Declaration of Dean Willis
`Petition for Inter Partes Review of Patent No. 8,457,113
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP LLC,
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun 22, 2010
`Issue Date: Jun. 4, 2013
`
`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`
`DECLARATION OF DEAN WILLIS IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,457,113
`
`Inter Partes Review No. 2016-01254
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`
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`CISCO SYSTEMS, INC. Ex. 1002 Page 1
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`Petition for Inter Partes Review of Patent No. 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`Cisco Systems, Inc.
`Petitioner
`
`v.
`
`Focal IP LLC,
`Patent Owner
`
`Patent No. 8,457,113 B2
`Filing Date: Jun 22, 2010
`Issue Date: Jun. 4, 2013
`
`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
`
`
`DECLARATION OF DEAN WILLIS IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,457,113
`
`Inter Partes Review No. 2016-01254
`
`
`
`
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`
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`CISCO SYSTEMS, INC. Ex. 1002 Page 1
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`Declaration of Dean Willis
`Petition for Inter Partes Review of Patent No. 8,457,113
`1.
`I, Dean Willis, declare as follows:
`
`2.
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`I have personal knowledge of the facts stated in this declaration, and
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`could and would testify to these facts under oath if called upon to do so.
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`I.
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`INTRODUCTION AND QUALIFICATIONS
`A. Engagement Overview
`3.
`I have been retained by counsel for Cisco Systems, Inc. (Petitioner) in
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`this case as an expert in the relevant art. I am being compensated for my work at the
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`rate of $300 per hour. No part of my compensation is contingent upon the outcome
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`of this petition.
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`4.
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`I was asked to study U.S. Patent No. 8,457,113 (“the ’113 patent”), its
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`prosecution history, and the prior art and to render opinions on the validity or
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`invalidity of the claims of the ’113 patent in light of the teachings of the prior art, as
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`understood by a person of ordinary skill in the art in the 1999 to 2000 time frame. I
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`understand that the claims being challenged in the Petition are claims 38, 65, 143 –
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`147, 149, 150, 163, and 176 – 178 (“the Petitioned Claims”) of the ’113 patent.
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`B.
`5.
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`Summary of Opinions
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`After studying the ’113 patent, its file history, and the prior art, and
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`considering the subject matter of the claims of the ’113 patent in light of the state of
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`the art in the area of telephony in circuit-switched and packet-switched networks in
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`the 1999 and 2000 time frame, I reached the conclusions discussed herein.
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`6.
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`In light of these general conclusions, and as explained in more detail
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`1.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 2
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`throughout this declaration, it is therefore my opinion that each of the Petitioned
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`Claims of the ’113 patent addressed in this declaration were invalid as obvious in
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`the 1999 and 2000 time frame in light of the knowledge of skill in the art at that
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`time and the teachings, suggestions, and motivations present in the prior art. This
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`declaration, and the conclusions and opinions herein, provide support for two
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`Petitions for Inter Partes Review (“IPR”) of the ’113 patent filed by Petitioner.
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`“Petition 1” asserts obviousness Grounds 1-4 against claims 65 and 38 of the ’113
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`patent. “Petition 2” asserts the same obviousness Grounds 1-3 presented in Petition
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`1 against claims 143-147, 149, 150, 163, and 176-178 of the ’113 patent, but does
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`not assert Ground 4. I have reviewed the Petitions in their entirety as well as the
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`corresponding exhibits. Given the overlap in the technology, prior art, and exhibits
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`between the two Petitions, and in the interest of efficiency and ease of reference, I
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`prepared a single Declaration in support of both Petitions. The only difference
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`between the two declarations is the numbering system used for the exhibits, i.e., Ex.
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`10XX for the first petition is the same as exhibit Ex. 11XX for the second petition.
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`C. Qualifications and Experience
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`7. My educational background includes a Bachelor of Science in
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`Computer Science from Texas A&M University (1986), and a Master of Computer
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`Science from Texas A&M University (1994). During both educational periods, I
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`was employed by the Energy Systems Lab of the Texas Engineering Extension
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`
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`2.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 3
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`Service to develop networked applications and communications infrastructure. My
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`Master’s thesis focused on computer-supported collaboration, and my research
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`included experimentation with Voice over Internet Protocol (VoIP) systems.
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`8. My career has included the design, implementation and sale of many
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`network and communications components and systems, with a primary focus on
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`VoIP and Real Time Communications (RTC). I have also been active in the
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`development of the industry standards upon which most commercial VoIP systems
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`are based. I chaired the Session Initiation Protocol (SIP, the most common VoIP
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`protocol) working group of the Internet Engineering Task Force (IETF) for its
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`entire ten-year run, was a board member of the Open Mobile Alliance (OMA), and
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`active in both the of the Third Generation Partnership Projects (3GPP and 3GPP2)
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`that defined the Internet Multimedia Subsystem (IMS) on top of SIP to be the
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`standard architecture for VoIP in mobile phone systems. IMS is just now being
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`widely deployed for “High Def Voice” and “Voice over Long Term Evolution
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`(VoLTE)” by major US mobile carriers including AT&T, Verizon, Sprint, and T-
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`Mobile.
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`9. My first startup company, Paranet, provided network consulting,
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`design, and operational services to many customers in the US and Europe. As a
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`working consultant, I gained wide exposure to the underlying technology and
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`operational systems. Paranet was bought by Sprint in 1996, and I spent the next
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`
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`3.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 4
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`two years designing data networks for Sprint, including work on Sprint’s early
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`VoIP systems.
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`10.
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`In 1998, I
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`joined one of Paranet’s former customers, MCI
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`Communications, as
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`the Advisory Engineer responsible for research and
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`development of VoIP systems, and was instrumental in bringing MCI’s first VoIP
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`products and services to market.
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`11. Following MCI’s merger with WorldCom, I joined my second startup,
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`VoIP software pioneer DynamicSoft, Inc. in 2000. As the Vice President of
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`Network Engineering and Fellow, I led the professional services team that designed
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`and integrated networks for DynamicSoft’s customers, including Level 3,
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`Net2Fone, and Vonage. I also managed the patent team, and acted as the principal
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`editor and in-house agent for DynamicSoft’s patent filings. Further, I developed an
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`expert team that led the development of VoIP standards across the industry. The
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`members of that team currently occupy a number of key positions within the IETF.
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`12. Cisco acquired DynamicSoft in 2004, and I continued to develop VoIP
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`systems and services for Cisco and supporting VoIP and Internet standards
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`development organizations. I left Cisco in 2006, and have since that time been
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`primarily engaged in design and consulting services relating to VoIP. My client list
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`includes (directly or through counsel) Alcatel-Lucent, Apple, British Telecom,
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`Cisco, Level 3 Communications, Metaswitch, Siemens, Rockstar, XConnect, and
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`4.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 5
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`others.
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`13.
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`I have
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`invented numerous aspects of network and VoIP
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`communications,
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`including eight patents, and authored eight IETF RFC
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`specifications along with numerous Internet drafts and several conference papers.
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`14.
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`I am knowledgeable about and
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`familiar with wireless and
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`telecommunications systems industry standards, including the SIP, IMS, and H.323
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`standards, and with Internet routing and firewall technologies. I am also
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`knowledgeable and familiar with software and firmware design for wireless and
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`telecommunications terminals, gateways, and networks.
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`15. Additional details of my education and employment history, patents,
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`and publications are set forth in my current curriculum vitae, provided as part of
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`this Declaration. My CV also includes a list of all the cases within the last five
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`years for which I have provided testimony.
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`D. Materials Considered
`16. My analysis is based on my education and experience as set out above
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`and in my CV, including the documents I have read and authored and systems I
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`have developed and used since then.
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`17.
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`I reviewed the various relevant publications from the art at the time of
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`the alleged invention and the claim analysis that is included in the Petition for IPR
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`of the ’113 patent, to which this Declaration relates. I have also reviewed the
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`
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`5.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 6
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`Petition in its entirety. Based on my experience as a person having ordinary skill in
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`the art (“POSA”) at the time of the alleged invention, the references accurately
`
`characterize the state of the art at the relevant time. Specifically, I have reviewed
`
`the following:
`
`Description of Document
`
`Exhibit
`No.
`Ex. 1001 U.S. Patent No. 8,457,113 to Wood
`Ex. 1002 Declaration of Dean Willis
`Ex. 1003 U.S. Patent No. 6,353,660 to Burger
`Ex. 1004 U.S. Patent No. 6,683,870 to Archer
`Ex. 1005 U.S. Patent No. 5,958,016 to Chang
`Ex. 1006 U.S. Patent No. 6,798,767 to Alexander
`Ex. 1007 File history of U.S. Patent No. 8,347,113
`Ex. 1008 File history of U.S. Patent No. 7,764,777
`Ex. 1009 Harry Newton, “Newton’s Telecom Dictionary” 15th Ed. (1999)
`Ex. 1010 Colin Low “The Internet Telephony Red Herring” (1996)
`Ex. 1011 Andrew S. Tanenbaum “Computer Networks” 3rd Ed. (1996)
`R.F. Rey, Ed. “Engineering and Operations in the Bell System” 2nd
`Ed. (1984)
`Ex. 1012
`Ex. 1013 Douglas E. Comer “Internetworking with TCP/IP” (1991)
`Abdi R. Modarressi “An Overview of Signaling System No. 7”
`Ex. 1014
`(1992)
`Jon Thӧrner “Intelligent Networks” (1994)
`Ex. 1015
`Ex. 1016 U.S. Patent No. 5,434,852 to La Porta
`Ex. 1017
`ITU-T Recommendation H.323
`M. Handley et al. “SIP: Session Initiation Protocol” RFC 2543
`(2000)
`ITU-T Recommendation H.225
`
`Ex. 1018
`Ex. 1019
`
`
`
`6.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 7
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`Description of Document
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`Ex. 1037
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`Ex. 1038
`
`Ex. 1039
`
`Exhibit
`No.
`ITU-T Recommendation H.245
`Ex. 1020
`ITU-T Recommendation Q.1215
`Ex. 1021
`Ex. 1022 U.S. Patent No. 5,802,160 to Kugell
`Jonathan Lennox et al. “Implementing Intelligent Network Services
`with the Session Initiation Protocol” Tech-Report No. CUCS-002-
`099
`Ex. 1023
`Ex. 1024 GSM Technical Specification 03.78 (1997)
`International Publication No.WO 97/23988 to British
`Telecommunications PLC
`Ex. 1025
`Ex. 1026 U.S. Patent No. 6,463,145 to O’Neal
`Ex. 1027 U.S. Patent No. 6,445,694 to Swartz
`Ex. 1028 W. Richard Stevens “The Protocols” (1994)
`Ex. 1029 U.S. Patent No. 5,206,901 to Harlow
`PacketCable™ 1.0 Architecture Framework Technical Report “PKT-
`TR-ARCH-V01-001201” (1999)
`Ex. 1030
`Ex. 1031 U.S. Patent No. 5,434,913 to Tung
`Ex. 1032
`ITU-T Recommendation Q.1211
`Ex. 1033 3G TS 22.228 V1.0.0 (2000-09)
`Ex. 1034
`ITU-T Recommendation Q.931
`Ex. 1035 CCITT Recommendation M. 770 (1998)
`Ex. 1036 Colin Low “Integrating Communication Services”
`RFC 2458, “Toward the PSTN/Internet Inter-Networking – Pre-
`PINT Implementations” (1998)
`Press Release “Cisco Systems to Acquire Selsius Systems, Inc. for
`$145 Million” (October 14, 1998)
`RFC 791 “Internet Protocol: DARPA Internet Program Protocol
`Specification” (Sept. 1981)
`Net2Phone, Inc., Securities and Exchange Commission Form S-1
`(May 18, 1999)
`Open Channel Foundation, Tempest News, Software of the Year
`(1998)
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`Ex. 1040
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`Ex. 1041
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`7.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 8
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`Description of Document
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`Exhibit
`No.
`Ex. 1042 Selsius-CallManager, Marketing Material (1998)
`Ex. 1043 C.V. of Dean Willis
`Paul Baran “On Distributed Communications: I. Introduction to
`Distributed Communications Networks” (1964)
`ITU-T Recommendation E.131
`
`Ex. 1044
`Ex. 1045
`
`
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`18.
`I am not a patent attorney, nor have I independently researched the law
`
`on patent validity. Attorneys for the Petitioner explained certain legal principles to
`
`me that I have relied upon in forming my opinions set forth in this report.
`
`A.
`19.
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`Person Having Ordinary Skill in the Art (“POSA”)
`
`I understand that I must undertake my assessment of the claims of the
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`’113 patent from the perspective of what would have been known or understood by
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`a POSA as of the earliest-claimed priority date of the patent claim, which I
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`understand is May 4, 2000. The opinions and statements that I provide herein
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`regarding the ’113 patent and the references that I discuss are made from the
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`perspective of the person of ordinary skill in the art in the late-1990s and 2000 time
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`frame.
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`20. Counsel has advised me that, to determine the appropriate level of one
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`of ordinary skill in the art, I may consider the following factors: (a) the types of
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`problems encountered by those working in the field and prior art solutions thereto;
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`
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`8.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 9
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`(b) the sophistication of the technology in question, and the rapidity with which
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`innovations occur in the field; (c) the educational level of active workers in the
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`field; and (d) the educational level of the inventor.
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`21. The relevant technology field for the ’113 patent has to do with
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`controllers for connecting calls between a packet network, such as a VoIP network,
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`and a circuit-switched network, such as the Public Switched Telephone Network
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`(PSTN). Based on this, a POSA at the time of the ’113 patent filing would have
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`been an engineer with at least a bachelor’s degree in electrical engineering,
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`computer science, or a related field, or equivalent experience of at least three years
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`of working in field of telecommunications or networking.
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`22. Unless otherwise specified, when I mention a POSA or someone of
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`ordinary skill, I am referring to someone with at least the above level of knowledge
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`and understanding.
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`23. Based on my experiences, I have a good understanding of the
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`capabilities of a person of ordinary skill in the relevant field. Indeed, in addition to
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`being a person of at least ordinary skill in the art, I have worked closely with many
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`such persons over the course of my career.
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`24. Although my qualifications and experience exceed those of the
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`hypothetical person having ordinary skill in the art defined above, my analysis and
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`opinions regarding the ’113 patent have been based on the perspective of a person
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`
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`9.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 10
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`of ordinary skill in the art in the late 1990s through mid-2000 time frame.
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`25. My opinions regarding the level of ordinary skill in the art are based
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`on, among other things, the content of the ’113 patent, my years of experience in
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`the field of network-based telecommunications, my understanding of the basic
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`qualifications that would be relevant to a POSA in the relevant area, and my
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`familiarity with the backgrounds of colleagues and co-workers, both past and
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`present.
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`26. My opinions herein regarding the person of ordinary skill in the art and
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`my other opinions set forth herein would remain the same if the person of ordinary
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`skill in the art were determined to have somewhat more or less education and/or
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`experience than I have identified above.
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`B.
`27.
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`Prior Art
`
`I understand that the law provides categories of information that
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`constitute prior art that may be used to anticipate or render obvious patent claims.
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`To be prior art to a particular patent under the relevant law, a reference must have
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`been made, known, used, published, or patented, or be the subject of a patent
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`application by another, before the priority or invention dates of the patent. I also
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`understand that the POSA is presumed to have knowledge of the relevant prior art.
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`28. As discussed below, I understand that the Petitioner has determined
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`that the challenged claims of the ’113 patent are entitled to a May 4, 2000 priority
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`
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`10.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 11
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`date. However, I also understand that Petitioner has alleged the ‘113 patent may be
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`entitled to a June 1999 priority date, my analysis is the same under either date.
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`C. Claim Interpretation
`29.
`I understand that, in IPR, the claim terms are to be given their broadest
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`reasonable interpretation (BRI) in light of the specification. See 37 C.F.R.
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`§ 42.100(b). It is also my understanding that “[u]nder a broadest reasonable
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`interpretation, words of the claim must be given their plain meaning, unless such
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`meaning is inconsistent with the specification. The plain meaning of a term means
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`the ordinary and customary meaning given to the term by those of ordinary skill in
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`the art at the time of the invention.” MPEP § 2111.01. “The presumption that a
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`term is given its ordinary and customary meaning may be rebutted by the applicant
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`by clearly setting forth a different definition of the term in the specification.” In re
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`Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997). In
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`performing my analysis and rendering my opinions, I have interpreted the claim
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`terms by giving them the ordinary meaning they would have had to a POSA reading
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`the ’113 patent around the time of its earliest priority filing date (May 4, 2000) and
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`in light of its specification and file history.
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`D. Legal Standards for Anticipation & Obviousness
`30.
`I have been provided the following instructions from the Model Patent
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`Jury Instructions for the Northern District of California (July 16, 2014) for
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`
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`11.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 12
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`anticipation, and instructions from the Federal Circuit Bar Association Model
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`Instructions regarding obviousness, which is reproduced in part below. I apply this
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`understanding in my analysis, with the caveat that I have been informed that the
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`Patent Office will find a patent claim invalid in IPR if it concludes that it is more
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`likely than not that the claim is invalid (i.e., a preponderance-of-the-evidence
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`standard), which is a lower burden of proof than the “clear-and-convincing”
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`standard that is applied in United States district court (and described in the jury
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`instruction below):
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`4.3a1 ANTICIPATION
`
`A patent claim is invalid if the claimed invention is not
`new. For the claim to be invalid because it is not new, all
`of its requirements must have existed in a single device or
`method that predates the claimed invention, or must have
`been described in a single previous publication or patent
`that predates the claimed invention. In patent law, these
`previous devices, methods, publications or patents are
`called “prior art references.” If a patent claim is not new
`we say it is “anticipated” by a prior art reference.
`
`The description in the written reference does not have to
`be in the same words as the claim, but all of the
`requirements of the claim must be there, either stated or
`necessarily implied, so that someone of ordinary skill in
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`
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`12.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 13
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`the field of [identify field] looking at that one reference
`would be able to make and use the claimed invention.
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`Here is a list of the ways that [alleged infringer] can show
`that a patent claim was not new [use those that apply to
`this case]:
`
`[– if the claimed invention was already publicly known or
`publicly used by others in the United States before [insert
`date of conception unless at issue];]
`
`[– if the claimed invention was already patented or
`described in a printed publication anywhere in the world
`before [insert date of conception unless at issue]. [A
`reference is a “printed publication” if it is accessible to
`those interested in the field, even if it is difficult to find.];]
`
`[– if the claimed invention was already made by someone
`else in the United States before [insert date of conception
`unless in issue], if that other person had not abandoned
`the invention or kept it secret;]
`
`[– if the claimed invention was already described in
`another issued U.S. patent or published U.S. patent
`application that was based on a patent application filed
`before [insert date of the patent holder’s application filing
`date] [or] [insert date of conception unless at issue];]
`
`13.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 14
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`[– if [named inventor] did not invent the claimed
`invention but instead learned of the claimed invention
`from someone else;]
`
`[– if the [patent holder] and [alleged infringer] dispute
`who is a first inventor, the person who first conceived of
`the claimed invention and first reduced it to practice is the
`first inventor. If one person conceived of the claimed
`invention first, but reduced to practice second, that person
`is the first inventor only if that person (a) began to reduce
`the claimed invention to practice before the other party
`conceived of it and (b) continued to work diligently to
`reduce it to practice. [A claimed invention is “reduced to
`practice” when it has been tested sufficiently to show that
`it will work for its intended purpose or when it is fully
`described in a patent application filed with the PTO].]
`
`[Since it is in dispute, you must determine a date of
`conception for the [claimed invention] [and/or] [prior
`invention]. Conception is the mental part of an inventive
`act and is proven when the invention is shown in its
`complete form by drawings, disclosure to another or other
`forms of evidence presented at trial.]
`
`(Model Patent Jury Instructions for the Northern District of California at 30-31,
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`§ 4.3a1 (July 16, 2015).) Furthermore, it is my understanding that “[a] claim is
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`anticipated only if each and every element as set forth in the claim is found, either
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`
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`14.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 15
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`expressly or inherently described, in a single prior art reference.” Verdegaal Bros.
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`v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir.
`
`1987).
`
`4.3a2 STATUTORY BARS
`
`A patent claim is invalid if the patent application was not
`filed within the time required by law. This is called a
`“statutory bar.” For a patent claim to be invalid by a
`statutory bar, all of its requirements must have been
`present in one prior art reference dated more than one year
`before the patent application was filed. Here is a list of
`ways [alleged
`infringer] can show
`that
`the patent
`application was not timely filed: [choose those that apply]
`
`[– if the claimed invention was already patented or
`described in a printed publication anywhere in the world
`before [insert date that is one year before effective filing
`date of patent application]. [A reference is a “printed
`publication” if it is accessible to those interested in the
`field, even if it is difficult to find.];]
`
`[– if the claimed invention was already being openly used
`in the United States before [insert date that is one year
`before application filing date] and that use was not
`primarily an experimental use (a) controlled by the
`inventor, and (b) to test whether the invention worked for
`its intended purpose;]
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`
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`15.
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`CISCO SYSTEMS, INC. Ex. 1002 Page 16
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`[– if a device or method using the claimed invention was
`sold or offered for sale in the United States, and that
`claimed invention was ready for patenting, before [insert
`date that is one year before application filing date]. [The
`claimed invention is not being [sold] [or] [offered for
`sale] if the [patent holder] shows that the [sale] [or] [offer
`for sale] was primarily experimental.] [The claimed
`invention is ready for patenting if it was actually built, or
`if
`the
`inventor had prepared drawings or other
`descriptions of
`the claimed
`invention
`that were
`sufficiently detailed to enable a person of ordinary skill in
`the field to make and use the invention based on them.];]
`
`[– if the [patent holder] had already obtained a patent on
`the claimed invention in a foreign country before filing
`the original U.S. application, and the foreign application
`was filed at least one year before the U.S. application.]
`
`For a claim to be invalid because of a statutory bar, all of
`the claimed
`requirements must have been either
`(1) disclosed in a single prior art reference, (2) implicitly
`disclosed in a reference to one skilled in the field, or
`(3) must have been present in the reference, whether or
`not that was understood at the time. The disclosure in a
`reference does not have to be in the same words as the
`claim, but all the requirements must be there, either
`described in enough detail or necessarily implied, to
`enable someone of ordinary skill in the field of [identify
`
`16.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 17
`
`
`
`
`
`field] looking at the reference to make and use the
`claimed invention.
`
`(Model Patent Jury Instructions for the Northern District of California at 32,
`
`§ 4.3a2 (July 16, 2015).)
`
`4.3c OBVIOUSNESS
`
`Even though an invention may not have been identically
`disclosed or described before it was made by an inventor,
`in order to be patentable, the invention must also not have
`been obvious to a person of ordinary skill in the field of
`technology of the patent at the time the invention was
`made.
`
`[Alleged infringer] may establish that a patent claim is
`invalid by showing, by clear and convincing evidence,
`that the claimed invention would have been obvious to
`persons having ordinary skill in the art at the time the
`invention was made in the field of [insert the field of the
`invention].
`
`In determining whether a claimed invention is obvious,
`you must consider the level of ordinary skill in the field
`[of the invention] that someone would have had at the
`time the [invention was made] or [patent was filed], the
`scope and content of the prior art, and any differences
`between the prior art and the claimed invention.
`
`Keep in mind that the existence of each and every element
`of the claimed invention in the prior art does not
`
`
`
`17.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 18
`
`
`
`
`
`
`
`if not all,
` Most,
`necessarily prove obviousness.
`inventions rely on building blocks of prior art. In
`considering whether a claimed invention is obvious, you
`may but are not required to find obviousness if you find
`that at the time of the claimed invention [or the patent’s
`filing date] there was a reason that would have prompted a
`person having ordinary skill in the field of [the invention]
`to combine the known elements in a way the claimed
`invention does, taking into account such factors as (1)
`whether the claimed invention was merely the predictable
`result of using prior art elements according to their known
`function(s); (2) whether the claimed invention provides an
`obvious solution to a known problem in the relevant field;
`(3) whether
`the prior art
`teaches or suggests
`the
`desirability of combining elements claimed
`in
`the
`invention; (4) whether the prior art teaches away from
`combining elements in the claimed invention; (5) whether
`it would have been obvious to try the combinations of
`elements, such as when there is a design need or market
`pressure to solve a problem and there are a finite number
`of identified, predictable solutions; and (6) whether the
`change resulted more from design incentives or other
`market forces. To find it rendered the invention obvious,
`you must find that the prior art provided a reasonable
`expectation of success. Obvious to try is not sufficient in
`unpredictable technologies.
`
`18.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 19
`
`
`
`
`
`
`
`invention was
`the claimed
`In determining whether
`obvious, consider each claim separately. Do not use
`hindsight, i.e., consider only what was known at the time
`of the invention [or the patent’s filing date].
`
`In making these assessments, you should take into
`account any objective evidence
`(sometimes called
`“secondary considerations”) that may shed light on the
`obviousness or not of the claimed invention, such as:
`
`(a) Whether the invention was commercially successful as
`a result of the merits of the claimed invention (rather than
`the result of design needs or market-pressure advertising
`or similar activities);
`
`(b) Whether the invention satisfied a long-felt need;
`
`(c) Whether others had tried and failed to make the
`invention;
`
`(d) Whether others invented the invention at roughly the
`same time;
`
`(e) Whether others copied the invention;
`
`(f) Whether there were changes or related technologies or
`market needs contemporaneous with the invention;
`
`(g) Whether the invention achieved unexpected results;
`
`(h) Whether others in the field praised the invention;
`
`19.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 20
`
`
`
`
`
`(i) Whether persons having ordinary skill in the art of the
`invention expressed surprise or disbelief regarding the
`invention;
`
`(j) Whether others sought or obtained rights to the patent
`from the patent holder; and
`
`(k) Whether the inventor proceeded contrary to accepted
`wisdom in the field.
`
`Federal Circuit Bar Association Model Jury Instructions §4.3c (2014); MPEP §§
`
`2141-43.
`
`31.
`
`I am also informed that the United States Patent Office supplies its
`
`examining corps with a Manual of Patent Examining Procedure that provides
`
`exemplary rationales that may support a conclusion of obviousness, including:
`
`(a) Combining prior art elements according to known
`methods to yield predictable results;
`
`(b) Simple substitution of one known element for another
`to obtain predictable results;
`
`(c) Use of known technique to improve similar devices
`(methods, or products) in the same way;
`
`(d) Applying a known technique to a known device
`(method, or product) ready for improvement to yield
`predictable results;
`
`
`
`20.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 21
`
`
`
`
`
`(e) “Obvious to try” – choosing from a finite number of
`identified, predictable solutions, with a
`reasonable
`expectation of success;
`
`(f) 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 are predictable to one of ordinary
`skill in the art; or
`
`(g) 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 reference
`teachings to arrive at the claimed invention.
`
`MPEP § 2143. I apply these principles in my analysis below.
`
`III. TECHNOLOGY BACKGROUND
`32.
`In the mid-1990s, it became clear to the communications industry that
`
`the packet-switched Internet and circuit-switched telephone networks were headed
`
`for convergence. Ex. 1010 at 1-2. Video conferencing and audio conferencing had
`
`been in use in universities and research labs for years. The International
`
`Telecommunication Union (“ITU”) and European Telecommunications Standards
`
`Institute (“ETSI”) were working on the H.323 standards family for audio and video
`
`calling that were published in 1998. Ex. 1017, 3-4. The Internet Engineering Task
`
`Force (“IETF”) was working on the SIP standards family published in 1999. Ex.
`
`1018 at 1-2. The mobile telephony industry began consideration of a future “all IP”
`
`
`
`21.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 22
`
`
`
`
`
`mobile network that would be eventually called the “Internet Multimedia
`
`Subsystem", or IMS. Ex. 1033. In the late-1990s, technology was being developed
`
`that allowed embedded web servers to be integrated into many common items, for
`
`example, web cams, refrigerators, vending machines, building automation, energy
`
`management systems, industrial controls, even cars. See Ex. 1041.
`
`33. Telephony was moving rapidly beyond plain-old-telephone-services
`
`(POTS) and into “service creation environments” using tools like CAMEL starting
`
`from 3GPP Release 96 and into its third release in 1998. Ex. 1024. The Advanced
`
`Intelligent Network (AIN) service model used by traditional telecom carriers had
`
`reached a very high level of maturity (perhaps approaching stagnation) and the
`
`telecom companies were looking to the Internet to deliver innovation including new
`
`services and revenues. Ex. 1005 at col. 2:7-4:42. Companies like Net2Fone were
`
`already using the Internet as a long-distance toll-bypass service popular for
`
`international callers. Ex. 1040 at 6. The PacketCable consortium began developing
`
`an IP-based architecture for delivering telephony services across the cable
`
`networks, but knew they would need to integrate services with those of legacy
`
`carriers. Ex. 1030 at 1, 9-13.
`
`34. The WebIN project at Hewlett Packard incorporated much research in
`
`the area into a cohesive whole that included the use of web servers to control and
`
`create new Advanced Intelligent Networks (“AIN”) services and to integrate
`
`
`
`22.
`
`
`
`CISCO SYSTEMS, INC. Ex. 1002 Page 23
`
`
`
`
`
`
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