IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
` Attorney Docket No.: 50095-0095IP1
`
`Burnett et al.
`In re Patent of:
`8,019,091
`U.S. Patent No.:
`Sep. 13, 2011
`Issue Date:
`Appl. Serial No.: 10/667,207
`Filing Date:
`Sep. 18, 2003
`Title:
`VOICE ACTIVITY DETECTOR (VAD)-BASED
`MULTIPLE-MICROPHONE ACOUSTIC NOISE
`SUPPRESSION
`
`DECLARATION OF DR. THOMAS W. KENNY
`
`Declaration
`
`I declare that all statements made herein on my own knowledge are true and
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`that all statements made on information and belief are believed to be true. I further
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`declare that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of the Title 18 of the United States Code.
`
`Dated: June 15, 2022.
`
`By: ________________________________
`
`Thomas W. Kenny, Ph.D.
`
`1
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`APPLE ET AL. 1003
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`TABLE OF CONTENTS
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`I. QUALIFICATIONS AND BACKGROUND INFORMATION ..................... 5
`II. OVERVIEW OF CONCLUSIONS FORMED .............................................. 13
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................ 14
`IV. LEGAL STANDARDS .................................................................................. 15
`A. Terminology ............................................................................................... 15
`B. Legal Standards for Anticipation ............................................................... 16
`C. Legal Standards for Obviousness ............................................................... 16
`V. THE ’091 PATENT ........................................................................................ 21
`A. Overview of the ’091 Patent ...................................................................... 21
`B. Prosecution History of the ’091 Patent ...................................................... 25
`VI. SUMMARY OF THE PRIOR ART ............................................................... 26
`A. Overview of Hietanen ................................................................................ 26
`B. Overview of Burnett ................................................................................... 29
`C. Overview of Weinstein .............................................................................. 31
`D. Overview of Takano ................................................................................... 36
`E. Overview of Hussain .................................................................................. 37
`VII. GROUND 1A: Claims 1-5, 7, 8, 11, 13, 14, 16, 18-20 are obvious based on
`Hietanen in view of Burnett and Weinstein ............................................................ 38
`A. Combination of Hietanen, Burnett, and Weinstein .................................... 38
`Electromagnetic Voice Activity Detector ............................................. 39
`Enhanced Noise Removal Technique ................................................... 42
`B. Claim 1 ....................................................................................................... 45
`C. Claim 2 ....................................................................................................... 63
`D. Claim 3 ....................................................................................................... 69
`E. Claim 4 ....................................................................................................... 70
`F. Claim 5 ....................................................................................................... 72
`G. Claim 7 ....................................................................................................... 74
`H. Claim 8 ....................................................................................................... 75
`I. Claim 11 ..................................................................................................... 76
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`J. Claim 13 ..................................................................................................... 85
`K. Claim 14 ..................................................................................................... 85
`L. Claim 16 ..................................................................................................... 85
`M. Claim 18 ..................................................................................................... 85
`N. Claim 19 ..................................................................................................... 88
`O. Claim 20 ..................................................................................................... 88
`VIII. GROUND 2A: Claims 1-3, 5-8, 10-14, and 16-20 are obvious based on
`Hietanen, Takano, and Weinstein ........................................................................... 88
`A. Hietanen-Takano-Weinstein Combination ................................................ 89
` Bone-Conduction Microphone ............................................................. 89
` Enhanced Noise Removal Technique ................................................... 91
`B. Claim 1 ....................................................................................................... 92
`C. Claim 2 ....................................................................................................... 98
`D. Claim 3 ....................................................................................................... 99
`E. Claim 5 ....................................................................................................... 99
`F. Claim 6 ....................................................................................................... 99
`G. Claim 7 ..................................................................................................... 100
`H. Claim 8 ..................................................................................................... 101
`I. Claim 10 ................................................................................................... 102
`J. Claim 11 ................................................................................................... 104
`K. Claim 12 ................................................................................................... 108
`L. Claim 13 ................................................................................................... 109
`M. Claim 14 ................................................................................................... 109
`N. Claim 16 ................................................................................................... 109
`O. Claim 17 ................................................................................................... 109
`P. Claim 18 ................................................................................................... 110
`Q. Claim 19 ................................................................................................... 112
`R. Claim 20 ................................................................................................... 112
`IX. GROUNDS 1B/2B – Claims 3, 9, and 15 are obvious based on Hietanen,
`Burnett (Ground 1B) or Takano (Ground 2B), Weinstein, and Hussain .............. 112
`A. Hietanen-Burnett/Takano-Weinstein-Hussain Combination ................... 112
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`3
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`B. Claim 3 ..................................................................................................... 115
`C. Claim 9 ..................................................................................................... 116
`D. Claim 15 ................................................................................................... 121
`X. CONCLUSION ............................................................................................. 121
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`4
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`I.
`QUALIFICATIONS AND BACKGROUND INFORMATION
`1. My education and experience are described more fully in my curriculum
`
`vitae attached as Appendix A. For ease of reference, I have highlighted certain
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`information below.
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`2. My academic and professional background is in Physics, Mechanical
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`Engineering, Sensing, and Robotics, with a research specialization focused on
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`microfabricated physical sensors, and I have been working in those fields since the
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`completion of my Ph.D. more than 32 years ago. The details of my background
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`and education and a listing of all publications I have authored in the past 37 years
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`are provided in my curriculum vitae. Below I provide a short summary of my
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`education and experience which I believe to be most pertinent to the opinions that I
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`express here.
`
`3.
`
`I received a B.S. in Physics from University of Minnesota, Minneapolis in
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`1983, and a Ph.D. in Physics from University of California at Berkeley in 1989. I
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`was educated as a Physicist specializing in sensors and measurement. My Physics
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`Ph.D. thesis involved measurements of the heat capacity of monolayers of atoms
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`on surfaces, and relied on precision measurements of temperature and power using
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`time-varying electrical signals, and also on the design and construction of
`
`miniature sensor components and associated electrical circuits for conditioning and
`
`conversion to digital format.
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`
`
`5
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`

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`4.
`
`After completion of my Ph.D. in Physics at U.C. Berkeley in 1989, I joined
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`the Jet Propulsion Laboratory (JPL) in Pasadena, CA, as a staff scientist, and began
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`working on miniature sensors and instruments for small spacecraft. This work
`
`involved the use of silicon microfabrication technologies for miniaturization of the
`
`sensors, and served as my introduction to the field of micro-electromechanical
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`systems (MEMS), or the study of very small mechanical sensors powered by
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`electricity and used for detection of physical and chemical signals.
`
`5. While at JPL, we developed accelerometers, uncooled infrared sensors,
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`magnetometers, seismometers, force and displacement sensors, soil chemistry
`
`sensors, miniature structures for trapping interstellar dust, and many other
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`miniature devices. Some of these projects led to devices that were launched with
`
`spacecraft headed for Mars and for other interplanetary missions. Much of this
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`work involved the use of physical sensors for detection of small forces and
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`displacements using micromechanical sensors.
`
`6.
`
`I am presently the Richard Weiland Professor at the Department of
`
`Mechanical Engineering at Stanford University, where I have taught for the past 28
`
`years. I am also currently the Senior Associate Dean of Engineering for Student
`
`Affairs at Stanford.
`
`7.
`
`In my role at Stanford, I supervise PhD students carrying out research on
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`design, fabrication and characterization of micromechanical devices and sensors.
`
`
`
`6
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`

`

`In this research, we have developed devices for measurement of inertial forces,
`
`pressure, light, temperature, and acoustic signals, as well as techniques for
`
`capturing and processing of signals and noise from sensors, with a detailed listing
`
`of the resulting publications and patents included in my CV.
`
`8.
`
`I have also been active in teaching courses at Stanford, including ME210
`
`Introduction to Mechatronics, and ME220 Introduction to Sensors. In ME220, I
`
`provide a survey of mechanisms used to transform physical phenomena into
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`electric signals, followed by a discussion of many different categories of sensors
`
`such as pressure sensors, accelerometers, thermometers, microphones, gyroscopes,
`
`as well as sensors for chemical parameters, light, and electromagnetic phenomena.
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`I have taught this course more than 25 times over my career at Stanford, and am
`
`currently offering the Spring 2022 version. In ME210, we provide a broad
`
`introduction to the concepts and components needed for design of autonomous
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`mobile robots, which includes capture and processing of signals from sensors.
`
`9.
`
`I have advised 73 Ph.D. students that have completed Ph.D. degrees and
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`many more M.S. and B.S. students in Engineering during my time at Stanford.
`
`The research carried out with these PhD students routinely includes measurement
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`of signals which contain information and noise from the background, and require
`
`development of methods for identifying the information and noise components of
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`
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`7
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`the signal and then implementing filters, subtractions, correlations etc., as needed
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`to produce clear signals as needed for the analysis.
`
`10.
`
`I have published over 250 technical papers in refereed journals and
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`conferences in the field of sensors, MEMS, and measurements. I have further
`
`presented numerous conference abstracts, posters, and talks in my field. I am a
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`named inventor on 50 patents in my areas of work.
`
`11.
`
`I served as General Chair or Technical Program Committee Chair for the
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`International Conference on Solid State Sensors and Actuators (“Transducers”) in
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`2003 and 2015, for the Hilton Head Workshop on Solid State Sensors and
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`Actuators in 2002 and 2004, for the IEEE Sensors Conference in 2009 and 2010,
`
`and on technical program committees for several other conferences. These
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`conferences included technical sessions on capture of signals in the presence of
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`environmental noise sources, and processing to remove the portion of the signal
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`that comes from the environmental sources. I currently serve as President of the
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`Transducers Research Foundation, a private foundation that oversees technical
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`conferences in the area of micromechanical sensors, actuators and systems, energy
`
`harvesting, microtechnologies for medicine and biology, and raises funds to
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`support growth of the community, primarily by providing travel assistance for
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`students to attend technical meetings.
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`8
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`12.
`
`I received the Office of the Secretary of Defense Award for Exceptional
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`Public Service in 2010, the IEEE Sensors Council Technical Achievement Award
`
`in 2011, and was named Fellow of the ASME in 2014. I was awarded the 2018
`
`IEEE Daniel Noble Award for Emerging Technologies. In 2022, I was elected to
`
`the National Academy of Engineering.
`
`13. Among the publications listed in my CV, there are several which are
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`specifically relevant to the subject matter of this declaration. For example, in the
`
`paper titled “Measurement of the Noise of a Geophone in the Presence of Large
`
`Background Signals” (Rev. Sci. Instrum. 69, 2767-2772 (1998)), we present a
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`method for using a pair of sensitive vibration sensors (“geophones”) operated at
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`the same time to enable a determination of the background vibration signals
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`detected by both sensors and the internal fundamental noise in each sensor. Since
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`both sensors are mounted on the same surface and observing the same seismic
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`background signals, the portion of the signal coming from the background is highly
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`correlated, whereas the portion of the signal associated with the fundamental noise
`
`in each sensor is uncorrelated. We use measurements of the correlation between
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`the signals from the two sensors to distinguish the seismic background signal from
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`the sensor noise signal. To extract the sensor noise signal, we utilize the
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`correlation coefficients to subtract out the correlated portion due to true ground
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`motion, allowing clearer identification of the inherent noise of each sensor, even in
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`cases where the ground motion signals are much larger than the noise of the
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`sensors. A similar technique is used in “A High-Precision, Wide-Bandwidth
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`Micromachined Tunneling Accelerometer” (JMEMS, 10,425 (2001)), for example.
`
`14.
`
`In the paper titled “Ultraminiature Encapsulated Accelerometers as a Fully-
`
`Implantable Sensors for Implantable Hearing Aids”, (Biomedical MicroDevices 9,
`
`939 (2007)), we designed and developed a novel ultraminiature accelerometer
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`which could be mounted on the eardrum, allowing electrical measurement of
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`acoustic signals using the mechanical elements of the ear, and enabling signal
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`delivery to the cochlea that bypassed the mechanical elements in the middle ear. In
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`general, the publications presented in my CV describe careful measurements of
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`small signals from micromechanical devices, followed by amplification, filtering
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`and processing to suppress or remove contributions from uninteresting background
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`sources.
`
`15.
`
`I have previously served as an expert on a patent infringement case
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`involving the mounting and use of pressure sensors on guidewire catheters for
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`cardiovascular procedures that included a number of sensing aspects, such as
`
`recording static and dynamic pressure signals, and compensating for electrical and
`
`mechanical errors. I have also previously served as an expert on a patent
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`infringement case involving the design and use of miniature inertial sensors. That
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`case involved the design and operations of micromechanical sensors, and
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`10
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`particularly the use of inertial sensors for detection of states of movement and rest.
`
`I have also served as an expert in a patent infringement case involving the use of
`
`sensors on athletic shoes for determining athletic performance. More recently, I
`
`served as an expert in a patent infringement case involving optical proximity
`
`sensors in smartphones and in a case related to technologies related to
`
`physiological sensors for measurement of parameters such as heart rate. My CV
`
`includes a full listing of all cases in which I have testified at deposition or trial in
`
`the preceding four years.
`
`16.
`
`I have been retained on behalf of Apple Inc. to offer technical opinions
`
`relating to U.S. Patent No. 8,019,091 (“the ’091 patent”) and prior art references
`
`relating to its subject matter. I have reviewed the ’091 patent, relevant excerpts of
`
`the prosecution history of the ’091 patent. I have also reviewed the following prior
`
`art references:
`
`• U.S. Patent No. 6,415,034 to Hietanen (“Hietanen”) (EX-1004)
`
`• U.S. Patent No. 6,377,919 to Burnett et al. (“Burnett”) (EX-1005)
`
`• Weinstein et al., “Multi-Channel Signal Separation by Decorrelation,” IEEE
`Transactions on Speech and Audio Processing, Vol. 1, No. 4, October 1993,
`pages 405-413 (“Weinstein”) (EX-1006)
`
`• Gregory Burnett, The Physiological Basis of Glottal Electromagnetic
`Micropower Sensors (GEMS) and Their Use in Defining an Excitation
`Function for the Human Vocal Tract, Dissertation, January 1999 (“Burnett
`Thesis”) (EX-1007)
`
`11
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`• Japanese Unexamined Patent Application JPH11305792 and Certified
`Translation (“Takano”) (EX-1008)
`
`• U.S. Patent No. 5,282,253 to Konomi (“Konomi”) (EX-1009)
`
`• U.S. Patent No. 5,295,193 to Ono (“Ono”) (EX-1010)
`
`• U.S. Patent No. 5,473,701 to Cezanne et al. (EX-1011)
`
`• Hussain et al., “A New Metric For Selecting Sub-band Processing In
`Adaptive Speech Enhancement Systems,” EuroSpeech ’97 Proceedings,
`ESCA 5th European Conference On Speech Communication And
`Technology, September 22-25, 1997, pages 2611-2614 (“Hussain”) (EX-
`1012)
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`
`
`
`
`
`
`
`
`
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`• U.S. Patent No. 8,000,482 to Lambert et al. (EX-1013)
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`17. Counsel has informed me that I should consider these materials through the
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`lens of one of ordinary skill in the art related to the ’091 patent at the time of the
`
`earliest possible priority date of the ’091 patent, and I have done so during my
`
`review of these materials. The ’091 patent was issued from U.S. Patent Application
`
`No. 10/667,207, filed on September 18, 2003, which claims priority to U.S. Patent
`
`Application No. 09/905,361 filed July 12, 2001 and U.S. Provisional Application
`
`No. 60/219,297 filed July 19, 2000 (“the Critical Date”). Counsel has informed me
`
`that the Critical Date represents the earliest possible priority date to which the
`
`challenged claims of ’091 patent are entitled, and I have therefore used that Critical
`
`Date in my analysis below.
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`12
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`18.
`
`I have no financial interest in the party or in the outcome of this proceeding.
`
`I am being compensated for my work as an expert on an hourly basis. My
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`compensation is not dependent on the outcome of these proceedings or the content
`
`of my opinions.
`
`19.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of
`
`mechanical engineering, computer science, biomedical engineering, and electrical
`
`engineering; my experience in teaching those subjects; and my experience in
`
`working with others involved in those fields. In addition, I have analyzed various
`
`publications and materials, in addition to other materials I cite in my declaration.
`
`20. My opinions, as explained below, are based on my education, experience,
`
`and expertise in the fields relating to the ’091 patent. Unless otherwise stated, my
`
`testimony below refers to the knowledge of one of ordinary skill in the fields as of
`
`the Critical Date, or before. Any figures that appear within this document have
`
`been prepared with the assistance of Counsel and reflect my understanding of the
`
`’091 patent and the prior art discussed below.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`21. This declaration explains the conclusions that I have formed based on my
`
`analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art publications listed above, I believe that:
`
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`13
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`

`• Claims 1-5, 7, 8, 11, 13, 14, 16, and 18-20 are rendered obvious by Hietanen
`
`in view of Burnett and Weinstein.
`
`• Claims 1-3, 5-8, 10-14, and 16-20 are rendered obvious by Hietanen in view
`
`of Takano and Weinstein.
`
`• Claims 3, 9, and 15 are rendered obvious by Hietanen in view of Burnett or
`
`Takano, Weinstein, and Hussain.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`22.
`In my opinion, one of ordinary skill in the art relating to, and at the time of,
`
`the invention of the ’091 patent (“POSITA”) would have been someone with a
`
`working knowledge of microphone arrays, physiological sensors, and speech
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`recognition, detection, and signal processing. The person would have had at least a
`
`bachelor of science in electrical engineering, computer engineering, computer
`
`science, or a related discipline, with at least two years of relevant experience in a
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`field related to acoustics, speech recognition, speech detection, or signal
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`processing. A greater amount of education, i.e., a doctorate in electrical
`
`engineering, computer engineering, computer science, or a related discipline would
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`also qualify for the hypothetical person of ordinary skill in the art in lieu of fewer
`
`years of work experience. Additional education or industry experience may
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`compensate for a deficit in one of the other aspects of the requirements stated
`
`above.
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`23. Based on my experiences I have a good understanding of the capabilities of
`
`one of ordinary skill. Indeed, I have taught, participated in organizations, and
`
`worked closely with many such persons over the course of my career. Based on my
`
`knowledge, skill, and experience, I have an understanding of the capabilities of one
`
`of ordinary skill. For example, from my industry experience, I am familiar with
`
`what an engineer would have known and found predictable in the art. From
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`teaching and supervising my post-graduate students, I also have an understanding
`
`of the knowledge that a person with this academic experience possesses.
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`Furthermore, I possess those capabilities myself.
`
`IV. LEGAL STANDARDS
`A. Terminology
`I have been informed by Counsel and understand that the best indicator of
`
`24.
`
`claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should be
`
`given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
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`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). Because I do not know at what
`
`date the invention as claimed was made, I have used the earliest possible priority
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`15
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`date of the ’091 patent as the point in time for claim interpretation purposes. That
`
`date was July 19, 2000, the Critical Date.
`
`B.
`Legal Standards for Anticipation
`I have been informed by Counsel and understand that documents and
`
`25.
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`anticipated. I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a person of ordinary skill in the art.
`
`26.
`
`I am informed by Counsel and understand that a challenged claim is
`
`unpatentable as “anticipated” under 35 U.S.C. § 102 if it is determined that all the
`
`limitations of the claim are described in a single prior art reference. I am informed
`
`by Counsel and understand that, to anticipate a claim, a prior art reference must
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`disclose, either expressly or inherently, each and every limitation of that claim and
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`enable one of ordinary skill in the art to make and use the invention.
`
`27.
`
`I have been informed by Counsel and understand that in an inter partes
`
`review, “the petitioner shall have the burden of proving a proposition of
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`unpatentability,” including a proposition of anticipation, “by a preponderance of
`
`the evidence.” 35 U.S.C. § 316(e).
`
`C. Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
`
`28.
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`
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`16
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`obvious. I am informed by Counsel and understand that all prior art references are
`
`to be looked at from the viewpoint of a person of ordinary skill in the art at the
`
`time of the invention, and that this viewpoint prevents one from using his or her
`
`own insight or hindsight in deciding whether a claim is obvious.
`
`29.
`
`I have been informed by Counsel and understand that a claim is unpatentable
`
`for obviousness under 35 U.S.C. § 103 (in the pre-AIA form of that statute that
`
`applies to the ’091 patent) “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” I am informed by Counsel and
`
`understand that obviousness may be based upon a combination of references. I am
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`informed by Counsel and understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. However, I am informed by Counsel and understand that
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`a patent claim composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art.
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`30.
`
`I am informed by Counsel and understand that when a patented invention is
`
`a combination of known elements, a court must determine whether there was an
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`apparent reason to combine the known elements in the fashion claimed by the
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`patent at issue by considering the teachings of prior art references, the effects of
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`demands known to people working in the field or present in the marketplace, and
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`the background knowledge possessed by a person having ordinary skill in the art.
`
`31.
`
`I am informed by Counsel and understand that identifying a reason those
`
`elements would be combined can be important because inventions in many
`
`instances rely upon building blocks long since uncovered, and claimed discoveries
`
`almost of necessity will be combinations of what, in some sense, is already known.
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`I am informed by Counsel and understand that it is improper to use hindsight in an
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`obviousness analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`32.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art; (2) the differences between the claims and the prior art; (3) the level of
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`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
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`such as commercial success, long-felt but unresolved need, failure of others,
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`industry recognition, copying, and unexpected results. I understand that the
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`foregoing factors are sometimes referred to as the “Graham factors.”
`
`33.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a combination of multiple prior art references. I
`
`understand that the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two or more prior art
`
`references is sometimes simple common sense. I have been informed by Counsel
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`18
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`and understand that obviousness analysis recognizes that market demand, rather
`
`than scientific literature, often drives innovation, and that a motivation to combine
`
`references may be supplied by the direction of the marketplace.
`
`34.
`
`I have been informed by Counsel and understand that if a technique has been
`
`used to improve one device, and a person of ordinary skill at the time of invention
`
`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.
`
`35.
`
`I have been informed by Counsel and understand that practical and common
`
`sense considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I have been informed
`
`by Counsel and understand that a person of ordinary skill looking to overcome a
`
`problem will often be able to fit together the teachings of multiple prior art
`
`references. I have been informed by Counsel and understand that obviousness
`
`analysis therefore takes into account the inferences and creative steps that a person
`
`of ordinary skill would have employed at the time of invention.
`
`36.
`
`I have been informed by Counsel and understand that a proper obviousness
`
`analysis focuses on what was known or obvious to a person of ordinary skill at the
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`time of invention, not just the patentee. Accordingly, I understand that any need or
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`problem known in the field of endeavor at the time of invention and addressed by
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`the patent can provide a reason for combining the elements in the manner claimed.
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`37.
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`I have been informed by Counsel and understand that a claim can be obvious
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`in light of a single reference, without the need to combine references, if the
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`elements of the claim that are not found explicitly or inherently in the reference
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`can be supplied by the common sense of one of skill in the art.
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`38.
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`I have been informed by Counsel and understand that secondary indicia of
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`non-obviousness may include (1) a long felt but unmet need in the prior art that
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`was satisfied by the invention of the patent; (2) commercial success of processes
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`covered by the patent; (3) unexpected results achieved by the invention; (4) praise
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`of the invention by others skilled in the art; (5) taking of licenses under the patent
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`by others; (6) deliberate copying of the invention; (7) failure of others to find a
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`solution to the long felt need; and (8) skepticism by experts. I understand that
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`evidence of secondary indicia of non-obviousness, if available, should be
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`considered as part of the obviousness analysis.
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`39.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determination.
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`40.
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`In sum, my understanding is that prior art teachings are properly combined
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`where one of ordinary skill having the understanding and knowledge reflected in
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`the prior art and motivated by the general problem facing the inventor, would have
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`been led to make the combination of elements recited in the claims. Under this
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`analysis, the prior art references themselves, or any need or problem known in the
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`field of endeavor at the time of the invention, can provide a reason for combining
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`the elements of multiple prior art references in the claimed manner.
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`41.
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`I have been informed by Counsel and understand that in an inter partes
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`review, “the petitioner shall have the burden of proving a proposition of
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`unpatentability,