UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`IMMERSION SYSTEMS LLC,
`Petitioner,
`
`v.
`
`MIDAS GREEN TECHNOLOGIES, LLC,
`Patent Owner.
`
`
`Case No. PGR2021-00104
`Patent No. 10,820,446
`
`
`
`
`DECLARATION OF DR. ISSAM MUDAWAR
`
`
`
`59129485;1
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ............................................................................................. 1
`
`II. MATERIALS CONSIDERED ......................................................................... 2
`
`III. QUALIFICATIONS ...................................................................................... 5
`
`IV. LEGAL UNDERSTANDING ....................................................................... 8
`
`A. My Understanding of Claim Construction ...................................................... 8
`
`B. My Understanding of Anticipation and Obviousness ..................................... 9
`
`C. Determining the Level of Ordinary Skill in the Art ......................................13
`
`V. BACKGROUND OF THE TECHNOLOGY ...............................................14
`
`A. Brief Overview of Immersion Cooling Technology and Practice .................14
`
`VI. THE ‘446 PATENT .....................................................................................21
`
`A. Priority Date ...................................................................................................21
`
`B. Overview of the ‘446 Patent ..........................................................................24
`
`C. Level of Ordinary Skill in the Art .................................................................28
`
`D. The Challenged Claims .................................................................................30
`
`E. The Prosecution History ................................................................................30
`
`1. The November 4, 2016 Non-Final Office Action .......................................31
`
`2. Examiner Interview December 7, 2016. .....................................................33
`
`3. Applicant’s Response Dated January 31, 2017. ..........................................34
`
`4. Final Office Action Dated May 17, 2017 ....................................................36
`
`5. Examiner Interview July 6, 2017 ................................................................38
`
`6. Preliminary Amendment Dated August 24, 2017 .......................................38
`
`7. Non-Final Office Action Dated June 11, 2018 ...........................................41
`
`59129485;1
`
`ii
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`8. Notice of Allowance and Issuance ..............................................................42
`
`9. References and Combinations Not Considered by the Examiner ...............42
`
`F. Claim Construction ........................................................................................43
`
`VII. APPLICATION OF THE PRIOR ART TO THE CHALLENGED
`CLAIMS ..................................................................................................................44
`
`A. Grounds of Unpatentability ...........................................................................44
`
`B. Brief Summary of Prior Art ...........................................................................45
`
`1. Overview of Best (Exhibit 1006) ................................................................45
`
`2. Overview of Krajewski (Exhibit 1007) .......................................................52
`
`3. Overview of Cray (Exhibit 1008) ...............................................................55
`
`4. Overview of Oktay (Exhibit 1009) ..............................................................61
`
`5. Overview of Gryzhin (Exhibit 1011) ..........................................................65
`
`C. Ground 1: Claims 1, 5, 6, and 10 are rendered Obvious by Best in view of
`Krajewski and/or Cray. .........................................................................................72
`
`1. Claim 1 ........................................................................................................73
`
`(i) Preamble 1[pre]: “An appliance immersion cooling system comprising:”
`
`73
`
`(ii) Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances,” .................................................................75
`
`(iii) Limitation 1[b]: “each in a respective appliance slot distributed
`vertically along, and extending transverse to, a long wall of the tank,” .......76
`
`(iv) Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot;” ..............................................................................................79
`
`(v) Limitation 1[d]: “a primary circulation facility adapted to circulate the
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`
`59129485;1
`
`iii
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot;” .......................................84
`
`(vi) Limitation 1[e]: “a secondary fluid circulation facility adapted to extract
`heat from the dielectric fluid circulating in the primary circulation facility, and
`to dissipate to the environment the heat so extracted; and” ..........................87
`
`(vii) Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of
`temperature of the dielectric fluid in the tank.” .............................................89
`
`2. Claim 5: “The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ................................................91
`
`3. Claim 6 ........................................................................................................93
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ................................................94
`
`5. Rationale and Motivation to Combine Best with Krajewski or Cray .........95
`
`D. Ground 2: Claims 1, 5, 6, and 10 are rendered obvious by Best in Light of
`Oktay ...................................................................................................................103
`
`1. Claim 1 ......................................................................................................103
`
`system
`immersion cooling
`(i) Limitation 1[pre]: “An appliance
`comprising:” ................................................................................................103
`
`(ii) Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances” ................................................................104
`
`(iii) Limitation 1[b]: “each in a respective appliance slot distributed
`vertically along, and extending transverse to, a long wall of the tank” ......104
`
`(iv) Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot” .............................................................................................105
`
`(v) Limitation 1[d]: “a primary circulation facility adapted to circulate the
`
`59129485;1
`
`iv
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot” ......................................107
`
`(vi) Limitation 1[e]: “a secondary fluid circulation facility adapted to extract
`heat from the dielectric fluid circulating in the primary circulation facility, and
`to dissipate to the environment the heat so extracted” ................................107
`
`(vii) Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of the
`temperature of the dielectric fluid in the tank.” ...........................................107
`
`2. Claim 5: “5. The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ..............................................108
`
`3. Claim 6 ......................................................................................................109
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ..............................................110
`
`5. Rationale and Motivation to Combine Best with Oktay ...........................111
`
`E. Ground 3: Claims 1, 5, 6, and 10 are rendered obvious by Best in view of
`Grzyhin. ..............................................................................................................115
`
`1. Claim 1 ......................................................................................................116
`
`system
`immersion cooling
`(i) Limitation 1[pre]: “An appliance
`comprising:” ................................................................................................116
`
`(ii) Limitation 1[a]: “a tank adapted to immerse in a dielectric fluid a
`plurality of electrical appliances,” ...............................................................117
`
`(iii) Limitation 1[b]: “each in a respective appliance slot distributed
`vertically along, and extending transverse to, a long wall of the tank,” .....117
`
`(iv) Limitation 1[c]: “the tank comprising: a weir, integrated horizontally
`into the long wall of the tank adjacent all appliance slots, adapted to facilitate
`substantially uniform recovery of the dielectric fluid flowing through each
`appliance slot;” ............................................................................................119
`
`59129485;1
`
`v
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`(v) Limitation 1[d]: “a primary circulation facility adapted to circulate the
`dielectric fluid through the tank, comprising: a plenum, positioned adjacent
`the bottom of the tank, adapted to dispense the dielectric fluid substantially
`uniformly upwardly through each appliance slot;” .....................................121
`
`(vi) Limitation 1[e]: “a secondary fluid circulation facility adapted to extract
`heat from the dielectric fluid circulating in the primary circulation facility, and
`to dissipate to the environment the heat so extracted; and” ........................122
`
`(vii) Limitation 1[f]: “a control facility adapted to coordinate the operation
`of the primary and secondary fluid circulation facilities as a function of the
`temperature of the dielectric fluid in the tank.” ...........................................123
`
`2. Claim 5: “5. The system of claim 1 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ..............................................123
`
`3. Claim 6 ......................................................................................................124
`
`4. Claim 10: “10. The module of claim 6 wherein the control facility further
`comprises a communication facility adapted to facilitate monitoring and control
`of the control facility from a remote location.” ..............................................126
`
`5. Rationale and Motivation to Combine Best with Gryzhin ........................127
`
`F. Ground 4: Claims 1, 5, 6, and 10 are rendered obvious by Best. ................130
`
`G. Ground 5: Claims 1, 5, 6, and 10 are invalid as indefinite pursuant to 35 U.S.C.
`§112(b) ................................................................................................................132
`
`1. Prosecution History of the ‘457 Patent .....................................................132
`
`2. The Meaning and Difference Between a “Weir…adapted to facilitate
`substantially uniform recovery…” and a “Weir…having an overflow lip adapted
`to facilitate substantially uniform recovery…” is Not Reasonably Certain. ..138
`
`3. “adapted to facilitate substantially uniform recovery…” .........................140
`
`4. The Patent Owner’s Proposed Alternate Constructions ............................141
`
`H. Ground 6: Claims 1, 5, 6, and 10 are invalid for lack of written description
`pursuant to 35 U.S.C. §112(a) ............................................................................142
`
`59129485;1
`
`vi
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`VIII. SECONDARY CONSIDERATIONS ....................................................146
`
`IX. CONCLUSION ..........................................................................................147
`
`
`
`
`
`59129485;1
`
`vii
`
`

`

`I, Dr. Issam Mudawar, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Immersion Systems LLC (“Petitioner”), through my
`
`consulting business, Mudawar Thermal Systems, Inc. in connection with the above
`
`captioned post grant review (“PGR”) of Claims 1, 5, 6, and 10 of U.S. Patent No.
`
`10,820,446 (the “‘446 Patent”) entitled “Appliance Immersion Cooling System” by
`
`named inventors Christopher L. Boyd, James P. Koen, David Christopher Laguna,
`
`Thomas R. Turner, Kenneth D. Swinden, Mario Conti Garcia, and John Charles
`
`Tribou. I understand from counsel for Petitioner that the ‘446 Patent is a continuation
`
`of U.S. Patent No. 10,405,457 (the “‘457 Patent”).
`
`2.
`
`I understand that the ‘446 Patent purports to be assigned to Midas Green
`
`Technologies, LLC (the “Patent Owner”). I have been retained by Petitioner to
`
`provide technical review, analysis, insights, and opinions regarding the ‘446 Patent
`
`and the prior art references that form the basis for the grounds of unpatentability set
`
`forth in the Petition for Post Grant Review of the ‘446 Patent (the “Petition”).
`
`3.
`
`I make this declaration (“Declaration”) based upon my personal knowledge. I
`
`am over the age of eighteen and competent to make this Declaration.
`
`4.
`
`The statements herein include my opinions and the bases for those opinions,
`
`which relate to at least the Petition and associated exhibits.
`
`59129485;1
`
`1
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`5.
`
`I am being compensated for my time at my standard hourly consulting rate in
`
`2021 of $372.90 per hour, which is based upon a direct labor fee of $200 per hour
`
`and multiplied by the overhead and general and administrative rates approved by the
`
`Department of Defense Contract Audit Agency (DCAA) which I apply to all
`
`engagements.
`
`6.
`
`7.
`
`I do not have a conflict of interest with respect to Petitioner or Patent Owner.
`
`I reserve my right to offer additional opinions in other dispute venues.
`
`II. MATERIALS CONSIDERED
`
`8.
`
`The analysis that I provide in this Declaration is based on my education,
`
`research, and experiences, as well as the documents I have considered, including the
`
`‘446 Patent (Exhibit 1001) and its prosecution history (Exhibit 1021). I have
`
`reviewed and am familiar with the specification of the ‘446 Patent and its
`
`prosecution history. I have also reviewed and am familiar with the ‘457 Patent
`
`(Exhibit 1023) and its prosecution history (Exhibit 1002).
`
`9.
`
`In preparing this Declaration, I have also reviewed and am familiar with the
`
`following prior art used in the Petition and in my Declaration below:
`
`Exhibit 1006 – U.S Patent No. 10,123,463 to Best et. al. (“Best”) filed on
`
`August 10, 2009, published on February 18, 2011, and issued on November 6, 2018.
`
`I understand from counsel for Petitioner that Best qualifies as prior art under at least
`
`35 U.S.C. §§ 102(b) and 102(e) (pre-AIA).
`
`59129485;1
`
`2
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`Exhibit 1007 – U.S. Patent No. 5,167,511 to Krajewski et. al. (“Krajewski”)
`
`filed on November 27, 1990, and issued on December 1, 1992. I understand from
`
`counsel for Petitioner that Krajewski qualifies as prior art under at least 35 U.S.C.
`
`§§ 102(b) and 102(e) (pre-AIA).
`
`Exhibit 1008 – U.S. Patent No. 4,590,538 to Cray, Jr. (“Cray”) filed on
`
`November 18, 1982, and issued on May 20, 1986. I understand from counsel for
`
`Petitioner that Cray qualifies as prior art under at least 35 U.S.C. §§ 102(b) and
`
`102(e) (pre-AIA).
`
`Exhibit 1009 – U.S. Patent No. 3,406,244 to Oktay (“Oktay”) filed on June
`
`7, 1966, and issued on October 15, 1968. I understand from counsel for Petitioner
`
`that Oktay qualifies as prior art under at least 35 U.S.C. §§ 102(b) and 102(e) (pre-
`
`AIA).
`
`Exhibit 1011– Russian Federation Patent No. 2500013C1 to Gryzhin
`
`(“Gryzhin”) filed on March 19, 2012 and published on November 27, 2013. In my
`
`opinion, a Person of Ordinary Skill in The Art (“POSITA”) interested in the subject
`
`matter of Gryzhin could have located Gryzhin through exercise of ordinary diligence.
`
`I understand from counsel for Petitioner that Gryzhin qualifies as prior art under at
`
`least 35 U.S.C. § 102(a) (pre-AIA).
`
`
`
`59129485;1
`
`3
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`Exhibit No.1
`
`Description
`
`1001
`
`U.S. Patent No. 10,820,446 (the “‘446 Patent”)
`
`1002
`
`Prosecution History for the ‘457 Patent
`
`1003
`
`1004
`
`1005
`
`Original Complaint, Midas Green Technologies, LLC v.
`Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D Tex. May
`29, 2020), ECF No. 1
`
`Affidavit of Service of Complaint, Midas Green Technologies,
`LLC v. Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D Tex.
`May 29, 2020), Served June 23, 2020, ECF No. 8
`
`Amended Complaint, Midas Green Technologies, LLC v.
`Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D Tex. Nov.
`24, 2020), ECF No. 34
`
`1006
`
`U.S Patent No. 10,123,463 to Best et. al. (“Best”)
`
`1007
`
`U.S. Patent No. 5,167,511 to Krajewski et. al. (“Krajewski”)
`
`1008
`
`U.S. Patent No. 4,590,538 to Cray, Jr. (“Cray”)
`
`1009
`
`U.S. Patent No. 3,406,244 to Oktay (“Oktay”)
`
`1010
`
`1011
`
`1012
`
`1013
`
`Russian Federation Patent No. 2500013C1
`(“Gryzhin”) (Russian Version)
`
`to Gryzhin
`
`Russian Federation Patent No. 2500013C1
`(“Gryzhin”) (English Translated Version)
`
`to Gryzhin
`
`Verification of Translation of Russian Federation Patent No.
`2500013C1 to Gryzhin
`
`P. E. Tuma, "The merits of open bath immersion cooling of
`datacom equipment," 2010 26th Annual IEEE Semiconductor
`Thermal Measurement and Management Symposium (SEMI-
`
`
`1 Citations to U.S. Patents (Exhibits 1001, 1006, 1007, 1008 1009, and 1023) will be made by reference to the Exhibit
`No. followed by a column and line cite. Citations to the Prosecution History (Exhibit 1002 and 1021) will be made by
`reference to the Exhibit No. followed by the Bates No. provided to the document in the litigation between Petitioner
`and Patent Owner. Citations to Exhibit 1011 will be made by PDF page number, followed by a line citation. Citations
`to Exhibit 1022 will be to Paragraph No. All other Exhibits will be made by reference to the PDF page number.
`
`59129485;1
`
`4
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`doi:
`
`123-131,
`
`THERM),
`pp.
`2010,
`10.1109/STHERM.2010.5444305.
`R. C. Chu, R. E. Simons, M. J. Ellsworth, R. R. Schmidt and V.
`Cozzolino, "Review of cooling technologies for computer
`products," in IEEE Transactions on Device and Materials
`Reliability, vol. 4, no. 4, pp. 568-585, Dec. 2004, doi:
`10.1109/TDMR.2004.840855.
`Liu, C.; Yu, H. Evaluation and Optimization of a Two-Phase
`Liquid-Immersion
`Cooling
`System
`for
`Data
`Centers. Energies 2021, 14,
`1395.
`https://doi.org/10.3390/en14051395.
`Chin-Chi Cheng, Po-Chun Chang, Hsing-Chieh Li, Fu-I Hsu,
`"Design of a single-phase immersion cooling system through
`experimental and numerical analysis", International Journal of
`Heat and Mass Transfer, Volume 160, 2020, 120203, ISSN 0017-
`9310.
`M. Matsuoka, K. Matsuda and H. Kubo, "Liquid immersion
`cooling technology with natural convection in data center," 2017
`IEEE 6th International Conference on Cloud Networking
`(CloudNet), 2017, pp. 1-7, doi: 10.1109/CloudNet.2017.8071539.
`Claim Limitation Summary of the ‘446 Patent, Claim 1
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`Curriculum Vitae of Dr. Issam Mudawar
`
`1020
`
`Declaration of Dr. Issam Mudawar (“Mudawar”)
`
`1021
`
`Prosecution History for the ‘446 Patent
`
`1022
`
`1023
`
`Declaration of Maurice J. Marongiu on Disputed Claim Terms,
`Midas Green Technologies, LLC v. Immersion Systems LLC, No.
`4:20-cv-00555-O, (N.D. Tex. Oct. May. 29, 2020)
`U.S. Patent No. 10,405,457 (the “‘457 Patent”)
`
`1024
`
`Declaration of Dr. Issam Mudawar, Midas Green Technologies,
`LLC v. Immersion Systems LLC, No. 4:20-cv-00555-O, (N.D. Tex.
`Oct. May. 29, 2020)
`III. QUALIFICATIONS
`
`10.
`
`I am a mechanical engineer with over forty years of experience in fluid
`
`mechanics, thermodynamics, heat transfer and immersion cooling. I received my BS
`
`59129485;1
`
`5
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`in Mechanical Engineering in 1978 from the American University of Beirut.
`
`Subsequently, I received my MS in 1980 and my Ph.D. in 1984 from the
`
`Massachusetts Institute of Technology (MIT).
`
`11.
`
`I joined the School of Mechanical Engineering at Purdue University in 1984
`
`as an Assistant Professor. I was subsequently promoted to an Associate Professor in
`
`1989 and a full Professor in 1993. In 2015 I was appointed as the Betty Ruth and
`
`Milton B. Hollander Family Professor of Mechanical Engineering, a career
`
`professorship named for outstanding research accomplishments.
`
`12. Since joining Purdue University, I have founded two groups aimed at
`
`advancing the field of high-density electronics cooling through immersion cooling.
`
`In 1984 I founded the Purdue University Two-Phase Flow Laboratory (PU-IECA),
`
`and the Purdue University International Electronic Cooling Alliance (PU-IECA).
`
`13. During my time as a Professor, I have taught classes on the fundamentals of
`
`heat transfer, engineering design of cooling systems, and boiling and immersion
`
`cooling. I also have directly supervised over 75 Ph.D. and M.S. students and Visiting
`
`Scholars, as well as written 4 handbooks, 257 archival journal papers, 9 book
`
`chapters, and numerous conference papers and technical reports. The vast majority
`
`of the aforementioned publications are directed to immersion cooling of electronics.
`
`14. My work in immersion cooling of high-power electronics in computers, data
`
`centers, hybrid vehicle power electronics, aircraft avionics, spacecraft avionics, and
`
`59129485;1
`
`6
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`defense electronics has earned me numerous honors and awards, including: (a) the
`
`American Society of Gravitational Space Research (ASGSR) “Founder’s Award” in
`
`2013, (b) the American Society of Mechanical Engineers (ASME) “Heat Transfer
`
`Memorial Award” in 2013, (c) 75th Anniversary Medal from the ASME Heat
`
`Transfer Division in 2013, (d) being named a Thomson Reuters “Highly Cited
`
`Researcher” and on Thomson Reuters’ list of “The World’s Most Influential
`
`Scientific Minds” in 2015, (e) American Institute of Aeronautics and Astronautics
`
`(AIAA) Space Processing Award in 2019, and (f) ASME Allan Kraus Thermal
`
`Management Medal in 2021.
`
`15.
`
`I also am presently the President of Mudawar Thermal Systems Inc., which
`
`was founded in 1992 through which I provide consulting services primarily relating
`
`to: (a) research and development of liquid cooling systems for computer and
`
`aerospace electronics; (b) research and development of phase-change (boiling and
`
`condensation) devices and systems; (c) thermal testing and obtaining heat transfer
`
`data for customers; (d) modeling and analysis of complex thermal systems; and (e)
`
`design, fabrication, and instrumentation of high-heat-flux heaters and thermal test
`
`facilities.
`
`16. During my over forty years in the practice of research and development I have
`
`engaged in a number of projects which have provided me with relevant experience
`
`59129485;1
`
`7
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`and expertise in the foundational technology and industry within the scope of the
`
`‘446 Patent.
`
`17. For example, I have performed research and development in the area of
`
`immersion cooling of electronics for an array of different business and governmental
`
`entities, including, IBM, 3M Company, McDonnell Douglas, Raytheon, Ford, CTS
`
`Microelectronics, the National Science Foundation, the Naval Air Warfare Center,
`
`the Air Force Office of Scientific Research, the U.S. Department of Energy, NASA,
`
`the Air Force Research Laboratory, the Office of Naval Research, Motorola, Intel
`
`Corporation, Advance Micro Devices, Delta Design, Wakefield Engineering, Rolls-
`
`Royce, Northrop Grumman, the U.S. Navy, the Ballistic Missile Defense
`
`Organization, the Office of Secretary of Defense, the National Renewable Energy
`
`Laboratory, and the Missile Defense Agency.
`
`18. A copy of my Curriculum Vitae, which contains further details on my
`
`education, experience, publications, and other qualifications to render an expert
`
`opinion, is attached as Exhibit 1019.
`
`IV. LEGAL UNDERSTANDING
`
`A. My Understanding of Claim Construction
`
`19.
`
`I have been informed by counsel for Petitioner that a purpose of claim
`
`construction is to determine what a POSITA would have understood the claim terms
`
`to mean. I understand that during an PGR proceeding, claims are to be construed in
`
`59129485;1
`
`8
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`light of the specification as would be read by a POSITA at the time the application
`
`was filed. I understand that claim terms are given their ordinary and customary
`
`meaning as would be understood by a POSITA in the context of the entire disclosure.
`
`A claim term, however, will not receive its ordinary meaning if the patentee has
`
`acted as his own lexicographer and clearly sets forth a definition of the claim term
`
`in the specification. In this case, the claim term will receive the definition set forth
`
`in the patent.
`
`20.
`
`I understand that the prosecution history can inform the meaning of the claim
`
`language by demonstrating how the inventors understood the invention and whether
`
`the inventors limited the invention in the course of prosecution, making the claim
`
`scope narrower than it otherwise would be. I understand that extrinsic evidence may
`
`also be consulted in construing the claim terms, such as dictionary definitions and
`
`expert testimony.
`
`B. My Understanding of Anticipation and Obviousness
`
`21.
`
`I have been informed by counsel for Petitioner that if a single prior art
`
`reference contains all of the requirements of a patent claim, the prior art anticipates
`
`the claim rendering it invalid. However, I also understand that a patent claim is
`
`invalid if the claimed invention would have been obvious to a POSITA at the time
`
`the application was filed. This means that even if all the requirements of the claim
`
`59129485;1
`
`9
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`cannot be found in a single prior art reference that would anticipate the claim, the
`
`claim can still be invalid.
`
`22.
`
`I understand that to obtain a patent, a claimed invention must have, as of the
`
`priority date, been neither anticipated nor obvious in view of the prior art in the
`
`field. I understand that the following factors should be considered in analyzing
`
`obviousness: (a) the scope and content of the prior art; (b) the differences between
`
`the prior art and the claims; and (c) the level of ordinary skill in the pertinent art.
`
`I understand that an invention is obvious when 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 to a POSITA at the time the invention was made.
`
`23.
`
`I understand that to prove that prior art, or a combination of prior art
`
`renders a patent claim obvious, it is necessary to: (a) identify the particular
`
`references that, singly or in combination, render the patent obvious; (b) specifically
`
`identify which elements of the patent claim appear in each of the asserted references;
`
`and (c) explain how the prior art references could have been combined in order to
`
`create the inventions claimed in the asserted claim.
`
`24.
`
`I understand that a POSITA is assumed to have knowledge of all prior art
`
`references.
`
`25.
`
`I understand that a POSITA can combine various prior art references
`
`based on the teachings of those prior art references, the general knowledge present
`
`59129485;1
`
`10
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`in the art, or common sense. I understand that a motivation to combine the references
`
`may be implicit in the prior art, and there is no requirement that there be an actual
`
`or explicit teaching to combine two references. A patent claim can also be obvious in
`
`light of a single prior art reference if it would have been obvious to modify that
`
`reference to arrive at the patented invention.
`
`26.
`
`I understand the following are examples of approaches and rationales that may
`
`be considered in determining whether a piece of prior art could have been combined
`
`with other prior art or with other information within the knowledge of a POSITA:
`
`•
`
`Combining prior art elements according to known methods to yield
`
`predictable results;
`
`•
`
`Simple substitution of one known element for another to obtain
`
`predictable results;
`
`•
`
`Use of a known technique to improve similar devices (methods or
`
`products) in the same way;
`
`•
`
`Applying a known technique to a known device (method, or product)
`
`ready for improvement to yield predictable results;
`
`•
`
`“Obvious to try”—choosing from a finite number of identified
`
`predicable solutions, with a reasonable expectation of success;
`
`•
`
`A predictable variation of work in the same or a different field of
`
`endeavor, which a POSITA would be able to implement;
`
`59129485;1
`
`11
`
`

`

`Expert Declaration of Dr. Issam Mudawar
`PGR2021-00104 (U.S. 10,820,446 B2)
`
`
`•
`
`If, at the time of the alleged invention, there existed a known problem
`
`for which there was an obvious solution encompassed by the patent’s claim;
`
`•
`
`Known work in one field of endeavor may prompt variations of it for
`
`use in either the same field or a different one based on technological incentives
`
`or other market forces if the variations would have been predictable to a
`
`POSITA; and/or
`
`•
`
`Some teaching, suggestion, or motivation in the prior art that would
`
`have led one of ordinary skill to modify the prior-art reference or to combine
`
`prior-art reference teachings to arrive at the claimed invention.
`
`27.
`
`I understand that even if a prima facie case of obviousness is established, the
`
`final determination of obviousness must also consider objective indicia of
`
`nonobviousness, which I understand are also referred
`
`to as “secondary
`
`considerations,” if presented. I understand that these objective indicia can be
`
`important evidence as to whether a patent is obvious or nonobvious. Such secondary
`
`considerations include: (a) commercial success of products covered by the patent
`
`claims; (b) a long-felt but unsolved need for the invention; (c) failed attempts by
`
`others to make the invention; (d) copying of the invention by others in the field; (e)
`
`unexpected results achieved by the invention as compared to the closest prior art; (f)
`
`praise of the invention by the infringer or others in the field;