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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`AMERICAN AIRLINES, INC. AND SOUTHWEST AIRLINES CO.,
`
`Petitioners,
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`
`Patent Owner.
`
`
`
`
`
`
`
`
`
`IPR2025-00785
`
`PATENT NO. 7,257,582
`
`
`
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`
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`
`
`DECLARATION OF MICHAEL IAN SHAMOS, PH.D., J.D.
`
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`
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND QUALIFICATIONS .................................................. 1
`I.
`II. MATERIALS CONSIDERED ........................................................................... 5
`III. SUMMARY OF OPINIONS .............................................................................. 8
`IV. LEGAL PRINCIPLES ........................................................................................ 8
`V. LEVEL OF ORDINARY SKILL IN THE ART .............................................. 14
`VI. CLAIM CONSTRUCTION .............................................................................. 16
`VII. BACKGROUND OF THE PRIOR ART .......................................................... 17
`A. Yarbrough (1960) (EX1009) ....................................................................... 17
`B. Baer (1973) (EX1010) ................................................................................. 19
`C. Quinn (1988) (EX1011) .............................................................................. 20
`D. Hu et al. (1989) (EX1012) ........................................................................... 21
`E. Hurson et al. (1989) (EX1013) .................................................................... 23
`F. Deo et al. (1991) (EX1014) ......................................................................... 25
`G. Xu et al. (1993) (EX1015) ........................................................................... 25
`H. Rüb (1995) (EX1016) .................................................................................. 26
`I.
`Kearsley et al. (1996) (EX1018) ................................................................. 27
`J.
`Blelloch et al. (1997) (EX1017) .................................................................. 28
`K. Koniges et al. (2000) (EX1019) .................................................................. 29
`L.
`Schwiegelshohn et al. (1998) (EX1021) ..................................................... 34
`M. Barkes et al. (1998) (EX1020) .................................................................... 35
`N. Chow et al. (2001) (EX1003) ...................................................................... 36
`O. Reiffin (2001) (EX1004) ............................................................................. 39
`P. Kurowski et al. (2011) (EX1005) ................................................................ 41
`Q. Conclusions Regarding the Prior Art .......................................................... 43
`VIII. THE CHALLENGED PATENT ................................................................. 43
`IX. Ground 1: Claims 1-14, Obvious over CHOW IN VIEW OF REIFFIN.......... 51
`A. Motivation to combine Reiffin (EX1004) with Chow (EX1003). .............. 51
`B. Claim 1 ........................................................................................................ 52
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`

`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`1.
`Preamble ................................................................................................... 53
`Limitation 1a ............................................................................................ 54
`2.
`Limitation 1b ............................................................................................ 56
`3.
`Limitation 1c ............................................................................................ 58
`4.
`Limitation 1d ............................................................................................ 59
`5.
`Limitation 1e ............................................................................................ 60
`6.
`C. Claim 2 ........................................................................................................ 62
`D. Claim 3 ........................................................................................................ 64
`E. Claim 4 ........................................................................................................ 64
`F. Claim 5 ........................................................................................................ 66
`G. Claim 6 ........................................................................................................ 68
`H. Claim 7 ........................................................................................................ 69
`I.
`Claim 8 ........................................................................................................ 70
`J.
`Claim 9 ........................................................................................................ 71
`K. Claim 10 ...................................................................................................... 72
`L. Claim 11 ...................................................................................................... 73
`M. Claim 12 ...................................................................................................... 75
`N. Claim 13 ...................................................................................................... 77
`O. Claim 14 ...................................................................................................... 78
`X. Ground 2: Claims 1-4 were Obvious over CHOW IN VIEW OF REIFFIN,
`FURTHER IN VIEW OF KUROWSKI .................................................................. 80
`A. Motivation to Combine ............................................................................... 80
`B. Claim 1 ........................................................................................................ 82
`1.
`Limitation [1pre] ...................................................................................... 82
`A method of effecting on a preexisting input file a computer-executable
`process comprised of a plurality of subtasks, the method comprising the steps
`of: 82
`2.
`Limitation [1a] .......................................................................................... 83
`(a) automatically determining file allocation and logically subdividing records
`of said input file into a plurality of partitions; .................................................. 84
`3.
`Limitation [1b] ......................................................................................... 85
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`[1b] (b) distributing descriptions of all of said partitions to each of a plurality
`of subtask processors......................................................................................... 85
`4.
`Limitation [1c] .......................................................................................... 85
`[1c] (c) simultaneously executing at least a respective one of the subtasks of
`the computer-executable process in each of at least some of said processors on
`a respective one of the partitions with each subtask reading and processing the
`respective partition so as to process the respective partition and produce
`respective subtask output and; .......................................................................... 86
`5.
`Limitation [1d] ......................................................................................... 87
`[1d] (d) thereafter repeating step (c) in at least some of the subtask processors
`each with another unprocessed partition on a first-come/first-served basis; and
`
`87
`6.
`Limitation [1e] .......................................................................................... 88
`[1e] (e) generating at least one output combining all of the subtask outputs and
`reflecting the processing of all of said subtasks ................................................ 88
`7. Claim 2: .................................................................................................... 89
`2. The method defined in claim 1 wherein the automatic determination of file
`allocation and logical subdivision of records of said input file into said
`plurality of partitions in step (a) and the distribution of the description of all of
`said partitions in step (b) is carried out with at least one further processor in
`addition to the subtask processors. .................................................................... 89
`8. Claims 3-14 .............................................................................................. 90
`XI. CONCLUDING STATEMENT ....................................................................... 91
`XII. JURAT .............................................................................................................. 91
`
`
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`
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`I, Michael I. Shamos, declare as follows.
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`I have been retained by McKool Smith P.C. on behalf of Petitioners
`
`American Airlines. Inc. (“American”) and Southwest Airlines Co. (“Southwest”)
`
`(collectively “Petitioners”) to provide my opinions concerning the validity of claims
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`1-14 (the “Challenged Claims”), constituting all claims of U.S. Patent No. 7,257,582
`
`(“’582 Patent,” or the “Patent,” EX1001) in support of Petitioners’ Petition for Inter
`
`Partes Review of the ’582 Patent (the “Petition”).
`
`2.
`
`I have been retained as an independent expert consultant in this
`
`proceeding before the United States Patent and Trademark Office. Although I am
`
`being compensated at my rate of $625.00 per hour for the time I spend on this matter,
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`no part of my compensation depends on the outcome of this proceeding, and I have
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`no other interest in this proceeding, any of the parties, or the subject patent.
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`3.
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`A detailed description of my professional qualifications, including a
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`listing of my specialties/expertise and professional activities and publications, is
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`contained in my curriculum vitae, a copy of which is provided as EX1019. Below is
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`a short summary of my professional qualifications.
`
`4.
`
`I received an A.B. (1968) from Princeton University in Physics; a M.A.
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`(1970) from Vassar College in Physics; a M.S. (1972) from American University in
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`Technology of Management, a field that covers quantitative tools used in managing
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`1
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`organizations, such as statistics, operations research and cost-benefit analysis; a M.S.
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`(1973), and M.Phil. (1974) and a Ph.D. (1974) from Yale University in Computer
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`Science; and a J.D. (1981) from Duquesne University.
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`5.
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`I currently hold the title of Distinguished Career Professor in the School
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`of Computer Science at Carnegie Mellon University in Pittsburgh, Pennsylvania. I
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`am a member of two departments in that School, the Software and Societal Systems
`
`Department and the Language Technologies Institute. I was a founder and Co-
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`Director of the Institute for eCommerce at Carnegie Mellon from 1998-2004 and
`
`from 2004-2018 was Director of the eBusiness Technology graduate program in the
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`Carnegie Mellon University School of Computer Science. Since 2018, I have been
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`Director of the M.S. in Artificial Intelligence and Innovation degree program at
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`Carnegie Mellon.
`
`6.
`
`I have taught graduate courses at Carnegie Mellon in Electronic
`
`Commerce, including eCommerce Technology, Electronic Payment Systems,
`
`Electronic Voting, Internet of Things, Electronic Payment Systems and eCommerce
`
`Law and Regulation, as well as Analysis of Algorithms. Since 2007 I have taught an
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`annual course in Law of Computer Technology. I currently also teach Artificial
`
`Intelligence and Future Markets.
`
`2
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`I am the author and lecturer in a 24-hour video course on Internet
`
`7.
`
`protocols and have taught computer networking, wireless communication, and
`
`Internet architecture since 1999.
`
`8.
`
`From 2001-2021, I was a Visiting Professor at the University of Hong
`
`Kong, where I taught an annual course in Electronic Payment Systems. This is one
`
`of only a handful of graduate courses taught on this subject in the world.
`
`9.
`
`I was the Director of Carnegie Mellon’s graduate degree program in
`
`eBusiness Technology from 1999-2018 and am now a faculty member in the Privacy
`
`Engineering degree program at Carnegie Mellon. My course on Law of Computer
`
`Technology is required for all students in that program, the M.S. in Artificial
`
`Intelligence and Innovation program and in the Societal Computing Ph.D. program.
`
`10. From 1979-1987, I was the founder and president of two computer
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`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and
`
`Lexeme Corporation.
`
`11.
`
`I am an attorney admitted to practice in Pennsylvania and have been
`
`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have been
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`asked to render opinions in this Declaration as a technical expert. I have not been
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`asked to offer any opinions on patent law in this proceeding.
`
`3
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`I am a named co-inventor on the following six issued patents relating
`
`12.
`
`to electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278, 7,747,465,
`
`8,195,197, 8,280,773, and 9,456,299.
`
`13.
`
`I have previously served as an expert in over 400 cases concerning
`
`computer technology.
`
`14.
`
`I am aware of contemporaneous litigation involving the parties in two
`
`cases, styled Intellectual Ventures I LLC et al. v. American Airlines, Inc., 4:24-cv-
`
`980-ALM (E.D. Texas) and Intellectual Ventures I LLC et al. v. Southwest Airlines
`
`Co., No. 7:24-cv-277 (W.D. Tex. Nov. 2, 2024) (the “Litigations”).
`
`15. This IPR petition involves the ’582 Patent, which was filed on February
`
`27, 2003 and entitled “Load Balancing with Shared Data.” The Patent claims
`
`priority to U.S. Provisional Patent Application 60/363,853 (the “’853 Provisional”),
`
`filed March 13, 2002. The term of the Patent was extended by 912 days, so it will
`
`expire on August 27. 2025.
`
`16.
`
`I have been asked to assume, for purposes of this IPR proceeding only,
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`that the claims of the Patent are all entitled to a Priority Date of March 13, 2002,
`
`although it is apparent from an inspection of the one-page ’853 Provisional
`
`application that it does not support any Challenged Claim.
`
`17.
`
`I have no financial interest in Patent Owner or the ’582 Patent. It is
`
`conceivable that I may own mutual funds whose portfolios include stock in one or
`
`4
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`more Petitioners. If this is the case, the value of such holding would not constitute
`
`a material part of my net worth.
`
`18. The statements made and opinions provided in this Declaration are
`
`based on my own personal knowledge and, if called as a witness, I could and would
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`testify in a manner consistent with this Declaration.
`
`19.
`
`In this Declaration, all emphasis has been added unless otherwise noted.
`
`II. MATERIALS CONSIDERED
`20.
`In forming my opinions, I have reviewed and am familiar with the ’582
`
`patent and its prosecution history, the materials cited herein, and the following
`
`exhibits to the Petition.
`
`Exhibit
`No.
`1001 U.S. Patent No. 7,257,582 to Michael Rothschild
`
`Description
`
`1002 Prosecution history of the ’582 Patent
`
`1003 U.S. Patent No. 6,304,866 to Chow et al. (Chow)
`
`1004 U.S. Patent No. 6,330,583 to Reiffin (Reiffin)
`
`1005 U.S. Patent Application No. 2002/0019844 of Kurowski et al.
`(Kurowski)
`
`1006 Complaint in Intellectual Ventures I LLC et al. v. American Airlines,
`Inc., No. 4:24-cv-980-ALM (E.D. Tex. Nov. 2, 2024)
`
`1007 Claim Chart for ’582 Patent, Intellectual Ventures I LLC et al. v.
`American Airline, Inc., No. 4:24-cv-980-ALM (E.D. Tex. Nov. 2, 2024)
`(Dkt. 1-14) (Hadoop)
`
`5
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`
`Exhibit
`No.
`1008 Claim Chart for ’582 Patent, Intellectual Ventures I LLC et al. v.
`American Airline, Inc., No. 4:24-cv-980-ALM (E.D. Tex. Nov. 2, 2024)
`(Dkt. 1-15) (Spark)
`
`Description
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`“Some Thoughts on Parallel Processing,” Lynn D. Yarbough,
`Communications of the ACM, Vol. 3, Issue 10, page 539, October 1,
`1960 (available at: https://dl.acm.org/doi/10.1145/367415.367426).
`“A Survey of Some Theoretical Aspects of Multiprocessing,” J. L. Baer,
`ACM Computing Surveys (CSUR), Volume 5, Issue 1, Pages 31 – 80,
`March 1, 1973 (available at:
`https://dl.acm.org/doi/10.1145/356612.356615)
`“Parallel Sorting Algorithms for Tightly Coupled Multiprocessors,”
`Michael J. Quinn, Parallel Computing 6 (1988) 349-357.
`
`“Removing Skew Effect in Join Operation on Parallel Processors,” Ron-
`Chung Hu, Richard R. Muntz, Computer Science Technical Report,
`University of California, Los Angeles, June 1989.
`
`“Parallel Architectures for Database Systems,” A.R. Hurson, L.L. Miller,
`S.H. Pakzad, M.H. Eich, B. Shirazi, Advances in Computers, Vol. 28,
`pages 107-151, 1989.
`
`“Parallel Algorithms for Merging and Sorting,” Narsingh Deo, Dilip
`SarKar, Information Sciences, Vol. 56, pages 151-161, 1991.
`
`“Parallel Algorithms for lcast Median of Squares Regression,” Chong-
`Wei Xu and Wei-Kei Shiue, Computational Statistics & Data Analysis,
`Vol. 16, pages 349-362, 1993.
`
`“On the Average Running Time of Odd-Even Merge Sort,” Christine
`Rub, Max Plank-Institute Fur Informtik, Research Report, April 1995.
`
`“Parallel Algorithms,” Guy E. Blelloch and Bruce M. Maggs, a chapter
`in “The Computer Science and Engineering Handbook.” CRC Press,
`1997, ISBN: 0-8493-2909-4. Available at
`https://dl.acm.org/doi/pdf/10.5555/1882723.1882748.
`
`6
`
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`Exhibit
`No.
`1018
`
`1019
`
`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`
`Description
`
`“An Approach to Parallelizing Isotonic Regression,” Anthony J.
`Kearsley, Richard A. Tapia, Michael W.Trosset, Applied Mathematics
`and Parallel Computing, H. Fisher et. al. (eds.), Physica-Verlag
`Heidelberg (1996), pages 141-147.
`
`“Part 1: The Parallel Computing Environment, Alice E. Koniges, Morris
`A. Jette, and David C. Eder, in “Industrial Strength Parallel Computing,”
`Morgan Kaufmann, (2000). ISBN 9781558605404. Available at:
`http://wayback.cecm.sfu.ca/PSG/book/intro.html and at
`https://books.google.com/books?id=mWalawBciCQC&pg=PA1&source
`=gbs_toc_r&cad=2#v=onepage&q&f=false.
`
`1020 GPFS: A Parallel File System, Jason Barkes, Marcelo R. Barrios, Francis
`Cougard, Paul G. Crumley, Didac Marin, Hari Reddy, Theerapong
`Thitayanun, IBM International Technical Support Organization, April
`1998.
`
`1021
`
`“Analysis of First-Come-First-Serve Parallel Job Scheduling,” Uwe
`Schwiegelshohn and Ramin Yahyapour. Proceedings of the Annual
`ACM-SIAM Symposium on Discrete Algorithms (1998). Available at
`http://dx.doi.org/10.1145/314613.315031.
`
`1022 This Declaration
`
`1023 CV of Dr. Michael Shamos
`
`1024 Claim Chart for ’582 Patent, Intellectual Ventures I LLC et al. v.
`Southwest Airlines Co., No. 7:24-cv-277 (W.D. Tex. Nov. 2, 2024) (Dkt.
`1-14) (Hadoop)
`
`1025 Claim Chart for ’582 Patent, Intellectual Ventures I LLC et al. v.
`Southwest Airlines Co., No. 7:24-cv-277 (W.D. Tex. Nov. 2, 2024) (Dkt.
`1-15) (Spark)
`
`21.
`
`I have also relied on my education, skill, training, and experience in the
`
`relevant fields of technology. I have further considered the viewpoint of a person of
`
`7
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`ordinary skill in the art (“POSITA”) in the subject matter of the ’582 Patent as of
`
`March 13, 2002.
`
`22.
`
`I reserve the right to supplement my opinions as expressed in this
`
`Declaration to address any new information obtained in the course of this
`
`proceeding, or based on any new positions taken by Patent Owner.
`
`III. SUMMARY OF OPINIONS
`23.
`It is my understanding that the following table summarizes the grounds
`
`of challenge (“Grounds”) raised in the Petition:
`
`References
`Grd. Sec.
`103 Chow (Ex.1003) in view of Reiffin
`1
`(Ex.1004)
`103 Chow (Ex.1003) in view of Reiffin
`(Ex.1004) and further in view of
`Kurowski (Ex.1005)
`
`2
`
`Challenged Claims
`1-14
`
`1-14
`
`24. After a review of the ’582 Patent and the prior art asserted by
`
`Petitioners, it is my opinion that the Challenged Claims are invalid under both
`
`Grounds. My opinions, and the bases therefor, are detailed throughout this
`
`Declaration.
`
`IV. LEGAL PRINCIPLES
`25. Counsel for Patent Owner has informed me of the legal principles that
`
`apply in this proceeding.
`
`26.
`
`I understand that a claim is unpatentable for obviousness under 35
`
`U.S.C. § 103 “if the differences between the subject matter sought to be patented
`
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`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.” Obviousness may be based upon a combination
`
`of references. Obviousness may also be based on a single reference combined with
`
`the knowledge of a person of ordinary skill in the art (“POSITA”) at the time the
`
`filing of the application that led to patent.
`
`27. A prior art reference can disclose a limitation that is not expressly
`
`disclosed in the reference if it is “inherently present” in the reference. I further
`
`understand that to be “inherently present,” the missing disclosure must necessarily
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`and inevitably be present in the element or process described in the reference. It is
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`my understanding that a limitation is not disclosed by inherency if the missing
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`limitation is only probably present or if there is merely a possibility that it is present.
`
`28. For a claim to be obvious in view of a combination of known elements,
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`there must be some apparent reason to combine the known elements in the fashion
`
`of the claim at issue by considering the teachings of prior art references, the effects
`
`of demands known to people working in the field or present in the marketplace, and
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`the background knowledge possessed by a POSITA. Identifying a reason the
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`elements should be combined is 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, was already known. The prior
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`art references themselves may provide a suggestion, motivation, or reason to
`
`combine, but the nexus linking two or more prior art references is sometimes simple
`
`common sense.
`
`29. 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 ordinary skill in the pertinent art; and (4) any objective
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`indicia of non-obviousness, such as commercial success, long-felt but unresolved
`
`need, failure of others, industry recognition, copying, and unexpected results.
`
`30. Such secondary considerations include: (a) commercial success of a
`
`product due to the merits of the claimed invention; (b) a long-felt, but unmet need
`
`for the invention; (c) failure of others to find the solution provided by the claimed
`
`invention; (d) deliberate copying of the invention by others; (e) unexpected results
`
`achieved by the invention; (f) praise of the invention by others skilled in the art; (g)
`
`the taking of licenses under the patent by others and (h) the patentee proceeded
`
`contrary to the accepted wisdom of the prior art. Secondary considerations are
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`relevant where there is a connection, or nexus, between the evidence and the claimed
`
`invention. I am not aware of any such objective evidence of non-obviousness of the
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`Challenged Claims at this time.
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`In addition, I understand that the obviousness inquiry should not be
`
`31.
`
`performed in hindsight, but must be performed using the perspective of a person of
`
`ordinary skill in the relevant art as of the effective filing date of the patent claims.
`
`32. Obviousness may also be shown by demonstrating that it would have
`
`been obvious to modify what is taught in a single piece of prior art to create the
`
`patented invention. Obviousness may be shown by establishing that it would have
`
`been obvious to combine the teachings of more than one item of prior art. In
`
`determining whether a piece of prior art could have been combined with other prior
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`art or with other information within the knowledge of one of ordinary skill in the art,
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`the following are examples of approaches and rationales that may be considered:
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`(A) Combining prior art elements according to known methods to yield predictable
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`results; (B) Simple substitution of one known element for another to obtain
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`predictable results; (C) Use of a known technique to improve similar devices
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`(methods, or products) in the same way; (D) Applying a known technique to a known
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`device (method, or product) ready for improvement to yield predictable results; (E)
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`Applying a technique or approach that would have been “obvious to try” (i.e.,
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`choosing from a finite number of identified, predictable solutions, with a reasonable
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`expectation of success); (F) Known work in one field of endeavor may prompt
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`variations of it for use in either the same field or a different one based on design
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`incentives or other market forces if the variations would have been predictable to
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`11
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`IPR2025-00785
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`one of ordinary skill in the art; or (G) Some teaching, suggestion, or motivation in
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`the prior art that would have led one of ordinary skill to modify the prior art reference
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`or to combine prior art reference teachings to arrive at the claimed invention. I also
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`understand this suggestion or motivation may come from such sources as explicit
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`statements in the prior art, or from the knowledge or common sense of one of
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`ordinary skill in the art.
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`33.
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`I understand that an invention that might be considered an obvious
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`variation or modification of the prior art may be considered non-obvious if one or
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`more prior art references discourages or lead away from the line of inquiry disclosed
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`in the reference(s). A reference does not “teach away” from an invention simply
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`because the reference suggests that another embodiment of the invention is better or
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`preferred. My understanding is that for a reference to teach away the reference must
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`clearly indicate that the combination should not be attempted (e.g., because it would
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`not work or explicit statement saying the combination should not be made).
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`34.
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`I further understand that obviousness must be determined in light of all
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`of the facts, and that there is no rule that if a reference teaches away a finding of
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`nonobviousness is mandated. I understand this to be the rule because, for example,
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`a given course of action often has simultaneous advantages and disadvantages, and
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`thus teaching away does not necessarily obviate motivation to combine. Thus, I
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`understand that where the prior art contains apparently conflicting teachings (for
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`12
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`example, where some references teach the combination and others teach away from
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`it) each reference must be considered for its power to suggest solutions to a POSITA
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`considering the degree to which one reference might accurately discredit another. I
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`am informed that the degree of teaching away depends upon the particular facts of
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`each circumstance and that rigid rules that prevent the application of common sense
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`are not mandated.
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`35.
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`I further understand that obviousness also requires that a POSITA
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`would have perceived that the proposed combination would have had a reasonable
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`expectation of success. I am informed that reasonable expectation of success does
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`not mean certainty of success. If a technique has been used to improve one device,
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`and a person of ordinary skill at the time of invention would have recognized that it
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`would improve similar devices in the same way, using the technique is obvious
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`unless its actual application is beyond their skill.
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`36. Practical and common-sense considerations should guide a proper
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`obviousness analysis, because familiar items may have obvious uses beyond their
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`primary purposes. A POSITA looking to overcome a problem will often be able to
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`fit together the teachings of multiple prior art references. An obviousness analysis
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`therefore takes into account the inferences and creative steps that a person of
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`ordinary skill would have employed at the time of invention.
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`13
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`37. A proper obviousness analysis focuses on what was known or obvious
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`to a POSITA at the time of invention, not to the patentee. Accordingly, 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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`38. Prior art teachings are properly combined if one of ordinary skill,
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`having the understanding and knowledge reflected in the prior art and motivated by
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`the general problem facing the inventor, would have been led to make the
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`combination of elements recited in the claims. Under this analysis, the prior art
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`references themselves, or any need or problem known in the field of endeavor at the
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`time of the invention, can provide a reason for combining the elements of multiple
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`prior art references in the claimed manner.
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`39.
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`I understand that in an inter partes review, the petitioner shall have the
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`burden of proving a proposition of unpatentability, including a proposition of
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`obviousness, by a preponderance of the evidence.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
`40.
`I understand that the Board will be asked to characterize a person
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`having ordinary skill in the art (“POSITA”) at the time the purported invention was
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`made. To make that determination, it is my understanding that the Board considers
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`the following factors: (i) the educational level of active workers in the field, (ii) the
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`type of problems encountered in the art, (iii) the prior art solutions to those problems,
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`14
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`Declaration of Michael I. Shamos
`U.S. Patent 7,257,582
`the rapidity with which innovations are made, and (v) the sophistication of the
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`technology in the art. It is my understanding