`By: Philip Andrew Riley
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001–4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail:
`Qurio904-IPR@finnegan.com
`
`
`
`Jonathan Stroud
`Unified Patents Inc.
`1875 Connecticut Avenue, NW, Floor 10
`Washington, DC 20009
`Telephone: 202-805-8931
`E-mail:
`jonathan@unifiedpatents.com
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`QURIO HOLDINGS, INC.,
`Patent Owner
`____________
`
`IPR2016-00998
`Patent 7,787,904
`Personal Area Network Having Media Player and
`Mobile Device Controlling the Same
`__________
`
`DECLARATION OF DR. CHARLES ELDERING
`
`
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`Page 1 of 7
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`Unified Patents Exhibit 1028
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by Unified Patents Inc. (“Unified” or
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`“Patent Owner”) as an independent expert consultant in this proceeding
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`before the United States Patent and Trademark Office. Although I am being
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`compensated at my usual rate of $425.00 per hour for the time I spend on
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`this matter, no part of my compensation depends on the outcome of this
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`proceeding, and I have no other interest in this proceeding.
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`2.
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`Counsel for Petitioner Unified Patents Inc. (“Unified” or
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`“Petitioner”) has asked me to investigate and opine on certain issues related
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`to U.S. Patent No. 7,787,904 B2 entitled “PERSONAL AREA NETWORK
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`HAVING MEDIA PLAYER AND MOBILE DEVICE CONTROLLING
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`THE SAME” (the “’904 Patent”). Specifically, I understand that Unified is
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`seeking to join IPR2015-02005, and Unified has requested that I adopt the
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`expert declaration of Tal Lavian, Ph.D. to support Unified’s motion for
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`joinder. See IPR2015-02005, Ex. 1013 (Decl. of T. Lavian).
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`3.
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`I have reviewed Dr. Lavian’s declaration and the accompanying
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`exhibits. I agree with Dr. Lavian’s analysis regarding the ‘904 patent and
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`would, subject to changes in wording and any additional analysis I may need
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`to perform, be able to adopt his position as my own.
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`Page 2 of 7
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`II. QUALIFICATIONS AND EXPERIENCE
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`13.
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`I possess the knowledge, skills, experience, training and the
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`education to form an expert opinion and testimony in this case. A detailed
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`record of my professional qualifications, including a list of patents and
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`academic and professional publications, is set forth in my curriculum vitae
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`attached to this declaration as Attachment A.
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`14.
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`I received a B.S. from Carnegie Mellon University in Physics, a
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`M.S. from Syracuse University in Solid State Science and Technology, and a
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`Ph.D. in Electrical Engineering.
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`15.
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`I have been involved in computer engineering, fiber-optic, cable
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`based, and network telecommunications systems for over 20 years. My
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`experience at Expanse Networks, Inc., a company I founded in 2000, was
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`instructive.
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`16. At Expanse Networks, I worked extensively on developing
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`system solutions and initial system prototypes and products for targeted
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`television advertising, which included network architectures, software for
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`head-end and set-top box systems, and
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`related sub-systems
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`for
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`understanding consumers from their purchases and viewing habits, and
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`subsequently delivering the right advertisement to them.
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`Page 3 of 7
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`17.
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`I am not an attorney and offer no legal opinions, but in my
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`work, including my work as a patent agent, I have had experience studying
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`and analyzing patents and patent claims from the perspective of a person
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`skilled in the art, and have developed patent portfolios. I have been deposed
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`and testified several times. I have previously served as a patent analyst and
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`research consultant and I am a named inventor on at least 20 patents in the
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`general area of areas of targeted advertising and presenting alternative
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`advertisements upon fast forwarding, with others pending. I am an inventor
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`or co-inventor on over 130 issued US patents.
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`III. CONCLUSIONS
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`18. The ’904 Patent relates to a mobile device that wirelessly
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`communicates with media devices to select content to be played by the
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`media devices. The mobile device, such as a mobile phone, a PDA, or “a
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`stand-alone device similar to a remote control,” communicates with the
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`media device via a WPAN such as Bluetooth, Wi-Fi, Zigbee or other
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`wireless technologies. The mobile device obtains information which
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`describes content residing at a media device and purportedly allows the user
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`to select content to play at the media device.
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`19. All of the ’904 concepts, features, and technologies were
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`mainstream technologies in this field, and widely adopted in the market, at
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`Page 4 of 7
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`the time of the ’904 Patent application. They were well-known, including in
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`patents, publications and products sold in the market. The Declaration of
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`Dr. Lavian identifies a number of key references, although I believe other
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`references may exist. Consistent with Dr. Lavian, it is my opinion that the
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`independent claims of ’904 were actually anticipated by most of the
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`references; each one alone.
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`20.
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`In Ground 1, De Vet and Vidal make Claims 1-3, 10, 12 and
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`15-18 unpatentable as being obvious. Vidal discloses a touch-screen remote
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`control that communicates wirelessly over Bluetooth, with a plurality of
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`media devices. The remote control communicates with media devices
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`within a short range wirelessly. De Vet discloses communication between
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`the PDA and PC jukebox. Each one of De Vet and Vidal disclose features
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`that allow play back of the content stored on a media device; allow the user
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`to browse the content of the media device and store information about that
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`content; and features that allow play back of the content stored on a media
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`device. All the elements of Claim 1 are disclosed by each of De Vet and
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`Vidal; Claim 1 is anticipated by each of them.
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`21.
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`In Ground 2, Claims 1-3, 10, 12 and 15-18 are obvious over
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`Morse and Holloway. Both Holloway and Morse disclose “a wireless
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`communication interface with the plurality of media devices”, with
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`Page 5 of 7
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`Holloway specifically disclosing bi-directional control via Bluetooth
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`protocol. Both Morse and Holloway disclose similar technology to the ’904
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`patent for “A control system adapted to, for each of the plurality of media
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`devices”. Morse and Holloway disclose a remote control system that
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`communicates with the media device wirelessly and obtains and stores
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`information describing content at the media device.
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`22. Morse and Holloway both disclose features that allow play back
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`of the content stored on a media device. Holloway also discloses control of
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`a device via Bluetooth in similar fashion to the ’904 Patent. All the elements
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`of Claim 1 are disclosed by each of Morse and Holloway; Claim 1 is
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`anticipated by each of them.
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`23. Ground 3 of the Declaration proves that Claims 1-3, 10, 12, and
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`15-18 are disclosed by NetRemote and RX3000. It would have been
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`obvious to one of skill to combine the NetRemote references and RX3000.
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`They both address the same technical problems and contain similar subject
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`matter. Both disclose control of digital media over Wi-Fi. Therefore, a
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`wireless communication interface is disclosed and obvious to a POSITA.
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`Both also disclose the browsing of media available on the media device and
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`the storage of lists of tracks or album cover images in the mobile device.
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`Both NetRemote and RX3000 disclose wirelessly browsing and playing of
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`Page 6 of 7
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`music over a Wi-Fi network and allow the playback of playlists. Therefore
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`they both disclose all the elements of Claims 1-3, 10, 12 and 15-18 of the
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`’904 Patent.
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`24.
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`I hereby declare that all statements made herein of my own
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`knowledge are true and that all statements made on information and belief
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`are believed to be true; and further that these statements were made with the
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`knowledge that willful false statements and the like so made are punishable
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`by fine or imprisonment, or both, under 18 U.S.C. § 1001 and that such
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`willful false statements may jeopardize the validity of the application or any
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`patent issued thereon.
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`Executed on May 4, 2016
`
`By: _____________________________
` Dr. Charles Eldering
`
`
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`Page 7 of 7