Case Nos. IPR2015-01470, -01471, -01472, -01473, -01474 and -01475 9 prior art can establish obviousness. Specific teachings, suggestions, or motivations to combine any first or primary prior art reference with a second prior art reference can be explicit or implicit, but must have existed before the subject patent was filed. I understand that prior art references themselves may be one source of a specific teaching or suggestion to combine features of the prior art, but that such suggestions or motivations to combine art may come from other sources as well. Specifically, the sources may include logic, judgment, and common sense available to a POSA rather than explicit statements in the prior art. I understand that it is not proper to combine references when there is a teaching away of such a combination. However, a reference’s mere disclosure of more than one alternative does not constitute teaching away from any of these alternatives. 17. I further understand that whether there is a reasonable expectation of success from combining references in a particular way is also relevant to the analysis. I understand there may be a number of rationales that may support a conclusion of obviousness, including: • Combining prior art elements according to known methods to yield predictable results; • Substitution of one known element for another to obtain predictable results; • Use of known technique to improve similar devices (methods, or e.Digital Corporation Exhibit 2015 - Page 11 Case Nos. IPR2015-01470, -01471, -01472, -01473, -01474 and -01475 10 products) in the same way; • Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; • Choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; • Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; or • Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art teachings to arrive at the claimed invention. 18. I understand that it is not proper to use hindsight to combine references or elements of references to reconstruct the invention using the claims as a guide. I understand that so-called objective considerations may be relevant to the determination of whether a claim is obvious. Such objective considerations can include evidence of commercial success caused by an invention, evidence of a long-felt need that was solved by an invention, evidence that others copied an invention, or evidence that an invention achieved a surprising result. I understand that such evidence must have a nexus, or causal relationship to the elements of a e.Digital Corporation Exhibit 2015 - Page 12 Case Nos. IPR2015-01470, -01471, -01472, -01473, -01474 and -01475 11 claim, in order to be relevant to the obviousness or non-obviousness of the claim. 19. I understand that, for a reference to be used to show a claim is obvious, the reference must be analogous art to the claimed invention. I understand that a reference is analogous to the claimed invention if the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or if the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention. I understand that a reference is reasonably pertinent based on the problem faced by the inventor as reflected in the specification, either explicitly or implicitly. V. Level of Ordinary Skill in the Art 20. I understand that a person of ordinary skill in the art is one who is presumed to be aware of all pertinent art, thinks along conventional wisdom in the art, and is a person of ordinary creativity. 21. Applying the above understanding, it is my opinion that, as a general matter, a POSA at the time of the filing of the parent ’522 patent would have at least a B.S. degree in Electrical Engineering, Computer Engineering, Computer Science, or an equivalent field, as well as at least 2-5 years of academic or industry experience in mobile communication and context awareness. 22. This differs from the definition given by Petitioners’ expert witness, e.Digital Corporation Exhibit 2015 - Page 13
