Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 1 of 218
`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 1 of 218
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`EXHIBIT 7
`EXHIBIT 7
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`

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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 2 of 218
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________
`
`TIKTOK INC.,
`Petitioner
`
`v.
`
`10TALES, INC.
`Patent Owner
`__________
`
`IPR Case No. IPR2021-00476
`Patent 8,856,030
`
`__________
`
`DECLARATION OF DR. KEVIN ALMEROTH
`
`IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,856,030
`
`Executed this 9th day of February, 2021 at Santa Barbara, California.
`
`___________________________
` Dr. Kevin Almeroth
`
`-i-
`
`
`TikTok TTI-1003, Page 1
`IPR2021-00476 (TikTok Inc. v. 10Tales Inc.)
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`

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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 3 of 218
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`TABLE OF CONTENTS
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`Page
`
`I.
`
`II.
`
`III.
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`IV.
`
`V.
`
`VI.
`
`INTRODUCTION ........................................................................................... 1
`
`EXPERT QUALIFICATIONS AND CREDENTIALS .................................. 1
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`BASIS FOR OPINIONS, AND MATERIALS REVIEWED ....................... 11
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`SUMMARY OF OPINIONS ......................................................................... 13
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`LEVEL OF ORDINARY SKILL IN THE ART ........................................... 14
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`LEGAL STANDARDS ................................................................................. 15
`
`A.
`
`B.
`
`Obviousness ......................................................................................... 16
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`Claim Interpretation in Inter Partes Review ....................................... 23
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`VII. TECHNICAL BACKGROUND ................................................................... 24
`
`A.
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`B.
`
`C.
`
`D.
`
`Evolution of Personalization ............................................................... 24
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`Evolution of Social Networks and Integration with
`Personalization Systems ...................................................................... 27
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`Evolution of Composite Displays and Integration with
`Personalization Systems ...................................................................... 33
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`Evolution of Computer Readable Storage Medium for Server
`Based Systems ..................................................................................... 37
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`VIII. THE ‘030 Patent ............................................................................................ 39
`
`A.
`
`B.
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`C.
`
`D.
`
`Features and Embodiments of the ‘030 Patent .................................... 39
`
`Prosecution History of the ’030 Patent ............................................... 45
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`Challenged Claims of the ’030 Patent ................................................. 56
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`Grounds of Unpatentability of the ’030 Patent ................................... 56
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`IX.
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`THE PRIOR ART .......................................................................................... 56
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`A.
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`B.
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`C.
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`Overview of Bar-El ............................................................................. 56
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`Overview of Reisman .......................................................................... 62
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`Overview of Leeke .............................................................................. 68
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`X.
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`OPINIONS IN SUPPORT OF GROUNDS OF UNPATENTABILITY
`OF THE ’689 Patent ...................................................................................... 71
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`-ii-
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`TTI-1003, Page 2
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`A.
`
`Ground 1: Claims 1 and 2 Are Rendered Obvious by Bar-El in
`View of Reisman ................................................................................. 71
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`1.
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`2.
`
`Claim 1 ..................................................................................... 71
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`Claim 2 ................................................................................... 114
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`B.
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`Ground 2: Claims 1 and 2 Are Rendered Obvious by Bar-El in
`View of Leeke and Further in View of Reisman .............................. 115
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`1.
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`2.
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`Claim 1 ................................................................................... 116
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`Claim 2 ................................................................................... 122
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`C.
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`Ground 3: Claims 1 and 2 Are Rendered Obvious by Leeke in
`view of Reisman ................................................................................ 123
`
`1.
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`2.
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`Claim 1 ................................................................................... 123
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`Claim 2 ................................................................................... 144
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`D.
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`Obviousness and Motivation to Combine ......................................... 145
`
`1.
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`Bar-El, Leeke, and Reisman are Analogous Art ................ 145
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`2. Motivation to Combine Bar-El with Leeke with
`respect to Claim Elements 1[b], 1[c], and/or 1[d] .............. 146
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`3. Motivation to Combine Bar-El and Leeke with
`Reisman with respect to Claim Element 1[g] ..................... 151
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`4.
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`Additional Reasons for Combining the References as
`Described ................................................................................ 163
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`XI. CONCLUSION ............................................................................................ 173
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`-iii-
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`TTI-1003, Page 3
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 5 of 218
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`I.
`
`INTRODUCTION
`
`1. I have been retained by TIKTOK INC., (“Petitioner”) to provide my expert
`
`opinions regarding U.S. Patent No. 8,856,030 (“the ’030 Patent”) assigned to
`
`10Tales, Inc. (“Patent Owner” or “PO”). More specifically, I have been
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`asked to compare Claims 1 and 2, of the ’030 Patent, to prior art
`
`patents and publications, and to render an opinion on the validity of those
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`claims. I submit this Declaration in support of Petitioner’s petition for Inter
`
`Partes Review of the ‘030 Patent.
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`2. I am being compensated for my work in this matter at a rate of $750 per hour.
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`I am also being reimbursed for expenses that I incur during the course of this
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`work. My compensation in no way depends upon the outcome of this
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`proceeding.
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`II.
`
`EXPERT QUALIFICATIONS AND CREDENTIALS
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`3. My qualifications for presenting the opinions in this Declaration are set forth
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`herein, including in my curriculum vitae attached hereto as Appendix A,
`
`which is summarized below.
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`4. I am currently a Professor Emeritus in the Department of Computer Science
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`at the University of California, Santa Barbara (UCSB). While active at
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`UCSB, I held faculty appointments and was a founding member of the
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`-1-
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`TTI-1003, Page 4
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 6 of 218
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`Computer Engineering (CE) Program, Media Arts and Technology (MAT)
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`Program, and the Technology Management Program (TMP). I also served as
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`the Associate Director of the Center for Information Technology and Society
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`(CITS) from 1999 to 2012. I have been a faculty member at UCSB since July
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`1997.
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`5.
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`I hold three degrees from the Georgia Institute of Technology: (1) a Bachelor
`
`of Science degree in Information and Computer Science (with minors in
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`Economics, Technical Communication, and American Literature) earned in
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`June 1992; (2) a Master of Science degree in Computer Science (with
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`specialization in Networking and Systems) earned in June 1994; and (3) a
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`Doctor of Philosophy (Ph.D.) degree in Computer Science (Dissertation Title:
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`Networking and System Support for the Efficient, Scalable Delivery of
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`Services in Interactive Multimedia System, minor in Telecommunications
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`Public Policy) earned in June 1997. During my education, I have taken a wide
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`variety of courses as demonstrated by my minor.
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`6. One of the major concentrations of my research from the beginning has been
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`the delivery of multimedia content and data between computing devices,
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`including various network architectures. For example, in my dissertation, I
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`evaluated interactive multimedia systems, which are relevant to the technical
`
`field of the ’030 Patent. In my research, I have studied large-scale content
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`TTI-1003, Page 5
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`delivery systems, and the use of servers located in a variety of geographic
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`locations to provide scalable delivery to hundreds or thousands of users
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`simultaneously. I have also studied smaller-scale content delivery systems in
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`which content is exchanged between individual computers and portable
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`devices. My work has emphasized the exchange of content more efficiently
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`across computer networks, including the scalable delivery of content to many
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`users, mobile computing, satellite networking, delivering content to mobile
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`devices, and network support for data delivery in wireless networks.
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`7. An important component of my research has been investigating the challenges
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`of communicating multimedia content, including video, between computers
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`and across networks including the Internet. Although the early Internet was
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`used mostly for text-based, non-real time applications, the interest in sharing
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`multimedia content, such as video, quickly developed. Multimedia-based
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`applications ranged from downloading content to a device to streaming
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`multimedia content to be instantly used. One of the challenges was that
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`multimedia content is typically larger than text-only content, but there are also
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`opportunities to use different delivery techniques since multimedia content is
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`more resilient to errors. I have worked on a variety of research problems and
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`used a number of systems that were developed to deliver multimedia content
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`to users. One content-delivery method I have researched is the one-to-many
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`TTI-1003, Page 6
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`communication facility called “multicast,” first deployed as the Multicast
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`Backbone, a virtual overlay network supporting one-to-many communication.
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`Multicast is one technique that can be used on the Internet to provide
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`streaming media support for complex applications like video-on-demand,
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`distance learning, distributed collaboration, distributed games, and large-scale
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`wireless communication. The delivery of media through multicast often
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`involves using Internet infrastructure, devices and protocols, including
`
`protocols for routing and TCP/IP. My research in this area extended prior to,
`
`during, and after the time frame of the ’030 patent.
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`8. As a parallel research theme, starting in 1997, I began researching issues
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`related to wireless devices and sensors. In particular, I was interested in
`
`showing how to provide greater communication capability to “lightweight
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`devices,” i.e., small form-factor, resource-constrained (e.g., CPU, memory,
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`networking, and power) devices. Starting in 1998, I published several papers
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`on my work to develop a flexible, lightweight, battery-aware network protocol
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`stack. The lightweight protocols we envisioned were similar in nature to
`
`protocols like Universal Plug and Play (UPnP) and Digital Living Network
`
`Alliance (DLNA).
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`9. Between 2002 and 2004, I developed a digital classroom at UCSB to enable
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`real-time collaboration, and for lectures and presentations to be archived and
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`TTI-1003, Page 7
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`reviewed at a later time, which is particularly relevant to the ’030 Patent
`
`technology. One goal of this research was to ensure distance learning students
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`felt included in the lectures they attended remotely. To this end, the digital
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`classroom I helped to develop utilized multiple cameras distributed across
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`different locations in a room that, together, captured all of the classroom
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`activity in composite displays. All the cameras were connected to an
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`electronic network so their video feeds could be combined in composite
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`display and shared with remote students.
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`10. Employing such a system for distance learning required experimentation with
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`a variety of different video encoders to select one that is most suitable for
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`livestreaming. Over the duration of the research, the cameras we used
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`required periodic software updates to enable new features or render them
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`compatible with new technologies. In particular, controlling and maintaining
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`numerous, heterogeneous video capturing devices introduced a non-trivial bit
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`of complexity that required developing a specialized digital classroom
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`infrastructure. My work developing and programming this video and camera-
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`based distance learning system spanned several years and is described in my
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`refereed conference papers listed in my CV.
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`11. I have co-authored papers corresponding to significant research at the
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`intersection of social networks and media. I have also conducted significant
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`TTI-1003, Page 8
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 10 of 218
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`
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`research on the fundamentals of media distribution technologies (e.g.,
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`streaming, content delivery systems). For a complete list of research and
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`papers, see my CV, attached as Appendix A. Some specific examples include:
`
`• "On Pricing Algorithms for Batched Content Delivery Systems,"
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`Electronic Commerce Research and Applications Journal, vol. 1,
`
`num. 3-4, pp. 264-280, Fall 2002.
`
`• "Does Social Contact Matter? Modelling the Hidden Web of
`
`Trust Underlying Twitter," ACM International Workshop on
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`Social Recommender Systems (SRS), Rio de Janeiro, BRAZIL,
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`May 2013;
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`• "Do Social Networks Improve e-Commerce: A Study on Social
`
`Marketplaces," ACM Sigcomm Workshop on Online Social
`
`Networks (WOSN), Seattle, Washington, USA, August 2008.1
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`• "Social Computing: An Intersection of Recommender Systems,
`
`Trust/Reputation Systems, and Social Networks,"
`
`IEEE
`
`Network, Vol. 26, Num. 4, pp. 53-58, July/August 2012.
`
`
`1 In this related research, I studied how users value content, and their affinities for
`content.
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`TTI-1003, Page 9
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`• "Exploiting Locality of Interest in Online Social Networks,"
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`ACM CoNEXT, Philadelphia, Pennsylvania, USA, November
`
`2010.
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`12. I have also conducted numerous tutorials and lectures on social applications
`
`and services on the Internet, economic incentives (such as how content is
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`valued), multicast technologies, including in the time frame of the ’030 Patent.
`
`For a complete list of tutorial and lectures, see my CV, attached as Appendix
`
`A.
`
`13. As an additional important component of my research program, I have been
`
`involved in the development of academic research into available technology
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`in the market place. One aspect of this work is my involvement in the Internet
`
`Engineering Task Force (IETF). The IETF is a large and open international
`
`community of network designers, operators, vendors, and researchers
`
`concerned with the evolution of the Internet architecture and the smooth
`
`operation of the Internet. I have been involved in various IETF groups
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`including many content delivery-related working groups like the Audio Video
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`Transport (AVT) group, the MBone Deployment (MBONED) group, Source
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`Specific Multicast (SSM) group, the Inter-Domain Multicast Routing (IDMR)
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`group, the Reliable Multicast Transport (RMT) group, the Protocol
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`Independent Multicast (PIM) group, etc. I have also served as a member of
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`TTI-1003, Page 10
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`the Multicast Directorate (MADDOGS), which oversaw the standardization
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`of all things related to multicast in the IETF. Finally, I was the Chair of the
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`Internet2 Multicast Working Group for seven years.
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`14. My involvement in the research community extends to leadership positions
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`for several academic journals and conferences. I am the co-chair of the
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`Steering Committee for the ACM Network and System Support for Digital
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`Audio and Video (NOSSDAV) workshop and on the Steering Committees for
`
`the International Conference on Network Protocols (ICNP), ACM Sigcomm
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`Workshop on Challenged Networks (CHANTS), and IEEE Global Internet
`
`(GI) Symposium. I have served or am serving on the Editorial Boards of
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`IEEE/ACM Transactions on Networking, IEEE Transactions on Mobile
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`Computing, IEEE Network, ACM Computers in Entertainment, AACE
`
`Journal of Interactive Learning Research (JILR), and ACM Computer
`
`Communications Review. I have co-chaired a number of conferences and
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`workshops including the IEEE International Conference on Network
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`Protocols (ICNP), IEEE Conference on Sensor, Mesh and Ad Hoc
`
`Communications and Networks (SECON), International Conference on
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`Communication Systems and Networks
`
`(COMSNETS),
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`IFIP/IEEE
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`International Conference on Management of Multimedia Networks and
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`Services (MMNS), the International Workshop On Wireless Network
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`TTI-1003, Page 11
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 13 of 218
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`Measurement (WiNMee), ACM Sigcomm Workshop on Challenged
`
`Networks (CHANTS), the Network Group Communication (NGC) workshop,
`
`and the Global Internet Symposium, and I have served on the program
`
`committees for numerous conferences.
`
`15. Furthermore, in the courses I teach at UCSB, a significant portion of my
`
`curriculum covers aspects of the Internet and network communication
`
`including the physical and data link layers, and standardized protocols for
`
`communicating across a variety of physical media such as cable systems,
`
`telephone lines, wireless, and high-speed Local Area Networks (LANs). The
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`courses I have taught also cover most major topics in Internet communication,
`
`including data communication, content delivery, multimedia encoding, and
`
`mobile application design. Further, the courses I taught covered societal and
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`services aspects, such as Technology and Society, Media Networks and
`
`Services, and Economics Systems Seminar. I taught many of these relevant
`
`courses prior to and at the time of the ’030 Patent. For example, I taught
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`Distributed Computing and Computer Networks, Network Computing,
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`Introduction to Computer Communication Networks, Networking for
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`Multimedia, Media Networks and Services, and a short course titled The
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`Evolution of Advanced Networking Services, at or prior to the time of the ’030
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`TTI-1003, Page 12
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`

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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 14 of 218
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`Patent. For a complete list of courses I have taught, see my CV, attached as
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`Appendix A.
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`16. In addition, I co-founded a technology company called Santa Barbara Labs
`
`that was working under a sub-contract from the U.S. Air Force to develop
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`very accurate emulation systems for the military’s next generation
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`internetwork. Santa Barbara Labs’ focus was in developing an emulation
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`platform to test the performance characteristics of the network architecture in
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`the variety of environments in which it was expected to operate, and, in
`
`particular, for network services including IPv6, multicast, Quality of Service
`
`(QoS), satellite-based communication, and security. Applications for this
`
`emulation program included communication of a variety of multimedia-based
`
`services, including video conferencing and video-on-demand.
`
`17. In addition to having co-founded a technology company myself, I have
`
`worked for, consulted with, and collaborated with companies for nearly 30
`
`years. These companies range from well-established companies to start-ups
`
`and include IBM, Hitachi Telecom, Turner Broadcasting System (TBS), Bell
`
`South, Digital Fountain, RealNetworks, Intel Research, Cisco Systems, and
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`Lockheed Martin.
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`18. I am a Member of the Association of Computing Machinery (ACM) and a
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`Fellow of the Institute of Electrical and Electronics Engineers (IEEE).
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`TTI-1003, Page 13
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`

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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 15 of 218
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`
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`19. As set forth in my CV, I have authored nearly 200 refereed papers on topics
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`including mesh networks, wireless network monitoring and management,
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`information dissemination in mobile networks, multicast applications support,
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`multicast security, and tools for multicast monitoring and management.
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`20. Additional details about my employment history, fields of expertise, and
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`publications are further included in my CV, attached as Appendix A.
`
`III. BASIS FOR OPINIONS, AND MATERIALS REVIEWED
`
`21. The opinions set forth in my Declaration are based on my personal knowledge
`
`gained from my education, on my personal experience, and on the review of
`
`the documents and information described in this Declaration.
`
`22. In preparing this Declaration, I have reviewed:
`
`Ex. No.
`
`Description
`
`TTI-1001 U.S. Patent No. 8,856,030 to Russek
`TTI-1002 U.S. Patent No. 8,856,030 File History
`TTI-1003 Declaration of Kevin Almeroth
`
`TTI-1004 WO 1999/026415A1 to Bar-El
`U.S. Patent Pub. No. 2011021941 to
`Reisman
`TTI-1006 U.S. Patent No. 6587491 to Leeke et. al
`
`TTI-1005
`
`TTI-1007 Reisman Provisional 60/455,433
`
`TTI-1008 Reisman Provisional 60/408,605
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`TTI-1009 Reisman Provisional 60/379,635
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`TTI-1010 PCT Pub. WO2003015406 to Dempski
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`-11-
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`TTI-1003, Page 14
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`

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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 16 of 218
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`Ex. No.
`
`Description
`
`TTI-1011
`
`TTI-1012
`
`TTI-1013
`
`Nielsen Adrelevance. Available at
`web.archive.org/web/20030210102338/h
`ttp://www.adrelevance.com/services/serv
`ices_tour.jsp
`Nielsen NetRatings. Available at
`web.archive.org/web/20021010055740/h
`ttp://www.nielsen-
`netratings.com/corporate/partners.htm
`Nielsen Monitor. Available at
`web.archive.org/web/20030208081141/h
`ttp://nielsen.com/nielsen_monitor-
`plus.html
`Recommending and Evaluating Choices
`in a Virtual Community of Use to Hill
`Social Information Filtering for Music
`Recommendation to Shardanand
`Virtual Communities of Transaction to
`Schubert
`, “Content-Based Collaborative
`Recommendation,” Comm. ACM, Mar.
`1997, to Balabanovic et. al.
`Data Mining Industry Emerging Trends
`to Aldana
`TTI-1019 U.S. Patent No. 7483871 to Herz
`TTI-1020 U.S. Patent 7483871 to Patel et. al.
`TTI-1021 WO 1999046702A1 to Hjelsvold
`TII-1022 WO 2001/077876A2 to Bolnick
`TTI-1023 U.S. Patent No. 7,472,110 to Achlioptas
`
`TTI-1014
`
`TTI-1015
`
`TTI-1016
`
`TTI-1017
`
`TTI-1018
`
`TTI-1024
`
`Groove Networks’ Groovy Collaboration
`Tool (December 31, 2001), available at:
`https://www.mcpressonline.com/social/c
`ollaboration-messaging/groove-
`networks-groovy-collaboration-tool/print
`
`TTI-1025
`
`Amazon.com Recommendations to
`Linden et. al
`
`-12-
`
`
`
`
`
`
`
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`
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`TTI-1003, Page 15
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 17 of 218
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`
`
`Ex. No.
`
`Description
`
`TTI-1027
`
`TTI-1028
`
`TTI-1026 U.S. Patent No. 3595987 to Vlahos
`U.S. Patent Pub. 20030066078 to
`Bjorgan
`U.S. Patent No. 6,357,042 to Srinivasan
`et. al.
`TTI-1029 U.S. Patent No. 6,272584 to Stancil
`TTI-1030 U.S. Patent No. 6,442,657 to Hunt
`TTI-1031 U.S. Patent No. 10,679,822 File History
`TTI-1032 U.S. Patent No. 5754787 to Dedrick
`TTI-1033 U.S. Patent 7,904,922 to Haberman
`10Tales’ Preliminary Infringement
`Contentions
`U.S. Patent Pub. 20030177063 to
`Currans
`Scheduling Order in Parallel Case 6:20-
`cv-00810-ADA
`
`TTI-1034
`
`TTI-1035
`
` TTI-1036
`
`TTI-1037 Western District Texas COVID Order
`
`TTI-1038 Email Stipulation
`TTI-1039 MV3 v Roku Docket
`GeoCities, available at:
`https://www.mcpressonline.com/social/c
`ollaboration-messaging/groove-
`networks-groovy-collaboration-tool/print
`
`TTI-1040
`
`
`IV. SUMMARY OF OPINIONS
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`23. This Declaration explains the conclusions I have formed based on my
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`analysis. To summarize these conclusions, based upon my knowledge and
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`experience and my review of the prior art publications discussed in this
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`Declaration, it is my opinion that:
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`• Claims 1 and 2 of the ’030 Patent are rendered obvious by Bar-El
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`(TTI-1004) in view of Reisman (TTI-1005).
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`-13-
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`TTI-1003, Page 16
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 18 of 218
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`• Claims 1 and 2 of the ’030 Patent are rendered obvious by Bar-El
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`(TTI-1004) in view of Leeke (TTI-1006) and further in view of
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`Reisman (TTI-1005).
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`• Claim 1 and 2 of the ’030 Patent are rendered obvious by Leeke
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`and Reisman.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`24. A person of ordinary skill in the art at the time of the ’030 Patent (“POSITA”)
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`would have had at least a bachelor’s degree, or an equivalent degree, in
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`electrical engineering, computer science, or a related field, and 2-3 years’
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`experience researching, designing, developing, and/or testing systems for
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`digital media creation and related firmware and software, or equivalent
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`experience. Someone with less formal education but more experience or more
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`formal education but less experience could also have qualified as a POSITA.
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`25. I believe that I am at least a POSITA and, furthermore, I have supervised those
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`who were also POSITAs. Moreover, I qualified as a POSITA as of the
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`claimed priority date of the ’030 Patent. Accordingly, I believe that I am
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`qualified to opine from the perspective of a POSITA regarding the ’030
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`Patent.
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`-14-
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`TTI-1003, Page 17
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 19 of 218
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`VI. LEGAL STANDARDS
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`26. In preparing and expressing my opinions and considering the subject matter
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`of the ’030 Patent, I am relying on certain basic legal principles that counsel
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`have explained to me. These principles are discussed below.
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`27. I understand that prior art to the ’030 Patent includes patents and printed
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`publications in the relevant art that may predate the priority date of the
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`purported inventions recited in the ’030 Patent. For the purposes of my
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`analysis, I have assumed that the priority date for the ’030 Patent is the earliest
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`filing date claimed on the face of the patent, which is April 7, 2003, the date
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`of the provisional application No. 60/460, 998.
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`28. I understand that a prior art reference may disclose a claim or claims without
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`expressly disclosing a feature of the claimed invention if that missing feature
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`is necessarily present, or inherent, in the prior art reference.
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`29. I understand that inherency requires more than a probability or possibility that
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`a claimed feature is present in the prior art, but rather that the feature or
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`characteristic is a necessary part of the prior art. I am informed that
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`recognition of inherency by a POSITA at the time is not required. I
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`understand it is acceptable to examine evidence outside the prior art reference
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`(extrinsic evidence) in determining whether a feature, while not expressly
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`discussed in the reference, is necessarily present in it.
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`-15-
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`TTI-1003, Page 18
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 20 of 218
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`30. In determining whether or not a claim elements of the claimed invention is
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`found in an item of prior art, I understand one should take into account what
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`a POSITA would have understood from his or her examination of the
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`particular item of prior art.
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`A. Obviousness
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`31. I understand that a claim is invalid for obviousness if the differences between
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`the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time of the invention
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`to a POSITA to which the subject matter pertains. In deciding this question,
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`I understand it is relevant whether a POSITA would have been motivated to
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`combine or modify the prior art to achieve the claimed invention and whether
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`there would have been a reasonable expectation of success.
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`32. I understand that an obviousness evaluation can be based on more than one
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`item of prior art. I have also been informed that the analysis of obviousness
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`generally requires consideration of the following four factual inquiries
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`(although not necessarily in the listed order): (i) the scope and content of the
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`prior art, (ii) the differences between the prior art and the claim, (iii) the level
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`of ordinary skill in the pertinent art at the time of the invention, and (iv) the
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`existence of any objective factors (also referred
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`to as secondary
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`considerations) indicating obviousness or non-obviousness that may be
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`-16-
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`TTI-1003, Page 19
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 21 of 218
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`present in any particular case, such as commercial success, long-felt but
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`unresolved needs, failure of others, and so on.2
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`33. I understand that to be part of the “scope and content of the prior art” for
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`purposes of an obviousness determination, in addition to qualifying as prior
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`art, the referenced prior art must be “analogous” prior art. I understand a
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`reference constitutes analogous prior art if it is within the same field as the
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`inventor’s endeavor. I also understand that even though a prior art reference
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`may be in a different field from that of the inventor’s endeavor, the reference
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`may still be used as an obvious reference if it is “reasonably pertinent” to the
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`particular problem with which the inventor was involved. I understand a
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`reference is reasonably pertinent if it is one that, because of the matter with
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`which it deals, logically would have commended itself to an inventor’s
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`attention in considering the inventor’s problem.
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`34. I understand that the question of obviousness should be expansive and
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`flexible, and should account for the inferences and creative steps a POSITA
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`would have employed in reviewing the prior art at the time of the invention.
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`35. I understand that the rationale to modify or combine the prior art need not be
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`expressly stated in the prior art but may be expressly or impliedly contained
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`2 To date, I am unaware of any objective indicia of non-obviousness. To the extent
`that the Patent Owner offers any in connection with this proceeding, I will respond
`to them as appropriate.
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`-17-
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`TTI-1003, Page 20
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 22 of 218
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`therein or it may be reasoned from knowledge generally available to a
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`POSITA, established scientific principles, or legal precedent.
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`36. I have been informed that, in seeking to determine whether an invention that
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`is a combination of known elements would have been obvious to a person
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`of ordinary skill in the art at the time of the invention, one must consider the
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`references in their entirety to ascertain whether the disclosures in those
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`references render the combination obvious to such a person.
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`37. I also understand that the historical framework applicable for assessing
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`obviousness was whether there was a teaching, suggestion, or motivation
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`either explicitly or implicitly in the prior art to combine the teachings of the
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`reference. I have been informed, however, that although the claimed subject
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`matter can still be found obvious when that test is satisfied, the obviousness
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`inquiry is actually broader and more flexible than that. One need not identify
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`such teachings, suggestion, or motivation explicitly in the prior art. Instead,
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`one can take into account the inferences, creative steps, common knowledge,
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`and common sense that a POSITA would have employed.
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`38. I further understand that an obviousness analysis recognizes that market
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`demand, rather than scientific literature, often drives innovation, and that a
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`motivation to combine references also may be supplied by the direction of the
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`marketplace.
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`-18-
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`TTI-1003, Page 21
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`Case 6:20-cv-00810-ADA Document 79-4 Filed 05/07/21 Page 23 of 218
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`39. I have been informed that, if a technique has been used to improve one device,
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`and a POSITA would have recognized that it would improve similar devices
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`in the same way, using the technique is obvious unless its actual application
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`is beyond the POSITA’s skill. Stated differently, I understand that the
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`proper question is whether one of ordinary skill, facing the wide range of
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`needs created by developments in the field of endeavor, would have seen a
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`benefit to combining the teachings of the prior art.
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`40. I understand that a particular combination may be proven obvious mer