UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`FACEBOOK, INC. & INSTAGRAM, LLC,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`
`_________________________
`
`Case IPR2015-00778
`Patent 6,038,295
`_________________________
`
`
`
`DECLARATION OF PRASANT MOHAPATRA, PH.D.
`
`
`
`Facebook et al. v. TLI Communications
`IPR2015-00778 Ex. 2009
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________________
`
`FACEBOOK, INC. & INSTAGRAM, LLC,
`Petitioner,
`
`v.
`
`TLI COMMUNICATIONS LLC,
`Patent Owner.
`
`_________________________
`
`Case IPR2015-00778
`Patent 6,038,295
`_________________________
`
`
`
`DECLARATION OF PRASANT MOHAPATRA, PH.D.
`
`
`
`Facebook et al. v. TLI Communications
`IPR2015-00778 Ex. 2009
`
`
`
`
`
`
`
`PRASANT MOHAPATRA, Ph.D. declares:
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`
`
`I. BACKGROUND.
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`1.
`
` In 1987, I earned the B.S. degree in Electrical Engineering from the
`
`National Institute of Technology in Rourkela, India. In 1989, I earned a M.S.
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`degree in Mathematics from The University of Rhode Island and in 1993, I earned
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`a Ph.D. degree in Computer Engineering from The Pennsylvania State University.
`
`2.
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` From 2009 to 2013, I was the Tim Bucher Family Endowed Chair,
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`University of California, Davis, CA.
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`3.
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`From 2007 to 2013, I was the Chair of the Computer Science Department,
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`University of California, Davis, CA.
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`4.
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`From 2003 to present I have been a professor at the Computer Science
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`Department, University of California, Davis, CA.
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`5.
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`From 2013 to 2014, I served as the Interim Vice-Provost and the Chief
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`Information Officer (CIO) of UC Davis.
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`6.
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`7.
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`From 2014 to present I am serving as the Associate Chancellor of UC Davis.
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`I am a fellow of the American Association for the Advancement of Science
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`(AAAS) and Institution of Electrical and Electronics Engineers (IEEE).
`
`
`
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`2
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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`
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`8.
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`I have taught computer science classes at the undergraduate and graduate
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`levels, as well as supervised research at the undergraduate, graduate and post-
`
`doctoral levels. A copy of my curriculum vitae, which details my experience that
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`is relevant to these proceedings, is included as Exhibit 2010.
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`9.
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`For my efforts in connection with the preparation of this declaration I have
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`been compensated at my regular hourly rate for this type of consulting activity. My
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`compensation is in no way dependent or contingent upon the outcome of these
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`proceedings or any other proceedings relating to the subject ’295 Patent and I have
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`no financial interest in Patent Owner.
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`
`
`II. MATERIALS AND INFORMATION PROVIDED TO ME AND
`
`LEVEL OF ORDINARY SKILL IN THE ART.
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`10.
`
`In connection with the preparation of this declaration I have read and
`
`understood 6,038,295 (the “‘295 patent” or the “Mattes patent”) (Ex. 1001).
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`11.
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`I have been informed that “a person of ordinary skill in the art” is a
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`hypothetical person to whom an expert in the relevant field could assign a routine
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`task with reasonable confidence that the task would be successfully carried out. I
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`have been informed that the level of skill in the art may be evidenced by references
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`published at or around the time of the filing of the patent under consideration.
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`
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`3
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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`Based on my experience, it is my opinion that the level of ordinary skill in the
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`relevant art at the time of the invention would be a person having a Bachelor of
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`Science degree in computer science, electrical engineering, or computer
`
`engineering, with approximately 2 years of practical work experience or post-
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`graduate research in a field such as computer networking and/or distributed
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`systems. I do not believe the person of ordinary skill in the art would have required
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`advanced training in digital imaging, however, because the subject Mattes patent
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`and the cited references are not concerned with any imaging problems or
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`techniques per se. Instead, the Mattes patent focuses on devices for capturing
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`storing, communicating and administering digital images. In June 1996, I had at
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`least the specified level of experience in the relevant field. Furthermore, at least by
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`virtue of my teaching computer science classes at the undergraduate and post-
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`graduate levels, I had and continue to have an understanding of the capabilities of a
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`person of ordinary skill in the relevant art at the time of the invention of the ’295
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`Patent. I have supervised and directed many such persons over the course of my
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`4
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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`career.
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`III. OVERVIEW OF U.S. PATENT 6,038,295
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`12. One problem addressed by the Mattes patent concerns transmitting, storing
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`and classifying digital images that are captured by and issue from telephones.1 The
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`Mattes patent proposes allowing telephone users to prescribe and/or allocate
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`classification information data to such digital images, for example, by using the
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`phone’s keypad.2 The telephone then transmits the digital images and classification
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`information data to a server. The server extracts the classification information data
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`and takes it into account when storing the digital images so that the transmitted
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`images may be “surveyable” and “easily relocated.”3
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`13. Claim 17, reads as follows:
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`A method for recording and administering digital images,
`comprising the steps of:
`recording images using a digital pick up unit in a telephone
`unit,
`storing the images recorded by the digital pick up unit in a
`digital form as digital images,
`transmitting data including at least the digital images and
`classification information to a server, wherein said
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`1 Ex. 1001 at 1:62 – 2:4; Figs. 1 and 2.
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`2 Id. at 6:42-58, 7:16-19.
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`3 Id. at 1:62-2:4, 2:55-65, 7:45-55.
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`5
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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`classification information is prescribable by a user of the
`telephone unit for allocation to the digital images,
`receiving the data by the server,
`extracting classification information which characterizes the
`digital images from the received data, and
`storing the digital images in the server, said step of storing
`taking into consideration the classification information.
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`
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`14.
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`I have been asked to render an opinion on the meaning of the term
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`“telephone unit,” as recited in claim 17, from the standpoint of the person of
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`ordinary skill in the art at the time of the invention. In my opinion, such a person of
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`ordinary skill in the art would understand that the claimed telephone unit is, at a
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`minimum, a telephone. The specification provides several examples of such
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`telephones and further indicates that the “telephone unit has a telephone portion.”4
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`Further, by adding the term “unit,” the person of ordinary skill in the art would
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`understand that the device (the telephone unit) is a unitary, one piece, integrated
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`device. This is because the term “unit” conveys to the person of ordinary skill in
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`the art the idea that it is an individual device that is being described.
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`4 Id. at 2:24.
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`6
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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`15. Claim 17 also states that the digital pick up unit is in the telephone unit.”5
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`This lends further credence to the understanding that the telephone unit (with its
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`digital pick up unit) is a single, integrated device.6 Only by being “integrated” into
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`the telephone would a person of ordinary skill in the art consider the digital pick up
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`unit to be in a telephone unit.
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`16.
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`I hereby declare that all statements made of my own knowledge are true and
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`all statements made on information are believed to be true and further that the
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`statements were made with the knowledge that willful false statements and the like
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`so made are punishable by fine or imprisonment or both under § 1001 of Title 18
`
`of the United States Code, and that such willful false statements may jeopardize
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`the validity of this patent.
`
`DATE:
`
`
`
`
`11/12/2015
` PRASANT MOHAPATRA, PH.D.
`
`
`
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`5 Id. at 10:3-4.
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`6 Id. at 5:58-61(“The telephone unit also includes a digital image pick up unit for
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`recording images, the digital image pick up unit being integrated into the
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`telephone unit 60 TE.”) (emphasis added).
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`7
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`Facebook et al. v. TLI Communications
`IPR2014-00778 Ex. 2009
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