UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`BUFFALO PATENTS LLC,
`Patent Owner.
`
`_________________
`
`Case No. IPR2023-01387
`U.S. Patent No. 8,204,737
`_________________
`
`DECLARATION OF CHRISTOPHER SCHMANDT IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,204,737
`
`Page 1 of 123
`
`GOOGLE EXHIBIT 1004
`
`

`

`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II. QUALIFICATIONS ........................................................................................ 2
`
`III. MATERIALS CONSIDERED ........................................................................ 6
`
`IV. LEGAL STANDARDS ................................................................................... 8
`
`V.
`
`LEVEL OF ORDINARY SKILL IN THE ART ...........................................11
`
`VI. CLAIM CONSTRUCTION ..........................................................................12
`
`VII. BACKGROUND OF THE ’737 PATENT ...................................................14
`
`A. Overview of the ’737 Patent ................................................................14
`
`B.
`
`Earliest Available Priority Date ..........................................................16
`
`VIII. GROUNDS OF UNPATENTABILITY ........................................................16
`
`IX. CLAIMS 1-16 and 19 WOULD HAVE BEEN OBVIOUS TO A
`POSITA BASED ON THE PRIOR ART IN GROUNDS 1-8 ......................18
`
`A. Ground 1: Claims 1, 4, 12, 13, 15, 16, and 19 Would Have
`Been Obvious Over Ditzik, Tchorzewski, and Roberts .......................18
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Overview of Ditzik ....................................................................18
`
`Overview of Tchorzewski .........................................................21
`
`Overview of Roberts .................................................................22
`
`Independent Claim 1 .................................................................23
`
`Claim 4 ......................................................................................46
`
`Claim 12 ....................................................................................47
`
`Independent Claim 13 ...............................................................49
`
`Claim 15 ....................................................................................51
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`U.S. Patent No. 8,204,737
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`Claim 16 ....................................................................................53
`
`9.
`
`10.
`
`Independent Claim 19 ...............................................................53
`
`B. Ground 2: Claims 2, 3, 5, 6, 11, and 14 Would Have Been
`Rendered Obvious Over Ditzik, Tchorzewski, Roberts, and
`Verrier .................................................................................................57
`
`1.
`
`Overview of Verrier ..................................................................57
`
`2. Motivation to Combine .............................................................59
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Claim 2 ......................................................................................60
`
`Claim 3 ......................................................................................65
`
`Claim 5 ......................................................................................67
`
`Claim 6 ......................................................................................69
`
`Claim 11 ....................................................................................70
`
`Claim 14 ....................................................................................72
`
`C. Ground 3: Claims 9 and 10 Would Have Been Obvious Over
`Ditzik, Tchorzewski, Roberts and Bellegarda .....................................74
`
`1.
`
`Overview of Bellegarda ............................................................74
`
`2. Motivation to Combine .............................................................74
`
`3.
`
`4.
`
`Claim 9 ......................................................................................76
`
`Claim 10 ....................................................................................78
`
`D. Ground 4: Claims 7 and 8 Would Have Been Obvious Over
`Ditzik, Tchorzewski, Roberts, and Campbell ......................................81
`
`1.
`
`2.
`
`Overview of Campbell ..............................................................81
`
`Claim 7: “The system of claim 1, wherein the system is
`configured to select the particular user message model
`based at least in part on an identifying signal received
`from the microphone.” ..............................................................81
`
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`3.
`
`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
`
`Claim 8: “The system of claim 7, wherein the system is
`configured to access the particular user message model
`via a wide area network.” ..........................................................84
`
`E.
`
`Ground 5: Claims 1, 2, 4, 12, 13, 16, 19 Would Have Been
`Obvious Over Root, Roberts, and Lewis .............................................84
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`7.
`
`8.
`
`Overview of Root ......................................................................84
`
`Overview of Lewis ....................................................................85
`
`Claim 1 ......................................................................................85
`
`Claim 2 ......................................................................................97
`
`Claim 4: “The system of claim 1, wherein the system is
`further configured to train the particular user message
`model by updating the acoustic model.” ...................................99
`
`Claim 12: “The system of claim 1, wherein the particular
`user message model includes user-specific acoustic
`model information and user-specific handwriting model
`information.” ...........................................................................100
`
`Claim 13 ..................................................................................101
`
`Claim 16: “The method according to claim 13, further
`comprising training the selected user message model.” .........103
`
`9.
`
`Claim 19 ..................................................................................104
`
`F.
`
`Ground 6: Claims 3, 5, 6, 11, and 14 Would Have Been
`Rendered Obvious Over Root, Roberts, Lewis, and Verrier .............107
`
`1.
`
`2.
`
`3.
`
`Claim 3: “The system of claim 2 wherein the microphone
`is housed in the stylus.” ..........................................................107
`
`Claim 5: “The system of claim 1, further comprising a
`proximity sensor configured to sense a proximity of a
`user to the microphone.” .........................................................108
`
`Claim 6: “The system of claim 1, further comprising an
`identification circuit configured to identify an owner of
`
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`the stylus, wherein the system is configured to select the
`particular user message model at least in part in response
`to the identification circuit.” ...................................................108
`
`4.
`
`5.
`
`Claim 11: “The system of claim 1, further comprising an
`activation circuit configured to sense movement of the
`stylus toward the tablet surface, wherein the system is
`further configured to receive the freehand input in
`response to the activation circuit sensing the movement.” .....109
`
`Claim 14: “The method according to claim 13, further
`comprising switching from receiving audio input to
`receiving freehand input in response to detecting
`movement of the stylus towards a tablet.” ..............................109
`
`G. Ground 7: Claims 9 and 10 Would Have Been Obvious Over
`Root, Roberts, Lewis, and Bellegarda ...............................................110
`
`1.
`
`Claim 9: “The system of claim 1, wherein the system
`adjusting the language model includes adjusting a
`syntactic model and a semantic model included in the
`language model.” ....................................................................110
`
`2.
`
`Claim 10 ..................................................................................110
`
`H. Ground 8: Claims 7, 8, and 15 Would Have Been Obvious Over
`Root, Roberts, Lewis, and Campbell .................................................111
`
`1.
`
`2.
`
`3.
`
`Claim 7: “The system of claim 1, wherein the system is
`configured to select the particular user message model
`based at least in part on an identifying signal received
`from the microphone.” ............................................................111
`
`Claim 8: “The system of claim 7, wherein the system is
`configured to access the particular user message model
`via a wide area network.” ........................................................111
`
`Claim 15: “The method according to claim 13, further
`comprising accessing the selected user message model
`via a network.” ........................................................................113
`
`X.
`
`Conclusion ...................................................................................................114
`
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`’737 PATENT CLAIMS
`
`1. A system for generating text responsive to voice and handwriting
`input, comprising:
`
`
`a tablet surface, wherein the system is configured to receive
`freehand input based at least in part on manipulation of a stylus
`relative to the tablet surface; and
`
` a
`
` microphone for receiving voice input;
`wherein the system is configured to:
`
`select a particular user message model from a plurality of user
`message models;
`
`adjust a language model of a local message model based at least
`in part on the particular user message model, wherein the local
`message model includes the language model, a handwriting
`model, and an acoustic model;
`
`generate text data based at least in part on the freehand input,
`the adjusted language model, and the handwriting model; and
`
`generate text data based at least in part on the voice input, the
`adjusted language model, and the acoustic model.
`
`2. The system of claim 1, wherein the system is further configured to:
`identify information relating to a particular user;
`
`
`wherein the particular user message model is selected based at
`least in part on the information relating to the particular user;
`and,
`
`wherein the plurality of user message models includes two or
`more user message models corresponding to users that are
`different from the particular user.
`
`
`v
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`3. The system of claim 2 wherein the microphone is housed in the
`stylus.
`
`4. The system of claim 1, wherein the system is further configured to
`train the particular user message model by updating the acoustic
`model.
`
`5. The system of claim 1, further comprising a proximity sensor
`configured to sense a proximity of a user to the microphone.
`
`6. The system of claim 1, further comprising an identification circuit
`configured to identify an owner of the stylus, wherein the system is
`configured to select the particular user message model at least in part
`in response to the identification circuit.
`
`7. The system of claim 1, wherein the system is configured to select
`the particular user message model based at least in part on an
`identifying signal received from the microphone.
`
`8. The system of claim 7, wherein the system is configured to access
`the particular user message model via a wide area network.
`
`9. The system of claim 1, wherein the system adjusting the language
`model includes adjusting a syntactic model and a semantic model
`included in the-language model.
`
`10. The system of claim 9, wherein the semantic model comprises at
`least one semantic cluster selected from the group consisting of:
`
`
`a semantic cluster of a first type that is a mathematically
`derived group of vectors representing text segments;
`a semantic cluster of a second type that is a discrete grouping of
`text having a particular context; and
`a semantic cluster of a third type that is defined with respect to
`an individual reference word that is indicative of a particular
`context.
`
`11. The system of claim 1, further comprising an activation circuit
`configured to sense movement of the stylus toward the tablet surface,
`
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`wherein the system is further configured to receive the freehand input
`in response to the activation circuit sensing the movement.
`
`12. The system of claim 1, wherein the particular user message model
`includes user-specific acoustic model information and user-specific
`handwriting model information.
`
`13. A method, comprising:
`
`
`receiving, at a device, freehand input based at least in part on
`manipulation of a stylus;
`
`receiving, at the device, audio input based at least in part on
`information received at a microphone;
`
`
`
`selecting, via the device, a selected user message model from a
`plurality of user message models;
`
`adjusting, via the device, a language model of a local message
`model, wherein the local message model includes the language
`model, a handwriting model, and an acoustic model, wherein
`the adjusting the language model is based at least in part on the
`selected user message model;
`
`generating, by the device, converted handwriting text data
`based at least in part on the freehand input, the adjusted
`language model, and the handwriting model; and
`
`generating, by the device, converted speech text data based at
`least in part on the audio input, the adjusted language model,
`and the acoustic model.
`
`14. The method according to claim 13, further comprising switching
`from receiving audio input to receiving freehand input in response to
`detecting movement of the stylus towards a tablet.
`
`15. The method according to claim 13, further comprising accessing
`the selected user message model via a network.
`
`
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
`
`16. The method according to claim 13, further comprising training the
`selected user message model.
`
`19. An article of manufacture including a non-transitory computer-
`readable medium having stored thereon instructions executable by a
`computing device to cause the computing device to perform
`operations comprising:
`
`
`receiving freehand input based at least in part on manipulation
`of a stylus;
`
`receiving audio input based at least in part on information
`received at a microphone;
`
`selecting a particular user message model from a plurality of
`user message models;
`
`adjusting a language model of a local message model based at
`least in part on the particular user message model, the local
`message model including the language model, a handwriting
`model and an acoustic model;
`
`generating converted handwriting text data based at least in part
`on the freehand input, on the adjusted language model, and on
`the handwriting model; and
`
`generating converted speech text data based at least in part on
`the audio input, on the adjusted language model, and on the
`acoustic model.
`
`
`
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`
`
`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
`
`I.
`
`INTRODUCTION
`
`1.
`
`I, Christopher Schmandt, submit this declaration to state my opinions
`
`on the matters described below.
`
`2.
`
`I have been retained on behalf of Google LLC to serve as an expert in
`
`this proceeding before the United States Patent & Trademark Office.
`
`3.
`
`I am over 21 years of age and, if I am called upon to do so, I would be
`
`competent to testify as to the matters set forth herein.
`
`4. My compensation is in no way contingent on the nature of my
`
`findings, the presentation of my findings in testimony, or the outcome of any
`
`proceeding.
`
`5.
`
`I understand that this proceeding involves U.S. Patent No. 8,204,737
`
`which is entitled “Message Recognition Using Shared Language Model” (“the
`
`’737 patent”), and I have been asked to provide my opinions as to the patentability
`
`or unpatentability of the claims of the ’737 patent.
`
`6.
`
`I understand the ’737 patent has been provided for as Ex. 1001. I have
`
`reviewed and am familiar with the ’737 patent. I understand that the file history has
`
`been provided as Ex. 1002. I have reviewed and am familiar with the file history of
`
`the ’737 patent.
`
`1
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`This declaration sets forth my opinions, which I formed based on my
`
`7.
`
`study of the evidence; my understanding as an expert in the field; and my training,
`
`education, research, knowledge, and personal and professional experience.
`
`8.
`
`Throughout this declaration, I refer to specific pages, figures, and/or
`
`line numbers of various exhibits. These citations are illustrative and are not
`
`intended to suggest that they are the only support for the propositions for which
`
`they are cited.
`
`II. QUALIFICATIONS
`
`9.
`
`I retired four years ago after a 40-year career at the Massachusetts
`
`Institute of Technology (MIT); for most of that time I was employed as a Principal
`
`Research Scientist at the Media Laboratory. In that role I also served as faculty for
`
`the MIT Media Arts and Sciences academic program. I was a founder of the Media
`
`Laboratory, a research lab which now spans two buildings.
`
`10.
`
`I received my B.S. degree in Electrical Engineering and Computer
`
`Science from MIT in 1978, and my M.S. in Visual Studies (Computer Graphics)
`
`also from MIT the following year. I was employed at MIT since 1980, initially at
`
`the Architecture Machine Group which was an early computer graphics and
`
`interactive systems research Lab. In 1985, I helped found the Media Laboratory
`
`and continued to work there until retirement. I was director of a research group
`
`titled “Living Mobile.” My research spanned distributed communication and
`
`2
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`U.S. Patent No. 8,204,737
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`collaborative systems, with an emphasis on multi-media and user interfaces, with a
`
`strong focus on speech-based systems and portable devices. I have over 70
`
`published conference and journal papers and one book in the field of speech
`
`technology and user interaction.
`
`11. For the first fifteen years of my career, my research emphasized
`
`speech recognition and speech user interfaces. I built the first system utilizing
`
`multimodal user input – speech and gesture – starting in 1980 (“Put That There”);
`
`this remains known as seminal work in the field. Put That There was also the first
`
`conversational computer system utilizing speech recognition and synthesis to
`
`engage in a voice user interaction. I continued to innovate speech user interfaces
`
`using recognition, text-to-speech synthesis, and recorded audio in a wide variety of
`
`projects. I built one of the first graphical user interfaces for audio editing,
`
`employing text keyword recognition on voice memos in 1982 (Intelligent Ear). I
`
`built the first research-grade unified messaging system, which combined text and
`
`voice messages into a single inbox, with speech recognition over the phone for
`
`remote access, and a graphical user interface for desktop access in 1983 (Phone
`
`Slave). I built a speech recognizer to detect acoustic correlates of mouth
`
`configuration to drive a real time animated character (Lip Sync, 1983). Along with
`
`my students we built the first system for real time spoken driving directions,
`
`including speech-accessible maps of Cambridge, Massachusetts in 1987 (Back
`
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`U.S. Patent No. 8,204,737
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`Seat Driver). We built some of the earliest speech-based personal assistants for
`
`managing messages, calendar, contacts, etc. (Conversational Desktop 1985,
`
`Chatter 1993, MailCall 1996). We applied speech recognition to large bodies of
`
`everyday conversations captured with a wearable device and utilized as a memory
`
`aid (Memory Prosthesis 2004). We used speech recognition on radio newscasts to
`
`build a personalized version of audio newscasts (Synthetic News Radio, 1999) and
`
`also investigated adding speech recognition to a mouse-based window system a
`
`few years earlier.
`
`12. With the appearance of handheld devices, some of which were
`
`capable of recognizing hand writing, I used and built applications for these. The
`
`first was the Apple Newton, for which we built a voice based reminder system with
`
`multiple “to do” categories and time compressed speech playback (VoiceNotes,
`
`1992). We built quite a few systems employing speech recognition in handheld
`
`mobile devices (ComMotion 1999, Nomadic Radio 2000, Impromptu 2001, and
`
`Symphony 2004, for example). We applied speech recognition to large bodies of
`
`everyday conversations captured with a wearable device and utilized as a memory
`
`aid (Memory Prosthesis 2004). In this context we worked with devices such as the
`
`Palm Pilot, which used Graffiti for handwriting recognition, the HP Ipaq handheld
`
`computer, pagers, flip phones, and finally smart phones.
`
`4
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`I was later awarded the prestigious Association for Computing
`
`13.
`
`Machinery (ACM) Computer Human Interface (CHI) Academy membership
`
`specifically for those years of work pioneering speech user interfaces.
`
`14.
`
`In the course of my research, I built a number of speech recognition
`
`client/server distributed systems, with the first being in 1985. Much of the initial
`
`motivation for a server architecture was that speech recognition required expensive
`
`digital signal processing hardware that we could not afford to put on each
`
`computer, so a central server with the required hardware was used. Later versions
`
`of the speech recognition server architecture allowed certain computers to perform
`
`specialized tasks serving a number of client computers providing voice user
`
`interfaces, either on screens or over telephone connections.
`
`15. Because of my early work with distributed speech systems, I served
`
`for several years in the mid-1990s with a working group on the impact of
`
`multimedia systems on the Internet reporting to the Internet Engineering Task
`
`Force (IETF) and later the Internet Activities Board (IAB). This work impacted
`
`emerging standards such as Session Initiation Protocol (SIP).
`
`16.
`
`In my faculty position I taught graduate level courses in speech
`
`technology and user interaction design, and directly supervised student research
`
`and theses at the Bachelors, Masters, and PhD level. I oversaw the Masters and
`
`PhD thesis programs for the entire Media Arts and Sciences academic program
`
`5
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`during my more senior years. I also served on the Media Laboratory intellectual
`
`property committee for many years, including a period during which I was the
`
`chair.
`
`III. MATERIALS CONSIDERED
`
`17.
`
`In forming my opinions, I have reviewed the following documents,
`
`and any other document cited in this declaration:
`
`Exhibit
`
`Description
`
`Ex. 1001 U.S. Patent No. 8,204,737 to Suominen (“the ’737 patent”)
`
`Ex. 1002 Prosecution History of U.S. Patent No. 8,204,737
`
`Ex. 1005 U.S. Patent No. 6,167,376 to Ditzik (“Ditzik”)
`
`Ex. 1006 U.S. Patent No. 5,027,406 to Roberts (“Roberts”)
`
`Ex. 1007 Canadian Patent No. 1,335,002 (“Tchorzewski”)
`
`Ex. 1008
`
`European Patent Application Publication No. 0 622 724 A2
`(“Verrier”)
`
`Ex. 1009
`
`Bellegarda, et al., “A Novel Word Clustering Algorithm Based on
`Latent Semantic Analysis,” IEEE, 1996 (“Bellegarda”)
`
`Ex. 1010
`
`Campbell, “Speaker Recognition: A Tutorial,” IEEE, 1997
`(“Campbell”)
`
`Ex. 1011 U.S. Patent No. 5,600,781 to Root (“Root”)
`
`Ex. 1012 U.S. Patent Publication No. 2001/0053978 (“Lewis”)
`
`Ex. 1013 A. Waibel et al., “Multimodal Interfaces for Multimedia Information
`Agents,” IEEE (1997) (“Waibel”)
`
`6
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
`
`Exhibit
`
`Description
`
`Ex. 1014 Vo et al., “Building and Application Framework for Speech and Pen
`Input Integration in Multimodal Learning Interfaces,” Proc. ICASSP
`’96 (Atlanta, GA) (“Vo”)
`
`Ex. 1015 S. Manke et al., “The Use of Dynamic Writing Information in a
`Connectionist On-Line Cursive Handwriting Recognition System,”
`Advances in Neural Information Processing Systems 6, Morgan
`Kaufmann, 1994 (“Manke”)
`
`Ex. 1016 B. Suhm et al., “JANUS: Towards Multilingual Spoken Language
`Translation,” Proc. ARPA SLT Workshop 95 (Austin, Texas)
`(“Suhm”)
`
`Ex. 1017 U.S. Patent No. 5,857,099 (“Mitchell”)
`
`Ex. 1018 U.S. Patent No. 5,839,106 (“’106 patent”)
`
`Ex. 1021 U.S. Patent No. 5,459,798 (“Bailey”)
`
`Ex. 1026 Starner et al. “On-Line Cursive Handwriting Recognition Using
`Speech Recognition Methods” Proceedings of ICASSP '94. IEEE
`International Conference on Acoustics, Speech and Signal
`Processing, 1994 (“Starner”)
`
`
`
`18.
`
`I have also relied on my education, experience, research, training, and
`
`knowledge in the relevant art, and my understanding of any applicable legal
`
`principles described in this declaration.
`
`19. All of the opinions contained in this declaration are based on the
`
`documents I reviewed and my knowledge and professional judgment. My opinions
`
`have also been guided by my understanding of how a person of ordinary skill in the
`
`art would have understood the claims of the ’737 patent at the time of the alleged
`
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`invention. For purposes of this declaration, I have been asked to assume that the
`
`date of the alleged invention is the earliest claimed priority date: July 17, 1999.
`
`20.
`
`I reserve the right to supplement and amend any of my opinions in
`
`this declaration based on documents, testimony, and other information that
`
`becomes available to me after the date of this declaration.
`
`IV. LEGAL STANDARDS
`
`21. For purposes of this declaration, I have been asked to opine only on
`
`issues regarding obviousness under 35 U.S.C. § 103. I have been informed of the
`
`following legal standards, which I have applied in forming my opinions.
`
`22.
`
`I have been asked to provide my opinions as to whether the cited prior
`
`art teaches or renders obvious claims 1-16 and 19 of the ’737 patent from the
`
`perspective of a person of ordinary skill in the art at the ’737 patent’s priority date
`
`in 1999, as described in more detail below.
`
`23. For purposes of this declaration, I have been informed and understand
`
`certain aspects of the law as it relates to my opinions.
`
`24.
`
`I have been advised and understand that there are two ways in which
`
`prior art may render a patent claim unpatentable. First, I have been advised that the
`
`prior art can “anticipate” a claim. Second, I have been advised that the prior art can
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`make a claim “obvious” to a person of ordinary skill in the art. I understand that for
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`an invention claimed in a patent to be patentable, it must not be anticipated and
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`must not be obvious based on what was known before the invention was made.
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`25.
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`I have been advised and understand the information used to evaluate
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`whether an invention was new and not obvious when made is generally referred to
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`as “prior art.” I understand that prior art includes patents and printed publications
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`that existed before the earliest filing date of the patent (which I have been informed
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`is also called the “effective filing date”). I have been informed and understand that
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`a patent or published patent application is prior art if it was filed before the earliest
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`filing date of the claimed invention and that a printed publication is prior art if it
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`was publicly available before the earliest filing date.
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`26.
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`I have been advised and understand that a dependent claim is a patent
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`claim that refers back to another patent claim. I have been informed and
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`understand that a dependent claim includes all of the limitations of the claim to
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`which it refers.
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`27.
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`I have been advised and understand that a patent claim may be invalid
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`as obvious under 35 U.S.C. § 103 if the differences between the subject matter
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`claimed and the prior art are such that the claimed subject matter as a whole would
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`have been obvious to a person of ordinary skill in the art at the time the invention
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`was made. I have also been advised that several factual inquiries underlie a
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`determination of obviousness. These inquiries include (1) the scope and content of
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`Declaration of Christopher Schmandt
`U.S. Patent No. 8,204,737
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`the prior art, (2) the level of ordinary skill in the field of the invention, (3) the
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`differences between the claimed invention and the prior art, and (4) any objective
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`evidence of non-obviousness (which I have been informed may also be called
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`“secondary considerations”).
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`28.
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`I have also been advised and understand that, when obviousness is
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`based on a combination of references, that party must identify a reason why a
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`person skilled in the art would have been motivated to combine or modify the
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`asserted references in the manner recited in the claims and to explain why one
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`skilled in the art would have had a reasonable expectation of success in making
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`such combinations or modifications.
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`29.
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`I have been advised and understand that the law permits the
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`application of “common sense” in examining whether a claimed invention would
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`have been obvious to a person skilled in the art. For example, I have been advised
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`that combining familiar elements according to known methods and in a predictable
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`way may suggest obviousness when such a combination would yield nothing more
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`than predictable results. I understand, however, that a claim is not obvious merely
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`because every claim element is disclosed in the prior art and that a party asserting
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`obviousness must still provide a specific motivation to combine or modify the
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`references as recited in the claims and explain why one skilled in the art would
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`have reasonably expected to succeed in doing so.
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`U.S. Patent No. 8,204,737
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`I have been advised and understand that two references are considered
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`30.
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`to be in the same field of art when the references are either (1) in the same field of
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`endeavor, regardless of the problems they address, or (2) reasonably pertinent to
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`the particular problem being solved by the inventor in his patent.
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`31.
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`I am not aware of any evidence of secondary considerations that
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`would support a determination of non-obviousness of the claimed subject matter in
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`the ’737 patent.
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`32.
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` I have been informed that in inter partes review proceedings, such as
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`this one, the party challenging the patent bears the burden of proving
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`unpatentability by a preponderance of the evidence. I understand that a
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`preponderance of the evidence means “more likely than not.”
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`33.
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`In rendering the opinions set forth in this declaration, I have been
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`asked to consider the ’737 patent’s claims and the prior art through the eyes of a
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`person of ordinary skill in the art (which I may also refer to as “one skilled in the
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`art,” “skilled artisan,” “POSITA,” or similar variation). I have considered factors
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`such as the educational level and years of experience of those working in the
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`pertinent art, the types of problems encountered in the art, the teachings of the
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`prior art, patents and publications of other persons or companies, and the
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`sophistication of the technology.
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`U.S. Patent No. 8,204,737
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`I have been instructed to assume a person of ordinary skill in the art is
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`34.
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`not a specific real individual, but rather a hypothetical individual having the
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`qualities reflected by the factors discussed above.
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`35. Taking these factors into consideration, it is my opinion that a person
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`of ordinary skill in the art of the ’737 paten