`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`FACEBOOK, INC. AND WHATSAPP, INC.,
`
`Petitioners,
`
`v.
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`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`______________
`
`Case IPR2017-01524
`U.S. Patent 7,535,890
`______________
`
`DECLARATION OF DR. VAL DIEULIIS
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`
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`SEPTEMBER 8, 2017
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`Uniloc v. Facebook, IPR2017-01524
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 5
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`2. QUALIFICATIONS ...................................................................................... 6
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 9
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`4. INFORMATION CONSIDERED ...............................................................11
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`5. LEGAL STANDARDS .................................................................................12
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`6. THE ’890 PATENT ......................................................................................13
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`6.1 Claims.................................................................................................... 21
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`7. ORDINARY SKILL IN THE ART .............................................................26
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`8. INTERNATIONAL APPLICATION WO 01/11824
`(“ZYDNEY”) ................................................................................................27
`
`9. EXCERPT OF COMPUTER NETWORKING ESSENTIALS
`(“SHINDER”) ...............................................................................................39
`
`10. THE PROPOSED COMBINATION OF ZYDNEY AND
`SHINDER DOES NOT RENDER OBVIOUS ANY
`CHALLENGED CLAIM OF THE ’890 PATENT .....................................43
`
`10.1 A POSITA Would Not Have Been Motivated to
`Combine Zydney with Shinder in the Manner Proposed
`by the Petitioners ................................................................................... 44
`10.2 The Proposed Combination of Zydney and Shinder Does
`Not Disclose “transmitting the selected recipients and the
`instant voice message therefor over the local network and
`the external network” or “the server receiving the
`selected recipients and the instant voice message
`therefor” (Claim 14) ............................................................................... 48
`10.2.1 Zydney Does Not Disclose that “the selected
`recipients” are transmitted or received ........................................ 48
`10.2.2 Zydney Does Not Disclose the Separate
`Transmission of the Voice Data and the List of
`Recipients ................................................................................... 51
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`10.3 The Proposed Combination of Zydney and Shinder Does
`Not Disclose “transmitting the selected external
`recipients and the instant voice message therefor over the
`local network and the external network” or “receiving the
`selected external recipients and the instant voice message
`therefor at an external server connected to the external
`network” (Claim 51) .............................................................................. 53
`
`11. THE PROPOSED COMBINATION OF ZYDNEY AND
`SHINDER DOES NOT DISCLOSE OR RENDER OBVIOUS
`THE FURTHER LIMITATIONS OF DEPENDENT
`CLAIMS 19, 20, 53, OR 54...........................................................................54
`
`11.1 The Petitioners fail to show that Zydney discloses
`“wherein the server delivers the instant voice message to
`the selected recipients that are available” (Claim 19) and
`“delivering the instant voice message from the external
`server to the selected recipients that are
`available” (Claim 53) ............................................................................. 55
`11.2 The Petitioners fail to show that the proposed
`combination of Zydney and Shinder discloses “wherein
`the client records the instant voice message in an audio
`file, transmits the audio file to the server, and the server
`delivers the audio file to the selected recipients, the
`selected recipients being enabled to audibly play the
`audio file” (Claim 20) and “recording the instant voice
`message in an audio file at the client; transmitting the
`audio file to the external server; delivering the audio file
`to the selected recipients from the external server; and
`audibly playing the audio file at the selected recipients.”
`(Claim 54) .............................................................................................. 59
`11.2.1 Zydney does not disclose or render obvious
`“transmitting the audio file to the server” ................................... 60
`11.2.2 Zydney does not disclose or render obvious “the
`server delivers the audio file to the selected
`recipients” .................................................................................. 61
`11.2.3 Zydney does not disclose or render obvious
`“audibly playing the audio file” .................................................. 62
`
`12. U.S. PATENT NO. 7,016,978 (“MALIK”) ..................................................64
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`13. THE PROPOSED COMBINATION OF ZYDNEY IN VIEW OF
`SHINDER AND MALIK DOES NOT RENDER OBVIOUS ANY
`CHALLENGED CLAIM OF THE ’890 PATENT .....................................65
`
`14. THE PROPOSED COMBINATION OF ZYDNEY IN VIEW OF
`SHINDER AND MALIK DOES NOT DISCLOSE OR RENDER
`OBVIOUS THE FURTHER LIMITATIONS OF DEPENDENT
`CLAIM 33, 34, 64, OR 65 .............................................................................69
`
`15. U.S. PATENT NO. 6,750,881 (“APPELMAN”) ..........................................73
`
`16. THE PROPOSED COMBINATION OF ZYDNEY AND
`SHINDER (OR ZYDNEY, SHINDER, AND MALIK) IN
`FURTHER VIEW OF APPELMAN AND MARTIN-FLATIN
`FAILS TO RENDER OBVIOUS CLAIMS 18, 32, 52, OR 63 OF
`THE ’890 PATENT ......................................................................................76
`
`16.1 The Proposed Combination of Zydney and Appelman is
`Improper Because the Combination Would Render
`Zydney Unsatisfactory for an Intended Purpose of
`Zydney ................................................................................................... 78
`16.2 The Proposed Combination of Zydney and Shinder in
`further view of Appelman and Martin-Flatin Fails to
`Render Obvious “wherein the client requests a list of
`recipients associated with the client from the server and
`the server transmits the list of recipients to the client for
`selection of the one or more recipients” (Claim 18) ............................... 81
`16.2.1 Zydney does not disclose the client “requesting a
`list of recipients associated with the client from
`the server” .................................................................................. 82
`16.2.2 Zydney does not disclose the server transmitting
`the list of recipients to the client ................................................. 85
`16.3 The Proposed Combination of Zydney and Shinder in
`further view of Appelman and Martin-Flatin Fails to
`Render Obvious the “requesting” and “transmitting the
`list” limitations of Claims 32, 52, or 63.................................................. 86
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
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`1.
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`1.
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`Introduction
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`My name is Val DiEuliis, and I have been retained by
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`Uniloc, USA, Inc., and Uniloc Luxembourg S.A. (“Uniloc” or the “Patent
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`Owner”). My client Uniloc and its associated counsel, Etheridge Law
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`Group, have asked me to study U.S. Patent No. 7,535,890 (“the ’890
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`patent”), the Petition, the proffered prior art in this case, and other
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`relevant documents. I document my findings in this declaration.
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`2.
`
`I have concluded that International Application
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`WO 01/11824 (“Zydney”) [EX1103] in view of Shinder [EX1108],
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`Malik [EX1115], Appelman [EX1104] and Martin-Flatin [EX1109] does
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`not render obvious any challenged claim of the patent at issue, the’890
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`patent, at least for the following reasons:
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`• A POSITA would not have been motivated to add Shinder’s local
`
`area network to Zydney and the Petitioners have not explained how
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`Zydney’s central server could be modified to communicate with
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`users of Shinder’s local network.
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`• If Zydney is modified by Shinder as proposed by the Petitioners,
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`an important feature of Zydney—peer-to-peer communication—
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`would be rendered inoperative.
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`3.
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`• Zydney fails to disclose a server receiving the selected recipients
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`and the instant voice message recited in the challenged
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`independent claims.
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`• Zydney fails to disclose a client transmitting the selected recipients
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`and the instant voice message recited in the challenged
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`independent claims.
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`In addition, the further limitations of at least dependent
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`claims 18-20, 32-34, 52-54, and 63-65 are not rendered obvious.
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`4.
`
`The limited scope of my opinions and analysis in this
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`declaration does not imply that I may not later express other opinions or
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`report other results from other investigations concerning other issues
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`raised by the Petitioners or their experts in this IPR.
`
`2.
`
`5.
`
`Qualifications
`
`I am an electrical engineer with over 45 years of experience
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`developing, programming, and analyzing computer algorithms and
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`software. I am experienced with and able to create, read, and interpret
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`firmware and software in C, C++, Java, assembly language, HTML, and
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`other computer programming languages. I have served as an expert
`
`witness in multiple cases for which I analyzed computer source code in
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`various languages and testified at ITC hearings and two jury trials
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`concerning my results.
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`6.
`
`During my career, I have developed and managed projects
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`for various applications, including sensors, controls, communications,
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`user interfaces, device firmware, handheld devices, medical devices and
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`systems, and test systems for optical and magnetic disk systems.
`
`7.
`
`I have designed, developed, and implemented hardware and
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`software for digital communication networks, including factory
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`networks; document capture and distribution; and communications links
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`for various applications. See DiEuliis CV (See e.g., Website
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`Development, Industrial Valve Position Sensor, Condition-Based
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`Maintenance System, Avionics Environmental Monitor, Radio Frequency
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`Billboard Network, Wireless Bar Code System for Hospitals, and ISA
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`Board for 4-Port RS422 Serial Communications Multiplexer.). See also
`
`Id. at 3 (Digital Document Storage Technology). I also developed an
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`optical disk digital data storage system that captured, recorded, played
`
`back, and stored digital audio data. Id. at 2 (Optical Disk Technology).
`
`8.
`
`As a graduate student at the University of
`
`Illinois at Urbana-Champaign, I obtained extensive training in the
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`complexity of algorithms; the complexity of databases; information
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`theory; combinatorics and combinatorial algorithms; and the mathematics
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`and algorithms of error correcting codes, a field closely related to
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`cryptography. In addition, as a part of my graduate research, I created and
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`developed heuristic algorithms and wrote software to synthesize
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`non-linear codes for optimizing the spectra of coded digital
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`communications signals.
`
`9.
`
`I received the Ph.D. and M.S. degrees in electrical
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`engineering from the University of Illinois at Urbana-Champaign in 1978
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`and 1976, respectively, and the B.S. degree in electrical engineering from
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`the University of Notre Dame in 1972. I am a Registered Professional
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`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
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`of the Institute of Electrical and Electronics Engineers (IEEE).
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`Additionally, I am a co-inventor of two patents.
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`10.
`
`I have been an independent engineering consultant, doing
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`business as Electronics Consultants, since 1984. My clients have
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`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
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`among others. Prior to that, I worked as a research engineer for the 3M
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`Company in St. Paul, Minnesota for five years. In addition, before my
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`graduate studies, I worked as an electrical engineer in the U. S. Army
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`with the U.S. Army Security Agency for two years, during which time I
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`held a Top Secret W/Crypto and SI Access security clearance.
`
`11.
`
`As an adjunct instructor at the University of Saint Thomas in
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`St. Paul, Minnesota, I developed and presented a lecture on classical
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`linear control theory for graduate students; developed and taught a
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`graduate course on computer networks; and taught an undergraduate
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`analog and digital electronics course to mechanical engineering students.
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`12.
`
`This and other information about my background is included
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`in my CV, which is attached to this declaration as Attachment A.
`
`3.
`
`13.
`
`Compensation, Testimony, and Publications
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`I am being paid $440 per hour for the time I spend working
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`on this matter. My compensation is not contingent on my performance,
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`the outcome of this IPR, or any issues involved in or related to this IPR.
`
`14.
`
`During the past four years, I have testified at trial, hearing,
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`or deposition in the following cases:
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`• Terremark North America, LLC, et al. v. Joao Control &
`
`Monitoring Systems, LLC.; US PTO Inter Partes Review
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`IPR2015-01466; Joao Control & Monitoring on behalf of Joao
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`Control & Monitoring; 2016. I testified at a deposition.
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`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
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`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
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`2016. I testified at a deposition.
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`• Sega of America, Inc. et al. v. Uniloc USA, Inc. et al.; USPTO
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`Inter Partes Review IPR2014-01453; Uniloc USA on behalf of
`
`Uniloc USA; 2015. I testified at a deposition.
`
`• Uniloc USA, Inc. et al. v. Activision Blizzard, Inc. et al.; United
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`States District Court for the Eastern District of Texas (Tyler); Civil
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`Action No. 6:13-cv-00256-LED; and Uniloc USA, Inc. v.
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`Electronic Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson
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`Bumgardner Casto and Carter, Scholer, Arnett, Hamada, and
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`Mockler on behalf of Uniloc USA et al.; 2013-2014. I testified at
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`three depositions and a jury trial.
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`• In the Matter of Certain Optical Disc Drives, Components thereof,
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`and Products Containing Same; U.S.I.T.C. Investigation No.
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`337-TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
`
`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
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`Lenovo, Greenberg Traurig on behalf of LG Electronics,
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`McDermott Will & Emery on behalf of Nintendo and Panasonic,
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`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
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`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
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`deposition.
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`• Taser International, Inc. v. Karbon Arms, LLC; United States
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`District Court for the District of Delaware; Civil Action No.
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`1:11-cv-426-RGA; Smith, Gambrell & Russell, LLP, on behalf of
`
`Karbon Arms, 2013. I testified at a deposition.
`
`
`15.
`
`4.
`
`16.
`
`I have had no publications in the past 10 years.
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`Information Considered
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`In order to arrive at my opinions, I have reviewed and
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`considered the materials listed below:
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`• Petition for Inter Partes Review of U.S. Patent No. 7,535,890
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`(Petition 2 of 2 – Claims 14, 15, 17-20, 23, 28, 29, 31-34, 37,
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`51-54, 57, 62-65, 68) and exhibits, Case No. IPR2017-01524, June
`
`2, 2017 [Pet.]
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`• U.S. Patent No. 7,535,890 (“’890”) [EX1101], and its prosecution
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`history
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`• Declaration of Tal Lavian, Ph.D., June 1, 2017 [EX1102]
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`• International Application WO 01/11824 (“Zydney”) [EX1103]
`
`• U.S. Patent No. 6,750,881 (“Appelman”) [EX1104]
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`• Excerpt of Computer Networking Essentials, Debra Littlejohn
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`Shinder, Cisco Systems, Inc., 2002 (“Shinder”) [EX1108]
`
`• Technical Article: Push vs. Pull in Web-Based Network
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`Management, J.P. Martin-Flatin, 1999 [EX1109]
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`• U.S. Patent No. 7,016,978 (“Malik”) [EX1115]
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`
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`5.
`
`17.
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`Legal Standards
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`I understand there are certain legal rules, standards, or
`
`requirements that I accept for the purpose of my analysis of the opinions
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`and conclusions set forth in this declaration.
`
`18.
`
`I understand a patent is obvious “if the differences between
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`the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
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`determination must be based on four factual inquiries: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
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`of nonobviousness.
`
`19.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the prior art, the claim cannot be considered obvious.
`
`20.
`
`I further understand that it is improper to combine references
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`where the references teach away from their combination. A prior art
`
`reference teaches away from the claimed invention when a person of
`
`ordinary skill, upon reading the reference would be led in a direction
`
`divergent from the path that was taken by the applicant. Prior art also
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`teaches away when it criticize[s], discredit[s], or otherwise discourage[s]
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`investigation into the claimed invention. Additionally, a reference teaches
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`away from a combination when using it in that combination would
`
`produce an inoperative result. A reference also teaches away from a
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`combination when using it in that combination would render the
`
`invention described in the reference unsatisfactory for its intended
`
`purpose.
`
`21.
`
`In addition, I understand that if a proposed modification or
`
`combination of the prior art would change the principle of operation of
`
`the prior art device being modified, then the teachings of the references
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`are not sufficient to render the claims prima facie obvious.
`
`6.
`
`22.
`
`The ’890 Patent
`
`U.S. Patent No. 7,535,890 (“’890”), titled System and
`
`method for instant VoIP messaging, was issued on May 19, 2009. The
`
`application 10/740,030, by inventor Michael J. Rojas, was filed on
`
`December 18, 2003. See EX1101.
`
`23.
`
`The ’890 patent “relates to Internet telephony (IP
`
`telephony). More particularly, the present invention is directed to a
`
`system and method for enabling local and global instant VoIP
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`
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`messaging over an IP network, such as the Internet, with PSTN
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`support.” Id. at 1:7-11.
`
`24.
`
`The ’890 patent provides the historical context in its prior art
`
`discussion by noting that “[traditional] telephony is based on a public
`
`switched telephone network (i.e., “PSTN”). EX1101 at 1:13-23. This is
`
`the well-known telephone system that has served the world for well over
`
`a century.
`
`25.
`
`The ’890 patent further explains “An alternative to the
`
`PSTN is Voice over Internet Protocol (i.e., "VoIP"), also known as IP
`
`telephony or Internet telephony. Id. at 1:24-26. The patent elaborates as
`
`follows:
`
`In the IP telephony, a VoIP terminal device is
`connected to a packet-switched network (e.g.,
`Internet) and voice communication from the
`VoIP terminal device is digitized, packetized
`and transmitted over the packet-switched
`network to a destination VoIP terminal device,
`which reconstructs the packets and audibly
`plays, stores or otherwise processes the
`transmission. The VoIP terminal device may be a
`VoIP telephone or a general-purpose personal
`computer (PC) enabled for IP telephony. More
`specifically, the PC is programmed with the
`software and equipped with audio input/output
`devices (e.g., a combination of microphone and
`
`
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`speaker or a headset) to serve as a VoIP terminal
`device. The PC so enabled and equipped will
`herein be referred to as a VoIP terminal device or a
`VoIP softphone.
`(Id. at 1:26-39) (Emphasis added.)
`
`
`26.
`
`After noting that VoIP and instant text messaging were
`
`known arts, the ’890 patent explains the motivation for its invention as
`
`follows:
`
`However, notwithstanding the foregoing advances
`in the VoIP/PSTN voice communication and
`voice/text messaging, there is still a need in the
`art for providing a system and method for
`providing instant VoIP messaging over an IP
`network. More particularly, there is a need in the
`art for providing local and global instant voice
`messaging over VoIP with PSTN support.
`(Id. at 2:36-42) (Emphasis added.)
`
`
`27.
`
`FIG. 2, reproduced below is “an exemplary illustration of a
`
`local instant voice messaging (IVM) system 200 according to the
`
`present invention.” Id. at 2:40-42. The instant voice messaging system
`
`200 comprises a local IVM server 202 that “provides the core
`
`functionality for enabling instant voice messaging with PSTN support
`
`according to the present invention.” Id. at 6:42-45 (emphasis added).
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`
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`FIG. 2 of the ’890 Patent: System Diagram of the Instant Voice
`Messaging System (IVM)
`
`
`
`28.
`
`The local IVM server 202 “is enabled to provide instant
`
`voice messaging to one or more IVM clients 206 and 208, as well support
`
`instant voice messaging for PSTN legacy telephones 110.” Id. at 6:47-51.
`
`The local IP network 204, a packet-switched network, connects the IVM
`
`server 202 to clients 208 (viz., a computer system), VoIP Phone 206, and
`
`legacy telephone 110 (e.g., a land-line phone). Clients incorporate
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`devices such as microphones, which enable a person’s voice to be
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`recorded, and speakers to allow voice messages to be heard by the users.
`
`Id. at 6:51-67.
`
`29.
`
` A POSITA would have understood, upon studying the
`
`totality of the ’890 patent, and specifically the written descriptions above
`
`and elsewhere in the ’890 patent, that “clients” in the ’890 patent are
`
`devices, such as computers and telephones, and not the people who use
`
`the devices. See e.g., Id. at 9:18-19. The patent expresses this in the
`
`following exemplary passages:
`
`The IVM client 208 is a general-purpose
`programmable computer equipped with a
`network interface (not shown), such as an Ethernet
`card, to provide connectivity to the network 204.
`(Id. at 12:2-5)
`
`The user operates the IVM client 208 by using
`the input device 218 to indicate a selection of one
`or more IVM recipients from the list.
`(Id. at 7:58-61; also 8:46-48 [“the user operates ...
`using a keypad ...”]) (Emphasis added.)
`
`The one or more recipients are enabled to display
`an indication that the instant voice message has
`been received and audibly play the instant voice
`message to an associated user.
`(Id. at 8:19-22) (Emphasis added.)
`
`
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
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`Page 17 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 17
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`

`
`30.
`
`The above exemplary passages demonstrate that the user is
`
`not the client, which is a device, but rather an entity (e.g., person, another
`
`device, software) that interfaces with and operates the client device using
`
`input and output devices.
`
`31.
`
`The first passage above explicitly discloses that the client is
`
`a computer. The second passage explicitly discloses that the “user”
`
`operates the client.
`
`32.
`
`Finally, the third passage explains that “recipients are
`
`enabled to ... “audibly play the instant voice message to an associated
`
`user.” Id. This exemplary statement explains that a “recipient” is not the
`
`“user.” A POSITA would have understood, after studying the totality of
`
`the ’890 patent, that “recipients” are client devices, not people.
`
`33.
`
`Regarding the operation of at least one embodiment, the
`
`’890 patent explains “the IVM client (VoIP telephone) 208 is connected
`
`over the network 204 to the IVM server 202, which as aforementioned
`
`enables instant voice messaging functionality over the network 204.”
`
`Id. at 8:39-42. The operations proceed generally, according to an
`
`exemplary embodiment, as follows:
`
`• The client displays a list, provided and stored by the server, of one
`
`or more IVM recipients. Id. at 8:42-44.
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
`
`Page 18 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 18
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`
`
`• “The user operates the IVM client 206 by using a keypad on the
`
`VoIP telephone 206 to indicate a selection of one or more IVM
`
`recipients from the list.” Id. at 8:46-48.
`
`• The client transmits the selection of the recipient(s) to the server.
`
`Id. at 8:48-49.
`
`• The client begins recording audio and the user speaks into a
`
`microphone or headset or telephone handset of the client.
`
`Id. at 8:52-54.
`
`• The client records the user’s speech into an audio file, which may
`
`be stored in a storage device (e.g., memory, magnetic disk). Id. at
`
`9:1-4; see also Id. at 8:11-15.
`
`• The client transmits the recorded audio file (i.e., instant voice
`
`message) to the server via the network. Id. at 8:67-9:2; see also
`
`Id. at 8:14-16.
`
`• The server transmits the instant voice message (that is, the audio
`
`file) to the recipient(s) who are currently connected to the network.
`
`Id. at 9:2-11. If a recipient is not currently connected to the
`
`network, the server temporarily saves the instant voice message
`
`and delivers it to the IVM client when the IVM client connects to
`
`the local IVM server. Id.
`
`
`34.
`
`The ’890 patent also teaches “when an instant voice message
`
`is to be transmitted to the one or more IVM recipients, one or more
`
`documents may be attached to the instant voice message to be stored
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
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`Page 19 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 19
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`

`
`or displayed by the one or more selected IVM recipients.”
`
`Id. at 12:22-26. Furthermore, regarding attachments, the patent teaches:
`
`The user may also open any file attachments and
`move or save the files to a separate location on the
`client using a drag-and-drop process.
`(Id. at 12:67-13:3) (Emphasis added.)
`
`The attachment of one or more files is enabled
`conventionally via a methodology such as
`"drag-and-drop" and the like, which invokes the
`document handler 306 to make the appropriate
`linkages to the one or more files and flags the
`messaging system 320 that the instant voice
`message also has the attached one or more files.
`(Id. at 13:26-31)
`
`
`35.
`
`In my opinion, a POSITA would have understood that the
`
`inventor refers to files, such as documents, spreadsheets, pictures, and so
`
`forth, as entities separate from the audio file itself, and that the term
`
`attachment should be interpreted as other files or information that are
`
`sent with a message. For example, a text message may contain a picture
`
`attachment, which is a separate file that is distinct from the actual text in
`
`the message.
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
`
`Page 20 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 20
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`

`
`6.1
`
`36.
`
`Claims
`
`In this declaration, I primarily focus on the following
`
`limitations recited by the challenged claims.
`
`37.
`
`First, claims 14, 28, 51, and 62, independent system claims,
`
`recite the following limitations:
`
`transmitting the selected recipients and the instant
`voice message therefor over the local network and
`the external network
`(EX1101 at 25:27-29) (Claim 14)
`
` a
`
` server connected to the external network, the
`server receiving the selected recipients and the
`instant voice message therefor
`(EX1101 at 25:30-32) (Claim 14)
`
`transmitting the selected recipients and the instant
`voice message therefor over the external network
`(EX1101 at 27:11-13) (Claim 28)
`
` a
`
` external server system receiving the selected
`recipients and the instant voice message, and
`routing the selected recipients and the instant voice
`message over the external network and the local
`network
`(EX1101 at 27:14-18) (Claim 28)
`
`the local server receiving the selected recipients
`and the instant voice message therefor
`(EX1101 at 28:19-21) (Claim 28)
`
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
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`Page 21 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 21
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`

`

`
`
`transmitting the selected external recipients and the
`instant voice message therefor over the local
`network and the external network
`(EX1101 at 30:16-18) (Claim 51)
`
`receiving the selected external recipients and the
`instant voice message therefor at an external server
`connected to the external network
`(EX1101 at 30:19-21) (Claim 51)
`
`transmitting the selected recipients and the instant
`voice message therefor over the external network
`from the client to an external server system
`(EX1101 at 32:13-15) (Claim 62)
`
`receiving the selected recipients and the instant
`voice message at the external server system
`(EX1101 at 32:16-17) (Claim 62)
`
`routing the selected recipients and the instant voice
`message over the external network and the local
`network
`(EX1101 at 32: 18-19) (Claim 62)
`
`receiving the selected recipients and the instant
`voice message therefor at a local server connected
`to the local network
`(EX1101 at 32:20-22) (Claim 62)
`
`
`
`
`
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
`
`Page 22 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 22
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`

`
`38.
`
`Second, dependent claims 19, 33, 53, and 64, dependent on
`
`claims 14, 28, 51, and 62, respectively recite further limitations as
`
`follows:
`
`wherein the server delivers the instant voice
`message to the selected recipients that are
`available
`(EX1101 at 25:62-64) (Claim 19)
`
`wherein the local server delivers the instant voice
`message to the selected recipients that are
`available
`EX1101 at 27:48-50) (Claim 33)
`
`delivering the instant voice message from the
`external server to the selected recipients that are
`available
`(EX1101 at 30:38-41) (Claim 53)
`
`delivering the instant voice message from the local
`server to the selected recipients that are available
`(EX1101 at 32:39-42) (Claim 64)
`
`
`
`39.
`
`Third, dependent claims 20, 34, 54, and 65, dependent on
`
`claims 14, 28, 51, and 62, respectively, recite further limitations as
`
`follows:
`
`wherein the client records the instant voice
`message in an audio file, transmits the audio file to
`the server, and the server delivers the audio file to
`
`
`
`IPR2017-01524: Declaration of Dr. Val DiEuliis
`
`
`Page 23 of 88
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`Uniloc v. Facebook, IPR2017-01524
`Uniloc's Ex. 2001, Page 23
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`

`

`
`
`the selected recipients, the selected recipients
`being enabled to audibly play the audio file.
`(EX1101 at 25:65-26:2) (Claim 20)
`
`wherein the client records the instant voice
`message in an audio file, transmits the audio file to
`the external server, the external server system
`routes the audio file to the local server, and the
`local server delivers the audio file to the selected
`re