UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Microsoft Corporation
`Petitioner
`
`v.
`
`Mobile Telecommunications Technologies, LLC
`Patent Owner
`
`Patent No. 5,754,946
`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`Microsoft Exhibit No. 1002
`Page 1 of 352
`
`

`
`TABLE OF CONTENTS
`
`C.
`
`D.
`E.
`
`F.
`
`IV.
`
`V.
`
`VI.
`
`I.
`II.
`III.
`
`Introduction........................................................................................................................ 1
`Summary of Opinions........................................................................................................ 1
`Qualifications and Experience ........................................................................................... 5
`A.
`Education and Experience...................................................................................... 5
`B.
`Compensation ...................................................................................................... 10
`C.
`Documents and Other Materials Relied Upon..................................................... 10
`Statement of Legal Principles .......................................................................................... 11
`A.
`Claim Construction.............................................................................................. 11
`B.
`Anticipation.......................................................................................................... 11
`C.
`Obviousness ......................................................................................................... 12
`Overview of the ’946 Patent ............................................................................................ 12
`A.
`Summary of the ‘946 Patent ................................................................................ 13
`B.
`Priority Date for the ’946 Patent.......................................................................... 18
`State of the Art Prior to the ‘946 Patent........................................................................... 20
`A.
`Radio Communications........................................................................................ 20
`B.
`Early Paging Systems .......................................................................................... 21
`C.
`One-Way Paging Systems.................................................................................... 21
`D.
`Two-Way Paging Networks................................................................................. 23
`E.
`The Level of Ordinary Skill in the Art................................................................. 25
`Identification of the Prior Art and Summary of Opinions ............................................... 26
`VII.
`VIII. Claim Construction.......................................................................................................... 27
`A.
`“means for receiving a radio frequency message from the network”.................. 28
`B.
`“means for transmitting, only upon actuation of the switch, a signal to the
`communications network requesting retransmission of said specified
`portion of said message”...................................................................................... 28
`“means for receiving said specified portion retransmitted from the
`communications network and for displaying the received specified portion
`on the display” ..................................................................................................... 30
`“means for detecting errors in the received message”......................................... 31
`“means for highlighting said errors when the message is displayed on said
`display” ................................................................................................................ 32
`“means for transmitting radio frequency signals containing a message to
`the mobile unit”.................................................................................................... 32
`
`Microsoft Exhibit No. 1002
`Page 2 of 352
`
`

`
`IX.
`
`H.
`
`I.
`
`B.
`
`G.
`
`“means for receiving, from the mobile unit, radio frequency signals
`representing a portion of the message that the user desires retransmission”....... 33
`“means for retransmitting radio frequency signals containing the portion
`of the message to the mobile unit”....................................................................... 33
`Limitations regarding a portion of a message for which the user desires
`retransmission ...................................................................................................... 34
`Unpatentability of the Challenged Claims of the ‘946 Patent ......................................... 36
`A.
`Ground 1: Akiyama Combined With Gutman..................................................... 36
`1.
`Akiyama................................................................................................... 36
`2.
`Gutman..................................................................................................... 41
`3.
`Claim 1 is Invalid in View of Akiyama Combined with Gutman ........... 48
`4.
`Claim 2 is Invalid in View of Akiyama Combined with Gutman ........... 55
`5.
`Claim 4 is Invalid in View of Akiyama Combined with Gutman ........... 56
`6.
`Claim 7 is Invalid in View of Akiyama Combined with Gutman ........... 57
`7.
`Claim 8 is Invalid in View of Akiyama Combined with Gutman ........... 61
`8.
`Claim 9 is Invalid in View of Akiyama Combined with Gutman ........... 68
`Ground 2: Zabarsky Combined With Kuznicki................................................... 69
`1.
`Zabarsky................................................................................................... 69
`2.
`Kuznicki................................................................................................... 75
`3.
`Claim 1 is Invalid in View of Zabarsky Combined with Kuznicki ......... 82
`4.
`Claim 2 is Invalid in View of Zabarsky Combined with Kuznicki ......... 87
`5.
`Claim 7 is Invalid in View of Zabarsky Combined with Kuznicki ......... 89
`6.
`Claim 8 is Invalid in View of Zabarsky Combined with Kuznicki ......... 95
`7.
`Claim 9 is Invalid in View of Zabarsky Combined with Kuznicki ......... 98
`Ground 3: Krebs................................................................................................... 99
`1.
`Krebs........................................................................................................ 99
`2.
`Claim 1 is Invalid in View of Krebs ...................................................... 104
`3.
`Claim 4 is Invalid in View of Krebs ...................................................... 111
`4.
`Claim 7 is Invalid in View of Krebs ...................................................... 112
`5.
`Claim 8 is Invalid in View of Krebs ...................................................... 118
`Ground 4: Krebs, Schwendeman, and Yoshida ................................................. 122
`1.
`Claim 1 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 127
`2.
`Claim 2 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 131
`
`C.
`
`D.
`
`Microsoft Exhibit No. 1002
`Page 3 of 352
`
`

`
`3.
`4.
`5.
`6.
`
`Claim 4 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 132
`Claim 7 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 133
`Claim 8 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 136
`Claim 9 is Invalid in View of Krebs, Schwendeman, and Yoshida....... 140
`
`Microsoft Exhibit No. 1002
`Page 4 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`I.
`
`1.
`
`INTRODUCTION
`
`My name is Donald Gayton. I am the Vice President of Engineering
`
`and Product Development at Acuva Technology Inc. in Vancouver British
`
`Columbia.
`
`2.
`
`I have been engaged by Microsoft Corporation (“Microsoft”) as a
`
`consultant in connection with Microsoft’s Petition for Inter Partes Review
`
`(“Microsoft IPR Petition”) of U.S. Patent No. 5,754,946 (the “’946 Patent”).
`
`3.
`
`I understand that the ‘946 Patent has been assigned to Mobile
`
`Telecommunications Technologies, LLC (“MTel”). MTel is also referred to as the
`
`“Patent Owner” in this declaration.
`
`4.
`
`This declaration is based on the information currently available to me.
`
`To the extent that additional information becomes available, I reserve the right to
`
`continue my investigation and study, which may include a review of documents
`
`and information that may be produced, as well as testimony from depositions that
`
`not yet been taken.
`
`II.
`
`5.
`
`SUMMARY OF OPINIONS
`
`The ‘946 Patent relates to a “two-way communication system for
`
`communication between a system network and a mobile unit,” with the mobile unit
`
`allowing a user “to request the network to retransmit a received message that
`
`contains errors.” Ex. 1001 at Abstract. The Microsoft IPR Petition challenges
`
`- 1 -
`
`Microsoft Exhibit No. 1002
`Page 5 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`claims 1, 2, 4 and 7-9 of the ‘946 Patent. Independent claims 1 and 8 are directed
`
`toward the mobile unit, with claim 8 representing the method performed by the
`
`mobile device of claim 1. Claims 1 and 8 are depicted side-by-side in the table
`
`below to show the similarity of the claims.
`
`’946 Patent Claim 1
`
`’946 Patent Claim 8
`
`1(P) A mobile unit for transmitting
`and receiving radio frequency signals
`to and from a communications
`network comprising:
`1(A) means for receiving a radio
`frequency message from the
`network;
`1(B) a display for displaying said
`message;
`1(C) a switch actuatable to specify a
`portion of the displayed message for
`which a user desires retransmission
`from the communications network;
`1(D) means for transmitting, only
`upon actuation of the switch, a signal
`to the communications network
`requesting retransmission of said
`specified portion of said message;
`and
`1(E) means for receiving said
`specified portion retransmitted from
`the communications network and for
`displaying the received specified
`portion on the display.
`
`8(P) A method for receiving and
`transmitting messages at a mobile
`unit, comprising the steps of:
`
`8(A) receiving at the mobile unit a
`radio frequency message;
`
`8(B) displaying said message on the
`mobile unit;
`8(C) receiving an indication of a
`portion of the displayed message for
`which a user desires retransmission;
`
`8(D) transmitting, only upon receipt
`of the indication, a signal requesting
`retransmission of said indicated
`portion of said message;
`
`8(E) receiving a retransmission of
`said indicated portion; and
`
`8(F) displaying the received
`retransmission of said indicated
`portion on the mobile unit.
`
`- 2 -
`
`Microsoft Exhibit No. 1002
`Page 6 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`6.
`
`Independent claim 7 is directed toward a mobile network that supports
`
`the retransmission requests of the mobile unit.
`
`’946 Patent Claim 7
`
`7(P) A communications network for transmitting radio frequency
`signals to a mobile unit and for receiving radio frequency signals from
`the mobile unit, the mobile unit having a display and a switch
`actuatable to specify a portion of a displayed message for which a user
`desires retransmission after viewing the displayed message
`transmitted from the communications network, the network
`comprising:
`7(A) means for transmitting radio frequency signals containing a
`message to the mobile unit;
`7(B) means for receiving, from the mobile unit, radio frequency
`signals representing a portion of the message that the user desires
`retransmission;
`7(C) means for retransmitting radio frequency signals containing the
`portion of the message to the mobile unit.
`
`7.
`
`Dependent claims 2 and 9 are similar in claim scope to each other,
`
`with these claims depending from claims 1 and 8, respectively. Claims 2 and 9 add
`
`the limitations that the mobile unit be able to detect errors in the received
`
`messages, and that it be able to display an indication of errors in the displayed
`
`message.
`
`- 3 -
`
`Microsoft Exhibit No. 1002
`Page 7 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`’946 Patent Claim 2
`
`’946 Patent Claim 9
`
`2(A) The mobile unit of claim 1,
`further comprising: means for
`detecting errors in the received
`message,
`2(B) said display including means
`for highlighting said errors when
`the message is displayed on said
`display.
`
`9(A) The method according to
`claim 8, further comprising the
`step of: detecting errors in the
`received message; and
`9(B) wherein the step of
`displaying comprises the substep
`of: highlighting said errors in the
`message on the mobile unit.
`
`8.
`
`Dependent claim 4 adds to claim 1 the limitation that the signal
`
`transmitted to request retransmission indicate to the network that the user of the
`
`mobile unit has read the message.
`
`’946 Patent Claim 4
`
`The mobile unit of claim 1, wherein the signal transmitted by the
`transmitting means indicates to the network that the user has read the
`message.
`
`9.
`
`The elements recited in the challenged claims of the ‘946 Patent are
`
`basic communications concepts that were well known long before the earliest
`
`priority date of the ‘946 Patent. Further, transmission and reception of messages
`
`over RF signals, detection of errors in a received message, and requests for
`
`retransmission of a message that contained errors were well-known concepts to
`
`people having ordinary skill in the art at the time the ’946 Patent was filed. None
`
`- 4 -
`
`Microsoft Exhibit No. 1002
`Page 8 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`of the features described in claims 1, 2, 4 and 7-9 of the ‘946 Patent was novel as
`
`of the earliest claimed priority date, nor does the ‘946 Patent teach a novel and
`
`non-obvious way of combining the known features.
`
`10.
`
`It is therefore my opinion that claims 1, 2, 4 and 7-9 of the ‘946 Patent
`
`are invalid for being anticipated or were obvious under the patentability standards
`
`of pre-AIA 35 U.S.C. §§ 102 and 103 explained to me by Microsoft’s counsel as
`
`stated below.
`
`11.
`
`The subsequent sections of this declaration will first provide my
`
`qualifications and experience and then describe the details of my analysis and
`
`observations.
`
`III. QUALIFICATIONS AND EXPERIENCE
`
`A.
`
`12.
`
`Education and Experience
`
`I graduated from the University of British Columbia with a Bachelors
`
`of Applied Science in Electrical Engineering in 1983. I joined Glenayre
`
`Electronics Limited of Vancouver BC, Canada, immediately upon graduation.
`
`13. During my career, I was a top designer and leader at Glenayre
`
`Electronics from 1983 to 2001. My career at Glenayre was focused around paging;
`
`first one-way, and then two-way. My work involved all aspects of paging, from
`
`central system hardware and software design, RF control systems, RF transmitters
`
`and receivers, miniature mobile terminal design and manufacture as well as user
`
`- 5 -
`
`Microsoft Exhibit No. 1002
`Page 9 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`interface design. I was central to many paging product developments, innovations
`
`and industry standards development during my tenure. I developed a deep
`
`understanding of all things paging during my 16-year career working in the field.
`
`14. Glenayre Electronics was considered the world leader in paging
`
`systems since roughly 1985. In 1983 it was a leader in mobile telephones, both
`
`central systems and the mobile units. Cellular was in its infancy, so systems using
`
`Improved Mobile Telephone System (IMTS) protocol were the main systems in
`
`use at the time. I gained experience writing software for the Glenayre central
`
`switching system that used that protocol. Later, I was a design engineer, both
`
`hardware and software on a more advanced system, AutoTel. I developed radio
`
`modems, and other devices that used RF transmissions to move digital messages.
`
`15.
`
`In 1985, Glenayre entered the paging market with its newly developed
`
`GL3000 model paging system. At that time, I was an intermediate hardware and
`
`software designer on the new system. In 1988 I was promoted to Manager of
`
`Hardware Development for the GL3000 product line. In 1990 I was promoted to
`
`Director of Development for GL3000, and as such I was involved with all aspects
`
`of paging technology and development. The GL3000 became the leading paging
`
`switch in North America and also enjoyed good international sales. During this
`
`time I gained intimate knowledge of paging technology, protocols, system design
`
`and system operation.
`
`- 6 -
`
`Microsoft Exhibit No. 1002
`Page 10 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`16.
`
`In 1992, I was promoted to Vice President, Engineering, where I
`
`continued my leadership in all things paging, I directed development of
`
`Glenayre’s high speed, GPS based paging control system. This dual site
`
`development resulted in a product that captured 70% of the high speed paging
`
`market and had total sales exceeding $200M USD. I directed developments that
`
`kept the GL3000 paging switch at the front of the market capturing 80% market
`
`share in a field of five competitors.
`
`17.
`
`In 1995, I was promoted to Senior Vice President, Research and
`
`Development at Glenayre, giving me responsibility for both the Vancouver BC and
`
`Quincy Illinois Engineering centers.
`
`18. At that point, I oversaw architecture, design, testing, and introduction
`
`of Glenayre’s complete two-way paging system for data and voice utilizing high
`
`speed, linear ReFLEX-25 and Inflexion protocols. This involved a staff of 200
`
`engineers working in two locations. It required development in networking,
`
`hardware, embedded and system software, DSP, FM and linear modulation, low
`
`and high power RF.
`
`19.
`
`I was responsible for the entire group’s intellectual property program
`
`and successfully doubled Glenayre’s patent portfolio during that period. I was also
`
`responsible for managing Glenayre’s relationship with Motorola, Inc., the world
`
`leader in paging mobile terminals. This relationship and associated licenses
`
`- 7 -
`
`Microsoft Exhibit No. 1002
`Page 11 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`resulted in Glenayre’s exclusive access to and influence over Motorola’s next
`
`generation paging protocols.
`
`20.
`
`In 1998, I stepped into the role of Chief Technology Officer to
`
`provide guidance on how Glenayre was going to navigate the coming changes in
`
`mobile data technology. During this time I led a team of six technical and
`
`marketing experts in the development of the Advanced Services Strategy for the
`
`infrastructure and device groups.
`
`21.
`
`I integrated the device and infrastructure product roadmaps, directed
`
`development and release of Glenayre’s first Internet centric product, the GL3200
`
`Internet Gateway. I oversaw completion of research on an extremely bandwidth-
`
`efficient, next generation radio communications protocol and the patent protection
`
`of the basic technology. I also chaired the 1999 Glenayre/Motorola ReFLEX
`
`Solutions Development Conference in San Francisco that was attended by over 200
`
`third-party developers working on two-way paging applications.
`
`22.
`
`In 1999 I moved to California to head up Glenayre’s two-way pager
`
`development as Vice President of Product Development at Glenayre Consumer
`
`Products Group, Santa Clara, CA, USA. There I led the launch of three models of
`
`two-way data pagers and one PDA two-way data module with combined sales in
`
`excess of 150,000 units. I directed all stages of product development, including
`
`specification, hardware and software development, plastics design, pilot runs, FCC
`
`- 8 -
`
`Microsoft Exhibit No. 1002
`Page 12 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`and customer certification and production ramp.
`
`23.
`
`In summary, I have over 16 years of experience in wireless, one-way
`
`paging, and two-way paging systems including system design, protocols, software
`
`and hardware on both the central controller side and the mobile side. I was deeply
`
`involved with the development of two-way paging with all the major players
`
`including Motorola, Skytel and PageNet, to name a few.
`
`24.
`
`Since 2001 I have continued to be a leader in high technology. I have
`
`led development of mission critical fault detection software for semi-conductor
`
`manufacturing, consulted with other companies on innovation and IP development
`
`until 2010 when I refocused my career from high tech to clean tech. In 2010 I
`
`returned to the University of British Columbia to earn my Masters in Engineering
`
`in Clean Energy Engineering with a 4.1 GPA. Since then I have worked
`
`exclusively in clean technology innovation from high energy efficiency
`
`compressors to advanced water disinfection systems. I am currently VP of
`
`Engineering and Product Development at Acuva Technologies Inc., and we are
`
`developing the world’s first practical commercial UV-LED water disinfection
`
`system.
`
`25.
`
`I am the primary inventor on three patents, and named as an inventor
`
`on two more patents. Four of these five patents relate to paging technology.
`
`26.
`
`In summary, I have substantial experience in the design and
`
`- 9 -
`
`Microsoft Exhibit No. 1002
`Page 13 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`development of communications devices and systems, including two-way paging
`
`systems like those described in the ’946 Patent. My experience is directly relevant
`
`to the technology described the ‘946 Patent.
`
`27. A copy of my curriculum vitae is attached to this declaration as
`
`Appendix A.
`
`B.
`
`28.
`
`Compensation
`
`I am being compensated by Microsoft for my work in connection with
`
`this declaration. The compensation is not contingent upon my performance, the
`
`outcome of this inter partes review or any other proceeding, or any issues involved
`
`in or related to the inter partes review.
`
`C.
`
`Documents and Other Materials Relied Upon
`
`29. My opinions expressed in this declaration are based on documents and
`
`materials identified in this declaration, including the ‘946 Patent and its
`
`prosecution history, the prior art references and background materials discussed in
`
`this declaration, and any other references specifically identified in this declaration.
`
`I have considered these materials in their entirety, even if only portions are
`
`discussed here.
`
`30.
`
`I have also relied on my own experience and expertise in electrical
`
`engineering and product design. In doing so, I have kept in mind that the ‘946
`
`- 10 -
`
`Microsoft Exhibit No. 1002
`Page 14 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`Patent claims priority to an application filed on September 21, 1993 and a different
`
`application filed on November 12, 1992.
`
`31. All exhibit numbers used in this declaration refer to Exhibits to
`
`Microsoft’s IPR Petition for the ‘946 Patent.
`
`IV.
`
`STATEMENT OF LEGAL PRINCIPLES
`
`A.
`
`Claim Construction
`
`32. Microsoft’s counsel has advised that, when construing claim terms in
`
`an expired patent, the claim construction principles set forth by the Federal Circuit
`
`in Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir.2005) (en banc) apply.
`
`Microsoft’s counsel has further informed me that the terms should be interpreted as
`
`understood by one of ordinary skill in the art at the time of the invention. I
`
`understand that the context of the term within the claim and in view of other claims
`
`is instructive in interpreting the claim. I further understand from Microsoft’s
`
`counsel that the claim terms must be read in view of the patent specification, of
`
`which they are a part. Microsoft’s counsel has also informed me that the
`
`prosecution history of the ’946 Patent can be useful for claim construction
`
`purposes.
`
`B.
`
`Anticipation
`
`33. Microsoft’s counsel has advised that in order for a patent claim to be
`
`valid, the claimed invention must be novel. Microsoft’s counsel has further
`
`- 11 -
`
`Microsoft Exhibit No. 1002
`Page 15 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`advised that if each and every element of a claim is disclosed in a single prior art
`
`reference, then the claimed invention is anticipated, and the invention is not
`
`patentable according to pre-AIA 35 U.S.C. § 102 effective before March 16, 2013.
`
`In order for the invention to be anticipated, all of the elements and limitations of
`
`the claim must be shown in a single prior art reference, arranged as in the claim. A
`
`claim is anticipated only if each and every element as set forth in the claim is
`
`found, either expressly or inherently described, in a single prior art reference. In
`
`order for a reference to inherently disclose a limitation, that claim limitation must
`
`necessarily be present in the reference.
`
`C.
`
`Obviousness
`
`34. Microsoft’s counsel has also advised me that obviousness under pre-
`
`AIA 35 U.S.C. § 103 effective before March 16, 2013 is a basis for invalidity. I
`
`understand that where a prior art reference does not disclose all of the limitations
`
`of a given patent claim, that patent claim is invalid if the differences between the
`
`claimed subject matter and the prior art reference are such that the claimed subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art. Obviousness can be based on a single prior
`
`art reference or a combination of references that either expressly or inherently
`
`disclose all limitations of the claimed invention.
`
`V.
`
`OVERVIEW OF THE ’946 PATENT
`
`- 12 -
`
`Microsoft Exhibit No. 1002
`Page 16 of 352
`
`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`A.
`
`35.
`
`Summary of the ‘946 Patent
`
`The ‘946 Patent is titled Nationwide Communication System, and it
`
`describes a “two-way communication system for communication between a system
`
`network and a mobile unit.” Ex. 1001 at Abstract. The system network is made up
`
`of a group of base station transmitters that are divided into zones and that transmit
`
`messages to the mobile units within the zone. Ex. 1001 at Abstract. The network
`
`also includes base station receivers that receive messages from the mobile units.
`
`Ex. 1001 at 7:29-46. Messages are transmitted to and from the mobile units by the
`
`system network via radio frequency (“RF”) signals. Ex. 1001 at 5:29-40. Figure 6
`
`of the ’946 Patent gives an example of the mobile communications system,
`
`including Base Transmitters 612 and 614, Base Receivers 628, 630, 632, and 634,
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`and mobile unit 624.
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`- 13 -
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`Microsoft Exhibit No. 1002
`Page 17 of 352
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`

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`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`36.
`
`The mobile units described in the ’946 Patent include both transmitter
`
`and receiver circuits that enable the mobile unit to receive messages from the
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`network as well as transmit messages back to the network. Ex. 1001 at 14:45-51.
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`Figure 15 of the ’946 Patent depicts the mobile unit with its transmitter unit 1520
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`and receiver unit 1506 connected to a shared antenna 1502 through an antenna
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`switch 1504. Ex. 1001 at 14:52-55, 15:41-45. Figure 15 also shows the display
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`and storage logic 1508 and display controls at 1512 that support displaying
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`received messages on the LCD display 1514. Ex. 1001 at 15:6-10.
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`- 14 -
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`Microsoft Exhibit No. 1002
`Page 18 of 352
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`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`37.
`
`The mobile unit described in the ’946 Patent sends a negative
`
`acknowledgement to the network if a message is not properly received, which
`
`results in the network retransmitting the message to the mobile unit without
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`requiring a user request for retransmission. Ex. 1001 at 15:15-22. Figure 16 of the
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`’946 Patent depicts an example of the mobile unit. As shown in Figure 16, the
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`mobile unit includes display control buttons 1604 that allow the user to scroll text
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`up or down on the display 1606. Ex. 1001 at 16:38-45. The mobile unit also
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`includes reply buttons 1608-1618 that allow the user to generate reply messages to
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`received messages. Ex. 1001 at 16:49-58. Finally, the mobile unit includes
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`retransmission button 1622 that allows the user to request that the network
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`retransmit whole messages or a part of the received messages that had errors. Ex.
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`- 15 -
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`Microsoft Exhibit No. 1002
`Page 19 of 352
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`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`1001 at 17:8-23. By allowing the user to decide if a message needs to be
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`retransmitted, the system can save bandwidth by not always automatically
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`retransmitting the messages where the user was able to understand the message
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`without retransmission. Ex. 1001 at 17:24-27.
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`38.
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`The received messages are checked for errors, and if errors are
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`detected, the errors will be highlighted on the display. Ex. 1001 at 17:8-15. The
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`’946 Patent indicates that the errors in the received messages may be highlighted in
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`various ways, including underlining, placing the errors in brackets, or printing the
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`errors in reverse video. Ex. 1001 at 17:10-14. Given that the user must read the
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`message and decide if at least part of the message should be retransmitted, the
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`- 16 -
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`Microsoft Exhibit No. 1002
`Page 20 of 352
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`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`manual retransmission request is an indication to the network that the user has read
`
`the message. Ex. 1001 17:14-18, 17:28-33.
`
`39.
`
`The ’946 Patent describes the well-known feature of detecting errors
`
`in received messages using error correcting codes, and it identifies the potential
`
`negative impact on the network if the system automatically requests retransmission
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`for every message that the receiver detects has an error in a part of the message.
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`Ex. 1001 at 4:41-57. The ’946 Patent claims to improve network efficiency by
`
`allowing the user to decide when the errors are bad enough that the message, or at
`
`least a part of the message, should be retransmitted. Ex. 1001 at 17:8-27.
`
`40. As discussed in Section II above, claims 1, 2, 4 and 7-9 of the ‘946
`
`Patent cover the ability of both the system network and the mobile unit to transmit
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`and receive messages via RF signals, including the ability of the mobile unit to
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`transmit a request for retransmission of a portion of the message that was received
`
`with errors. Independent claims 1 and 8 cover the mobile unit, while independent
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`claim 7 covers the system network. Claims 2 and 9 depend from claims 1 and 8
`
`respectively and add the limitations that the mobile unit be able to detect errors in
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`the received data, and that the mobile unit also highlight the received errors on the
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`display. Claim 4 covers the fact that the request for retransmission of certain
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`portions of the received message is an indication to the system network that the
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`user has read the message.
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`- 17 -
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`Microsoft Exhibit No. 1002
`Page 21 of 352
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`

`
`DECLARATION OF DONALD GAYTON
`IN SUPPORT OF PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 5,754,946
`
`B.
`
`41.
`
`Priority Date for the ’946 Patent
`
`I understand that a patent may claim priority to the date on which an
`
`earlier patent application was filed if the claim to priority is included within the
`
`patent and the earlier application meets the statutory requirements for an adequate
`
`disclosure of the claimed invention. I understand that this includes at least two
`
`requirements: the earlier application must include a written description of the
`
`claimed subject matter, and the description must be sufficient to enable a POSITA
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`to make and use the claimed invention.
`
`42.
`
`The ’946 patent issued lists a filing date of September 21, 1993. The
`
`patent further lists a related patent application, serial number 973,918, which later
`
`issued as U.S. Patent No. 5,590,403 (the ’403 Pat