Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`MULLEN INDUSTRIES LLC,
`Patent Owner.
`
`Case IPR2025-00737
`Patent 8,585,476 B2
`Issue Date: November 19, 2013
`
`Title: LOCATION-BASED GAMES AND
`AUGMENTED REALITY SYSTEMS
`
`DECLARATION OF JEREMY COOPERSTOCK, PH.D.
`
`Meta Exhibit 1002
`Meta v. Mullen - Page 001
`
`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`
`TABLE OF CONTENTS
`
`
`I.
`
`II.
`III.
`
`Page
`INTRODUCTION AND QUALIFICATIONS ............................................ 5
`A. Qualifications and Experience ........................................................... 5
`B. Materials Considered ....................................................................... 10
`PERSON OF ORDINARY SKILL IN THE ART ...................................... 12
`STATEMENT OF LEGAL PRINCIPLES ................................................. 14
`A.
`Claim Construction .......................................................................... 14
`B.
`Obviousness (§ 103) ........................................................................ 16
`IV. THE ’476 PATENT ................................................................................... 22
`A. Overview of the Specification .......................................................... 22
`B.
`The Challenged Claims .................................................................... 25
`V. APPLICATION OF THE PRIOR ART TO CHALLENGED
`CLAIMS .................................................................................................... 26
`A.
`Brief Summary and Overview of Prior Art ...................................... 27
`1.
`References Common to All Grounds...................................... 27
`(a)
`Jaszlics (EX1003) ........................................................ 27
`(b)
`Piekarski (EX1004)...................................................... 31
`Additional References ............................................................ 36
`(a) Morihira (EX1005) ...................................................... 36
`(b) Ohshima (EX1006) ...................................................... 39
`(c) Robarts (EX1007) ........................................................ 43
`(d) Muendel (EX1008) ...................................................... 50
`Ground 1: Claims 1, 4-5 and 13 Are Obvious Over Jaszlics in
`view of Piekarski ............................................................................. 54
`1.
`Independent Claim 1: “An augmented reality system
`comprising:” (Claim 1[pre]) .................................................. 54
`
`2.
`
`B.
`
`
`
`
`
`2
`
`
`
`Meta Exhibit 1002
`Meta v. Mullen - Page 002
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`3
`
`
`
`
`
`
`
`
`
`C.
`
`2.
`
`3.
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`“a head-mounted display that overlays virtual
`indicia onto a physical playfield;” (Claim 1[a]) ........... 60
`“memory comprising video game logic that
`provides a video game;” (Claim 1[b]) ......................... 69
`“a wearable processor that utilizes said video game
`logic to provide video game indicia to said head-
`mounted display based on said video game logic,
`wherein said processor is coupled to said memory
`and said head-mounted display;” (Claim 1[c]) ............. 71
`“a detector that determines landscape
`characteristics of said physical playfield, wherein
`said video game logic utilizes said landscape
`characteristics in providing said video game; and”
`(Claim 1[d]) ................................................................. 82
`“a locating device that determines the physical
`location of said locating device on the physical
`playfield, wherein said video game logic utilizes
`the physical location of said locating device in
`providing said video game.” (Claim 1[e]) .................... 88
`Claim 4: “The augmented reality game system of claim
`1, wherein said landscape characteristics are utilized to
`control a computer-controlled video game character.” ........... 92
`Claim 5: “The augmented reality game system of claim
`1, further comprising a wireless transmitter and receiver.” ..... 96
`Independent Claim 13 ............................................................ 99
`4.
`Ground 2: Claim 2 Is Obvious Over Ground 1 Prior Art in
`View of Morihira ........................................................................... 103
`1.
`Claim 2: “The augmented reality game system of claim
`1, wherein a virtual object is overlayed by said head-
`mounted display on said physical playfield and said
`virtual object is displayed at different transparencies
`depending on the perceived distance of said virtual object
`from said head-mounted display.” ........................................ 103
`
`Meta Exhibit 1002
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`D. Ground 3: Claim 4 Is Obvious Over Ground 1 Prior Art in
`View of Ohshima ........................................................................... 109
`1.
`Claim 4: “The augmented reality game system of claim
`1, wherein said landscape characteristics are utilized to
`control a computer-controlled video game character.” ......... 109
`Ground 4: Claims 6-7 Are Obvious Over Ground 1 Prior Art in
`View of Robarts ............................................................................. 115
`1.
`Claim 6: “The augmented reality game system of claim
`1, wherein a computer-controlled video game character is
`overlayed by said head-mounted display on said physical
`playfield and said computer-controlled video game
`character is limited to visibility within a certain area.” ......... 115
`Claim 7: “The augmented reality game system of claim
`1, wherein a computer-controlled video game character is
`overlayed by said head-mounted display on said physical
`playfield, said computer-controlled video game character
`is limited to visibility within a certain area, and said
`computer-controlled video game character provides a
`reaction to said physical location when said physical
`location corresponds to entering said certain area.” .............. 127
`Ground 5: Claim 17 Is Obvious Over Ground 1 Prior Art in
`View of Muendel ........................................................................... 129
`1.
`Claim 17: “The system of claim 13, wherein said
`locating device comprises: a positioning system; and an
`inertial movement system.” .................................................. 129
`V. NO SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS ..... 135
`VI. CONCLUSION ....................................................................................... 136
`
`E.
`
`F.
`
`2.
`
`
`
`
`
`4
`
`
`
`Meta Exhibit 1002
`Meta v. Mullen - Page 004
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`I, Jeremy Cooperstock, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`A. Qualifications and Experience
`
`1.
`
`I am an expert in the field of interactive computing systems, including
`
`virtual and augmented reality systems, as well as mobile and wearable technologies.
`
`I have studied, taught, practiced, and researched the design of such interactive
`
`computing technologies for over 30 years, and I have been leading research and
`
`development activities pertaining to hardware and software designs for interactive
`
`virtual and augmented reality computing systems since at least 2007.
`
`2.
`
`I have summarized in this section my educational background, work
`
`experience, and other relevant qualifications, as reflected in my curriculum vitae,
`
`attached to this declaration as Appendix A.
`
`3.
`
`I earned a Bachelor of Applied Science (B.A.Sc) degree in Electrical
`
`Engineering (Computer Engineering Option) with Honors from the University of
`
`British Columbia in 1990, a Master of Science (M.Sc.) degree in Computer Science
`
`from the University of Toronto in 1992, and a Doctor of Philosophy (Ph.D.) degree
`
`in Electrical and Computer Engineering from the University of Toronto in 1996. My
`
`dissertation on “Reactive Environments and Augmented Media Spaces” was
`
`nominated by the University of Toronto for the Natural Sciences and Engineering
`
`
`
`
`5
`
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`Research Council (NSERC) Doctoral Dissertation Award.
`
`4.
`
`From 1987 to 1988, I worked at IBM Research on very large scale
`
`integration (VLSI) circuit simulation, and in 1989, I worked at the IBM T.J. Watson
`
`Research Center on very long instruction word (VLIW) simulation. In 1990, I
`
`worked at Fibronics Research to develop and test an FDDI-to-token ring bridge for
`
`network communication.
`
`5.
`
`After obtaining my Doctorate degree, I carried out research and
`
`development work at the Sony Computer Science Laboratory in Tokyo, Japan from
`
`1996 to 1997, working in part on “smart” consumer electronics.
`
`6.
`
`I have been employed at McGill University since November 1997,
`
`where I am currently a Full Professor in the Department of Electrical and Computer
`
`Engineering, and recently, the endowed Werner Graupe Distinguished Chair in
`
`Automation Engineering.
`
`7.
`
`I am a member of the Centre for Intelligent Machines, a founding
`
`member of the Centre for Interdisciplinary Research in Music Media and
`
`Technology, a member of the International Laboratory on Learning System, a
`
`member of the McGill Institute for Aerospace Engineering, and an associate member
`
`of Biomedical Engineering at McGill University.
`
`8.
`
`In this capacity, I conduct and supervise research activities, directing a
`
`
`
`
`6
`
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`group of approximately 50 researchers at the Shared Reality Lab, which focuses on
`
`computer mediation to facilitate high-fidelity human communication and the
`
`synthesis of perceptually engaging, multimodal, immersive environments. Over the
`
`span of my academic career, I have supervised more than 100 graduate students and
`
`post-doctoral fellows, and approximately 250 undergraduate research students.
`
`9.
`
`I have also developed and continue to teach courses on human-
`
`computer interaction, artificial intelligence, embedded systems, haptic interaction
`
`design, computer architecture, and operating systems.
`
`10.
`
`I led the development and demonstrations of the world’s first high-
`
`fidelity multichannel audio streaming system over the Internet in 1999 and 2000,
`
`recognized by a Distinction Award from the Audio Engineering Society, and
`
`followed in 2005 by simultaneous low-latency transmission of multiple streams of
`
`uncompressed high-definition video as part of the McGill Ultra-Videoconferencing
`
`system. This work was recognized by an award for Most Innovative Use of New
`
`Technology from the Association for Computing Machinery (ACM) and the Institute
`
`of Electrical and Electronics Engineers (IEEE) Supercomputing.
`
`11. Among other projects, I led the development and supported ongoing
`
`use of a semi-automated classroom environment (the “Intelligent Classroom”), a
`
`high-fidelity orchestra rehearsal simulator (“Open Orchestra,”), a simulation
`
`
`
`
`7
`
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`

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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`environment that renders graphic, audio, and vibrotactile effects in response to
`
`footsteps (“Natural Interactive Walking”), and a mobile game treatment for
`
`amblyopia that was licensed to Novartis.
`
`12. The research and development I supervised on the Autour project
`
`earned the Hochhausen Research Award from the Canadian National Institute for
`
`the Blind and an Impact Award from the Canadian Internet Registry Association.
`
`My Real-Time Emergency Response project won the Gold Prize (brainstorm round)
`
`of the Mozilla Ignite Challenge. I have carried out significant research involving
`
`design and implementation of haptic feedback systems, virtual and augmented
`
`reality, and mobile computing applications. My research experience includes design
`
`of systems employing virtual and augmented reality devices for simulation, training,
`
`gaming, distributed performance, and medical applications, as well as the use of
`
`various sensor technologies including GPS, WiFi and Bluetooth, and inertial
`
`measurement units (IMUs) for tracking position and orientation of a user.
`
`13. My research activities are funded by industry contracts, collaboration
`
`programs, and government grants. In the past 5 years, I have obtained grants and
`
`contracts for my research program of approximately three million dollars.
`
`14.
`
`I led the theme of Enabling Technologies for a Networks of Centres of
`
`Excellence on Graphics, Animation, and New Media (GRAND), and chaired the
`
`
`
`
`8
`
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`

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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`Technical Committee on Network Audio Systems. Among other visiting academic
`
`appointments, I was a visiting professor at Bang & Olufsen, Denmark, where I
`
`conducted research on telepresence technologies as part of the World Opera Project.
`
`15.
`
`I have authored and co-authored more than 200 journal articles and
`
`peer-reviewed conference proceedings papers, mostly concerning human-computer
`
`interaction and applications of these technologies. Eight of my publications were
`
`finalists or winners of “best paper”, “honorable mention”, and similar awards from
`
`scholarly societies. A complete list of my publications is contained in my curriculum
`
`vitae.
`
`16. My professional affiliations include services in various professional
`
`organizations and serving as a reviewer for a number of technical publications,
`
`journals, and conferences, which are listed in my curriculum vitae. I served as an
`
`Associate Editor of the Journal of the Audio Engineering Society, and presently
`
`serve as Associate Editor in Chief for the IEEE Transactions on Haptics, and
`
`Associate Editor for the Frontiers in Virtual Reality.
`
`17.
`
`I have also served as an expert in numerous legal proceedings, both on
`
`behalf of patent owners and petitioners, including proceedings involving industrial
`
`design, hardware architecture, and firmware of wearable technologies. A list of cases
`
`in which I have provided written declarations, testified at trial or by deposition is
`
`9
`
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`provided in my curriculum vitae.
`
`18. My experience in academic and practical situations as well as my
`
`hands-on experience with hardware and software related to virtual and augmented
`
`reality systems, provides me with an appreciation of, and expertise in, the technology
`
`involved with U.S. Patent No. 8,585,476 B2.
`
`19.
`
`I have been retained by counsel for Petitioner to provide my expert
`
`opinion in connection with the above-captioned proceeding as set forth herein. I am
`
`being compensated for my work in this case at my standard consulting rate. This
`
`compensation is not contingent upon my performance, the outcome of this case, or
`
`any issues involved in or related to this case. I have no financial interest in this
`
`matter.
`
`B. Materials Considered
`
`20.
`
`The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered. In forming
`
`my opinions, I have read and considered U.S. Patent No. 8,585,476 B2 (“’476
`
`patent”) (EX1001) and its prosecution history. I have cited to the following
`
`documents in my analysis below:
`
`10
`
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`
`1008
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 8,585,476 B2 to Jeffrey D. Mullen (filed Nov. 16,
`2005, issued Nov. 19, 2013) (“’476” or “’476 patent”)
`1003 U.S. Patent No. 6,166,744 to Ivan J. Jaszlics and Sheila L. Jaszlics
`(filed Sep. 15, 1998; issued Dec. 26, 2000) (“Jaszlics”)
`1004 Wayne Piekarski et al., “Integrating Virtual and Augmented Realities in
`an Outdoor Application,” in Proceedings, 2nd IEEE and ACM
`International Workshop on Augmented Reality (1999) (“Piekarski”)
`1005 U.S. Patent No. 6,951,515 B2 to Toshikazu Ohshima and Kiyohide
`Satoh (filed Feb. 17, 2000; issued Oct. 4, 2005) (“Ohshima”)
`1006 U.S. Patent No. 6,361,438 B1 to Shigeki Morihira (filed Jul. 24, 1998;
`issued Mar. 26, 2002) (“Morihira”)
`1007 U.S. Patent App. Pub. No. 2004/0002843 A1 to James O. Robarts and
`Cesar A. Alvarez (filed May 13, 2003; published Jan. 1, 2004)
`(“Robarts”)
`Int’l Patent App. Pub. No. WO 2001/042809 A2 to Martin Muendel
`(filed Dec. 6, 2000; published Jun. 14, 2001) (“Muendel”)
`1009 Wayne Piekarski et al., “Tinmith - Augmented Reality With Wearable
`Computers Running Linux,” in Linux Conf Au 2001 - 2nd Australian
`Linux Conference (2001) (“Piekarski 2001”)
`1010 Paul Milgram and Fumio Kishino, “A Taxonomy of Mixed Reality
`Visual Displays,” in IEICE Transactions on Information Systems, Vol.
`E77-D, No.12 (December 1994)
`1011 U.S. Provisional Patent App. No. 60/066,904 (“Jaszlics Provisional”)
`1012 Excerpts from Microsoft Computer Dictionary (5th ed. 2002)
`1013
`J. P. Rolland et al., “A Comparison of Optical and Video See-Through
`Head-Mounted Displays,” SPIE Vol. 2351 Telemanipulator and
`Telepresence Technologies (1994), pp.293-307 (“Rolland”)
`1014 Excerpts from The Legend of Zelda: A Link to the Past: Prima’s
`Official Strategy Guide (2002)
`1015 Excerpts from New Penguin Dictionary of Computing (2001)
`11
`
`
`
`
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`
`Exhibit
`No.
`1016
`
`Description of Document
`’476 Patent File History
`
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`21.
`I understand that, under the patent laws in effect before the America
`
`Invents Act (“AIA”) of 2011, an assessment of claims of a patent filed before the
`
`AIA took effect should be undertaken from the perspective of a person of ordinary
`
`skill in the art as of the earliest claimed priority date (i.e., the “time the invention
`
`was made”). I have preliminarily for purposes of my Declaration only assumed that
`
`date to be November 16, 2004, the filing date of the earliest application to which the
`
`’476 patent claims priority (provisional application no. 60/628,475).1
`
`22.
`
`I have also been advised that to determine the appropriate level of a
`
`
`
` I express no opinion on whether the ’476 patent is actually entitled to the benefit
`
` 1
`
`of the provisional application to which it claims priority (60/628,475). This issue is
`
`not relevant here because all of the prior art references relied upon predate that date.
`
`In the event entitlement to the provisional filing date may later become relevant, for
`
`example based on arguments later presented by Patent Owner, I reserve my right to
`
`provide opinions on that issue at that time.
`
`
`
`
`12
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`person having ordinary skill in the art, the following factors may be considered: (1)
`
`the types of problems encountered by those working in the field and prior art
`
`solutions thereto; (2) the sophistication of the technology in question, and the
`
`rapidity with which innovations occur in the field; (3) the educational level of active
`
`workers in the field; and (4) the educational level of the inventor.
`
`23. The ’476 patent states that it “relates to location-based game systems.”
`
`(’476, 1:15.) The patent states that “[a] handheld location-based game system is
`
`provided in which a user’s physical position on a physical playfield (e.g., the
`
`physical world, a physical environment, or a defined physical playfield) correlates
`
`to a video game character’s location in a virtual playfield.” (’476, 1:51-55.) The
`
`patent further states that “[a]n Augmented Reality (AR) game system may also be
`
`provided.” (’476, 1:59-60.)
`
`24.
`
`In my opinion, a person of ordinary skill in the art as of November 2004
`
`would have possessed a bachelor’s degree in electrical engineering, computer
`
`science, or similar field, with two years combined experience in designing and/or
`
`developing interactive location-based computer systems/software, such as video
`
`games or other simulations incorporating location information (such as GPS
`
`information associated with a user’s physical location), and in designing and/or
`
`developing computer systems/software
`
`involving graphical virtual and/or
`
`
`
`
`13
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`augmented reality. A person could also have qualified as a person of ordinary skill
`
`in the art with some combination of (1) more formal education (such as a master’s
`
`of science degree) and less technical experience, or (2) less formal education and
`
`more technical or professional experience.
`
`25. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my experience in the fields of computer science and
`
`engineering, my understanding of the basic qualifications that would be relevant to
`
`an engineer or scientist tasked with investigating methods and systems in the
`
`relevant area, and my familiarity with the backgrounds of colleagues and students,
`
`both past and present.
`
`26. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’476 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of November 2004.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`A. Claim Construction
`
`27.
`
`I understand that a purpose of claim construction is to determine what
`
`a person of ordinary skill in the art would have understood the claim terms to mean.
`
`Claim terms are generally given their ordinary and customary meaning, which is the
`
`
`
`
`14
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`meaning that the term would have to a person of ordinary skill in the art in question
`
`as of the effective filing date.
`
`28.
`
`I understand that the person of ordinary skill in the art is deemed to read
`
`the claim term not only in the context of the particular claim in which the disputed
`
`term appears, but in the context of the entire patent, including the specification. I
`
`understand that the patent specification, under the legal principles, has been
`
`described as the single best guide to the meaning of a claim term, and is thus highly
`
`relevant to the interpretation of claim terms. And I understand for terms that do not
`
`have a customary meaning within the art, the specification usually supplies the best
`
`context of understanding the meaning of those terms.
`
`29.
`
`I further understand that other claims of the patent in question, both
`
`asserted and unasserted, can be valuable sources of information as to the meaning of
`
`a claim term. Because the claim terms are normally used consistently throughout
`
`the patent, the usage of a term in one claim can often illuminate the meaning of the
`
`same term in other claims. Differences among claims can also be a useful guide in
`
`understanding the meaning of particular claim terms.
`
`30.
`
`I understand that the prosecution history can further 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
`
`
`
`
`15
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence, such as
`
`dictionaries, may also be consulted in construing the claim terms.
`
`31.
`
`I understand that, in Inter Partes Review (IPR) proceedings, a claim of
`
`a patent shall be construed using the same claim construction standard that would be
`
`used to construe the claim in a civil action filed in a U.S. district court (which I
`
`understand is called the “Phillips” claim construction standard), including
`
`construing the claim in accordance with the ordinary and customary meaning of such
`
`claim as understood by one of ordinary skill in the art and the prosecution history
`
`pertaining to the patent.
`
`32.
`
`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips” standard
`
`as provided to me by counsel.
`
`33. For purposes of my analysis here, I do not believe express claim
`
`constructions are necessary because the prior art renders the claims obvious under
`
`any reasonable construction.
`
`B.
`
`Obviousness (§ 103)
`
`34.
`
`I understand that a patent claim is obvious if, as of the effective filing
`
`
`
`
`16
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`date, it would have been obvious to a person having ordinary skill in the field of the
`
`technology (the “art”) to which the claimed subject matter belongs.
`
`35.
`
`I understand that the following factors should be considered in
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`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
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`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
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`art. I also understand that certain other facts known as “secondary considerations”
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`such as commercial success, unexplained results, long felt but unsolved need,
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`industry acclaim, simultaneous invention, copying by others, skepticism by experts
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`in the field, and failure of others may be utilized as indicia of nonobviousness. I
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`understand, however, that secondary considerations should be connected, or have a
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`“nexus,” with the invention claimed in the patent at issue.
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`36.
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`I understand that a reference qualifies as prior art for obviousness
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`purposes when it is analogous to the claimed invention. The test for determining
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`what art is analogous is: (1) whether the art is from the same field of endeavor,
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`regardless of the problem addressed, and (2) if the reference is not within the field
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`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
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`particular problem with which the inventor is involved.
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`37.
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`I understand that a person of ordinary skill in the art is assumed to have
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`knowledge of all prior art. I understand that one skilled in the art can combine
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`17
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`Meta v. Mullen - Page 0017
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`various prior art references based on the teachings of those prior art references, the
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`general knowledge present in the art, or common sense. I understand that a
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`motivation to combine references may be implicit in the prior art, and there is no
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`requirement that there be an actual or explicit teaching to combine two references.
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`Thus, one may take into account the inferences and creative steps that a person of
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`ordinary skill in the art would employ to combine the known elements in the prior
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`art in the manner claimed by the patent at issue. I understand that one should avoid
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`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
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`this does not mean that a person of ordinary skill in the art for purposes of the
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`obviousness inquiry does not have recourse to common sense.
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`38.
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`I understand that when determining whether a patent claim is obvious
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`in light of the prior art, neither the particular motivation for the patent nor the stated
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`purpose of the patentee is controlling. The primary inquiry has to do with the
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`objective reach of the claims, and that if those claims extend to something that is
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`obvious, then the entire patent claim is invalid.
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`39.
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`I understand one way that a patent can be found obvious is if there
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`existed at the time of the invention a known problem for which there was an obvious
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`solution encompassed by the patent’s claims. I understand that a motivation to
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`combine various prior art references to solve a particular problem may come from a
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`18
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`Meta v. Mullen - Page 0018
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`variety of sources, including market demand or scientific literature. I understand
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`that a need or problem known in the field at the time of the invention can also provide
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`a reason to combine prior art references and render a patent claim invalid for
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`obviousness. I understand that familiar items may have obvious uses beyond their
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`primary purpose, and that a person of ordinary skill in the art will be able to fit the
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`teachings of multiple prior art references together like the pieces of a puzzle. I
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`understand that a person of ordinary skill is also a person of at least ordinary
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`creativity. I understand when there is a design need or market pressure to solve a
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`problem and there are a finite number of identified, predictable solutions, a person
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`of ordinary skill has good reason to pursue the known options within his or her
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`technical grasp. If this finite number of predictable solutions leads to the anticipated
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`success, I understand that the invention is likely the product of ordinary skill and
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`common sense, and not of any sort of innovation. I understand that the fact that a
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`combination was obvious to try might also show that it was obvious, and hence
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`invalid, under the patent laws. I understand that if a patent claims a combination of
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`familiar elements according to known methods, the combination is likely to be
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`obvious when it does no more than yield predictable results. Thus, if a person of
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`ordinary skill in the art can implement a predictable variation, an invention is likely
`
`obvious. I understand that combining embodiments disclosed near each other in a
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`Meta v. Mullen - Page 0019
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,585,476 B2
`
`prior art reference would not ordinarily require a leap of inventiveness.
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`40.
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`I understand that obviousness may be shown by demonstrating that it
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`would have been obvious to modify what is taught in a single piece of prior art to
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`create the patented invention. Obviousness may also be shown by demonstrating
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`that it would have been obvious to combine the teachings of more than one item of
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`prior art. I understand that a claimed invention may be obvious if some teaching,
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`suggestion, or motivation exists that would have led a person of ordinary skill in the
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`art to combine the invalidating references. I also understand that this suggestion or
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`motivation may come from the knowledge of a person having ordinary skill in the
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`art, or from sources such as explicit statements in the prior art. I understand that
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`when there is a design need or market pressure, and there are a finite number of
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`predictable solutions, a person of ordinary skill may be motivated to apply common
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`sense and his skill to combine the known options in order to solve the problem.
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`41.
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`I understand the following are e