`Petition for Inter Partes Review of Patent No. 8,457,113
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Bright House Networks, LLC,
`WideOpenWest Finance, LLC,
`Knology of Florida, Inc.
`Birch Communications, Inc.
`Petitioners
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`v.
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`Focal IP, LLC,
`Patent Owner
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`Patent No. 8,457,113 B2
`Filing Date: June 22, 2010
`Issue Date: June 4, 2013
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`BRANCH CALLING AND CALLER ID BASED CALL ROUTING
`TELEPHONE FEATURES
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`DECLARATION OF THOMAS F. LA PORTA IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,457,113
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`Inter Partes Review No. ______
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`Bright House Networks - Ex. 1002, Page 1
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2064 - 1
`La Porta Declaration Excerpts
`IPR2016-01258
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`Declaration of Thomas La Porta
`Petition for Inter Partes Review of Patent No. 8,457,113
`II. LEGAL PRINCIPLES USED IN THE ANALYSIS
`25.
`I am not a patent attorney, nor have I independently researched the
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`law on patent validity. Attorneys for the Petitioners explained certain legal
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`principles to me that I have relied upon in forming my opinions set forth in this
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`report.
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`A.
`26.
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`Person Having Ordinary Skill in the Art (“POSA”)
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`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 invention dates of the prior art references in 1997 and 1998. I
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`understand the claimed priority date of the patent claims is May 4, 2000. The
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`opinions and statements that I provide herein regarding the ’113 patent and the
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`references that I discuss are made from the perspective of the person of ordinary
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`skill in the art in the time frame of the mid- to late 1990s and 2000.
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`27. 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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`(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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`28. The
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`relevant
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`technology
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`field
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`for
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`the
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`’113 patent
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`is
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`11
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`Bright House Networks - Ex. 1002, Page 11
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2064 - 2
`La Porta Declaration Excerpts
`IPR2016-01258
`
`
`
`Declaration of Thomas La Porta
`Petition for Inter Partes Review of Patent No. 8,457,113
`telecommunications networks. Based on this, a POSA at the time of the ’113 patent
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`filing would have been an engineer or computer scientist with at least a bachelor’s
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`degree, or equivalent experience in electrical engineering, or a related field, and at
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`least three years of industry experience in the fields of analog and digital
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`communications, inclusive of exposure to telecommunications standards as applied
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`in circuit-switched and packet-switched networks.
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`29. 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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`30. 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—and
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`taught—many such persons over the course of my career.
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`31. 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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`of ordinary skill in the art in the mid-1990s to mid-2000 time frame.
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`32. 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, my understanding of the basic standards that would be relevant to
`12
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`Bright House Networks - Ex. 1002, Page 12
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2064 - 3
`La Porta Declaration Excerpts
`IPR2016-01258
`
`
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`Declaration of Thomas La Porta
`Petition for Inter Partes Review of Patent No. 8,457,113
`IX. CONCLUSION
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`277. I reserve the right to offer opinions relevant to the invalidity of the
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`'113 patent claims at issue and/or offer testimony in support of this Declaration.
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`278. In signing this Declaration, I recognize that the Declaration will be
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`filed as evidence in a contested case before the Patent Trial and Appeal Board of
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`the United States Patent and Trademark Office. I also recognize that I may be
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`subject to cross-examination in the case.
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`If required, I will appear for cross(cid:173)
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`examination at the appropriate time.
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`279. 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 are
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`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 by fine
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`or imprisonment, or both, under 18 U.S.C. § 1001.
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`Dated:
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`( / 1~ Jt,
`-+-, --'-.......---
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`Respectfully submitted,
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`Dr. Thomas La Porta
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`Bright House Networks - Ex. 1002, Page 184
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`YMAX CORPORATION v. FOCAL IP, LLC
`FOCAL IP, LLC EX2064 - 4
`La Porta Declaration Excerpts
`IPR2016-01258
`
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