 33
`1.
`Independent claim 1 ............................................................. 34
`a.
`[1a]: “website user
`structured
`feedback
`form
`generation
`functionality operative
`to generate
`i
`
`

`

`b.
`
`c.
`
`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`structured feedback forms for providing website user
`feedback on website user interaction with a website-
`based process, said structured
`feedback
`forms
`comprising user
`selectable
`feedback messages
`provided in a categorized and nested structure” ....... 36
`[1b]: “website user cancellation or abandonment
`prediction functionality operative to determine, based
`on a website action of a given user, that the given user
`intends to cancel a transaction associated with the
`website-based process or abandon the website-based
`process and, upon making said determination,
`automatically present the given user with at least one
`of the generated website user structured feedback
`forms or an invitation to enter feedback using at least
`one of the generated website user structured feedback
`forms” ............................................................................ 43
`[1c]: “website user feedback analyzing functionality
`operative to automatically collect and analyze website
`user feedback entered in said structured feedback
`forms and to provide at least one analysis report based
`on feedback from a multiplicity of website users, said
`at least one analysis report comprising a structured
`analysis report based on said categorized and nested
`structure” ....................................................................... 49
`[1d]: “a web analytics
`interfacing functionality
`operative to interface with a web analytics service and
`receive web behavior analysis relating to behaviors of
`the multiplicity of website users” ................................ 56
`[1e]: “wherein, said automatic analysis of website user
`feedback includes factoring the received web behavior
`analysis in said automatic analysis and producing at
`least one analysis report that includes an integration of
`said received web behavior analysis” ......................... 61
`[1f]: “wherein said analyzing functionality is further
`operative to analyze website user feedback in relation
`to each of two or more stages in the website-based
`ii
`
`d.
`
`e.
`
`f.
`
`

`

`2.
`
`b.
`
`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`process separately for each stage, factor into the stage
`specific analysis web behavior analysis relating to each
`of the two or more stages and report the results of the
`analysis in relation to the each of two or more stages
`separately for each stage.” ........................................... 65
`Independent Claim 9 ............................................................... 71
`a.
`9[pre]: “A method for collecting and analyzing
`structured user feedback on websites, said method
`comprising:” ................................................................. 71
`9[a]: “generating, using a computer, website user
`structured feedback forms for receiving website user
`feedback on website user interaction with a website-
`based process, said structured
`feedback
`forms
`comprising user
`selectable
`feedback messages
`provided in a categorized and nested structure” ....... 71
`9[b]: “determining, based on a website action of a given
`user, that the given user intends to cancel a transaction
`associated with the website-based process or abandon
`the website-based process;” ......................................... 73
`9[c]: “upon making said determination, automatically
`presenting the given user with at least one of the
`generated website user structured feedback forms or
`an invitation to enter feedback using at least one of the
`generated website user structured feedback forms” . 73
`9[d]: “interfacing with a web analytics service;” ...... 73
`9[e]: “receiving from the web analytics service web
`behavior analysis relating to behaviors of the
`multiplicity of website users;” ..................................... 74
`9[f]: “automatically collecting and analyzing, using
`said computer, said website user feedback entered in
`said structured feedback forms including factoring the
`received web behavior analysis in said automatic
`analysis; and” ................................................................ 74
`
`e.
`f.
`
`c.
`
`d.
`
`g.
`
`iii
`
`

`

`i.
`
`j.
`
`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`h.
`9[g]: “providing, using said computer, at least one
`analysis report based on said website user feedback
`from a multiplicity of website users, said at least one
`analysis report comprising a structured analysis report
`based on said categorized and nested structure,” ..... 75
`9[h]: “wherein at least one analysis report includes an
`integration of the received web behavior analysis;” . 75
`9[i]: “wherein said automatic analyzing includes
`analyzing website user feedback in relation to each of
`two or more stages in the website-based process
`separately for each stage, factoring into the stage
`specific analysis web behavior analysis relating to each
`of the two or more stages and reporting the results of
`the analysis in relation to the each of two or more
`stages separately for each stage” ................................. 75
`3.
`Claims 2 and 10 ....................................................................... 76
`4.
`Claims 3 and 11 ....................................................................... 77
`5.
`Claim 4 ..................................................................................... 78
`6.
`Claims 5 and 14 ....................................................................... 79
`7.
`Claim 6 ..................................................................................... 81
`8.
`Claims 7, 16 and 17 ................................................................. 81
`9.
`Claims 8 and 18 ....................................................................... 83
`10. Claim 12 ................................................................................... 86
`11. Claim 13 ................................................................................... 89
`12. Claim 15 ................................................................................... 90
`13.
`Independent Claim 19 ............................................................. 90
`a.
`19[f]: “upon the given website user completing one of
`said website user structured
`feedback
`forms,
`automatically presenting the given website user with a
`iv
`
`

`

`b.
`
`c.
`
`d.
`
`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`contact details form including fillable fields for
`collecting personal user data;” ................................... 90
`19[g]: “automatically collecting and analyzing, using
`said computer, said website user feedback entered in
`said structured feedback forms and said personal user
`data including factoring the received web behavior
`analysis in said automatic analysis; and” ................... 92
`19[h]: “providing, using said computer, at least one
`analysis report based on said website user feedback
`and said collected personal user data from a
`multiplicity of website users, said at least one analysis
`report comprising a structured analysis report based
`on said categorized and nested structure;” ................ 94
`19[j]: “wherein said analyzing user feedback includes
`factoring at least a portion of said personal user data
`relating to the multiplicity of website users and
`analyzing website user feedback in relation to each of
`two or more stages in the website-based process
`separately for each stage, factoring into the stage
`specific analysis web behavior analysis relating to each
`of the two or more stages and reporting the results of
`the analysis in relation to the each of two or more
`stages separately for each stage;” ............................... 95
`C. Ground 2: Challenged Claims 1-19 are Rendered Obvious by
`Nickerson in view of Error and Salle .............................................. 96
`VI. NO SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS ..... 99
`VII. ENABLEMENT AND REASONABLE EXPECTATION
` OF SUCCESS ............................................................................................... 99
`VIII. CONCLUSION ............................................................................................... 100
`
`
`v
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`I, Ravin Balakrishnan, Ph.D. declare as follows:
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`1.
`I am currently a tenured Full Professor of Computer Science in the
`
`I.
`
`Department of Computer Science at the University of Toronto. I joined the faculty
`
`at the University in 2001, was granted tenure in 2006, and served as Chair of my
`
`Department from 2015 to 2019. From 2006-2016, I held the Canada Research Chair
`
`in Human-Centered Interfaces in the Department of Computer Science.
`
`2.
`
`I earned a B.Sc. in Computer Science from the University of New
`
`Brunswick in 1993, and an M.Sc. in Computer Science in 1997, and a Ph.D. in
`
`Computer Science in 2001, both from the University of Toronto. Since receiving my
`
`Ph.D., I have been a member of the faculty of the Department of Computer Science
`
`at the University of Toronto where my research has focused on human computer
`
`interaction (“HCI”), including the development of user interface technologies to
`
`improve HCI on a variety of computational platforms and application areas
`
`including mobile devices, web based technologies, data visualization and data
`
`analytics including web based analytics, touch input devices, video games, large
`
`displays, televisions, 3D displays, virtual and augmented reality technologies.
`
`3.
`
`In conjunction with my professorship, I serve as Co-Director of the
`
`Dynamic Graphics Project Laboratory at the University of Toronto that has twelve
`
`faculty members and roughly 50 graduate students and postdoctoral researchers
`1
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`working on various aspects of user interface interaction technologies, computer
`
`graphics, and virtual environments. Tech transfer of research to industry from this
`
`lab in recent years has resulted in several spin-off companies, including ones focused
`
`on 3D user interfaces, medical data visualization, virtual reality, and 3D architectural
`
`visualization and interaction.
`
`4.
`
`As part of my professorial duties, I teach and supervise graduate
`
`students and postdoctoral fellows in their research work. To date, 27 research M.Sc.
`
`students, 15 Ph.D. students, and 8 postdoctoral fellows have completed their
`
`research training under my guidance. Their research has led to theses and peer
`
`reviewed publications over a broad range of topics covering interactive computing
`
`and user interfaces for multiple applications and technology platforms. I have taught
`
`courses covering computing topics including interactive computing, human-
`
`computer interaction, and information systems and design, as well as courses
`
`covering various user interface technologies for a variety of platforms including web
`
`based systems.
`
`5.
`
`I have published over 140 refereed publications in peer-reviewed
`
`journals and conferences. I have further presented numerous conference abstracts,
`
`posters, talks, and demonstrations in my field. My work has been cited more than
`
`19,000 times across a spectrum of high-impact publications, and my current h-index
`
`score is 79, which is an indication of the significant impact of my research on
`
`2
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`scholarly literature in the field of Computer Science.
`
`6.
`
`I have received major awards and honors in my field. For example, in
`
`2007, I received an Alfred P. Sloan Research Fellowship. In 2011, I was elected
`
`into the Association for Computing Machinery’s Computer Human Interaction
`
`Academy, which is an honorary group consisting of researchers who have made
`
`extensive contributions to the study of HCI and who have led the shaping of the HCI
`
`field. The stated criteria for being elected into the Association for Computing
`
`Machinery’s Computer Human Interaction Academy are: (1) cumulative
`
`contributions in the field; (2) impact on the field through development of new
`
`research directions and/or innovations; and (3) influence on the work of others. In
`
`2020, I was presented with the Canadian Human Computer Communications
`
`Society’s Achievement Award, which recognizes researchers who have made a
`
`substantial contribution to the fields of computer graphics, visualization, or human-
`
`computer interaction.
`
`7.
`
`I have been a co-founder on a number of start-ups focusing on human-
`
`computer interfaces, including Bump Technologies (acquired by Google in 2010)
`
`which developed a physically realistic desktop user interface system, FindSpace
`
`(formerly Sketch2 Corp. and Arcestra) which developed software for designing 3D
`
`interior layouts (acquired by Cougar Group in 2021), and Conceptualiz, which
`
`develops surgical planning technology using primarily a touch interface.
`
`3
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`8. My research at the University of Toronto has involved nearly every
`
`broad aspect of human-computer interaction and data visualization. For instance, I
`
`have done significant work in the areas of input devices, displays, sensing
`
`technologies, interfaces to small and/or mobile computers, interfaces to displays of
`
`the future, data analytics including web analytics, and interaction techniques,
`
`including touch and multi-touch, gestural, sketching, and multi degree-of-freedom
`
`interactions. As another example, I have done work in the evaluation of user
`
`interfaces,
`
`including associated metrics and predictive models of human
`
`performance.
`
`9.
`
`In addition to my research at the University of Toronto, I have
`
`collaborated with researchers at leading institutions worldwide. For example, I have
`
`been a visiting professor at Laboratoire de Recherche en Informatique (LRI) at the
`
`Université Paris-Sud, France. Additionally, I have been a visiting researcher at
`
`several industrial laboratories, including: (1) HPLabs, (2) Mitsubishi Electric
`
`Research Laboratories (MERL), and (3) Microsoft Research Labs. At those
`
`companies, my work generally focused on developing new user interface techniques
`
`for a variety of technology platforms, including work on new data analytics and
`
`visualization systems. Prior to becoming a professor, during my MSc and PhD
`
`studies, I was also concurrently a part-time researcher at Alias|wavefront (now part
`
`of Autodesk), that was a leading developer of 3D graphics software applications.
`
`4
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`Some of my work at these companies, and my startup companies, have resulted in
`
`software and hardware implementations that were shipped within consumer level
`
`products.
`
`10.
`
`I have also served on the organizing and paper reviewing committees
`
`of many leading conferences in my field, and have taken on editorial roles for leading
`
`technical journals in fields pertinent to my research. For example, I have been an
`
`associate editor of the Association for Computing Machinery (“ACM”) Transactions
`
`on Computer-Human Interaction and an associate editor of the IEEE Transactions
`
`on Visualization and Computer Graphics, which are both peer-reviewed journals.
`
`Similarly, I have been the paper’s chair for the ACM UIST Symposium on User
`
`Interface Software and Technology, and have served multiple times as an associate
`
`chair for the ACM CHI Conference on Human-Computer Interaction. Over my
`
`career, I have also reviewed hundreds of published and unpublished papers in my
`
`field.
`
`11.
`
`I am the co-inventor on 20 patents, and have several patent applications
`
`pending, all in the area of user interfaces, including new techniques and technologies
`
`for handling user input to computational platforms in novel and more facile ways.
`
`12. Additionally, I have served as an expert witness in numerous patent
`
`actions, including in multiple IPR proceedings and ITC and district court cases,
`
`including for Apple in several actions against Samsung, HTC and other entities
`
`5
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`involving multiple patents covering tablet and mobile phone interfaces, for Nintendo
`
`involving their Wii gaming technology, for Immersion involving their haptic
`
`feedback
`
`technology, for Facebook/Oculus
`
`involving
`
`their virtual reality
`
`technology, and for Rovi/Tivo involving their various TV guide, video on-demand,
`
`and set-top box technologies. A listing of the cases in which I have served as an
`
`expert witness, including where I have testified at trial or by deposition, can be found
`
`in mv Curriculum Vitae, which is attached as Ex. A.
`
`13.
`
`14.
`
`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
`
`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
`15. The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered. In forming
`
`my opinions, I have read and considered U.S. Patent No. 8,886,552 B2 (“ʼ552” or
`
`“‘552 Patent”) [Ex. 1001] and its prosecution history. I have cited to the following
`
`documents in my analysis below:
`
`6
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`
`Description of Document
`Ex. No.
`1001 U.S. Patent No. 8,886,552 (“‘552 Patent”)
`1003
`File Wrapper of U.S. Patent No. 8,886,552
`1004 U.S. Provisional Appl. No. 61/270,369
`1005 U.S. Patent Publ. No. 2004/0019688 to Nickerson et al. (“Nickerson”)
`1006 U.S. Patent Publ. No. 2004/0177138 to Salle et al. (“Salle”)
`1007 U.S. Patent Publ. No. 2006/0149728 to Error et al. (“Error”)
`1008 U.S. Patent Publ. No. 2003/0115333 to Cohen et al. (“Cohen”)
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART (“POSITA”)
`16.
`I understand that an assessment of claims of the ‘552 Patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is July 7, 2009. 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.
`
`17. The ‘552 Patent generally relates to a system and method for gathering
`
`feedback from website users and reporting aggregated feedback data to website
`
`7
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`owners. (’552 Patent, (54), 1:32-42, 4:7-17.) In my opinion, a person of ordinary
`
`skill in the art as of July 2009 would have possessed at least a bachelor’s degree in
`
`computer science (or similar degree), and two years of work experience with
`
`developing software systems for collecting and analyzing user feedback. 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.
`
`18. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my more than 30 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.
`
`19. 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 ‘552 Patent have been based on the perspective of a person
`
`of ordinary skill in the art as of July 2009.
`
`20. My opinions herein regarding the understanding of a person of ordinary
`
`skill in the art and my other opinions set forth herein would remain the same if the
`
`8
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`person of ordinary skill in the art were determined to have somewhat more or less
`
`education and/or experience than I have identified above.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`21. 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
`
`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.
`
`22.
`
`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.
`
`23.
`
`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
`
`9
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`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
`
`useful guide in understanding the meaning of particular claim terms.
`
`24.
`
`I understand that the prosecution history can further inform the meaning
`
`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
`
`be consulted in construing the claim terms, such as my expert testimony.
`
`25.
`
`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action filed in a U.S.
`
`district court (which I understand is called the “Phillips” claim construction
`
`standard), including construing the claim in accordance with the ordinary and
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.
`
`26.
`
`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips” standard
`
`10
`
`

`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`as provided to me by counsel.
`
`B. Obviousness
`27. The following sets forth my understanding of the legal principles of
`
`obviousness from counsel. I understand that a patent claim is obvious if, as of the
`
`critical date (i.e., either the earliest claimed priority date (pre-AIA) or the effective
`
`filing date (AIA)), it would have been obvious to a person having ordinary skill in
`
`the field of the technology (the “art”) to which the claimed subject matter belongs.
`
`28.
`
`I understand that the following factors should be considered in
`
`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
`
`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
`
`art. I also understand that certain other facts known as “secondary considerations”
`
`such as commercial success, unexplained results, long felt but unsolved need,
`
`industry acclaim, simultaneous invention, copying by others, skepticism by experts
`
`in the field, and failure of others may be utilized as indicia of nonobviousness. I
`
`understand, however, that secondary considerations should be connected, or have a
`
`“nexus,” with the invention claimed in the patent at issue.
`
`29.
`
`I understand that a reference qualifies as prior art for obviousness
`
`purposes when it is analogous to the claimed invention. The test for determining
`
`what art is analogous is: (1) whether the art is from the same field of endeavor,
`
`regardless of the problem addressed, and (2) if the reference is not within the field
`
`11
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`

`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
`
`particular problem with which the inventor is involved.
`
`30.
`
`I understand that a person of ordinary skill in the art is assumed to have
`
`knowledge of all prior art. I understand that one skilled in the art can combine
`
`various prior art references based on the teachings of those prior art references, the
`
`general knowledge present in the art, or common sense. I understand that a
`
`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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`31.
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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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`32.
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`I understand one way that a patent can be found obvious is if there
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`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`understand that a person of ordinary skill is also a person of at least ordinary
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`creativity. I understand when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp. If this finite number of predictable solutions leads to the anticipated
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`success, I understand that the invention is likely the product of ordinary skill and
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`common sense, and not of any sort of innovation. I understand that the fact that a
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`combination was obvious to try might also show that it was obvious, and hence
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`invalid, under the patent laws. I understand that if a patent claims a combination of
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`familiar elements according to known methods, the combination is likely to be
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`obvious when it does not more than yield predictable results. Thus, if a person of
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`IPR2022-00316 (US 8,886,552)
`Declaration of Ravin Balakrishnan
`ordinary skill in the art can implement a predictable variation, an invention is likely
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`obvious. I understand that combining embodiments disclosed near each other in a
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`prior art reference would not ordinarily require a leap of inventiveness.
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`33.
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`I understand that obviousness may be shown by demonstrating that it
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`would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. Obviousness may also be shown by demonstrating
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`that it would have been obvious to combine the teachings of more than one item of
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`prior art. I understand that a claimed invention may be obvious if some teaching,
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`suggestion, or motivation exists that would have led a person of ordinary skill in the
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`art to combine the invalidating references. I also understand that this suggestion or
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`motivation may come from the knowledge of a person having ordinary skill in t