`
`EXHIBIT
`EXHIBIT
`1005
`1005
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`
`EXPERT DECLARATION OF DR. LEONARD J FORYS
`FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 6,775,235
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`TABLE OF CONTENTS
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`
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`INTRODUCTION .......................................................................................... 3
`I.
`QUALIFICATIONS ....................................................................................... 6
`II.
`PERSON OF ORDINARY SKILL IN THE ART ....................................... 14
`III.
`IV. LEGAL UNDERSTANDING ...................................................................... 16
`V.
`THE ‘235 PATENT ...................................................................................... 23
`VI. CLAIM CONSTRUCTION ......................................................................... 35
`VII. STATE OF THE ART .................................................................................. 40
`VIII. ANTICIPATION AND/OR OBVIOUSNESS OF CLAIMS 4-15, 19,
`AND 22-24 OF THE ‘235 PATENT UNDER 35 U.S.C. §§ 102-103 ........ 72
`IX. CONCLUSION ........................................................................................... 224
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`I.
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`INTRODUCTION
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`1.
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`I, Dr. Leonard J Forys, submit this declaration in support of a Petition
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`for Inter Partes Review of United States Patent No. 6,775,235 (“the ‘235 Patent”),
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`owned by FatPipe Networks India Limited (“Fatpipe” or “Patent Owner”). I have
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`been retained in this matter by McGuire Woods LLP (“Counsel”) on behalf of
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`Viptela, Inc. (“Petitioner”). I understand that Petitioner Viptela is the Real Party-
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`in-Interest to this Petition.
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`2.
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`I make this declaration based upon my personal knowledge. I am over
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`the age of 21 and am competent to make this declaration.
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`3.
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`The statements herein include my opinions and the bases for those
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`opinions, which relate to at least the following documents of the pending Inter
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`Partes review petition:
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` U.S. Patent No. 6,775,235 by Sanchaita Datta and Ragula Bhaskar entitled
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`“Tools and Techniques for Directing Packets over Disparate Networks”
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`(“the ‘235 Patent”) (Ex. 1001).
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` File History for U.S. Patent No. 6,775,235 (Ex. 1002).
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` U.S. Patent No. 7,406,048 by Sanchaita Datta and Ragula Bhaskar entitled
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`“Tools and Techniques for Directing Packets over Disparate Networks”
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`(“the ‘048 Patent”) (Ex. 1003).
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` File History for U.S. Patent No. 7,406,048 (Ex. 1004).
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` U.S. Patent No. 6,628,617 by Mark John Karol and Malathi Veeraraghavan
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`entitled “Technique for Interconnecting Traffic on Connectionless and
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`Connection-Oriented Networks” (“Karol”) (Ex. 1006).
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` TCP/IP Illustrated Volume 1, The Protocols by W. Richard Stevens,
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`Addison-Wesley Professional Computing Series, 1994, ISBN 0-201-63346-
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`9, (“Stevens”) (Excerpts provided in Ex. 1007).
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` Data and Computer Communications by William Stallings, Prentice-Hall,
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`5th Edition, 1997, ISBN-81-203-1240-6, (“Stallings”) (Excerpts provided in
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`Ex. 1011).
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` U.S. Patent No. 6,317,431 by Terence G Hodgkinson and Alan W O’Neill
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`entitled “ATM Partial Cut-Through” (“Hodgkinson”) (Ex. 1015).
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` U.S. Patent No. 6,748,439 by David R. Monachello et al. entitled “System
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`and Method for Selecting Internet Service Providers from a Workstation that
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`is Connected to a Local Area Network” (“Monachello”) (Ex. 1009).
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` Petition for Inter Partes Review, IPR2016-00976, Paper No. 1 (April 29,
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`2016) (Ex. 1010).
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` Fatpipe’s proposed modifications to the claim construction (Ex. 1014).
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` Decision, IPR2016-00976, Paper No. 7 (November 2, 2016) (Ex. 1017).
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` Fatpipe’s Infringement Contentions (Ex. 1018).
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`4. My materials considered for forming my opinions herein have
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`included at least the above-referenced documents.
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`5.
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`Although I am being compensated for my time at a rate of $400 per
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`hour in preparing this declaration, the opinions herein are my own, and I have no
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`stake in the outcome of the review proceeding. My compensation does not depend
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`in any way on the outcome of the Petitioner’s petition.
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`II. QUALIFICATIONS
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`6.
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`I am qualified by education and experience to testify as an expert in
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`the field of telecommunications. Attached, as Attachment A, is a copy of my
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`resume detailing my experience and education. Additionally, I provide the
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`following overview of my background as it pertains to my qualifications for
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`providing expert testimony in this matter.
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`7.
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`I received (1) a Bachelor of Science Degree in electrical engineering
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`from the University of Notre Dame in 1963, (2) a Master of Science Degree in
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`Electrical Engineering from the Massachusetts Institute of Technology in 1965 (3)
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`a degree of Electrical Engineering also from the Massachusetts Institute of
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`Technology in 1965 and (4) a Doctor of Philosophy Degree in Electrical
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`Engineering and Computer Science from the University of California at Berkeley
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`in 1968. While at Berkeley, I was an Assistant Professor of Electrical Engineering
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`and Computer Science and my responsibilities included: teaching courses in
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`network theory, systems theory and communications theory, doing research in
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`communications systems and serving as faculty advisor to 20 undergraduates.
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`8. Work Experience
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`9.
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`I initially began my training in Control Theory with Aerospace
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`Applications and worked for a while at NASA as an Aerospace Engineer. I then
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`changed fields, specializing in communications theory. After completing my
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`education, I began working for 27 years at the nation’s top telecommunications
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`companies and an additional 21 years as a private consultant for my own company.
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`10. From 1968 to 1973, I was a member of the technical staff at Bell
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`Telephone Laboratories where I was engaged in various research activities
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`involving network engineering and performance management in telephone
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`networks. I also taught several in-house courses in performance analysis and
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`traffic engineering in telephone networks, including several examples from data
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`networks.
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`11. From 1973 to 1984, I was Technical Supervisor at Bell Telephone
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`Laboratories, heading a small group of technical experts primarily Ph.D.s. My
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`responsibilities included performance management/analysis and development of
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`traffic engineering algorithms for various telecommunications networks and their
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`components, primarily voice switches and PBXs. I was also engaged as a
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`troubleshooter to uncover root causes of switch and network problems.
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`12. 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 Ph.D.s.
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`My responsibilities included the data network engineering algorithms for all of the
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`Regional Bell Operating Companies (RBOCs) as well as the engineering of voice
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`switches. In particular, I was responsible for the engineering performance
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`specification and testing of most of the voice network and data network
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`components being purchased by the RBOCs, including several security features
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`such as VPN and closed user groups. This included writing sections of the
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`requirements used by the regional Bell Operating Companies (Verizon, SBC, etc.)
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`to buy network components in their networks. I tested the compliance (to the
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`requirements) of several voice switches made by AT&T, Nortel, Lucent, Ericsson,
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`Fujitsu, NET and Siemens, as well as data network routers (suitable for X.25,
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`Frame Relay, TYMNET, Asynchronous Transfer Mode (ATM) networks, and
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`ISDN data implementations) from these and other suppliers. I also participated and
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`contributed to various national and international voice and data standards
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`organizations (such as T1 and ITU). One of my specialties was network
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`management, for both voice and data networks. This included devising strategies to
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`allow government agencies to cope with massive outages.
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`13.
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`I was a leader in developing novel traffic engineering methods for
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`Internet data networks. This included characterizing Internet traffic and
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`developing loading guidelines for network components including routers and
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`switches. During this period, Bellcore tested the voice over packet capabilities of
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`several products, including Internet routers.
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`14.
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`I was Bellcore’s prime technical leader for determining root causes
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`(and also proposed solutions) in several Signaling System Number 7 (SS7) data
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`network outages, including the famous 1990 AT&T nationwide outage, as well as
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`the 1991 Washington DC, Kansas City and Los Angeles outages. I was
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`responsible for writing new sets of requirements for SS7 networks and was
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`involved in a large scale testing and analysis program for a wide variety of SS7
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`network components. Additionally, I was involved in analyzing the engineering
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`impacts of various Advanced Intelligent Network (AIN) features such as automatic
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`call back, which made use of the SS7 infrastructure. I analyzed the potential impact
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`of earthquakes and other natural disasters on 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.
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`15. Primarily because of my success in these activities, I was named a
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`Bellcore Fellow in 1992, only the fifth person to receive such an award.
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`16.
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`In 1989, I was an Invited Professor of Applied Mathematics at the
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`University of Adelaide in Australia. I taught two courses in teletraffic models, one
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`for Ph.D. students emphasizing theory and one for industry students emphasizing
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`applications in both voice and data networks.
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`17. From 1994 to 1995, I was a Chief Scientist at Bell Communications
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`Research, overseeing the technical work of 50 technical experts, many of whom
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`had PhDs. Relevant to the subject matter of these cases I was involved in the
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`teaching of teletraffic engineering and performance management to various bodies,
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`including the FCC, which included aspects of both voice and data networks. 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 impacts of
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`earthquakes and other natural disasters on telecommunications network
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`performance. The NSF sponsored me to be the sole US telecommunications
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`industry representative at the 1st International Joint US-Japan Earthquake
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`Symposium in 1993.
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`18. 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.
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`19. My work as a consultant included using HP’s SS7 network monitoring
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`capabilities to analyze Internet traffic patterns in a large metro area. I did root
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`cause analyses on a variety of problems in data network elements and in signaling
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`networks.
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`20. As part of a team of international experts, I investigated a wide range
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`of issues involving the introduction of a new line of vendor products in a foreign
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`national network.
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`21.
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`I advised on signaling interconnection issues for a foreign telephone
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`company.
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`22.
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`I investigated the tradeoffs involved in using various ATM data
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`service categories to transport signaling traffic. As a consultant to a large telephone
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`company, I advised them on quality of service issues in providing voice over
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`ATM, the Internet and also Multiprotocol Label Switching (MPLS) networks,
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`which are used in some private internets. As a consultant to a major consulting
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`company, I estimated the equipment augmentation necessary to meet various
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`traffic demands for a variety of data technologies including ATM, Frame Relay
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`and MPLS.
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`23.
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`I analyzed various supplier components for providing hybrid fiber
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`coax access in a cable network. I consulted with a large company on the economic
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`and technical problems associated with providing voice and data communications
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`over a foreign cable network.
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`24.
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`I researched and developed my own Call Admission Control (CAC)
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`strategy for ATM switches. In addition, I researched alternative routing in failure
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`cases for Asynchronous Transfer Mode (ATM) and MPLS IP networks.
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`25.
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`I researched and analyzed the prevailing proposals for supplying
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`Local Number Portability (LNP) for a large telecommunications supplier. On
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`behalf of the European Commission, I served as an advisor on research projects
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`involving the Advanced Intelligent Network, part of which involved signaling
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`interconnections.
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`26.
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` I did extensive studies of network restoration using digital
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`crossconnect systems for a large network provider. I provided reliability analyses
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`and wrote the specifications for various performance and planning tools for a
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`company providing optical crossconnect systems. This included automatic
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`rerouting around failed facilities. I headed the effort of a team of experts providing
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`routing and network planning tools for the same optical switch company.
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`27.
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`I did extensive consulting for various data communications systems
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`involving satellite access. Specifically I analyzed the performance, provided
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`traffic inputs and helped specify traffic network management/congestion controls
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`for three satellite data communications systems capable of handling both
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`packetized voice as well as Internet traffic. I was responsible for analyzing the
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`impacts of web caching for a fourth system.
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`28.
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` I have been involved as an expert witness in several patent cases
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`involving Voice over IP technologies (for both long distance carriers as well as
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`cable providers) e.g. ATM, Frame Relay, MPLS, LANS, WANS, VPNs and other
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`packet switching technologies. I also was involved in patents involving multiple,
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`disparate, data networks with routing between these networks including varieties of
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`LANS, WANS, Unlicensed Mobile Access (UMA), and Generic Access Networks.
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`In addition, I was involved in investigating alternative routing strategies for
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`datagram networks in the event of failures as well as various security features in
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`data networks including firewalls and packet validation.
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`III. PERSON OF ORDINARY SKILL IN THE ART
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`29.
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`I understand that the content of a patent (including its claims) and
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`prior art should be interpreted the way a person of ordinary skill in the art would
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`have interpreted the material at the time of invention.
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`30.
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`I understand that the “time of invention” here is the date that the
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`applicants for the ‘235 Patent first filed a related application in the United States
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`Patent and Trademark Office, namely, Dec. 29, 2000.
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`31.
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`It is my opinion that one of ordinary skill in the art at the time of the
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`filing date of the ‘235 Patent would have had at least a Bachelor of Science in
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`Computer Science, Computer Engineering, Electrical Engineering, or an equivalent
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`field as well as at least 2 years of academic or industry experience in any type of
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`networking field.
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`32.
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`In addition to my testimony as an expert, I am prepared to testify as
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`someone who actually practiced in the field from 1968 to present, who actually
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`possessed at least the knowledge of a person of ordinary skill in the art in that time
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`period, and who actually worked with and recruited others possessing at least the
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`knowledge of a person of ordinary skill in the art in that time period.
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`33.
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`I understand that the person of ordinary skill is a hypothetical person
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`who is assumed to be aware of all the pertinent information that qualifies as prior
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`art. In addition, the person of ordinary skill in the art makes inferences and takes
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`creative steps.
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`IV. LEGAL UNDERSTANDING
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`34.
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`I have a general understanding of validity based on my experience
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`with patents and my discussions with counsel.
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`35.
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`I have a general understanding of prior art and priority date based on
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`my experience with patents and my discussions with counsel.
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`36.
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`I understand that inventors are entitled to a priority date up to one year
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`earlier than the date of filing to the extent that they can show complete possession
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`of particular claimed inventions at such an earlier priority date and reasonable
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`diligence to reduce the claims to practice between such an earlier priority date and
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`the date of filing of the patent. I understand that if the Patent Owner contends that
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`particular claims are entitled to an earlier priority date than the date of filing of the
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`patent, then the Patent Owner has the burden to prove this contention with
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`specificity.
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`37.
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`I understand that an invention by another must be made before the
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`priority date of a particular patent claim in order to qualify as “prior art” under 35
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`U.S.C. § 102 or § 103, that a printed publication or a product usage must be
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`publicly available before the priority date of a particular patent claim in order to
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`qualify as “prior art” under 35 U.S.C. § 102(a), that a printed publication or a
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`product usage or offer for sale must be publicly available more than one year prior
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`to the date of the application for patent in the United States in order to qualify as
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`“prior art” under 35 U.S.C. § 102(b), or that the invention by another must be
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`described in an application for patent filed in the United States before the priority
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`date of a particular patent claim in order to qualify as “prior art” under 35 U.S.C. §
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`102(e). I understand that the Petitioner has the burden of proving that any
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`particular reference or product usage or offer for sale is prior art.
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`38.
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`I have a general understanding of anticipation based on my experience
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`with patents and my discussions with counsel.
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`39.
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`I understand that anticipation analysis is a two-step process. The first
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`step is to determine the meaning and scope of the asserted claims. Each claim must
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`be viewed as a whole, and it is improper to ignore any element of the claim. For a
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`claim to be anticipated under U.S. patent law: (1) each and every claim element
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`must be identically disclosed, either explicitly or inherently, in a single prior art
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`reference; (2) the claim elements disclosed in the single prior art reference must be
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`arranged in the same way as in the claim; and (3) the identical invention must be
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`disclosed in the single prior art reference, in as complete detail as set forth in the
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`claim. Where even one element is not disclosed in a reference, the anticipation
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`contention fails. Moreover, to serve as an anticipatory reference, the reference
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`itself must be enabled, i.e., it must provide enough information so that a person of
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`ordinary skill in the art can practice the subject matter of the reference without
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`undue experimentation.
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`40.
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`I further understand that where a prior art reference fails to explicitly
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`disclose a claim element, the prior art reference inherently discloses the claim
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`element only if the prior art reference must necessarily include the undisclosed
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`claim element. Inherency may not be established by probabilities or possibilities.
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`The fact that an element may result from a given set of circumstances is not
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`sufficient to prove inherency. I have applied these principles in forming my
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`opinions in this matter.
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`41.
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`I have a general understanding of obviousness based on my
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`experience with patents and my discussions with counsel.
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`42.
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`I understand that a patent claim is invalid under 35 U.S.C. § 103 as
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`being obvious only if the differences between the claimed invention and the prior
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`art are such that the subject matter as a whole would have been obvious at the time
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`the invention was made to a person of ordinary skill in that art. An obviousness
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`analysis requires consideration of four factors: (1) scope and content of the prior
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`art relied upon to challenge patentability; (2) differences between the prior art and
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`the claimed invention; (3) the level of ordinary skill in the art at the time of the
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`invention; and (4) the objective evidence of non-obviousness, such as commercial
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`success, unexpected results, the failure of others to achieve the results of the
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`invention, a long-felt need which the invention fills, copying of the invention by
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`competitors, praise for the invention, skepticism for the invention, or independent
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`development.
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`43.
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`I understand that a prior art reference is proper to use in an
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`obviousness determination if the prior art reference is analogous art to the claimed
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`invention. I understand that a prior art reference is analogous art if at least one of
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`the following two considerations is met. First a prior art reference is analogous art
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`if it is from the same field of endeavor as the claimed invention, even if the prior
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`art reference addresses a different problem and/or arrives at a different solution.
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`Second, a prior art reference is analogous art if the prior art reference is reasonably
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`pertinent to the problem faced by the inventor, even if it is not in the same field of
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`endeavor as the claimed invention.
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`44.
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`I understand that it must be shown that one having ordinary skill in
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`the art at the time of the invention would have had a reasonable expectation that a
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`modification or combination of one or more prior art references would have
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`succeeded. Furthermore, I understand that a claim may be obvious in view of a
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`single prior art reference, without the need to combine references, if the elements
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`of the claim that are not found in the reference can be supplied by the knowledge
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`or common sense of one of ordinary skill in the relevant art. However, I understand
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`that it is inappropriate to resolve obviousness issues by a retrospective analysis or
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`hindsight reconstruction of the prior art and that the use of “hindsight
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`reconstruction” is improper in analyzing the obviousness of a patent claim.
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`45.
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`I further understand that the law recognizes several specific guidelines
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`that inform the obviousness analysis. First, I understand that a reconstructive
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`hindsight approach to this analysis, i.e., the improper use of post-invention
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`information to help perform the selection and combination, or the improper use of
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`the listing of elements in a claim as a blueprint to identify selected portions of
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`different prior art references in an attempt to show that the claim is obvious, is not
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`permitted. Second, I understand that any prior art that specifically teaches away
`
`from the claimed subject matter, i.e., prior art that would lead a person of ordinary
`
`skill in the art to a specifically different solution than the claimed invention, points
`
`to non-obviousness, and conversely, that any prior art that contains any teaching,
`
`suggestion, or motivation to modify or combine such prior art reference(s) points
`
`to the obviousness of such a modification or combination. Third, while many
`
`combinations of the prior art might be “obvious to try”, I understand that any
`
`obvious to try analysis will not render a patent invalid unless it is shown that the
`
`possible combinations are: (1) sufficiently small in number so as to be reasonable
`
`to conclude that the combination would have been selected; and (2) such that the
`
`combination would have been believed to be one that would produce predictable
`
`and well understood results. Fourth, I understand that if a claimed invention that
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`arises from the modification or combination of one or more prior art references
`
`uses known methods or techniques that yield predictable results, then that factor
`
`also points to obviousness. Fifth, I understand that if a claimed invention that arises
`
`from the modification or combination of one or more prior art references is the
`
`result of known work in one field prompting variations of it for use in the same
`
`field or a different one based on design incentives or other market forces that
`
`yields predicable variations, then that factor also points to obviousness. Sixth, I
`
`understand that if a claimed invention that arises from the modification or
`
`combination of one or more prior art references is the result of routine
`
`optimization, then that factor also points to obviousness. Seventh, I understand that
`
`if a claimed invention that arises from the modification or combination of one or
`
`more prior art references is the result of a substitution of one known prior art
`
`element for another known prior art element to yield predictable results, then that
`
`factor also points to obviousness.
`
`46.
`
`I understand that a dependent claim incorporates each and every
`
`limitation of the claim from which it depends. Thus, my understanding is that if a
`
`prior art reference fails to anticipate an independent claim, then that prior art
`
`reference also necessarily fails to anticipate all dependent claims that depend from
`
`the independent claim. Similarly, my understanding is that if a prior art reference
`
`or combination of prior art references fails to render obvious an independent claim,
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`then that prior art reference or combination of prior art references also necessarily
`
`fails to render obvious all dependent claims that depend from the independent
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`claim.
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`
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`V. THE ‘235 PATENT
`
`47. According to the “Field of the Invention” section, the ‘235 Patent,
`
`entitled “Tools and Techniques for Directing Packets over Disparate Networks”
`
`relates to “computer network data transmission” or more specifically, “tools and
`
`techniques for communications using disparate parallel networks, such as a virtual
`
`private network (“VPN”) or the Internet in parallel with a point-to-point, leased
`
`line, or frame relay network, in order to help provide benefits such as load
`
`balancing across network connections, greater reliability, and increased security”
`
`(see, for example, Ex. 1001 at 1:17-24).
`
`48.
`
`I note that the ‘235 Patent was filed on Feb. 7, 2003 (see, for example,
`
`Ex. 1001 at (22)). I also note that the ‘235 Patent is a continuation-in-part of US
`
`Patent Application No. 10/034,197 (the “‘197 Application”) filed on Dec. 28, 2001
`
`and that the ‘197 Application claims priority to US Provisional Patent Application
`
`No. 60/259,269 filed Dec. 29, 2000 (see, for example, Ex. 1001 at (63), (60) or
`
`1:7-13). I further note that the ‘235 Patent also claims priority to US Provisional
`
`Patent Application No. 60/355,509 filed Feb. 8, 2002 (see, for example, Ex. 1001
`
`at (60) or 1:7-13).
`
`49.
`
`I understand that in the District Court litigation, the Patent Owner has
`
`alleged that claims 4 and 19 of the ‘235 Patent should be entitled to a priority date
`
`of Dec. 29, 2000 (see, for example, Ex. 1010 at p. 3). Additionally, I understand
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`that in the District Court litigation, the Patent Owner has alleged that claims 5-15
`
`of the ‘235 Patent should be entitled to a priority date of Feb. 8, 2002 (see, for
`
`example, Ex. 1010 at p. 3). I am not aware at this time of any basis for an assertion
`
`of a priority date for any claim of the ‘235 Patent that would be earlier than Dec.
`
`29, 2000. My usage of the foregoing alleged priority dates for my analyses to
`
`follow does not mean that I agree that any claims of the ‘235 Patent should be
`
`accorded these priority dates as alleged by the Patent Owner.
`
`50.
`
`In the “Technical Background of the Invention” section, the ‘235
`
`Patent specification notes that the “present application focuses on architectures
`
`involving disparate networks in parallel, such as a proprietary frame relay network
`
`and the Internet” (see, for example, Ex. 1001 at 2:17-19). The ‘235 Patent
`
`specification explicitly explains that “the term “private network” is used herein in a
`
`manner consistent with its use in the ‘197 application (which comprises frame
`
`relay and point-to-point networks), except that a “virtual private network” as
`
`discussed herein is not a “private network”“ because “Virtual private networks are
`
`Internet-based, and hence disparate from private networks, i.e., from frame relay
`
`and point-to-point networks” (see, for example, Ex. 1001 at 2:19-26). The ‘235
`
`Patent specification explicitly calls out “frame relay” and a “point-to-point
`
`network, such as a T1 or T3 connection” as being “an example of a network that is
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`Expert Declaration of Dr. Leonard J Forys for Inter Partes Review of US Patent No. 6,775,235
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`“disparate” from the Internet and from Internet-based virtual private networks for
`
`purposes of the present invention” (see, for example, Ex. 1001 at 1:56-60).
`
`51. The ‘235 Patent specification also describes “FIG. 5” as “a prior art
`
`approach having a frame relay network configured in parallel with a VPN or other
`
`Internet-based network that is disparate to the frame relay network” (see, for
`
`example, Ex. 1001 at 5:24-27).
`
`52.
`
`
`
`53. Thus, the ‘235 Patent specific
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