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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SONY CORPORATION
`Petitioner
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`v.
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`STRAIGHT PATH IP GROUP, INC.
`(FORMERLY KNOWN AS INNOVATIVE COMMUNICATIONS
`TECHNOLOGIES, INC.)
`Patent Owner
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`
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`INTER PARTES REVIEW OF U.S. PATENT NO. 6,108,704
`Case IPR No.: To Be Assigned
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`DECLARATION OF LIOR HARAMATY
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`SONY EXHIBIT 1005- Page 1
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`I, Lior Haramaty, declare under penalty of perjury that:
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`1.
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`I have been retained as a consultant by Wolf Greenfield & Sacks,
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`P.C., counsel for Petitioner Sony Corporation (“Sony”). I submit this declaration
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`in connection with Sony’s Petition for Inter Partes Review of Claims 1, 11-12, 19,
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`22-23, and 30 of U.S. Patent No. 6,108,704 (“the ‘704 patent”). I am being
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`compensated for my time at the rate of $600 per hour, plus actual expenses. My
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`compensation is not dependent in any way upon the outcome of Sony’s petition.
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`I.
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`BACKGROUND
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`2.
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`In 1985, I co-founded VocalTec which we registered as VocalTec,
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`Ltd. (“VocalTec”) in 1989. VocalTec was one of the first companies to provide
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`software that enables voice and multimedia communications over packet-based
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`computer networks, like the Internet or a private intranet. VocalTec continues
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`today to offer its software products to consumers under the name “magicJack
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`VocalTec.”
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`3.
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`One of VocalTec’s first voice communication products was
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`VocalChat. VocalChat allowed users to engage in real-time voice communication
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`over local and wide area computer networks. The first version of the VocalChat
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`product was commercially released worldwide, including in the United States, in
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`1993.
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`- 1 -
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`SONY EXHIBIT 1005- Page 2
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`II. OVERVIEW OF VOCALCHAT VERSION 2.0
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`4.
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`VocalChat Version 2.0 (“VocalChat 2.0”) was commercially released
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`and available for purchase from VocalTec no later than June 1994.
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`5.
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`The availability of VocalChat 2.0 was widely publicized and
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`advertised in trade magazines and other publications covering voice over IP
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`(“VoIP”) technologies. Exhibit 1038 is a copy of an article entitled “Networking
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`roundup,” published in the Washington Post (Newsweek Interactive Section) on
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`June 10, 1994. This article confirms the introduction of VocalChat Version 2.0 in
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`June 1994: “VocalTec Inc., (Northvale, N.J.), introduced VocalChat Version 2.0
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`software, which reportedly gives networked workgroups the combined capabilities
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`of a full-featured intra-office voice mail system, an advanced network dictation
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`system and a real-time audio conference service in a single software package.”
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`Another article dated June 13, 1994 called “Pipeline” from InfoWorld, Exhibit
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`1039, also confirms that VocalTec began shipping VocalChat 2.0 in June 1994:
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`“VocalTec Inc., in Northvale, N.J., is now shipping VocalChat 2.0, software that
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`enables members of a networked workgroup to use voice mail and
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`audioconferencing.”
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`SONY EXHIBIT 1005- Page 3
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`6.
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`Exhibit 1040 is a copy of another article entitled “Leave your message
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`on my PC after the beep,” published in PC Week on October 3, 1994. That article
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`also confirms the public availability of VocalChat 2.0 in 1994: “VocalChat 2.0 …
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`Available now in a 10-user license for $239.”
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`7.
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`Indeed, the PC Week article evidences that PC Week itself obtained a
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`copy of VocalChat 2.0 and tested the product in 1994: “PC Week Labs installed
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`VocalChat 2.0 on a variety of 386 and 486 PCs attached to a NetWare 3.12
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`server…. Installation and general use of VocalChat were easy.”
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`8.
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`In many instances, publications and advertisements during 1994
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`included instructions on how to purchase VocalChat 2.0 directly from VocalTec.
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`For example, Exhibit 1038 on page 2: “VocalTec, of Northvale, N.J. can be
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`reached at (201) 768-9400.” Likewise, Exhibit 1041, a buyer’s guide entitled
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`“Communications Connectivity Networking,” Miller Freeman Supplement to
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`Microsoft Systems Journal (Jan. 1995), provides similar instructions on page 28.
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`9.
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`By June 1994, it was known to the public how to obtain VocalChat
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`2.0. Indeed, I have personal knowledge from my work at VocalTec that members
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`of the public did, in fact, obtain VocalChat 2.0 from June 1994 onward. Members
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`of the public were under no obligation to keep confidential their knowledge of the
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`VocalChat software or its availability.
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`- 3 -
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`SONY EXHIBIT 1005- Page 4
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`10. Members of the public that obtained VocalChat 2.0 received a box
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`that contained a 3.5-inch disk of the VocalChat 2.0 software and printed
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`documents, including a User’s Guide.
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`11.
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`In addition to the electronic files needed to install the VocalChat 2.0
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`software, the disk included electronic files (e.g., “help” and “Read Me” files) that
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`users were expected to access to learn more about the VocalChat product and to
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`find answers to frequently asked questions. Members of the public were under no
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`obligation to keep the electronic files or printed documents confidential.
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`III. UNOPENED BOX CONTAINING VOCALCHAT 2.0 THAT HAS
`BEEN IN MY POSSESSION SINCE JUNE 1994
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`12. Since around June 1994, I have had in my possession, continuously,
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`an unopened box containing VocalChat 2.0. When I was at VocalTec, I obtained
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`samples of products as we released them. This box came off the same production
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`line as other VocalChat 2.0 boxes that were made available to the public. Indeed,
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`this box is the same commercial product that the general public could have, and
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`did, obtain starting by June 1994. It is the same product discussed in the articles
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`attached as Exhibits 1038-1041.
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`13. From around June 1994 through October 31, 2013, this box was never
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`opened. Until I opened it, the box was encased in unbroken shrink-wrap. Below
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`are images that I took of box just before I opened it, showing the unbroken seams
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`of the shrink wrap:
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`SONY EXHIBIT 1005- Page 5
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`Exhibit 1033 to this Declaration includes images of each side of the shrink-
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`wrapped box, including the images above.
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`IV. THE UNSEALING AND COLLECTION OF THE CONTENTS OF
`THE VOCALCHAT 2.0 BOX
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`14. On October 31, 2013, at the request of Sony’s counsel, I opened the
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`box and inspected its contents. The materials inside included two 3.5-inch floppy
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`disks, various documentation, two sound boards, and two handsets. Exhibit 1034
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`to this Declaration attaches images of my first inspection. After taking the
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`pictures, I placed all of the materials back inside of the box and closed it.
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`SONY EXHIBIT 1005- Page 6
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`15. On November 1, 2013, I brought the box and its contents to the
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`offices of HayStackID (“HayStack”) 1330 Avenue of the Americas, Suite 23, New
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`York, New York 10019 in order for HayStack to perform a collection and imaging
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`of the disks inside of the box as well as all other materials from the box and the
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`box itself. I understand from its website that HayStack is an international end-to-
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`end eDiscovery and forensics services and solutions provider.
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`16. Exhibit 1035 is a copy of a Chain-of-Custody document executed by
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`myself and Alexander Gessen, HayStack’s National Director of Forensics, the
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`individual who performed the collection. That document shows the time that I
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`provided Haystack with access to the box and its contents, and the time that the
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`collection concluded. Reference in this declaration to “the collection” refers to the
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`copying that occurred during the timeframe noted on the Chain-of-Custody
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`document. I was present for the entire collection and I supervised and assisted
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`with the collection.
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`17. As further noted on the Chain-of-Custody document, the box included
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`the two 3.5 inch floppy disks, various documentation, two sound boards, and two
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`handsets (referred to as “phones”), as I described above.
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`18. One of the disks is entitled “The VocalChat” (“the VocalChat 2.0
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`Disk”). Below, and attached as Exhibit 1036, is an image of the VocalChat 2.0
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`Disk taken during the collection:
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`SONY EXHIBIT 1005- Page 7
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`19.
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`I note that the VocalChat 2.0 Disk has a copyright date of 1992 on its
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`label. That date refers to the copyright of the expression on the label and not the
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`contents of the disk. As discussed below, the relevant electronic files on the
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`VocalChat 2.0 Disk were all last modified on June 19, 1994.
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`20. Under my supervision, HayStack copied the contents of the
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`VocalChat 2.0 Disk. I understand that Mr. Gessen used the following hardware
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`and software to collect the electronic materials contained on the VocalChat 2.0
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`Disk:
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`• Apple MacBook Pro, model A1398, running Windows 7 Professional in
`Bootcamp mode;
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`• BYTECC External USB Floppy Drive Model BT-144; and
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`• EnCase Forensic, 64-bit, Version 6.19.7.
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`- 7 -
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`SONY EXHIBIT 1005- Page 8
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`21. The VocalChat 2.0 Disk includes, among other things, files named:
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`info.hlp, readme.txt., trouble.hlp, and voclchat.hlp.
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`22. Below, and in Exhibit 1037, is a true and accurate screenshot showing
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`the contents of the VocalChat 2.0 Disk, as well as the dates the files were last
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`modified (i.e., June 19, 1994):
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`23.
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`Info.hlp, readme.txt., and trouble.hlp were included on each
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`VocalChat 2.0 Disk made available to the public, starting in June 1994. We, i.e.,
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`VocalTec, made these files available to users to provide information about the
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`software and answer frequently asked questions.
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`24. The readme.txt file, attached as Exhibit 1022 to this Declaration,
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`references version “2.02.” This is a reference to the build version of the software
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`that we released to the public as VocalChat 2.0 in June 1994. Boxes identical to
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`the one that I retained were distributed to the public shortly after June 19, 1994,
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`which is the “last modified” date of the electronic files on the VocalChat 2.0 Disk.
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`As we completed new builds of our software, we released them promptly, usually
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`within days or at most a couple of weeks.
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`- 8 -
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`SONY EXHIBIT 1005- Page 9
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`25. Exhibit 1041, a buyer’s guide supplement to the Microsoft Systems
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`Journal dated January 1995, indicates that VocalChat 2.0 continued to be available
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`from VocalTec in January 1995.
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`26. While not shown in the screenshot above, several other files are
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`included within the “setup.exe” file and are unpacked during installation of the
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`VocalChat 2.0 software on a computer. Some of these additional files are
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`referenced in the readme.txt file itself. A help file called “voclchat.hlp” was one
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`such file that was unpacked after installation of the executable files on a VocalChat
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`2.0 Disk. Voclchat.hlp is referenced in the readme.txt file.
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`27.
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`I understand that when Sony consultant Professor Crovella installed
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`VocalChat 2.0 from a copy of the VocalChat 2.0 Disk, the “setup.exe” file
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`unpacked the “voclchat.hlp” file, among other files, and placed it on his computer.
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`28.
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`I received from Prof. Crovella (via counsel), and reviewed, a printout
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`of the voclchat.hlp file from the VocalChat 2.0 Disk, as well as the electronic file
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`itself. This is the version of voclchat.hlp that I remember we, i.e., VocalTec,
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`included on VocalChat 2.0 Disks. The purpose of that file was to provide a user
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`with a reference that could answer questions and provide more information about
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`the software, including operating instructions.
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`SONY EXHIBIT 1005- Page 10
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`29. Mr. Gessen had an assistant copy the hard copy documents from the
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`VocalChat 2.0 box. One such document contained in the box is the VocalChat
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`User’s Guide for Version 2.0 (“VocalChat User’s Guide”). That document,
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`attached as Exhibit 1023 to this Declaration, bears a copyright date of 1994.
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`V. THE VOCALCHAT 2.0 EXHIBITS RELIED UPON IN THE SONY
`PETITION WERE ALL PUBLICLY AVAILABLE BY JUNE 1994
`ONWARD
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`30. Through the collection, I provided each of Exhibits 1021-1025 and
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`1033-1037 to counsel for Sony.
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`31. Exhibit 1023 is a true and correct copy of the VocalChat User’s Guide
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`discussed above. It was obtained from the VocalChat 2.0 box that I have had in
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`my possession (unopened) since June 1994.
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`32. Exhibit 1022 is a true and correct copy of a printout of the
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`“readme.txt” file discussed above. It was obtained from the VocalChat 2.0 Disk
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`which I have had in my possession (inside the unopened box) since June 1994.
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`33. Exhibit 1025 is a true and correct copy of a printout of the
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`“voclhat.hlp” file discussed above. It was obtained from the VocalChat 2.0 Disk
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`that I have had in my possession (inside the unopened box) since June 1994.
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`34. Exhibit 1024 is a true and correct copy of a printout of the “info.hlp”
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`file discussed above. It was obtained from the VocalChat 2.0 Disk that I have had
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`in my possession (inside the unopened box) since June 1994.
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`SONY EXHIBIT 1005- Page 11
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`35. Exhibit 1021 is a true and correct copy of a printout of the
`"trouble.hlp" file discussed above. It was obtained from the VocalChat 2.0 Disk
`that I have had in my possession (inside the unopened box) since June of 1994.
`36. Each of Exhibits 1021 -1025 were publicly distributed with VocalChat
`2.0, in boxes just like the one that I retained, starting by June 1994 (or earlier), by
`VocalTec itself. Members of the public were under no obligation to keep any of
`these documents confidential.
`37.
`I understand and have been warned that willful false statements and
`the like are punishable by fine or imprisonment, or both (18 U.S.C. § 1001). I
`declare that all statements made herein of my own knowledge are true and that all
`statements made on information and belief are believed to be true, and further, that
`these statements were made with the knowledge that willful false statements and
`the like so made are punishable by fine or imprisonment, or both, under § 1001 of
`title 18 of the United States Code.
`38.
`I declare under penalty of perjury that the foregoing is true and
`correct.
`Executed on December 3, 2013 in Bergenfield, New Jersey.
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`-11 -
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`SONY EXHIBIT 1005- Page 12
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