`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FACEBOOK, INC., AND WHATSAPP, INC.,
`
`Petitioners,
`
`v.
`
`UNILOC USA, INC., AND UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`______________
`
`Case IPR2016-01756
`U.S. Patent 8,571,194 B2
`______________
`
`DECLARATION OF DR. VAL DIEULIIS
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`
`
`JUNE 15, 2017
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`Facebook v. Uniloc, No. IPR2016-01756
`Uniloc's EX2003 Page 1
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 3
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`2. QUALIFICATIONS ...................................................................................... 4
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 7
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`4. INFORMATION CONSIDERED ................................................................ 8
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`5. LEGAL STANDARDS .................................................................................. 9
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`6. THE ’194 PATENT ......................................................................................11
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`6.1 Ordinary Skill in the Art ........................................................................ 23
`6.2 Claim Construction ................................................................................ 24
`6.2.1 “registration” .............................................................................. 25
`6.2.2 “conference call server” .............................................................. 33
`6.2.3 “without requiring [registration] with a
`[conference call server]” ............................................................. 36
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`7. U.S. PATENT APPLICATION PUBLICATION US
`2002/0023131 A1 (“WU”) .............................................................................36
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`8. WU DOES NOT RENDER OBVIOUS ANY CLAIM OF THE
`’194 PATENT ...............................................................................................44
`
`8.1 Wu fails to disclose and teaches away from “without
`requiring individual selection of potential members
`including the first party and the at least one other party” ....................... 45
`8.2 Wu both fails to disclose and teaches away from “without
`requiring registration with a conference call server” .............................. 46
`8.2.1 Wu’s host both establishes the talk session and
`requires registration of its subscribers to do so ........................... 47
`8.2.2 Wu Establishes Talk Sessions Using the Host,
`which Includes the Login Server 570 .......................................... 51
`8.3 Wu Combined with the Proffered Prior Art Do Not Make
`a Prima Facie Case of Obviousness ........................................................ 54
`8.3.1 Glasser, DeSimone, and Young Do Not Correct
`Wu’s Deficiencies ...................................................................... 54
`8.3.2 Howard Does Not Correct Wu’s Deficiencies............................. 55
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
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`1. Introduction
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`1.
`
`My name is Val DiEuliis, and I have been retained by
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`Uniloc USA, Inc., and Uniloc Luxembourg S.A. (“Uniloc” or the “Patent
`
`Owner”). My client Uniloc and its associated counsel, Etheridge Law
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`Group, have asked me to study U.S. Patent Application Publication US
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`2002/0023131 A1 (“Wu”) in order to determine whether Wu anticipates
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`one specific limitation of every claim in the patent at issue, U.S. Patent
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`No. 8,571,194 B2 (the “194 patent”), and whether Wu may be combined
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`with the proffered secondary references proffered in the Petition to render
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`the ’914 patent obvious. I document my findings in this declaration. I
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`have concluded that Wu does not render obvious at least the limitation
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`“display for the first party an option to automatically initiate voice
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`communication between the current participants of the IM session
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`without requiring individual selection of potential members including the
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`first party and the at least one other party and without requiring
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`registration with a conference call server for establishing the voice
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`communication by the potential members including the first party and the
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`at least one other party.” See e.g., ’194, claim 1; and similar challenged
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`claims 6 and 11.
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`2.
`
`The limited scope of my opinions and analysis in this
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`declaration do not imply that I may not later express other opinions or
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`report other results from other investigations concerning other issues
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`raised by the Petitioners or their experts in this IPR.
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`2. Qualifications
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`3.
`
`I am an electrical engineer with over 45 years of experience
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`developing, programming, and analyzing computer algorithms and
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`software. I am experienced with and able to create, read, and interpret
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`firmware and software in C, C++, Java, assembly language, HTML, and
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`other computer programming languages. I have served as an expert
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`witness in multiple cases for which I analyzed computer source code in
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`various languages and testified at ITC hearings and two jury trials
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`concerning my results.
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`4.
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`During my career, I have developed and managed projects
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`for various applications, including sensors, controls, communications,
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`user interfaces, device firmware, handheld devices, medical devices and
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`systems, and test systems for optical and magnetic disk systems.
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`
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`5.
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`I have designed, developed, and implemented hardware and
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`software for digital communication networks, including factory
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`networks, document capture and distribution, and communications links
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`for various applications. See DiEuliis CV (e.g., Website Development,
`
`Industrial Valve Position Sensor, Condition-Based Maintenance System,
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`Avionics Environmental Monitor, Radio Frequency Billboard Network,
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`Wireless Bar Code System for Hospitals, ISA Board for 4-Port RS422
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`Serial Communications Multiplexer).
`
`6.
`
`As a graduate student at the University of Illinois at
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`Urbana-Champaign, I obtained extensive training in the complexity of
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`algorithms; the complexity of databases from an information-theoretic
`
`point-of-view; information theory; combinatorics and combinatorial
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`algorithms; and the mathematics and algorithms of error correcting
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`codes, a field closely related to cryptography. In addition, as a part of my
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`graduate research, I created and developed heuristic algorithms and wrote
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`software to synthesize non-linear codes for optimizing the spectra of
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`coded digital communications signals.
`
`7.
`
`I received the Ph.D. and M.S. degrees in electrical
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`engineering from the University of Illinois at Urbana-Champaign in 1978
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`and 1976, respectively, and the B.S. degree in electrical engineering from
`
`
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`the University of Notre Dame in 1972. I am a Registered Professional
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`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
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`of the Institute of Electrical and Electronics Engineers. Additionally, I
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`am a co-inventor of two patents.
`
`8.
`
`I have been an independent engineering consultant, doing
`
`business as Electronics Consultants, since 1984. My clients have
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`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
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`among others. Prior to that, I worked as a research engineer for the 3M
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`Company in St. Paul, Minnesota for five years. Prior to my graduate
`
`studies, I worked as an electrical engineer in the U. S. Army with the
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`U.S. Army Security Agency for two years, during which time I held a
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`Top Secret W/Crypto and SI Access security clearance.
`
`9.
`
`As an adjunct instructor at the University of Saint Thomas in
`
`St. Paul, Minnesota, I developed and presented a lecture on classical
`
`linear control theory for graduate students, developed and taught a
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`graduate course on computer networks, and taught an undergraduate
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`analog and digital electronics course to mechanical engineering students.
`
`10.
`
`This and other information about my background is included
`
`in my CV, which attached to this declaration as Attachment A.
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`
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`3. Compensation, Testimony, and Publications
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`11.
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`I am being paid $440 per hour for the time I spend working
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`on this matter. My compensation is not contingent on my performance,
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`the outcome of this IPR, or any issues involved in or related to this IPR.
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`12.
`
`During the past four years, I have testified at trial, hearing,
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`or deposition in the following cases:
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`• Terremark North America, LLC, et al. v. Joao Control &
`
`Monitoring LLC.; US PTO Inter Partes Review IPR2015-01466;
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`Joao Control & Monitoring on behalf of Joao Control &
`
`Monitoring; 2016. I testified at a deposition.
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`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
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`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
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`2016. I testified at a deposition.
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`• Sega of America, Inc. et al. v. Uniloc USA et al.; USPTO Inter
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`Partes Review; IPR2014-01453; Uniloc USA on behalf of Uniloc
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`USA, 2015. I testified at a deposition.
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`• Uniloc USA et al. v. Activision Blizzard et al.; United States
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`District Court for the Eastern District of Texas (Tyler); Civil
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`Action No. 6:13-cv-00256-LED; and Uniloc USA v. Electronic
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`Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson Bumgardner
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`Casto and Carter, Scholer, Arnett, Hamada, and Mockler on behalf
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`of Uniloc USA et al.; 2013-2014. I testified at three depositions
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`and a jury trial.
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`• In the Matter of Certain Optical Disc Drives, Components thereof,
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`and Products Containing Same; U.S.I.T.C. Investigation No. 337-
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`TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
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`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
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`Lenovo, Greenberg Traurig on behalf of LG Electronics,
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`McDermott Will & Emery on behalf of Nintendo and Panasonic,
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`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
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`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
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`deposition.
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`• Taser International, Inc. v. Karbon Arms, LLC; United States
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`District Court for the District of Delaware; Civil Action No. 1:11-
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`cv-426-RGA; Smith, Gambrell & Russell, LLP, on behalf of
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`Karbon Arms, 2013. I testified at a deposition.
`
`
`13.
`
`I have had no publications in the past 10 years.
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`4. Information Considered
`
`14.
`
`In order to arrive at my opinions, I have reviewed and
`
`considered the materials listed below:
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`• Petition for Inter Partes Review of U.S. Patent No. 8,571,194, and
`
`exhibits, Case No. IPR2016-01756, September 7, 2016 [Pet.]
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`• U.S. Patent No. 8,571,194 B2 (“194”) [EX1001], and its
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`prosecution history
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`• Declaration of David Klausner, September 7, 2015 [EX1002]
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`• U.S. Patent Application Publication US 2002/0023131 A1 (“Wu”)
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`[EX1003]
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`• Internet – The Complete Reference, Second Edition, Margaret
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`Young et al., 2002 [EX1004]
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`• U.S. Patent No. 6,519,639 (“Glasser”) [EX1005]
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`• U.S. Patent No. 6,212,548 (“DeSimone”) [EX1006]
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`• U.S. Patent No. 6,584,505 (“Howard”) [EX1007]
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`• Decision Instituting Inter Partes Review 37 C.F.R. § 42.108, Case
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`IPR2016-01756, March 16, 2017 [Decision]
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`• Patent Owner Preliminary Response Pursuant to
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`37 C.F.R. § 42.107(a), December 22, 2016 [Prelim.]
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`• Videotaped Deposition of David Klausner, June 6, 2017 [EX2004]
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`5. Legal Standards
`
`15.
`
`I understand there are certain legal rules, standards, or
`
`requirements that I accept for the purpose of my analysis of the opinions
`
`and conclusions set forth in this declaration.
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`16.
`
`I understand a patent is obvious “if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
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`determination must be based on four factual inquiries: (1) the scope and
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`content of the prior art; (2) the differences between the claims and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
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`of nonobviousness.
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`17.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the prior art, the claim cannot be considered obvious.
`
`18.
`
`I further understand that it is improper to combine references
`
`where the references teach away from their combination. A prior art
`
`reference teaches away from the claimed invention when a person of
`
`ordinary skill, upon reading the reference would be led in a direction
`
`divergent from the path that was taken by the applicant. Prior art also
`
`teaches away when it criticize[s], discredit[s], or otherwise discourage[s]
`
`investigation into the claimed invention. Additionally, a reference teaches
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`away from a combination when using it in that combination would
`
`produce an inoperative result.
`
`19.
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`In addition, I understand that if a proposed modification or
`
`combination of the prior art would change the principle of operation of
`
`the prior art device being modified, then the teachings of the references
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`are not sufficient to render the claims prima facie obvious.
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`6. The ’194 Patent
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`20.
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`The ’194 patent is generally directed to:
`
`a system and method for initiating conference calls via an
`instant messaging system to reduce the effort required to
`1
`
`initiate and manage the call. The system uses an IM
`connection between a requesting party and a conference
`call server to inform the conference call server of the
`desire to initiate the conference call. The conference call
`server may initiate the conference call by having involved
`parties called by a conference bridge, thus reducing the
`effort required by the parties to join the call.
`
`
`
`(EX1001 at Abstract) (Emphasis added.)
`
`
`
`21.
`
`The Background section of the '194 patent explains that the
`
`state of the art at the time of the invention for integrating certain
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`telephony products into software had centered on the integration of the
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`2
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`PBX.
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` EX1001 at 2:38-44. For example, passing the correct telephony
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`commands via certain technologies, such as private branch exchange or
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`“PBX,” was difficult because “no two PBX’s are alike.” Id. Further, PBX
`
`
`
` Instant Messaging
`
` Private Branch Exchange, which is a private switching telephone
`
`1
`
`2
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`network that is used to provide telephone services within an organization,
`
`such as a company, school, hospital, and to allow people in the
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`organization to have telephone access outside of the organization.
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`technology often required “system integrators” and had reduced
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`scalability opportunity. Id.; see also Id. at 2:45-52.
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`22.
`
`The art at the time of the invention typically required all
`
`users who wanted to join a conference call to dial in to a central number
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`and enter a passcode, which inhibited setting up spontaneous conference
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`calls and was subject to security risks. Id. at 2:45-63. Other systems
`
`required someone (e.g., the host) to separately join each participant to the
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`call, by, for example, taking the time to dial or otherwise separately
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`identify each conference participant. Id. at 2:64-3:25. Over all, the
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`methods at the time of the priority date were inefficient because they
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`required “a conference call requester or party to the conference call to
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`manually inform either the parties to the conference call, or the
`
`conference bridge itself, of parameters, passwords, and phone numbers
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`for the call.” Id. at 3:21-25.
`
`23.
`
`The ’194 patent explains at 3:26-52 that Instant Messaging
`
`(“IM”) systems “employ a client-server model on Internet protocol
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`(hereafter ‘IP’) networks to deliver text chat and other information to
`
`distributed users in real-time.” Id. at 3:26-29.
`
`24.
`
`The ’194 patent teaches preferred embodiments for which
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`voice communications among two or more people are requested by a
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`party during an instant messaging session. The system may use an IM
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`connection between a requesting party and a conference call server to
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`inform the conference call server of the desire to initiate the conference
`
`call. This is disclosed, for example, in the passage below:
`
`The present invention may use a communications channel
`established through an instant messaging service to
`transmit a request to initiate a conference call from a
`network access device associated with a conference call
`requester to a conference call server. The conference call
`server, upon receiving the request, may initiate the
`formation of a conference bridge a conference call
`between the conference call requester and one or more call
`participants.
`
`
`
`(EX1001 at 3:56-63) (Emphasis added.)
`
`
`
`25.
`
`FIG. 4 of the ’194 patent, reproduced below, illustrates an
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`example system described in the '194 specification.
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`Figure 4 of the ’194 patent—Exemplary System
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`
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`26.
`
`As disclosed in the specification of the '194 patent,
`
`particular embodiments use instant messaging (IM) technology to trigger
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`automatic initiation of a host-initiated conference call. In the embodiment
`
`described with reference to Figure 4, for example, each user connects to a
`
`network with a network accessible device (NAD) 414. These devices
`
`comprise computers, digital cellular telephones, personal digital
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`assistants (an earlier technology whose functionality has been
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`incorporated into today’s smartphones and tablets), and similar
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`technologies. EX1001 at 5:46-52.
`
`27.
`
`The network over which the NADs communicate may be an
`
`Internet protocol (IP) network (e.g., the Internet). The NADs may
`
`communicate over this network using IM, which is provided by an instant
`
`messaging server, which in FIG. 4 is shown block 402 (CBX), which is
`
`the “conference call server.” Id. at 9:21-33. The Conference Call Server
`
`402 includes two processors—a Conference Request Processor and an
`
`IM Communications Processor—and a database 406. The instant
`
`messaging service can send a request to the conference call server to start
`
`a conference call. Id. at 6:30-43. This allows a user to start a conference
`
`call from within an instant messaging session and in a manner that may
`
`automatically include the participants in that session. Id. at 7:35-52.
`
`28.
`
`Upon receiving the request, the conference call server 402
`
`may establish the conference call directly by itself or indirectly using a
`
`separate component or system, which can be provided by a third party
`
`(e.g., through one of the bridges 410).
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`29.
`
`I have reproduced several passages from the ’194 patent that
`
`support my opinion above as follows:
`
`The conference call server may have one or more
`ports for connecting participants, such as by a VOIP
`path, or through a telephonic network. Connection of
`two or more paths allows the formation of a
`conference bridge. Alternatively, the conference
`server may have stored information identifying one or
`more conference bridges discrete from the conference
`server, such as conference bridge capabilities
`provided by one or more third party vendors.
`
`(Id. at 6:22-29).
`
`
`
`... information contained in the message may be
`correctly parsed to allow the conference call server to
`properly initiate, or request initiation of, a conference
`bridge.
`
`(Id. at 6:41-43)
`
`
`
`The conference call server may then initiate 114 or
`request initiation of a conference bridge between the
`conference call requester and the conference call
`targets.
`
`(Id. at 6:65-67)
`
`
`
`The conference call server may further utilize third
`party conference call providers for the actual initiation
`of a conference call based on parameters generated by
`the conference call server or conference call requester.
`
`(Id. at 8:33-36)
`
`
`
`
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`
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`30.
`
`Where the conference call server initiates the
`conference call itself ….
`
`(Id. at 8:60-61)
`
`
`
`the conference call server … may then initiate the
`conference call either directly or through a third party
`conference call service provider.
`
`(Id. at 11:48-51)
`
`The conference call server 402 or one of the conference call
`
`bridges 410A and 410B may contact each of the prospective targets,
`
`possibly directly dialing their phones or, if their NAD has audio and
`
`video capability, connecting through it using the one or more of the
`
`various communication networks 408, including publicly switched
`
`telephone networks (PSTNs), voice over Internet, or cellular telephone. If
`
`the conference call server is not provided with a direct number to dial, it
`
`may instead inform the prospective targets (e.g., through instant
`
`messaging) by giving them instructions to join. Id. at 8:19-32.
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`
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`31.
`
`An important and claimed aspect of the preferred
`
`embodiment is the capability, through a displayed option in the first
`
`party’s user interface, to automatically initiate conference calls with
`
`current participants of an IM session without requiring either (1)
`
`selection of potential participants for the conference call or (2)
`
`registration with the conference call server by the potential participants.
`
`Id. at 4:12-38.
`
`32.
`
`With respect to FIG. 3 in EX1001, the written description
`
`describes the following:
`
`For the purposes of illustration, the Figure shows three
`
`parties, User A 302, User B 304, and User C 306, involved
`
`308 in an IM session, such as a chat session which could
`
`occur during a shared application session. User A 302, the
`
`conference call requester, could request a conference call
`
`through the NAD in use by User A. The IM service in
`
`communication with User A's NAD could be implemented
`
`to be aware of the on-going IM session, such that the
`
`software would determine the list of conference call targets
`
`from the list of parties presently in the IM session. Thus,
`
`User A could request a conference call with one step,
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`such as through actuation of a "call now" button or icon
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`associated with User A's IM service.
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`(EX1001 at 7:37-49) (Emphasis added.)
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`33.
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`The passage above is part of the description of a preferred
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`embodiment enabling the requester (User A above) to select the option to
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`automatically initiate the conference call (actuating the button or icon),
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`without requiring either (1) selection of potential participants or (2)
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`registration with the conference call server by the potential participants.
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`34.
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`FIG. 6 of EX1001, reproduced below, provides an
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`illustration of a display screen that includes an option to automatically
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`initiate the conference call.
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`FIG. 6 from EX1001 (User Interface)
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`35.
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`The illustration above includes the “Start Call” button 606,
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`which, when activated by the user, automatically initiates the conference
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`call. EX1001 at 10:14-16 (“a feature 606 allow [sic] the conference call
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`requester to transmit information to the conference call server such that a
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`conference call may be initiated.”).
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`36.
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`In this declaration, I focus on the claim language
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`“automatically initiating voice communication between the current
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`participants of the IM session” as further defined by the clarifying
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`restrictions: (a) “without requiring individual selection of potential
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`members including the first party and the at least one other party”; and
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`(b) “without requiring registration with a conference call server for
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`establishing the voice communication by the potential members including
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`the first party and the at least one other party.”
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`37.
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`First, independent claim 1 recites with emphasis added the
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`following step:
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`display for the first party an option to
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`automatically initiate voice communication
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`between the current participants of the IM session
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`without requiring individual selection of potential
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`members including the first party and the at least
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`one other party and without requiring registration
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`with a conference call server for establishing the
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`voice communication by the potential members
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`including the first party and the at least one other
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`party
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`38.
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`Second, independent claim 6 recites with emphasis added
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`the following step:
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`display for the first party an option to
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`automatically initiate voice communication
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`between the current participants of the IM
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`session without requiring individual selection of
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`and registration with a conference call server for
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`establishing the voice communication by
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`potential members including the first party and
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`the at least one other party
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`
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` Third, independent claim 11 recites with emphasis added
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`display for the first party an option to
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`automatically initiate voice communication
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`between current participant of the text
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`communication exchange without requiring
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`individual selection of and registration with a
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`conference call server for establishing the voice
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`39.
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`the step:
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`40.
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`communication by potential members including
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`the first party and the at least one other party
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`
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`According to the plain language of these limitations, a
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`person of ordinary skill in the art would have understood their broadest
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`possible meaning in the context of the whole patent to be consistent with
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`the following interpretation:
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`• A display (e.g., a computer or cell phone display) of one of the
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`participants of an IM session (“the first party”) must provide some
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`type of an option (e.g., in the form of a button or icon) to
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`automatically initiate voice communication. When this option is
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`selected or activated (e.g., button or icon clicked) by the first party,
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`a voice communication (e.g., voice teleconference) procedure is
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`automatically initiated by the invention.
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`• As specifically recited in the claim language, the automatic
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`initiation of the voice communication must not require individual
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`selection of potential participants including the first party and at
`
`least one other party.
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`• As specifically recited in the claim language, the automatic
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`initiation of the voice communication must not require registration
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`with the conference call server by the potential participants
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`including the first party and the at least one other party.
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`
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`41.
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`All other challenged claims are dependent on one of the
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`three independent claims cited above. Hence, all claims at issue recite the
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`limitations discussed above.
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`6.1
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`42.
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`Ordinary Skill in the Art
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`The Petitioners define a person of ordinary skill in the art as
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`someone who, as of December 2003, would have had “a bachelor’s
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`degree in electrical engineering or computer science (or equivalent
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`degree/experience) with at least two years of experience in computer
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`programming and software development, including the development of
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`software for communication with other computers over a network.”
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`Pet. at p. 9, fn. 2. The Petitioners’ expert, Mr. Klausner offers an identical
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`definition. EX1002 at ¶ 13.
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`43.
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`I have no reason to disagree with the Petitioners’ and
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`Mr. Klausner’s description of a person of ordinary skill in the art.
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`Moreover, based on my degrees in electrical engineering, which included
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`extensive training in software development, data communications and
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`networking, and with my 45-plus years of experience, including
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`significant software development, I have considerably more experience
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`and expertise than the POSITA. I base my opinions regarding the level of
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`
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`ordinary skill in the art upon this understanding and my own experience
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`in the field. I have considered the way in which a POSITA would have
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`understood the ’194 patent on its priority date, and I offer my opinions on
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`that basis.
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`6.2
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`44.
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`Claim Construction
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`In its Decision to Institute Trial in this IPR, the Board states
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`“we construe claim terms in an unexpired patent according to their
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`broadest reasonable construction in light of the specification of the patent
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`in which they appear.” Decision at 6. I understand that the broadest
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`reasonable interpretation is the claim language itself. I, and the Patent
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`Owner, construe the claim language such that the claims are given their
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`broadest reasonable interpretation in light of the specification of the '194
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`patent.
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`45.
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`Each challenged independent claim recites “an option to
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`automatically initiate voice communication between the current
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`participants of the IM session.” This limitation further recites the
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`requirements “without requiring individual selection of potential members
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`including the first party and the at least one other party,” and “without
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`requiring registration with a conference call server ... by the potential
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`members including the first and the at least one other party.”
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`46.
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`The Petitioners seek to construe the phrase “without
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`requiring registration with a conference call server” and offers separate
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`constructions for both “registration” and “conference call server.” The
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`Board did not adopt the Petitioners’ constructions in the Board’s decision
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`to institute trial. Rather, the Board determined, at least for purposes of
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`that preliminary stage, that the disputed terms do not require an express
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`construction. Decision at 7.
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`47.
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`In my opinion, the Petitioners’ proposed constructions are
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`unreasonable in light of the plain language of the claims, the written
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`description and figures, and the prosecution history.
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`6.2.1
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`48.
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`“registration”
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`The claim language explicitly and unambiguously confirms,
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`using known terms of art and plain English language, that the recited
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`“option to automatically initiate voice communication between the
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`current participants of the IM session” excludes “requiring registration
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`with a conference call server (emphasis added