UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`
`
`T-MOBILE US, INC. and T-MOBILE USA, INC. and
`CELLCO PARTNERSHIP d/b/a/ Verizon Wireless,
`
`Petitioners,
`
`v.
`
`ADVANCED MEDIA NETWORKS, LLC,
`
`Patent Owner.
`______________
`
`Case IPR2016-00628
`Case IPR2016-00629
`
`
`
`U.S. Patent No. 5,960,074
`
`____________
`
`
`
`DECLARATION OF JAMES OLIVIER
`IN SUPPORT OF PATENT OWNER PRELIMINARY RESPONSE
`37 C.F.R. § 42.107(a)
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`
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`1. My name is James L. Olivier, Ph.D. I have been asked to opine on the
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`
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`patentability or otherwise of U.S. Patent 5,960,074 (“the ’074 patent”). My
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`assessment of the scope and content of the prior art is set forth herein. I make this
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`declaration based on personal knowledge, and I am competent to testify about the
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`matters set forth herein. I support this declaration on behalf of Advanced Media
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`Networks LLC. in connection with its preliminary response in the inter partes
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`review of the ’074 patent.
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`I. Background and Qualifications
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`1.
`
`I am currently a consultant at McAlexander Sound, Inc. of
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`Richardson, Texas. I consult on system, product investigations, and expert witness
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`services related to intellectual property issues. I specialize in
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`data/telecommunication systems such as wireless and GPS platforms, cellular
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`networks, telephony protocols, and broadband switching systems. (CV as Ex. A)
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`2.
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` I have a Ph.D. from The Ohio State University in Electrical
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`Engineering with minors in Discrete Mathematics, Computer Science and
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`Microelectronics. I have published papers in the areas of coding theory and
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`multiprocessor computer systems.
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`3.
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`I have extensive experience in the design and development of
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`telecommunication systems, including cellular products, for industry. I have
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`developed and designed equipment for telecommunication services since my start
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`at AT&T Bell Laboratories in 1990, where I worked on AT&T are Autoplex Series
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`base stations as a Member of Technical Staff. It was here where I first began my
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`work with telecommunication standards bodies, contributing the ATM Forum.
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`Later at DSC, I was the Senior Manager of the ATM systems engineering group
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`developing ATM packet switches for a new generation base station for use by
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`Motorola in their Centralized Base Station Controller. While at DSC, I was also
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`their corporate representative to the ATM Forum, participating in bi-monthly
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`standards body development. I was one of the first contributors to the wireless
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`standards at the ATM Forum.
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`4.
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`At Samsung, I was a Principal Engineer for wireless broadband
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`services over UMTS. I worked at Samsung Telecommunications America
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`designing their next generation cellular switch, a UMTS switch. While at
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`Samsung, I was also their corporate representative to the International
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`Telecommunication Union, (“ITU”), which is the agency of the United Nations
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`responsible for information and communication technologies. It was there that I
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`participated in the development of standards for advanced wireless networks.
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`5.
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`At Marconi I worked on a number of systems for the access market,
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`such as DSL modems, and DSLAMs which used orthogonal codes. At Navini
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`Networks I was responsible for layer 2 and layers 3 network protocols for their
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`Code Division Multiplexed Access (CDMA) base stations and broadband modems.
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`II. Legal Understanding
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`6.
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`I understand that a patent claim is unpatentable if it is obvious over
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`the prior art, i.e., if a person of ordinary skill in the art at the time of the invention
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`would have viewed the claimed invention as obvious. Obviousness may be shown
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`by considering more than one item of prior art in combination with others or based
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`on a single prior art reference in combination with the general state of the art.
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`However, a claim is not rendered obvious merely because the various limitations of
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`the claim can be found piecemeal in the prior art. Obviousness requires a
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`conclusion that a person of skill at the time of the patent at issue would have had
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`some reason to combine the piecemeal prior art in some way that would lead to the
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`subject matter claimed in the patent. In evaluating whether such a reason exists, I
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`understand that it can be useful to consider whether the evidence shows one or
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`more of the following:
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` Combining prior art elements according to known
`methods to yield predictable results
` Simple substitution of one known element for
`another to obtain predictable results
` Use of a known technique to improve similar
`devices (methods or products) in the same way
` Applying a known technique to a known device
`(method or product) ready for improvement to
`yield predictable results
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` “Obvious to try” – 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 would have been
`predicable to one of ordinary skill in the art
` 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.
`
`
`I understand that the reason to select and combine features, the
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`7.
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`predictability of the results of doing so, and a reasonable expectation of success
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`may be found in the teachings of the prior art references themselves, in the nature
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`of any need or problem in the field that was addressed by the patent, in the
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`knowledge of persons having ordinary skill in the field at the time, as well as in
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`common sense or the level of creativity exhibited by persons of ordinary skill in
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`the art. I further understand that there need not be an express or explicit suggestion
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`to combine references. In determining the differences between the invention
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`covered by the patent claims and the prior art, I understand that the prior art
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`references are not looked at in isolation. Rather, the claimed invention as a whole
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`must be considered, and it must be determined whether or not it would have been
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`obvious in light of all of the prior art.
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`8.
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`The obviousness of a patent is assessed from the perspective of a
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`person of ordinary skill in the art at the time of the alleged invention. Such a
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`person is presumed to know all prior art within that field. The person of ordinary
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`skill faced with a problem is able to apply his or her experience and ability to solve
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`the problem and also look to any available prior art to help solve the problem.
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`III. Materials Considered
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`9.
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`I have reviewed the following documents in furtherance of this
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`Declaration:
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`a. U.S. Patent No. 5,960,074 (the ‘074 Patent), entitled Mobile Tele-
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`computer Networks for Motion Picture, Television, an TV
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`Advertising Production.”
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`b. U.S. Patent No. 5,657,317 (“Norand”)
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`c. U.S. Patent No. 5,726,984 (“Kubler”).
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`d. U.S. Patent 5,623,495 (the “Eng Patent”).
`e. Eng et al., “A Wireless Broadband Ad-Hoc Local-Area Network.”
`Wireless Networks’, Vol. 1, No. 2, June 1995, pp. 161-174, (the “Eng
`Article”).
`f. Comer, Internetworking with TCP/IP (“Comer”).
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`g. Petitions for Inter Partes Review of U.S. Patent No. 5, 960,074
`
`(IPR2016-00628 and IPR-00629.
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`h. Reexam No. 90/013,382: 7/20/15 Declaration of Lance J. McNally
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`(Marked Patent Owner’s Ex. 2006)
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`i. Declaration of K. Alemroth Ex. 1014
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`IV. Primary Combination
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`10. Having reviewed Norand and Kubler, I understand that Kubler is a
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`continuation-in-part of Norand. This means that Kubler includes the disclosure of
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`Norand in its entirety. Specifically, Norand and Kubler’s Figs. 1-45 are identical
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`and Norand’s Detailed Description is repeated in Kubler between col. 8, line 24 –
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`col. 63, line 40.
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`11. Having reviewed the Declaration of Lance J. McNally in
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`Reexamination Control No. 90/013,382, Kubler, and Norand, I concur with Mr.
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`McNally’s assessment of Kubler and confirm that McNally’s findings with regard
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`to Kubler are equally applicable to Norand.
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`12. Specifically, Norand provides a hierarchical communication system,
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`which includes wired and wireless networks. The wired network is referred to as a
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`premises LAN, whereas the wireless portions are “spontaneous” vehicular and
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`peripheral LANs. (Ex. 1003 at 9:25-10:18.) The characteristics of each of these
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`LANs will differ substantially. (id. at Abstract.) For instance, “spontaneous”
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`networks are capable of being created, used, and then destroyed, as needed, for
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`example, to enable a roaming computing device to print wirelessly, whereas the
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`wired premises LANs are persistent. (Ex. 1003 at 10:5-14.) The role that devices
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`play within the spontaneous network, i.e., whether the device is deemed active or
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`passive in establishing the LAN, is dictated by the communication protocol being
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`used on the particular wireless network. (Ex. 1003 at 37:55-38:6, Ex. 2006 at ¶10.)
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`Other hierarchical network characteristics are also protocol dependent, including
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`“designs which take into consideration such factors as cost, weight, power
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`conservation, channel loading, response times, interference, communication flow,
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`etc.” (Ex. 1003 at 10:34-49, Ex. 2006 at ¶10.) Norand’s inventive hierarchical
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`network is achieved with a proprietary protocol that enables features that cannot be
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`achieved with TCP/IP. It is instructive that even though TCP/IP was well known
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`in the early 1990s (Ex. 1014 Declaration of K. Alemroth at ¶110.), there is no
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`mention of this well-known protocol in Norand. One skilled in the art would not
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`replace Norand’s proprietary protocol with a different protocol, such as TCP/IP,
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`because doing so would result in a loss of the primary functionality enabled with
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`the proprietary protocol, that is, the ability to create spontaneous LANs.
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`Replacement of the proprietary solution with TCP/IP, aside from losing
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`spontaneous LANs would also significantly degrade power management and the
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`communication flow of the described hierarchical scheme.
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`13. With respect to power management, Norand emphasizes that the
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`communication protocol between radio LANs and WANs enable power
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`conservation features for limited power radio devices. (Ex. 1003 at 10:43-49.)
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`Specifically, radio devices employ power management by operating in standby or
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`sleep modes of operation for many access interval time slots before activating their
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`receivers for monitoring SYNC and HELLO messages. (Ex. 1003 at 31:20-24.)
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`Power managed devices also employ sleep algorithms synchronized to wake for a
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`minimum period necessary to guarantee receipt of priority SYNC, HELLO, and
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`Pending Message transmissions before resuming SLEEP. (Ex. 1003 at 31:26-30.)
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`For spontaneous LANs, access intervals may be simplified to reduce power
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`consumption, program storage and processing power requirements for portable
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`devices used as control points. (Ex. 1003 at 38:57-60.) Control point devices may
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`use a deferred SYNC mechanism for light system loading, transmitting Priority
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`SYNC every third Access Interval to further decrease their transmission
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`requirements. (Ex. 1003 at 39:1-7.)
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`14. With respect to communication flow Norand emphasizes that base
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`stations transmit HELLO messages to devices in their coverage area to allow them
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`to connect to other devices in the network. (Ex. 1003 at 42:58-65.) Base station
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`HELLO message may include communication parameters of neighboring base
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`stations to allow roaming computing devices to roam and change base station
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`connections. (Ex. 1003 at 42:66-67; 43:1-6.) Communications are dictated by
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`protocols that control when devices are allowed to transmit and communicate
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`messages. (Ex. 1003 at 15:20-39:33; 41:40-43:30; 50:50-53:56.)
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`15. Replacing Norand’s protocol with TCP/IP, as Petitioner suggests,
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`would change the basic operating principle of Norand and in so doing frustrate the
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`very purpose of providing a hierarchical network. As noted above, TCP/IP cannot
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`replace Norand’s proprietary protocol, because doing so would result in the loss of
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`functionality, including the ability to create spontaneous LANs, and implement the
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`desired power management and communication flow.
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`16.
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`I have reviewed the petition and the declaration of K. Alemroth,
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`neither document explains why one of skill in the art in the relevant timeframe
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`would have had reason to systemically modify Norand such that the spontaneous
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`network functionality he relies upon is lost. It is my understanding that a
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`modification that changes the basic operating principle, as the proposal to modify
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`Norand does, is a non-obvious modification under the law.
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`17.
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`I hereby declare further that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief are
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`believed to be true, and further that these statements are made with the knowledge
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`that willful false statements and the like are punishable by fine or imprisonment, or
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`both, under Section 1001 of Title 18 of the United States Code, and that such
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`ADVANCED MEDIA Exhibit 2031, pg. 0011
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`EXHIBT A
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`12
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`PROFESSIONAL SUMMARY
`
`The foundation for my career began twenty five years ago with a Doctorate in
`Electrical Engineering with minors in Computer Science, Microelectronics,
`Semiconductor Fabrication, and Discrete Mathematics.
`
`My work experience followed with applied research in computer/communications
`systems design at Bell Labs and General Motors Research Labs. My career then
`progressed to the development and application of new products for a number of
`companies with varying revenue ranges. The constant was the focus on
`computer/communication systems products.
`
` have devoted my attention for the past ten years to industry consulting in the
`area of Intellectual Property and product development.
`
` I
`
`EDUCATION PROFILE
`
`Ph.D. Electrical Engineering, The Ohio State University, Columbus, Ohio, 1988
`Dissertation: “Concurrent Error Detection in Arithmetic Processors using GAN
`Codes”, Received separate minors in fields of Computer Science, Microelectronics
`and Semiconductor Fabrication, and Discrete Mathematics.
`
`Recipient of the prestigious Kodak Fellowship, awarded nationally to top doctoral
`students in the fields of science and engineering.
`
`MS. Electrical Engineering, The Ohio State University, Columbus, Ohio, 1985
`Thesis: “A Navigation System for a Vehicle with a Laser Rangefinder”; Major areas
`of study were computer design and software engineering.
`
`BS. Electrical Engineering, The Ohio State University, Columbus, Ohio, 1983
`Graduated Cum Laude, recipient of Larmus Award, Summa Scholarship, and
`Caldwell Scholarship.
`
`13
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`EXPERIENCE PROFILE
`
`
`Olivier Consulting Inc. Dallas, Texas
`2005 – present
` Intellectual Property Consultant
`
`McAlexander Sound, Inc. - Richardson, Texas
`2003 - present
` Intellectual Property Consultant
`
` 
`
` Patent related contract consulting including System, Product, and Program Code
`investigation, expert witness services for protection of intellectual property; Specialize
`in wireless and GPS platforms, networks, telephony protocol, and broadband
`switching systems, including ATM.
`
`
`
`Navini Networks - Richardson, Texas
`Senior Manager
`
`2002
`
`
`
` 
`
` Performed research and development in Navini’s Wireless CDMA broadband System.
`Responsible for definition and implementation of layer 2 and layer 3 network protocols
`for Navini’s Broadband Wireless Products. Developed features for network security,
`network services, service provisioning and subscriber management in a CDMA
`network.
`
`
` 1999 – 2002
`
`Marconi Communications - Irving, Texas
`Manager of Systems Engineering
`
` Responsible for design and development of new products and product evolution for
`Marconi’s North American Access Division. Lead research and development efforts
`into new hardware and software systems, providing a wide range of data and
`telephony services. Designed new packet agnostic switching hardware and
`associated microprocessor subsystem. Responsible for development of access
`products ranging from high speed switching systems to complex management
`systems.
`
`
`1996– 1999
`
`Samsung Telecommunications America - Richardson, Texas
`Principal Engineer
`
` Responsible for Service Control subsystem of Samsung’s next
`generation wireless broadband UMTS switching system.
`Designed and developed a Java based platform for defining
`services for Samsung’s next generation high-speed wireless
`switch. Areas of responsibility include traditional telephony
`services, wireless services, broadband services, and Internet
`services.
`
`
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`EXPERIENCE PROFILE (continued):
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`1995 – 1996
`
`
`DSC Switch Products Division – Plano, Texas
`
`Senior Manager: IN Evolution and Business Planning
`
` 
`
` 
`
` Responsible for competitive assessments, cost comparisons and
`fitness of use of the entire DSC AIN product line. Directed IN
`product evolution plans, actively interacting with key customers
`and participating in relevant standards work.
`
` Conceived and designed DSC’s Broadband Intelligent Network
`products.
`
`Senior Manager: ATM Systems Engineering Group
`
` 
`
` Lead the systems engineering group in defining a new high speed
`ATM switches for enterprise and telecommunication networks.
`These efforts include the development of new Application
`Specific
`Integrated Circuits,
`(ASICs), multiprocessor
`architectures, communications subsystems, and software
`architectures
`
`AT&T Bell Laboratories - Columbus, Ohio
`Member of Technical Staff
`
` Designed and implemented a variety of multiprocessor systems
`for use in the telecommunications network. These include a
`Signaling Processor Subsystem for AT&T’s Central Office ATM
`Switch, a translation subsystem for AT&T Autoplex Cellular
`Switching System and improvements to the Common Network
`Interface (CNI) subsystem, which is a part of the 5ESS, 4ESS,
`NCP, and STP product lines
`
`General Motors Research Laboratories - Warren, Michigan
`Senior Research Engineer: Computer Science Department
`
` Conducted research into basic computer science problems
`associated with the future development of vehicular systems.
`These areas include the design of fault tolerant control systems,
`new cost affective microprocessor architectures and software for
`reliability and performance modeling. Lead the development of
`an automotive testbed for the evaluation of prototype systems.
`
`15
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`1990 – 1995
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`
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`1989 – 1990
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`
`
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`EXPERIENCE PROFILE (continued):
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`1988 – 1989
`
`
`Harris Communications – Melbourne, Florida
`Principal Engineer
`
` 
`
` Conducted research and development into innovative computer
`systems for use in space systems. Studied coherency protocols
`for microprocessor memory systems. Developed fault tolerant
`multi-processor computer systems for use in Strategic Defense
`Initiative.
`
`
`
`PUBLICATIONS
`
`
`
`Olivier, J., Ozguner, F. “A navigation algorithm for an intelligent vehicle with a laser
`rangefinder”, Proceedings of the 1986 IEEE International Conference on Robotics and
`Automation, Vol. 3, April 1986.
`
`Olivier, J. L. and Ozguner, F. “Design of Concurrent Error Detecting Systolic Arrays Using
`GAN Codes“ IEEE Transactions on Computer Aided Design, vol. 9, no. 10 October 1989.
`
`Olivier, J.L. “Low Cost Residue Prediction for Improved Addition Efficiency”, G. M.
`Research Publication, December 1989.
`
`Olivier, J.L. and Tkacik, T.E., “RELY, a Markov Modeling Package for System Reliability
`Prediction“ G.M. Research Publication, January 1990.
`
`
`
`
`
`
`
`
`TECHNICAL CONSULTING
`
`
`
`2010 Oliff & Berridge, PLC
`
` 
`
` Evaluated Patent Portfolio related to Tire Sensor Systems
`
`
`2009 Transpacific IP
`
` 
`
` Evaluated Patent Portfolio related to Metro Ethernet, MPLS, 802.17, and 802.3
`solutions
`
`
`
`
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`TECHNICAL CONSULTING (continued):
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`2005 – 2006
`
`Consultant
`
`Telstrat - Plano, Texas
`
`
` 
`
` Responsible for the specification, design, and architecture of the Telstrat’s Next
`Generation Access Product. Evaluated various approaches such as Metro Ethernet,
`MPLS, 802.17, and 802.3 solutions. Platform delivers Video, including analog, digital,
`HDTV and IP based voice, including packetized and local services, and internet
`access.
`
`Crane Aerospace - Plano, Texas
`Consultant
`
`
`
`
`2004 – 2005
`
`
` 
`
` Conducted research into the specification, design, and architecture of the Crane
`Wireless Sensor Network. Investigated scalability, address assignment, access, and
`security for a large Wireless Sensor Network. This network is a layered self-
`organizing network of sensors incorporating deployed low cost sensors with a
`potentially disposable goal. Intended applications include unattended “sentries” that
`can be used in wide area battlefield, border security, and asset and force protection.
`
`
`
`ISSUED PATENTS AND PATENT APPLICATIONS
`
` 
`
` US 8334775 RFID-based asset security and tracking system, apparatus and method
` US 20090174772 Security and surveillance system
`
`
`
`
`
`
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