IN THE UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF TEXAS
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`DALLAS DIVISION
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`SUMMIT 6 LLC
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`Plaintiff,
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`v.
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`CIVIL ACTION NO. 3:11-CV-00367-O
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`RESEARCH IN MOTION CORP.,
`RESEARCH IN MOTION LIMITED
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`SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG TELECONINIUNICATIONS
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`AMERICA LLC, MULTIPLY INC.,
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`FACEBOOK, INC., AND
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`PHOTOBUCKET CORP.,
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`Defendants.
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`SUPPLEMENTAL EXPERT REPORT OF DR. V. THOMAS RHYNE
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`REGARDING THE INVALIDITY OF THE ASSERTED CLAIMS OF
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`US. PATENTS NOS. 6,895,557 AND 7,765,482
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`1.
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`INTRODUCTION
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`1.
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`In this litigation Plaintiff Summit 6 LLC (“Summit 6”) has asserted that the defendants
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`listed above infringe various claims of US. Patents Nos. 6,895,557 (“the ’557 patent”)
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`and 7,765,482 (“the ’482 patent”). This supplemental expert report addresses issues related to
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`the claims being asserted against defendants Samsung Electronics Co. Ltd. and Samsung
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`Teleconmnmications America LLC (collectively “Sams1mg”) and Facebook, Inc. (“Facebook”)
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`(collectively “Defendants”).
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`2.
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`In this supplemental expert report I address additional evidence recently produced by
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`Fenwick & West LLP on or aI01md August 31, 2012—
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`Facebook v. TLI Communications
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`including evidence about Point2’s Web-Based Image Submission
`Tool and Point2 Demo (the “Fenwick Material”). This evidence was produced after I submitted
`my August 1, 2012 Expert Report Regarding the Invalidity of the Asserted Claims of U.S.
`Patents Nos. 6,895,557 and 7,765,482 (hereinafter my “Opening Expert Report”).1
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`In addition, in this supplemental expert report I address whether there are any secondary
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`indicia of nonobviousness attributable to the alleged inventions of the ’557 and ’482 patents.
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`1 I incorporate my Opening Expert Report in its entirety herein by reference.
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`1.1.
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`Retention and Qualifications
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`6.
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`My retention and qualifications for forming the opinions set forth in this supplemental
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`expert report were summarized in 1H 2—5 and 15-29 of my Opening Expert Report, and were
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`addressed more fully in my resrune which was attached as Exhibit A to my Opening Expert
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`Report.
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`1.2.
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`The Scope of this Supplemental Expert Report
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`7.
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`For this supplemental expert report, I have been asked to address the additional evidence
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`providedm the Fenwick Mam-a1 regarding—
`_, and to address whether there are any secondary indicia of nonobviousness
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`attributable to the alleged invention claimed in the ’557 and ’482 patents. This supplemental
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`expert report provides my opinions on those issues and the bases for those opinions.
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`1.3.
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`Preparation of This Report and Materials Considered
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`8.
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`In my Opening Expert Report and Exhibit B attached to that expert report, I provided the
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`bases for my rmderstanding and the list of materials considered for that report. See Opening
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`Expert Report {[1] 30-32 and Exhibit B.
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`9.
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`In writing this supplemental expert report. the additional materials I have reviewed and
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`considered include:
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`10.
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`A more complete list of the docrunents and materials I reviewed and considered in
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`forming the opinions set forth in this supplemental expert report and in my Opening Expert
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`Report. including the materials listed in Exhibit B and the additional material considered for this
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`supplemental expert report, is attached hereto as Amended Exhibit B.
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`Facebook v. TLI Communications
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`IPR2014-00566 TLI Ex. 2003 Page 3 of 8
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`1.4. Overview of Analysis and Opinions Formed
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`This supplemental expert report explains the analysis I have done for this report and the
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`opinions I have formed based on the study and analysis outlined above. To summarize:
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`d. It is my opinion that there are no secondary indicia of nonobviousness attributable to
`the ’557 and ’482 patents, as I more fully explain in § 4 below.
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`2. MY UNDERSTANDING OF THE RELEVANT LEGAL PRINCIPLES
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`In my Opening Expert Report, I explained my understanding of the currently applicable
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`legal principles which I have used for my opinions in my Opening Expert Report and this
`supplemental expert report. See Opening Expert Report at ¶¶ 34-60. I incorporate those
`previously provided legal principles fully herein by reference, to the extent those principles are
`applicable to the issues in this supplemental expert report.
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`2.1.
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`Secondary Factors of Non-Obviousness
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`As I noted in my Opening Expert Report, I understand that a patent cannot be properly
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`granted for subject matter that would have been obvious to a person of ordinary skill in the art at
`the time of the alleged invention, and that a patent claim directed to such obvious subject matter
`is invalid under 35 U.S.C. § 103. It is also my understanding that in assessing the obviousness of
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`claimed subject matter one should evaluate obviousness over the prior art from the perspective of
`one of ordinary skill in the art at the time the invention was made (and not from the perspective
`of either a layman or a genius in that art). It is my further understanding that the question of
`obviousness is to be determined based on:
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`a. The scope and content of the prior art;
`b. The difference or differences between the subject matter of the claim and the prior art
`(whereby in assessing the possibility of obviousness one should consider the manner
`in which a patentee and/or a Court has construed the scope of a claim);
`c. The level of ordinary skill in the art at the time of the alleged invention of the subject
`matter of the claim; and
`d. Any relevant objective factors (the “secondary indicia”) indicating non-obviousness.
`To the extent the claims of the ’557 and ’482 patents are anticipated, it is my
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`understanding it is unnecessary to consider whether those claims are obvious in light of the prior
`art. I also understand that if a prima facie showing of obviousness is made, a plaintiff can rebut
`that showing with secondary factors of nonobviousness attributable to the alleged invention.
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`I understand that secondary factors indicating non-obviousness can include the following
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`evidence:
`a. Commercial success of the products or methods covered by the patent claims;
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`b. A long-felt need for the alleged invention;
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`c. Failed attempts by others to make the alleged invention;
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`d. Copying of the alleged invention by others in the field;
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`e. Unexpected results achieved by the alleged invention;
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`f. Praise of the alleged invention by the alleged infringer or others in the field;
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`g. The taking of licenses under the patent by others and the nature of those licenses;
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`h. Expressions of surprise by experts and those skilled in the art at the subject matter of
`the claim; and
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`i. Whether the patentee proceeded contrary to accepted wisdom of the prior art.
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`It is also my understanding that, in order to be relevant to the issue of obviousness, such
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`secondary considerations must have some nexus to the claimed invention.
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`4.2.
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`No Long Felt But Unmet Need
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`55.
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`I am not aware of any long felt but unmet need in the prior art addressed by the alleged
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`inventions of the ’557 and ’482 patents. Likewise, Summit 6 has not identified any long felt but
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`unmet need in its responses to Defendants’ Common Interrogatory No. 6.
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`56.
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`Srunmit 6 contends, without supporting evidence or citations, that prior art technologies
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`“had at least 4 shortcomings,
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`including (1) being a daunting and cmnbersome process; (2)
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`requiring technical ‘know how’ not possessed by the average user of such methodologies; (3)
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`being increasingly complex as more sharing took place and (4) lacking a streamlined process for
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`handling and transporting rich media objects.” (Summit 6’s July 30, 2012 Response to RIM
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`Interrogatory No. 7, p.12—13.)
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`57.
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`As I have explained throughout my Opening Expert Report, however, there were many
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`pieces of prior art that taught these supposed advantages, alone and in combination, such as
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`Point2’s Web-Based Image Submission Tool, the Mattes patent, and the Mayle patent. Thus,
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`there was no “need” for these features, much less a “long felt need.”
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`Using cellular telephones for image transmission, and even processing those images
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`before transmission, was also known before the alleged invention of the ’557 and ’482 patents.
`Mattes is an example of a system in which cellular telephones were used for transmitting images.
`(See, for example, Mattes 1:31-35; Opening Expert Report ¶¶ 106-109.) Mattes discloses a
`telephone system that “makes it possible to digitize, compress and transmit individual still
`pictures, such as photographs” via the telephone. (See, for example, Mattes 1:35-41; Opening
`Expert Report ¶ 107.) Before images are transmitted to a server, Mattes explains that “[t]he
`digital images may be compressed using still picture image data compression methods such as
`JPEG …. using a data processor” on the telephone unit. (See, for example, Mattes 6:1-12;
`Opening Expert Report ¶ 107.) Like the system described in the asserted patents, Mattes also
`discloses that the image quality of photos varied based on requirements of the server. (See, for
`example, Mattes 4:18-37; Opening Expert Report ¶ 108.)
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`5.
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`RESERVATION OF RIGHTS
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`78.
`This supplemental expert report reflects my opinions given in good faith with respect to
`the information available to me as of the date I executed it. I respectfully reserve the right to
`supplement or amend my opinions in response to opinions expressed by Summit 6’s experts, or
`in light of any additional evidence, testimony, or other information that may be provided to me
`after the date of this supplemental expert report, including at trial. I also understand that other
`additional discovery may occur in the near future and I explicitly reserve my right to supplement
`this expert report based on such discovery. In addition, I expect that I may be asked to testify in
`rebuttal as to issues that may be raised by Summit 6’s fact witnesses and technical experts at
`trial.
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`Signed on September 14, 2012,
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