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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.
`Patent Owner
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`
`
`Cases IPR2017-00223 and IPR2017-00224
`Patent 8,724,622
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`
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`DECLARATION OF LEONARD J. FORYS, PH.D.
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`Apple 1003
`U.S. Pat. No. 8,724,622
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`IPR2017-00223 and IPR2017-00224
`U.S. Pat. No. 8,724,622
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`TABLE OF CONTENTS
`
`
`Introduction ......................................................................................................... 1
`I.
`II. Qualifications and Expertise ............................................................................... 5
`III. My Understanding of Claim Construction ....................................................13
`IV. Legal Understanding ......................................................................................13
`A. My Understanding of Claim Construction ....................................................13
`B. Level of Ordinary Skill in the Art .................................................................14
`C. My Understanding of Obviousness ...............................................................15
`V. Background of the Technologies Disclosed in the ’622 Patent ........................20
`A. Technical Overview of Instant Voice Messaging Technology .....................20
`VI. Overview of the ’622 Patent ..........................................................................31
`A. Claims 3, 4, 6-8, 10-19, and 21-23 ................................................................34
`B. Claim 38 .........................................................................................................35
`VII. Overview of the Prior Art ..............................................................................35
`A. Vuori ..............................................................................................................35
`B. SMS Specification .........................................................................................38
`C. Holtzberg .......................................................................................................42
`D. Väänänen .......................................................................................................43
`E. Dahod .............................................................................................................46
`F. Hogan .............................................................................................................47
`G. Logan .............................................................................................................49
`VIII. Claim Construction ........................................................................................51
`A. “Object field” .................................................................................................51
`B. “Action field” .................................................................................................51
`C. “Identifier field” .............................................................................................51
`D. “Source field” ................................................................................................52
`E. “Destination field” .........................................................................................52
`F. “Display[ing] at least one of the plurality of instant voice messages” ..........52
`IX. The Combination of Vuori the SMS Specification Renders Claims 3, 4, 6-8,
`11-13, 18, and 21-23 Obvious..................................................................................53
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`A. Claim 3 ...........................................................................................................54
`B. Claim 4 ...........................................................................................................65
`C. Claim 6 ...........................................................................................................69
`D. Claim 7 ...........................................................................................................73
`E. Claim 8 ...........................................................................................................78
`F. Claim 11 .........................................................................................................84
`G. Claim 12 .........................................................................................................88
`H. Claim 13 .........................................................................................................91
`I. Claim 18 .........................................................................................................94
`J. Claim 21 .........................................................................................................96
`K. Claim 22 .........................................................................................................97
`L. Claim 23 .........................................................................................................99
`X. The Combination of Vuori, the SMS Specification, and Holtzberg Renders
`Claims 10 and 14-17 Obvious ................................................................................100
`A. Claim 10 .......................................................................................................100
`B. Claim 14 .......................................................................................................104
`C. Claim 15 .......................................................................................................108
`D. Claim 16 .......................................................................................................111
`E. Claim 17 .......................................................................................................113
`XI. The Combination of Vuori, the SMS Specification, and Väänänen Renders
`Claims 19 Obvious .................................................................................................116
`A. Väänänen .....................................................................................................117
`B. Motivation to Combine Vuori, the SMS Specification, and Väänänen ......119
`XII. Vuori Renders Claim 38 Obvious ...............................................................120
`A. Claim 38 .......................................................................................................120
`XIII. Dahod Renders Claims 3, 4, 7-8, 11-13, 18, 21-23, and 38 Obvious. ........128
`A. Claim 3 .........................................................................................................129
`B. Claim 4 .........................................................................................................137
`C. Claim 7 .........................................................................................................138
`D. Claim 8 .........................................................................................................139
`E. Claim 11 .......................................................................................................141
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`F. Claim 12 .......................................................................................................144
`G. Claim 13 .......................................................................................................146
`H. Claim 18 .......................................................................................................148
`I. Claim 21 .......................................................................................................150
`J. Claim 22 .......................................................................................................151
`K. Claim 23 .......................................................................................................152
`L. Claim 38 .......................................................................................................152
`XIV. The Combination of Dahod and Hogan Renders Claims 6, 10, and 14-17
`Obvious ..................................................................................................................158
`A. Claim 6 .........................................................................................................159
`B. Claim 10 .......................................................................................................162
`C. Claim 14 .......................................................................................................166
`D. Claim 15 .......................................................................................................168
`E. Claim 16 .......................................................................................................173
`F. Claim 17 .......................................................................................................174
`XV. The Combination of Dahod and Logan Renders Claims 19 Obvious .........177
`XVI. Conclusion ...................................................................................................181
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`I.
`
`Introduction
`
`I, Dr. Leonard J. Forys, declare as follows:
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`1.
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`I have been retained as an expert witness by Sterne, Kessler,
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`Goldstein & Fox PLLC to provide testimony on behalf of Apple, Inc. (“Apple” or
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`“Petitioner”) for the above-captioned inter partes review proceeding. This
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`Declaration concerns technical subject matter relevant to the inter partes review
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`petition (“Petition”) concerning U.S. Patent No. 8,724,622 (“the ’622 Patent”)
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`titled “System and method for instant VoIP messaging” by Michael J. Rojas. It is
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`my understanding that ’622 Patent is currently assigned Uniloc Luxembourg S.A.
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`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
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`stated in this Declaration and could testify competently to them if asked to do so.
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`3.
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`I have reviewed and am familiar with the specification, claims, and
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`prosecution history of the ’622 patent. I will cite to the specification using the
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`following format: (’622 Patent, 1:1-10). This example citation points to the ’622
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`patent specification at column 1, lines 1-10.
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`4.
`
`I have reviewed and am familiar with the following documents and
`
`materials:
`
`Exhibit
`
`1001
`
`Description
`
`Rojas, U.S. Patent No. 8,724,622 (filed July 11, 2012, issued May
`13, 2014).
`
`1002
`
`File History for U.S. Patent No. 8,724,622.
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`Exhibit
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`Description
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`1005
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`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`Vuori, U.S. Patent Application Publication No. 2002/0146097 (filed
`July 23, 2001, published October 10, 2002).
`
`SMSS, Universal Mobile Telecommunications System (UTMS);
`Technical realization of the Short Message Service (SMS) (3G TS
`23.040 version 3.5.0 Release 1999) (published on August 16, 2000).
`
`Holtzberg, U.S. Patent No. 6,625,261 (filed December 20, 2000,
`issued September 23, 2003).
`
`Väänänen, U.S. Patent No. 7,218,919 (filed August 8, 2001, issued
`May 15, 2007).
`
`Dahod et al., U.S. Patent Application Publication No. 2004/0022208
`(filed on August 1, 2002, published February 5, 2004).
`
`Hogan et al., U.S. Patent No. 5,619,554 (filed June 8, 1994, issued
`April 8, 1997).
`
`Logan et al., U.S. Patent No. 5,732,216 (filed October 2, 1996, issued
`March 24, 1998).
`
`Peersman et al., The Global System for Mobile Communications
`Short Message Service, IEEE Personal Communications (June 2000).
`
`SMS Forum, SMPP v3.4 Protocol Implementation guide for GSM /
`UMTS, Version 1.0 (May 30, 2002).
`
`Clarke et al., Experiments with packet switching of voice traffic, IEE
`Proceedings, G - Electronic Circuits and Systems, Vol. 130, Pt. G,
`N.4, pp. 105-113 (August 1983).
`
`Oouchi et al., Study on Appropriate Voice Data Length of IP Packets
`for VoIP Network Adjustment, Proceedings of the IEEE Global
`Telecommunications Conference (GLOBECOM) 2002, V. 2, Taipei,
`Taiwan, 2002, pp. 1618–1622.
`
`Lotito et al., U.S. Patent No. 4,625,081 (filed November 30, 1982,
`issued November 25, 1986).
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`Exhibit
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`Description
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Pershan, U.S. Patent No. 5,260,986 (filed April 23, 1991, issued
`November 9, 1993).
`
`Old Version of AOL Instant Messenger 2.1 Download, retrieved
`from http://www.oldapps.com/aim.php?old_aim=4#screenshots.
`
`Malik, Patent Publication No. 2003/0219104 (filed August 19, 2002,
`published November 27, 2003).
`
`Staack et al., WO Patent Publication No. 02/07396 (filed July 13,
`2000, published January 24, 2002).
`
`International Telecommunication Union, General Aspects of Digital
`Transmission Systems, Terminal Equipments, Pulse Code
`Modulation (PCM) of Voice Frequencies, ITU-T Recommendation
`G.711., pp. 1-10 (ITU 1993).
`
`1022
`
`Microsoft Computer Dictionary, Fifth Edition.
`
`1023
`
`Gayomali, C., “The text message turns 20: A brief history of SMS,”
`The Week,
`December
`3,
`2012,
`retrieved
`from
`http://www.theweek.com/articles/469869/text-message-turns-20-
`brief-history-sms.
`
`
`U.S. Patent Application Publication No. 2002/0146097
`to Vuori, titled “Short voice message (SVM) service
`method, apparatus and system.” I understand that Vuori
`is prior art to the ’622 Patent and has been provided as
`Exhibit 1005.
`
`System
`Universal Mobile Telecommunications
`(UTMS); Technical realization of the Short Message
`Service (SMS) (3G TS 23.040 version 3.5.0 Release
`1999) (hereinafter “SMS Specification”) by European
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`Telecommunications Standards Institute. I understand
`that the SMS Specification is prior art to the ’622 Patent
`and has been provided as Exhibit 1006.
`
`U.S. Patent No. 6,625,261 to Holtzberg (“Holtzberg”),
`titled “Method, system and article of manufacture for
`bookmarking voicemail messages.” I understand that
`Holtzberg is prior art to the ’622 Patent and has been
`provided as Exhibit 1007.
`
`U.S. Patent No. 7,218,919 to Väänänen (“Väänänen”),
`titled “Voicemail short message service method and
`means and a subscriber terminal.” I understand that
`Väänänen is prior art to the ’622 Patent and has been
`provided as Exhibit 1008.
`
`U.S. Patent Publication No. 2004/0022208 to Dahod et
`al.
`(“Dahod”),
`titled
`“Providing
`advanced
`communications features.” I understand that Dahod is
`prior art to the ’622 Patent and has been provided as
`Exhibit 1009.
`
`U.S. Patent No. 5,619,554 to Hogan et al. (“Hogan”),
`titled “Distributed voice system and method.”
`I
`understand that Hogan is prior art to the ’622 Patent and
`has been provided as Exhibit 1010.
`
`U.S. Patent No. 5,732,216 to Logan et al. (“Logan”),
`titled “Audio message exchange system.” I understand
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`that Logan is prior art to the ’622 Patent and has been
`provided as Exhibit 1011.
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`5.
`
`6.
`
`I have also considered all other materials cited herein.
`
`To the best of my knowledge, Exhibits listed in the table that I
`
`provided above are true and accurate copies of what they purport to be. An expert
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`in the field would reasonably rely on them to formulate opinions such as those set
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`forth in this declaration.
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`7.
`
`The ’622 patent describes “[m]ethods, systems and programs for
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`instant voice messaging over a packet-switched network.” (Ex. 1001, ’622 Patent,
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`Abstract.) I am familiar with the technology described in the ’622 patent as of its
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`December 18, 2003 priority date.
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`8.
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`I have been asked to provide my technical review, analysis, insights,
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`and opinions regarding the ’622 Patent and the references that form the basis for
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`the grounds of rejection set forth in the Petition for Inter Partes Review of the ’622
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`Patent.
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`II. Qualifications and Expertise
`
`9.
`
`I have nearly 50 years of experience in the telecommunications
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`industry working for corporations including AT&T Bell Telephone Laboratories
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`for almost two decades and Bellcore (formerly Bell Communications Research),
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`the research and development organization for the Bell Operating Companies (e.g.,
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`Bell Atlantic, Southwestern Bell, US West, etc.), for over a decade. As detailed
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`below, I have worked on many projects and technologies highly relevant to the
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`subject matter of the ’622 Patent.
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`10. My academic background in electrical engineering and computer
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`science provides a technical foundation for work in telephone communications and
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`packet-based communication networks. I received a Bachelor of Science Degree in
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`Electrical Engineering from the University of Notre Dame in 1963. I received both
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`a Science Master in Electrical Engineering and the degree of Electrical Engineer
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`from the Massachusetts Institute of Technology in 1965. I received the degree of
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`Doctor of Philosophy in Electrical Engineering and Computer Science from the
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`University of California at Berkeley in 1968.
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`11. While at Berkeley, I was an Assistant Professor of Electrical
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`Engineering and Computer Science, teaching courses in network theory, systems
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`theory and communications theory, performing research in communications
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`systems and serving as faculty advisor to 20 undergraduates.
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`12. From 1968 to 1973, I was a member of the technical staff at Bell
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`Telephone Laboratories (known commonly as Bell Labs). I engaged in various
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`research activities involving network engineering and performance management in
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`telephone networks. I taught several in-house courses in performance analysis and
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`traffic engineering in telephone networks.
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`13. From 1973 to 1984, I was Technical Supervisor at Bell Telephone
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`Laboratories, heading a group of technical experts, primarily Ph.D.’s. I was
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`responsible for performance management/analysis and development of traffic
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`engineering algorithms for various telecommunications networks and their
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`components, primarily processor based voice switches, automatic call distributors,
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`and Private Branch Exchanges (PBXs). As part of this effort, I successfully
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`rescheduled the processor tasks in several of these systems to increase their
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`capacity and improve their performance. My department did the original traffic
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`engineering work for the Advanced Mobile Phone System, AMPS, which was the
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`predominant mobile service in North America in the 1980s. I provided
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`management reviews for this work. I also was responsible for all of the call center
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`staffing algorithms for the Bell System and for the engineering of the network
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`elements used for call centers such as the TSPS (Traffic Service Position System),
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`Rockwell ACDs, and the #5 CrossBar ACD. ACDs are Automatic Call
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`Distributors, special purpose switches used to provide call center functionality.
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`14. From 1984 to 1994, I was District Manager for Bell Communications
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`Research (“Bellcore”), heading a group of 7 to 15 technical experts, primarily
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`Ph.D.’s. I was responsible for the specification and testing of a variety of voice
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`network components. This work included writing sections of the requirements used
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`by the Bell Operating Companies to buy network components in their networks. I
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`also tested the compliance (to the requirements) of several voice switches made by
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`various companies, e.g., Nortel, Lucent, Ericsson, Fujitsu, NET, and Siemens. The
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`testing involved various billing options and their impact on switch performance.
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`15. During this time period, I further consulted on the engineering and
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`performance of various supplemental telephonic services such as Voice Mail
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`systems, including those manufactured by Boston Technologies, Unisys, and
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`Digital Sound Corporation, as well as supporting equipment such as SMDI
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`(Simplified Message Display Interface) links. Also during this time period, I
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`headed a group doing architectural and performance studies of Personal Cellular
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`Service (PCS). This work was done on behalf of the Regional Bell Operating
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`Companies, the RBOCs. I was asked to chair a session on traffic performance of
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`PCS at an international symposium. The PCS technologies I researched included
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`SMS capabilities. I also participated and contributed to various national and
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`international voice and data standards organizations.
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`16. During this period, I continued my involvement with call center
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`technology. In particular, I was responsible for the engineering of all call centers
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`for the Bell Operating Companies. This included analyzing specific network
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`elements used to handle inmate telephone calls such as Nortel’s TOPS (Traffic
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`Operator Position System) and MPP (Multi-Purpose Position) systems and
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`AT&T’s No. 5 OSPS (Operator Services Position Station).
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`17. Another of my responsibilities while at Bellcore was analyzing and
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`providing engineering algorithms for data network components used by the Bell
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`Operating Companies. As part of this endeavor, I was a leader in developing novel
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`traffic engineering methods for Internet data networks and other high speed data
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`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This
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`included characterizing Internet traffic and developing loading guidelines for
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`network components including routers and switches. I also worked on some of the
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`earliest deployed packet-based networks, some of which included voice over
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`packet technologies.
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`18.
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`I was Bellcore’s prime technical leader for determining root causes of,
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`and proposed solutions for, several Signaling System No. 7 (“SS7”) data network
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`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
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`Washington, D.C., Pittsburgh, and Los Angeles outages. SS7 is also the protocol
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`used to transport SMS messages in mobile networks. I was responsible for writing
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`new sets of requirements for SS7 networks and was involved in a large scale
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`testing and analysis program for a wide variety of SS7 network components.
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`19.
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`I was named a Bellcore Fellow in 1992 – only the fifth person to
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`receive such an award.
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`20. From 1994 to 1995, I was a Chief Scientist at Bellcore, overseeing the
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`technical work of 50 technical experts, many of whom had Ph.D.’s. I was involved
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`in the teaching of teletraffic engineering and performance management to various
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`bodies, including the Federal Communications Commission, which included
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`various aspects of both voice and data networks, including voice mail systems. I
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`served as a “trouble shooter,” responsible for identifying root causes for diverse
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`network problems involving a variety of technologies including both high speed
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`data networks as well as telephone networks. I analyzed the potential impact of
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`earthquakes and other natural disasters on
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`telecommunications network
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`performance. The National Science Foundation sponsored me to be the sole U.S.
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`telecommunications industry representative at the First International Joint U.S.-
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`Japan Earthquake Symposium in 1993.
`
`21. Since 1995, I have been President of my own company, The Forys
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`Consulting Group, Inc., providing consulting in voice and data communications
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`services including mobile telephony. Relevant to the subject matter of this case, I
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`analyzed the performance of AT&T’s wireless (mobile) network which provided
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`both voice and data services to interstate transport haulers, e.g., Highway Master.
`
`This was in support of a legal case brought about by Highway Master after AT&T
`
`canceled their contract. Highway Master charged that AT&T service was
`
`substandard. I also used HP’s SS7 network monitoring capabilities to analyze
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`Internet traffic patterns in a large metro area. As part of a team of international
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`experts, I investigated a wide range of issues involving the introduction of a new
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`line of vendor products in a foreign national network. In 1995, I experimented with
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`some of the first commercial VoIP systems, including a 1996 version of the
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`Vocaltec’s Internet Phone.
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`22. As a consultant to a large telephone company, I advised them on
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`quality of service issues in providing voice over ATM (with and without IP), Voice
`
`over IP, Internet and Multiprotocol Label Switching (MPLS) networks, which are
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`used extensively in VoIP. I further analyzed various supplier components for
`
`providing hybrid fiber coax access in cable networks. I consulted with a large
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`company on the economic and technical problems associated with providing voice
`
`and data communications over a foreign cable network.
`
`23. During this period, I also performed extensive consulting for various
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`data communications systems, including Internet access using satellite systems
`
`with LAN in the sky technologies for airplanes. I analyzed the performance,
`
`provided traffic inputs and helped specify traffic network management/congestion
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`controls for three satellite data communications systems capable of handling both
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`packetized voice as well as Internet traffic.
`
`24.
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`In the period between 1995–2001 I worked as a consultant (and part
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`owner) to GLADSIS. GLADSIS provided software for servers that controlled
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`screen based landline phones (often with keyboards) using the Analog Display
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`Service Interface (ADSI) protocol which alternated data and voice. During this
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`time, GLADSIS developed software for providing SMS receipt and delivery to
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`British Telecom customers using ADSI capable telephones. I was involved in
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`developing various marketing and billing strategies for the use of these types of
`
`phones, particularly for the application in the UK. In addition, I researched the use
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`of SMS to control Bluetooth capable devices for a possible patent application. I
`
`have been involved in a number of consulting tasks involving VoIP networks using
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`both H.323 and SIP signaling technologies. These included several patent cases,
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`including cases brought against major VoIP carriers such as Level 3, Comcast,
`
`Time Warner Cable, Verizon FIOS, and Sprint. I also have been involved in
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`various consulting tasks involving alternative billing strategies such as pre-paid
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`calling cards provided by Alternative Service Providers.
`
`25.
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`I researched and developed a patent proposal for using SMS networks
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`to remotely operate appliances in the home and/or business. This would also
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`include printing of specified text on a remote printer.
`
`26.
`
`In the early 2003 time frame, I led a small group that successfully
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`developed a demonstration version of a Carrier Grade Notification System (CGNS)
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`for a large client. CGNS enabled entities such as communities (and small
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`businesses) to develop group lists, record voice messages for these groups and send
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`them en masse using the PSTN. The messages could also be stored and delivered at
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`prescribed times. For members having voice mail service, the messages could be
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`stored on traditional voice mail servers in the event the message could not be
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`delivered directly to the member. The messages could additionally be text to
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`speech messages wherein text could be inputted in lieu of speech. This demo was
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`developed using off-the-shelf hardware components e.g. line cards.
`
`27. My Curriculum Vitae is provided as Exhibit 1004, which contains
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`further details on my education, experience, publications, and other qualifications
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`to render an expert option. My work on this case is being billed at a rate of $400
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`per hour, with reimbursement for actual expenses. My compensation is not
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`contingent upon the outcome of this inter partes review.
`
`III. My Understanding of Claim Construction
`
`28.
`
`I understand that during an inter partes review, claims of an unexpired
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`patent are to be given their broadest reasonable construction in light of the
`
`specification as would be read by a person of ordinary skill in the relevant art.
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`IV. Legal Understanding
`
`A. My Understanding of Claim Construction
`I understand that, during an inter partes review proceeding, claims are
`29.
`
`to be given their broadest reasonable construction in light of the specification as
`
`would be read by a person of ordinary skill in the relevant art at the time the
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`application was filed. I understand that claim terms are given their ordinary and
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`customary meaning as would be understood by a person of ordinary skill in the
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`relevant art in the context of the entire disclosure. A claim term, however, will not
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`receive its ordinary meaning if the patentee acted as his own lexicographer and
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`clearly set forth a definition of the claim term in the specification. In this case, the
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`claim term will receive the definition set forth in the patent.
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`Level of Ordinary Skill in the Art
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`B.
`30. Based on the disclosure of the ’622 Patent, one of ordinary skill in the
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`art would have a B.S. degree in Electrical Engineering, Computer Science, or an
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`equivalent field as well as at least 3–5 years of academic or industry experience in
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`communications systems, particularly in messaging systems, data networks
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`including VoIP and mobile telephony, or comparable industry experience.
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`31.
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`I am well qualified to determine the level of ordinary skill in the art.
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`First, I am personally very familiar with the technology of the ’622 Patent in the
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`December 2003 timeframe.
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`32. By 2003, I had completed my formal education and had been working
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`in the relevant field for more than 35 years. I have supervised, recruited, advised,
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`and taught individuals at all levels of training in the relevant field. And as a
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`technical consultant, I have worked with individuals in industry at all levels of
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`training in the relevant field.
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`C. My Understanding of Obviousness
`I am not a lawyer and will not provide any legal opinions. Although I
`33.
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`am not a lawyer, I have been advised that certain legal standards are to be applied
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`by technical experts in forming opinions regarding meaning and validity of patent
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`claims.
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`34.
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`I understand that a patent claim is invalid if the claimed invention
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`would have been obvious to a person of ordinary skill in the field at the time the
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`application was filed. This means that even if all of the requirements of the claim
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`cannot be found in a single prior art reference that would anticipate the claim, the
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`claim can still be invalid.
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`35. As part of this inquiry, I have been asked to consider the level of
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`ordinary skill in the field that someone would have had at the time the claimed
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`invention was made. In deciding the level of ordinary skill, I considered the
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`following:
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`• the levels of education and experience of persons working in the field;
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`• the types of problems encountered in the field; and
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`• the sophistication of the technology.
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`36. To obtain a patent, a claimed invention must have, as of the priority
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`date, been nonobvious in view of the prior art in the field. I understand that an
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`invention is obvious when the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have
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`been obvious at the time the invention was made to a person having ordinary skill
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`in the art.
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`37.
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`I understand that to prove that prior art, or a combination of prior art,
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`renders a patent obvious, it is necessary to: (1) identify the particular references
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`that singly, or in combination, make the patent obvious; (2) specifically identify
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`which elements of the patent claim appear in each of the asserted references; and
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`(3) explain how the prior art references co