Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 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 IPR2025-00744
`U.S. Patent No. 12,019,791 B2
`Issue Date: June 25, 2024
`
`Title: AUGMENTED REALITY VIDEO GAME SYSTEMS
`
`DECLARATION OF JEREMY COOPERSTOCK, PH.D.
`
`Meta Exhibit 1002
`Meta v. Mullen - Page 001
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`

`

`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`
`
`TABLE OF CONTENTS
`
`
`Page
`INTRODUCTION AND QUALIFICATIONS ............................................. 5
`A. Qualifications and Experience ............................................................. 5
`B. Materials Considered ......................................................................... 10
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 11
`STATEMENT OF LEGAL PRINCIPLES .................................................. 13
`A.
`Claim Construction ............................................................................ 13
`B.
`Obviousness (§ 103) .......................................................................... 15
`IV. THE ’791 PATENT ..................................................................................... 21
`A. Overview of the Specification ........................................................... 21
`B.
`The Challenged Claims ...................................................................... 23
`V. APPLICATION OF THE PRIOR ART TO CHALLENGED
`CLAIMS ....................................................................................................... 24
`A.
`Brief Summary and Overview of Prior Art ....................................... 24
`1.
`References Common to All Grounds ...................................... 24
`(a)
`Fager (EX1003) ............................................................. 24
`(b) Martins (EX1004) ......................................................... 28
`Additional References ............................................................. 29
`(a) Maguire (EX1005) ........................................................ 29
`Ground 1: Claims 21, 23, 37, 41, and 42 are Obvious Over
`Fager in view of Martins .................................................................... 31
`Independent Claim 21: “A system comprising:” (Claim
`1.
`21[pre]) .................................................................................... 31
`
`I.
`
`II.
`III.
`
`2.
`
`B.
`
`
`
`
`
`2
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`
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`

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`TABLE OF CONTENTS
`(continued)
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`Page
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`(a)
`
`(b)
`
`“a head-mounted display comprising a camera for
`obtaining images in view of said head-mounted
`display and utilizing said images to detect a
`surface of a physical object included in said
`images, wherein said head-mounted display is
`operable to display a virtual object associated with
`an application; and” (Claim 21[a]) ............................... 32
`“a hand-held controller for providing a first three-
`dimensional control signal to move said virtual
`object and a second three-dimensional control
`signal to change the movement of said virtual
`object from the movement provided from said first
`three-dimensional control signal, wherein said first
`three-dimensional control signal moves said virtual
`object three-dimensionally over at least three axes
`of movement in a first manner and said second
`three-dimensional control signal moves said virtual
`object three-dimensionally over at least three axes
`of movement in a second manner.” (Claim 21[b]) ....... 48
`Claim 23: “The system of claim 21, wherein said
`application is a video game having a selectable playing
`area.” ........................................................................................ 54
`Claim 37: “The system of claim 21, wherein a physical
`object type of said physical object is operable to be
`determined from several physical object types, a first
`type of said several physical object types is a floor and a
`second type of said several types of physical object types
`is a wall.” ................................................................................. 57
`Claim 41: “The system of claim 21, wherein at least said
`second three-dimensional control signal moves said
`virtual object causing said virtual object to interact with
`said detected surface.” ............................................................. 61
`
`3
`
`
`
`
`
`
`
`
`
`2.
`
`3.
`
`4.
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`

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`TABLE OF CONTENTS
`(continued)
`
`Page
`
`
`
`5.
`
`Claim 42: “The system of claim 21, wherein said camera
`for obtaining images in view of said head-mounted
`display comprises a video camera for obtaining video in a
`view of said head-mounted display.” ...................................... 62
`Ground 2: Claim 31 is Obvious Over Ground 1 Prior Art in
`Further View of Maguire ................................................................... 63
`Claim 31: “The system of claim 21, further comprising a
`1.
`second camera and a third camera and the views of said
`second and third camera overlap.” .......................................... 63
`V. NO SECONDARY CONSIDERATIONS OF NONOBVIOUSNESS ....... 68
`VI. CONCLUSION ............................................................................................ 69
`
`C.
`
`
`
`
`
`4
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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. 12,019,791 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
`
`Research Council (NSERC) Doctoral Dissertation Award.
`5
`
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`
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`Meta v. Mullen - Page 005
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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. 12,019,791 B2
`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
`
`group of approximately 50 researchers at the Shared Reality Lab, which focuses on
`
`computer mediation to facilitate high-fidelity human communication and the
`6
`
`
`
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`Meta Exhibit 1002
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`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
`
`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.
`7
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`
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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. 12,019,791 B2
`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
`
`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
`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. 12,019,791 B2
`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
`
`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. 12,019,791 B2.
`9
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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. 12,019,791 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. 12,019,791 B2 (“’791
`
`patent”) (EX1001) and its prosecution history. I have cited to the following
`
`documents in my analysis below:
`
`Exhibit
`Description of Document
`No.
`1001 U.S. Patent No. 12,019,791 B2 to Jeffrey David Mullen (filed January
`4, 2022, issued June 25, 2024) (“’791” or “’791 patent”)
`1003 U.S. Patent App. Pub. No. 2004/0104934 A1 to Jan G. Fager (filed Feb.
`7, 2002; published Jun. 3, 2004) (“Fager”)
`1004 U.S. Patent App. Pub. No. 2003/0179218 A1 to Fernando C. M.
`Martins (filed Mar. 22, 2002; published Sep. 25, 2003) (“Martins”)
`1005 U.S. Patent No. 6,411,266 B1 to Francis J. Maguire, Jr. (filed Nov. 17,
`1995; issued Jun. 25, 2002) (“Maguire”)
`
`
`
`
`10
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`Exhibit
`Description of Document
`No.
`1006 Masayuki Kanbara et al., “A stereoscopic video see-through augmented
`reality system based on real-time vision-based registration,” in
`Proceedings IEEE Virtual Reality 2000 (2000) (“Kanbara”)
`
`
`
`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 October 11, 2007, the filing date of the earliest application to which the
`
`’791 patent claims priority (provisional application no. 60/979,379).1
`
`
`
` I express no opinion on whether the ’791 patent is actually entitled to the benefit
`
` 1
`
`of the provisional application to which it claims priority (60/979,379). 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.
`
`
`
`
`11
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`22.
`I have also been advised that to determine the appropriate level of a
`
`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 ’791 patent states that it “relates to augmented reality.” (’791,
`
`1:19.) The patent states that it provides “[a]ugmented reality video game systems”
`
`where “[v]ideo game indicia may be perceived to be located in a user’s physical
`
`environment through virtual indicia that are placed on a head-mounted display.”
`
`(’791, 1:23-26.)
`
`24.
`
`In my opinion, a person of ordinary skill in the art as of October 2007
`
`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
`
`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
`12
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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. 12,019,791 B2
`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 ’791 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of October 2007.
`
`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
`
`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
`13
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`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
`
`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
`14
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`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
`
`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
`
`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
`
`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
`15
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`art. I also understand that certain other facts known as “secondary considerations”
`
`such as commercial success, unexplained results, long felt but unsolved need,
`
`industry acclaim, simultaneous invention, copying by others, skepticism by experts
`
`in the field, and failure of others may be utilized as indicia of nonobviousness. I
`
`understand, however, that secondary considerations should be connected, or have a
`
`“nexus,” with the invention claimed in the patent at issue.
`
`36.
`
`I understand that a reference qualifies as prior art for obviousness
`
`purposes when it is analogous to the claimed invention. The test for determining
`
`what art is analogous is: (1) whether the art is from the same field of endeavor,
`
`regardless of the problem addressed, and (2) if the reference is not within the field
`
`of the inventor’s endeavor, whether the reference still is reasonably pertinent to the
`
`particular problem with which the inventor is involved.
`
`37.
`
`I understand that a person of ordinary skill in the art is assumed to have
`
`knowledge of all prior art. I understand that one skilled in the art can combine
`
`various prior art references based on the teachings of those prior art references, the
`
`general knowledge present in the art, or common sense. I understand that a
`
`motivation to combine 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.
`
`Thus, one may take into account the inferences and creative steps that a person of
`
`ordinary skill in the art would employ to combine the known elements in the prior
`16
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`art in the manner claimed by the patent at issue. I understand that one should avoid
`
`“hindsight bias” and ex post reasoning in performing an obviousness analysis. But
`
`this does not mean that a person of ordinary skill in the art for purposes of the
`
`obviousness inquiry does not have recourse to common sense.
`
`38.
`
`I understand that when determining whether a patent claim is obvious
`
`in light of the prior art, neither the particular motivation for the patent nor the stated
`
`purpose of the patentee is controlling. The primary inquiry has to do with the
`
`objective reach of the claims, and that if those claims extend to something that is
`
`obvious, then the entire patent claim is invalid.
`
`39.
`
`I understand one way that a patent can be found obvious is if there
`
`existed at the time of the invention a known problem for which there was an obvious
`
`solution encompassed by the patent’s claims. I understand that a motivation to
`
`combine various prior art references to solve a particular problem may come from a
`
`variety of sources, including market demand or scientific literature. I understand
`
`that a need or problem known in the field at the time of the invention can also provide
`
`a reason to combine prior art references and render a patent claim invalid for
`
`obviousness. I understand that familiar items may have obvious uses beyond their
`
`primary purpose, and that a person of ordinary skill in the art will be able to fit the
`
`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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`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. 12,019,791 B2
`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
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`obvious. I understand that combining embodiments disclosed near each other in a
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`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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`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. 12,019,791 B2
`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 examples of approaches and rationales
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`that may be considered in determining whether a piece of prior art could have been
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`combined with other prior art or with other information within the knowledge of a
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`person having ordinary skill in the art:
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`(1)
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`Some teaching, motivation, or suggestion in the prior art that would
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`have led a person of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention;
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`(2) Known work in one field of endeavor may prompt variations of it for
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`use in the same field or a different field based on design incentives or other
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`market forces if the variations would have been predictable to a person of
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`ordinary skill in the art;
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`(3) Combining prior art elements according to known methods to yield
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`predictable results;
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`(4) Applying a known technique to a known device, method, or product
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`ready for improvement to yield predictable results;
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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. 12,019,791 B2
`(5) Applying a technique or approach that would have been “obvious to
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`try” (choosing from a finite number of identified, predictable solutions, with
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`a reasonable expectation of success);
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`(6)
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`Simple substitution of one known element for another to obtain
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`predictable results; or
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`(7) Use of a known technique to improve similar products, devices, or
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`methods in the same way.
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`42.
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`I understand that, when determining whether a claimed combination is
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`obvious, the correct analysis is not whether one of ordinary skill in the art, writing
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`on a blank slate, would have chosen the particular combination of elements
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`described in the claim. Instead, I understand the correct analysis considers whether
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`one of ordinary skill, facing the wide range of needs created by developments in the
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`field of endeavor, would have seen a benefit to selecting the combination claimed.
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`43.
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`I understand that the test for obviousness is not whether the features of
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`a secondary reference may be bodily incorporated into the structure of the primary
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`reference. The test for obviousness, in other words, is not whether the references
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`could be physically combined but whether the claimed inventions are rendered
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`obvious by the teachings of the prior art as a whole.
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`Declaration of Jeremy Cooperstock, Ph.D. in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 12,019,791 B2
`IV. THE ’791 PATENT
`A. Overview of the Specification
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`44. The ’791 patent states that it “relates to augmented reality.” (’791,
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`1:19.) The patent states that it provides “[a]ugmented reality video game systems”
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`where “[v]ideo game indicia may be perceived to be located in a user’s p