Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Facebook, Inc., WhatsApp, Inc.
`Petitioners
`
`v.
`
`Uniloc USA, Inc., Uniloc Luxembourg S.A.,
`Patent Owner
`
`U.S. Patent No. 8,199,747
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`DECLARATION OF TAL LAVIAN, PH.D.
`
`Facebook's Exhibit No. 1002
`Page 1
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`

`

`TABLE OF CONTENTS
`
`
`Page
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .............................................. 1
`
`A. Qualifications and Experience ............................................................. 1
`
`B. Materials Considered ............................................................................ 5
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART ......................................... 6
`
`III. BASIS FOR MY OPINION AND STATEMENT OF LEGAL
`PRINCIPLES .................................................................................................. 8
`
`A.
`
`B.
`
`C.
`
`Claim Construction............................................................................... 8
`
`Anticipation .......................................................................................... 8
`
`Obviousness .......................................................................................... 9
`
`1. Motivation to Combine ............................................................ 12
`
`IV. RELEVANT TECHNOLOGY BACKGROUND ....................................... 14
`
`A.
`
`B.
`
`C.
`
`The Internet and TCP/IP Protocol Suite ............................................. 14
`
`Voice over IP (VoIP) .......................................................................... 15
`
`Instant messaging (IM) ....................................................................... 19
`
`1.
`
`2.
`
`IETF in RFC 2778 – “A Model for Presence and Instant
`Messaging” ............................................................................... 22
`
`IETF RFC 2779 “Instant Messaging / Presence Protocol
`Requirements” .......................................................................... 23
`
`3.
`
`Prior Art Instant Messaging (“IM”) Systems .......................... 24
`
`V.
`
`THE ’747 PATENT ...................................................................................... 27
`
`A.
`
`B.
`
`The Specification ................................................................................ 27
`
`The Claims of the ’747 Patent ............................................................ 29
`
`VI. APPLICATION OF THE PRIOR ART TO THE CLAIMS ........................ 29
`
`A.
`
`Brief Description and Summary of the Prior Art ............................... 30
`
`
`
`
`
`Brief Summary of Zydney [Ex. 1003] ..................................... 30
`
`Brief Summary of Appelman [Ex. 1004]................................. 36
`
`B.
`
`Zydney Renders Obvious Claims 1, 3, and 13 ................................... 41
`
`
`
`Independent Claim 1 ................................................................ 41
`
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`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`(f)
`
`Preamble of claim 1: “A method for instant voice
`messaging over a packet-switched network, the
`method comprising.” ..................................................... 41
`
`“generating an instant voice message” (Claim 1[a]) ..... 46
`
`“wherein generating includes recording the instant
`voice message in an audio file and attaching one or
`more files to the audio file;” (Claim 1[b]) ..................... 50
`
`“transmitting the instant voice message having one
`or more recipients;” (Claim 1[c]) .................................. 55
`
`“receiving an instant voice message when a
`recipient is available; and” (Claim 1[d]) ....................... 59
`
`“receiving a temporarily stored instant voice
`message when a recipient becomes available,
`wherein the instant voice message is temporarily
`stored when at least one recipient is unavailable.”
`(Claim 1[e]) ................................................................... 60
`
`
`
`Independent Claim 3 ................................................................ 66
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`“generating an instant voice message; and”
`(Claim 3[a]) ................................................................... 67
`
`“controlling a method of generating the instant
`voice message based upon a connectivity status
`[of] each recipient;” (Claim 3[b]) .................................. 68
`
`“transmitting the instant voice message having one
`or more recipients;” (Claim 3[c]) .................................. 71
`
`“receiving an instant voice message when a
`recipient is available; and” (Claim 3[d]) ....................... 71
`
`- ii -
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`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`(e)
`
`“receiving a temporarily stored instant voice
`message when a recipient becomes available,
`wherein the instant voice message is temporarily
`stored when at least one recipient is unavailable.”
`(Claim 3[e]) ................................................................... 71
`
`
`
`Dependent Claim 13 ................................................................ 72
`
`(a)
`
`(b)
`
`(c)
`
`“The method for instant voice messaging over a
`packet-switch network according to claim 1,
`further comprising:” (Claim 13[a]) ............................... 72
`
`“displaying an indication that an instant voice
`message has been received;” (Claim 13[b]) .................. 72
`
`“separating the instant voice message into an audio
`file and one or more files; and” (Claim 13[c]) .............. 74
`
`(d)
`
`“playing the audio file.” (Claim 13[d]) ......................... 80
`
`C.
`
`Zydney in View of Appelman Renders Obvious Claims 2 and
`12 ........................................................................................................ 80
`
`
`
`Independent Claim 2 ................................................................ 80
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`Preamble of claim 2 ....................................................... 81
`
`“receiving a list of nodes within the packet-
`switched network, the list of nodes including a
`connectivity status of each node, said connectivity
`status being available and unavailable, wherein a
`node within the list is adapted to be selected as a
`recipient of an instant voice message” (Claim 2[a]) ..... 82
`
`“displaying said list of nodes;” (Claim 2[b]) ............... 104
`
`“transmitting the instant voice message having one
`or more recipients;” (Claim 2[c]) ................................ 105
`
`“receiving an instant voice message when a
`recipient is available; and” (Claim 2[d]) ..................... 106
`
`- iii -
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`
`
`TABLE OF CONTENTS
`(continued)
`
`Page
`
`(f)
`
`“receiving a temporarily stored instant voice
`message when a recipient becomes available,
`wherein the instant voice message is temporarily
`stored when at least one recipient is unavailable.”
`(Claim 2[e]) ................................................................. 106
`
`
`
`Dependent Claim 12 .............................................................. 106
`
`(a)
`
`(b)
`
`“The method for instant voice messaging over a
`packet-switch network according to claim 2,
`further comprising:” (Claim 12[a]) ............................. 107
`
`“displaying an indication that an instant voice
`message has been received; and” (Claim 12[b]) ......... 107
`
`(c)
`
`“playing the instant voice message.” (Claim 12[c]) .... 107
`
`VII. ENABLEMENT OF THE PRIOR ART .................................................... 108
`
`VIII. CONCLUSION ........................................................................................... 110
`
`- iv -
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`Facebook's Exhibit No. 1002
`Page 5
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`

`

`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`I, Tal Lavian, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`A. Qualifications and Experience
`
`1.
`
`I have more than 25 years of experience in the networking,
`
`telecommunications, Internet, and software fields. I received a Ph.D. in Computer
`
`Science, specializing in networking and communications, from the University of
`
`California at Berkeley in 2006 and obtained a Master’s of Science (“M.Sc.”) degree
`
`in Electrical Engineering from Tel Aviv University, Israel, in 1996. In 1987, I
`
`obtained a Bachelor of Science (“B.Sc.”) in Mathematics and Computer Science,
`
`also from Tel Aviv University.
`
`2.
`
`I am employed by the University of California at Berkeley and was
`
`appointed as a lecturer and Industry Fellow in the Center of Entrepreneurship and
`
`Technology (“CET”) as part of UC Berkeley College of Engineering. I have been
`
`with the University of California at Berkeley since 2000 where I served as Berkeley
`
`Industry Fellow, Lecturer, Visiting Scientist, Ph.D. Candidate, and Nortel’s Scientist
`
`Liaison. I have taught several classes on wireless devices and smartphones. Some
`
`positions and projects were held concurrently, while others were held sequentially.
`
`3.
`
`I have more than 25 years of experience as a scientist, educator and
`
`technologist, and much of my experience relates to telecommunication, data
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`communications, and computer networking technologies. For eleven years from
`
`1996 to 2007, I worked for Bay Networks and Nortel Networks. Bay Networks was
`
`in the business of making and selling computer network hardware and software.
`
`Nortel Networks acquired Bay Networks in 1998, and I continued to work at Nortel
`
`after the acquisition. Throughout my tenure at Bay and Nortel, I held positions
`
`including Principal Scientist, Principal Architect, Principal Engineer, Senior
`
`Software Engineer, and led the development and research involving a number of
`
`networking technologies. I led the efforts of Java technologies at Bay Networks and
`
`Nortel Networks. In addition, during 1999-2001, I served as the President of the
`
`Silicon Valley Java User Group with over 800 active members from many
`
`companies in the Silicon Valley.
`
`4.
`
`Prior to that, from 1994 to 1995, I worked as a software engineer and
`
`team leader for Aptel Communications, designing and developing wireless
`
`technologies, mobile wireless devices and network software products.
`
`5.
`
`From 1990 to 1993, I worked as a software engineer and team leader at
`
`Scitex Ltd., where I developed system and network communications tools (mostly
`
`in C and C++).
`
`6.
`
`I have extensive experience in communications technologies including
`
`wireless technologies, routing and switching architectures and protocols, including
`
`
`
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`

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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`Multi-Protocol Label Switching Networks, Layer 2 and Layer 3 Virtual Private
`
`Networks, and Pseudowire technologies. Much of my work for Nortel Networks
`
`(mentioned above) involved the research and development of these technologies.
`
`For example, I wrote software for Bay Networks and Nortel Networks switches and
`
`routers, developed network technologies for the Accelar 8600 family of switches
`
`and routers, the OPTera 3500 SONET switches, the OPTera 5000 DWDM family,
`
`and the Alteon L4-7 switching product family. I wrote software for Java-based
`
`device management, including a software interface for device management and
`
`network management in the Accelar routing switch family’s network management
`
`system. I have also worked on enterprise Wi-Fi solutions, wireless mobility
`
`management, and wireless infrastructure.
`
`7.
`
`I am named as a co-inventor on more than 100 issued patents and I co-
`
`authored more than 25 scientific publications, journal articles, and peer-reviewed
`
`papers. Furthermore, I am a member of a number of professional affiliations,
`
`including the Association of Computing Machinery (“ACM”) and the Institute of
`
`Electrical and Electronics Engineers (“IEEE”) (senior member). I am also certified
`
`under the IEEE WCET (Wireless Communications Engineering Technologies)
`
`Program, which was specifically designed by the IEEE Communications Society
`
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`(ComSoc) to address the worldwide wireless industry’s growing and ever-evolving
`
`need for qualified communications professionals.
`
`8.
`
`From 2007 to the present, I have served as a Principal Scientist at my
`
`company TelecommNet Consulting Inc., where I develop network communication
`
`technologies and provide research and consulting in advanced technologies, mainly
`
`in computer networking and Internet technologies. In addition, I have served as a
`
`Co-Founder and Chief Technology Officer (CTO) of VisuMenu, Inc. from 2010 to
`
`the present, where I design and develop architecture of visual IVR technologies for
`
`smartphones and wireless mobile devices in the area of network communications.
`
`9.
`
`I have worked on wireless and cellular systems using a variety of
`
`modulation technologies including time-division multiple-access (TDMA), code-
`
`division multiple-access (CDMA), and orthogonal frequency-division multiplexing
`
`(OFDM). I have additionally worked on various projects involving the transmission
`
`and streaming of digital media content.
`
`10. The above outline of my experience with communications systems is
`
`not comprehensive of all of my experience over my years of technical experience.
`
`Additional details of my background are set forth in my curriculum vitae, attached
`
`as Exhibit A to this Declaration, which provides a more complete description of my
`
`educational background and work experience.
`
`
`
`- 4 -
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`
`11.
`
`I am being compensated for the time I have spent on this matter at the
`
`rate of $400 per hour. My compensation does not depend in any way upon the
`
`outcome of this proceeding. I hold no interest in the Petitioners (Facebook, Inc. and
`
`WhatsApp Inc.) or the Patent Owner (Uniloc Luxembourg, S.A.) or plaintiff Uniloc
`
`USA, Inc.
`
`B. Materials Considered
`
`12. The analysis that I provide in this Declaration is based on my education
`
`and experience in the telecommunications and information technology industries, as
`
`well as the documents I have considered, including U.S. Patent No. 8,199,747
`
`(“’747” or “’747 patent”) [Ex. 1001], which states on its face that it issued from an
`
`application filed on March 4, 2009, in turn claiming priority back to an earliest
`
`application filed on December 18, 2003. For purposes of this Declaration, I have
`
`assumed December 18, 2003 as the effective filing date for the ’747 patent. I have
`
`cited to the following documents in my analysis below:
`
`Exhibit No.
`
`Title of Document
`
`1001
`
`1003
`
`U.S. Patent No. 8,199,747 to Michael J. Rojas (filed March 4,
`2009, issued June 12, 2012)
`
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney
`et al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (“Zydney”) (with line numbers added)
`
`1004
`
`U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24,
`1997, issued June 15, 2004) (“Appelman”)
`
`
`
`- 5 -
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`

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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`
`Exhibit No.
`
`Title of Document
`
`1005
`
`1006
`
`1007
`
`1008
`
`Excerpts from Margaret Levine Young, Internet: The Complete
`Reference (2d ed. 2002)
`
`Prosecution File History for U.S. Patent No. 8,199,747,
`Amendment Under 37 C.F.R. § 1.111 (February 2, 2012)
`
`U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October
`16, 2000, issued June 29, 2004) (“Bogard”)
`
`N. Borenstein et al., Request for Comments (RFC) 1521: MIME
`(Multipurpose Internet Mail Extensions) Part One: Mechanisms for
`Specifying and Describing the Format of Internet Message Bodies,
`September 1993
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`13.
`
`I understand that an assessment of claims of the ’747 patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is December 18, 2003. I have also
`
`been advised that to determine the appropriate level of a person having ordinary skill
`
`in the art, the following factors may be considered: (1) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (2) the
`
`sophistication of the technology in question, and the rapidity with which innovations
`
`occur in the field; (3) the educational level of active workers in the field; and (4) the
`
`educational level of the inventor.
`
`14. The ’747 patent states that the perceived problem and the purported
`
`solution are generally related to the field of Internet telephony (IP telephony). The
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`patent states: “More particularly, the present invention is directed to a system and
`
`method for enabling local and global instant VoIP messaging over an IP network,
`
`such as the Internet, with PSTN support.” (’747, 1:15-19.) The ’747 patent purports
`
`to describe a “voice messaging system (and method) for delivering instant messages
`
`over a packet switched network.” (Id., Abstract). The ’747 patent purports to depict
`
`architectures of Internet and PSTN technologies, global and local IP networks, VoIP
`
`switches and gateways, and phone systems. The patent also purports to disclose
`
`local and global instant voice messaging servers communicating over an IP Network.
`
`In the Summary of the Invention, the applicant states: “The present invention is
`
`directed to a system and method for enabling local and global instant VoIP
`
`messaging over an IP network, such as the Internet.” (Id., 2:53-55.)
`
`15.
`
` In my opinion, a person of ordinary skill in the art as of December 2003
`
`would have possessed at least a bachelor’s degree in computer science, computer
`
`engineering, or electrical engineering with at least two years of experience in
`
`development and programming relating to network communication systems (or
`
`equivalent degree or experience).
`
`16. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 25 years of experience in computer science and
`
`network communications, my understanding of the basic qualifications that would
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`be relevant to an engineer or scientist tasked with investigating methods and systems
`
`in the relevant area, and my familiarity with the backgrounds of colleagues, co-
`
`workers, and employees, both past and present.
`
`17. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’747 patent have been based on the perspective of a person
`
`of ordinary skill in the art as of December 2003.
`
`III. BASIS FOR MY OPINION AND STATEMENT OF LEGAL PRINCIPLES
`
`18. My opinions and views set forth in this declaration are based on my
`
`education, training, and experience in the relevant field, as well as the materials I
`
`have reviewed for this matter, and the scientific knowledge regarding the subject
`
`matter that existed prior to December 2003.
`
`A. Claim Construction
`
`19.
`
`It is my understanding that, when construing claim terms, a claim
`
`subject to inter partes review receives the “broadest reasonable construction in light
`
`of the specification of the patent in which it appears.”
`
`B. Anticipation
`
`20.
`
`It is my understanding that in order for a patent claim to be valid, the
`
`claimed invention must be novel. It is my understanding that if each and every
`
`element of a claim is disclosed in a single prior art reference, then the claimed
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
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`invention is anticipated, and the invention is not patentable according to pre-AIA 35
`
`U.S.C. § 102 effective before March 16, 2013. In order for the invention to be
`
`anticipated, each element of the claimed invention must be described or embodied,
`
`either expressly or inherently, in the single prior art reference. In order for a
`
`reference to inherently disclose a claim limitation, that claim limitation must
`
`necessarily be present in the reference.
`
`C. Obviousness
`
`21. Counsel has advised me that obviousness under pre-AIA 35 U.S.C.
`
`§ 103 effective before March 16, 2013 is the basis for invalidity in the Petitions.
`
`Counsel has advised me that a patent claim may be found invalid as obvious if, at
`
`the time when the invention was made, the subject matter of the claim, considered
`
`as a whole, would have been obvious to a person having ordinary skill in the field of
`
`the technology (the “art”) to which the claimed subject matter belongs. I understand
`
`that the following factors should be considered in analyzing obviousness: (1) the
`
`scope and content of the prior art; (2) the differences between the prior art and the
`
`claims; and (3) the level of ordinary skill in the pertinent art. I also understand that
`
`certain other factors known as “secondary considerations” such as commercial
`
`success, unexpected results, long felt but unsolved need, industry acclaim,
`
`simultaneous invention, copying by others, skepticism by experts in the field, and
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`failure of others may be utilized as indicia of nonobviousness. I understand,
`
`however, that secondary considerations should be connected, or have a “nexus”, with
`
`the invention claimed in the patent at issue. I understand that a person of ordinary
`
`skill in the art is assumed to have knowledge of all prior art. I understand that one
`
`skilled in the art can combine various prior art references based on the teachings of
`
`those prior art references, the general knowledge present in the art, or common sense.
`
`I understand that a motivation to combine references may be implicit in the prior art,
`
`and there is no requirement that there be an actual or explicit teaching to combine
`
`two references. Thus, one may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ to combine the known
`
`elements in the prior art in the manner claimed by the patent at issue. I understand
`
`that one should avoid “hindsight bias” and ex post reasoning in performing an
`
`obviousness analysis. But this does not mean that a person of ordinary skill in the
`
`art for purposes of the obviousness inquiry does not have recourse to common sense.
`
`I understand that when determining whether a patent claim is obvious in light of the
`
`prior art, neither the particular motivation for the patent nor the stated purpose of the
`
`patentee is controlling. The primary inquiry has to do with the objective reach of
`
`the claims, and that if those claims extend to something that is obvious, then the
`
`entire patent claim is invalid. I understand one way that a patent can be found
`
`
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`obvious is if there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims. I understand that
`
`a motivation to combine various prior art references to solve a particular problem
`
`may come from a variety of sources, including market demand or scientific
`
`literature. I understand that a need or problem known in the field at the time of the
`
`invention can also provide a reason to combine prior art references and render a
`
`patent claim invalid for obviousness. I understand that familiar items may have
`
`obvious uses beyond their primary purpose, and that a person of ordinary skill in the
`
`art will be able to fit the teachings of multiple prior art references together “like the
`
`pieces of a puzzle.” I understand that a person of ordinary skill is also a person of
`
`at least ordinary creativity. I understand when there is a design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a person of ordinary skill has good reason to pursue the known options
`
`within his or her technical grasp. If these finite number of predictable solutions lead
`
`to the anticipated success, I understand that the invention is likely the product of
`
`ordinary skill and common sense, and not of any sort of innovation. I understand
`
`that the fact that a combination was obvious to try might also show that it was
`
`obvious, and hence invalid, under the patent laws. I understand that if a patent claims
`
`a combination of familiar elements according to known methods, the combination is
`
`
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`

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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
`
`likely to be obvious when it does no more than yield predictable results. Thus, if a
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`person of ordinary skill in the art can implement a predictable variation, an invention
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`is likely obvious. I understand that combining embodiments disclosed near each
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`other in a prior art reference would not ordinarily require a leap of inventiveness.
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`1. Motivation to Combine
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`22.
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`I have been advised by counsel that obviousness may be shown by
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`demonstrating that it would have been obvious to modify what is taught in a single
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`piece of prior art to create the patented invention. Obviousness may also be shown
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`by demonstrating that it would have been obvious to combine the teachings of more
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`than one item of prior art. I have been advised by counsel that a claimed invention
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`may be obvious if some teaching, suggestion, or motivation exists that would have
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`led a person of ordinary skill in the art to combine the invalidating references.
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`Counsel has also advised me that this suggestion or motivation may come from the
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`knowledge of a person having ordinary skill in the art, or from sources such as
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`explicit statements in the prior art. Alternatively, any need or problem known in the
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`field at the time and addressed by the patent may provide a reason for combining
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`elements of the prior art. Counsel has advised me that when there is a design need
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`or market pressure, and there are a finite number of predictable solutions, a person
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`of ordinary skill may be motivated to apply common sense and his skill to combine
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
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`the known options in order to solve the problem. The following are examples of
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`approaches and rationales that may be considered in determining whether a piece of
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`prior art could have been combined with other prior art or with other information
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`within the knowledge of a person having ordinary skill in the art:
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`(1) Some teaching, motivation, or suggestion in the prior art that would have
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`led a person of ordinary skill to modify the prior art reference or to combine
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`prior art reference teachings to arrive at the claimed invention;
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`(2) Known work in one field of endeavor may prompt variations of it for use
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`in the same field or a different field based on design incentives or other market
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`forces if the variations would have been predictable to a person of ordinary
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`skill in the art;
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`(3) Combining prior art elements according to known methods to yield
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`predictable results;
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`(4) Applying a known technique to a known device, method, or product ready
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`for improvement to yield predictable results;
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`(5) Applying a technique or approach that would have been “obvious to try”
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`(choosing from a finite number of identified, predictable solutions, with a
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`reasonable expectation of success);
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
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`(6) Simple substitution of one known element for another to obtain predictable
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`results; or
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`(7) Use of a known technique to improve similar products, devices, or
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`methods in the same way.
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`IV. RELEVANT TECHNOLOGY BACKGROUND
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`23. The ’747 patent, entitled “System and method for instant VoIP
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`messaging,” purports to disclose and claim a system and method for delivering
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`instant voice messages over a packet-switched network. (’747, Abstract.) In this
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`section, I provide a brief background discussion on technologies pertinent to the ’747
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`patent prior to December 2003.
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`A. The Internet and TCP/IP Protocol Suite
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`24. The Internet is the global packet-switched network based on a protocol
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`suite known as Transmission Control Protocol/Internet Protocol (TCP/IP). The
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`Internet originated in the late 1960s as a Department of Defense project known as
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`ARPANET and, by the 1980s, was in use by a large number of universities and
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`organizations. As the Internet advanced in size and speed over the years, a vast
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`amount of research and development was invested to develop technologies and
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`standards for enabling voice communications over IP networks (VoIP). These
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`significant investments in research and development yielded approved standards and
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
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`large scale implementations based on these standards prior to the year 2003. Some
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`of these key standards are discussed in the following sections.
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`25. The Internet is based on a globally unique address space based on the
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`Internet Protocol (IP)1 and is able to support communications using the TCP/IP suite
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`or its subsequent extensions/follow-ons. In addition, the Internet provides, uses or
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`makes accessible, either publicly or privately, high level services layered on the
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`communications infrastructure. The TCP/IP protocol suite includes many different
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`standard protocols including IP, TCP, UDP, VoIP, RTP, FTP, BGP, SMTP, DHCP,
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`HTTP, and others. Internet standards are typically published in the form of
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`documents known as “Requests for Comments” (RFCs), which are today maintained
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`by the Internet Engineering Task Force (IETF).
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`B. Voice over IP (VoIP)
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`26. Voice over IP (VoIP) is a family of standard technologies which allows
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`IP networks to be used for voice applications. VoIP generally involves the
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`transmission of voice “data packets” from a device at one IP address over the Internet
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`to a device at another IP address. The ability to transmit voice data packets from
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`one IP address to another over the Internet is one of the background technologies
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`1 See IETF Network Working Group RFC 791 (Sept. 1981), RFC 1726 (Dec. 1994).
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`Declaration of Tal Lavian, Ph.D., in Support of
`Petition for Inter Partes Review of
`U.S. Patent No. 8,199,747
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`relevant to the ’747 patent and the claims at issue, which recite communication over
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`a “packet-switched network.”
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`27. The technologies that enabled VoIP and implementation of applications
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`based on these technologies were available long before the ’747 patent’s filing date.
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`For example, an early public domain VoIP application called NetFone (Speak
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`Freely) was released in 1991 by Autodesk. A commercial internet VoIP application
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`was released by VocalTec in February of 1995.2
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`28. The real-time transport protocol (RTP)