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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.
`Patent Owner
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`Case IPR2017-00225
`Patent 8,995,433
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`DECLARATION OF LEONARD J. FORYS, PH.D.
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Facebook Ex. 1003
`U.S. Pat. 8,995,433
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`IPR2017-00225
`U.S. Pat. No. 8,995,433
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`TABLE OF CONTENTS
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`
`Introduction ......................................................................................................... 1
`I.
`II. Qualifications and Expertise ............................................................................... 3
`III. Legal Understanding ...................................................................................... 11
`A. My Understanding of Claim Construction .................................................... 11
`B. A Person of Ordinary Skill in the Art ............................................................ 12
`C. My Understanding of Obviousness ............................................................... 13
`IV. Background of the Technologies Disclosed in the ’433 Patent .................... 18
`A. Packet-Switched Networks ............................................................................ 19
`B. Voice Messaging ........................................................................................... 20
`V. Overview of the ’433 Patent ............................................................................. 21
`VI. Overview of the Prior Art .............................................................................. 25
`A. Abburi ............................................................................................................ 25
`B. Väänänen ....................................................................................................... 30
`C. Holtzberg ....................................................................................................... 34
`D. Logan ............................................................................................................. 36
`E. Vuori .............................................................................................................. 37
`VII. Claim Construction ........................................................................................ 41
`A. “display[ing] at least one of the plurality of instant voice messages” .......... 41
`VIII. The Combination of Abburi and Holtzberg Renders Claims 1, 2, 4, and 8
`Obvious. ................................................................................................................... 42
`A. Motivation to Combine Abburi with Holtzberg ............................................ 42
`B. Claim 1 ........................................................................................................... 44
`C. Claim 2 ........................................................................................................... 59
`D. Claim 4 ........................................................................................................... 61
`E. Claim 8 ........................................................................................................... 62
`IX. The Combination of Abburi, Holtzberg, and Vuori Renders Claim 3
`Obvious. ................................................................................................................... 63
`A. Claim 3 ........................................................................................................... 63
`X. The Combination of Abburi, Holtzberg, and Logan Renders Claims 5 and 6
`Obvious. ................................................................................................................... 67
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`U.S. Pat. No. 8,995,433
`A. Claim 5 ........................................................................................................... 67
`B. Claim 6 ........................................................................................................... 70
`XI. The Combination of Väänänen and Holtzberg Renders Claims 1, 2, 4-6 and
`8 Obvious ................................................................................................................. 75
`A. Motivation to Combine Väänänen with Holtzberg ....................................... 75
`B. Claim 1 ........................................................................................................... 77
`C. Claim 2 ........................................................................................................... 91
`D. Claim 4 ........................................................................................................... 93
`E. Claim 5 ........................................................................................................... 95
`F. Claim 6 ........................................................................................................... 96
`G. Claim 8 ........................................................................................................... 99
`XII. The Combination of Väänänen, Holtzberg, and Vuori Renders Claim 3
`Obvious. .................................................................................................................100
`A. Claim 3 .........................................................................................................100
`XIII. Conclusion ...................................................................................................103
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`U.S. Pat. No. 8,995,433
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`I.
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`Introduction
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`I, Dr. Leonard J. Forys, declare as follows:
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`1.
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`I have been retained as an expert witness by Sterne, Kessler,
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`Goldstein & Fox PLLC to provide testimony on behalf of Apple, Inc. (“Apple” or
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`“Petitioner”) for the above-captioned inter partes review proceeding. This
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`Declaration concerns technical subject matter relevant to the inter partes review
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`petition (“Petition”) concerning U.S. Patent No. 8,995,433 (“the ’433 Patent”)
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`titled “System and method for instant VoIP messaging” by Michael J. Rojas. It is
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`my understanding that the ’433 Patent is currently assigned to Uniloc Luxembourg
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`S.A.
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`2.
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`I am over 18 years of age. I have personal knowledge of the facts
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`stated in this Declaration and could testify competently to them if asked to do so.
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`3.
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`I have reviewed and am familiar with the specification, claims, and
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`prosecution history of the ’433 Patent. I will cite to the specification using the
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`following format: (’433 Patent, 1:1-10). This example citation points to the ’433
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`patent specification at column 1, lines 1-10.
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`4.
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`I have reviewed and am familiar with the following documents and
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`materials:
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`Exhibit No.
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`IPR2017-00225
`U.S. Pat. No. 8,995,433
`Description
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`1001
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`1002
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`1005
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`1006
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`1007
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`1008
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`1009
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`1010
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`1011
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`1012
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`1013
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`1014
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`1015
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`Rojas, U.S. Patent No. 8,995,433 (filed March 25,
`2014, issued March 31, 2015).
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`File History for U.S. Patent No. 8,995,433.
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`Abburi, U.S. Patent Application Publication No.
`2003/0147512 (filed February 1, 2002, published
`August 7, 2003).
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`Väänänen, U.S. Patent No. 7,218,919 (filed August 8,
`2001, issued May 15, 2007).
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`(filed
`Holtzberg, U.S. Patent No. 6,625,261
`December 20, 2000, issued September 23, 2003).
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`Logan et al., U.S. Patent No. 5,732,216 (filed October
`2, 1996, issued March 24, 1998).
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`Vuori, U.S. Patent Application Publication No.
`2002/0146097 (filed July 23, 2001, published October
`10, 2002).
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`Excerpts from Microsoft Computer Dictionary, 5th
`ed. (2002).
`Clarke et al., Experiments with packet switching of
`voice traffic, IEE Proceedings G - Electronic Circuits
`and Systems, V.130, N.4 , pp. 105-13 (August 1983).
`
`Sharma, VoP (voice over packet), IEEE Potentials, V.
`21, N. 4, Oct./Nov. 2002, pp. 14-17 (October, 2002).
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`Locascio, U.S. Patent No. 6,603,757 (filed April 14,
`1999, issued August 5, 2003).
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`Lotito et al., U.S. Patent No. 4,625,081 (filed
`November 30, 1982, issued November 25, 1986).
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`Excerpts from American Heritage Dictionary, 4th ed.
`(2001).
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`Exhibit No.
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`1016
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`1017
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`IPR2017-00225
`U.S. Pat. No. 8,995,433
`Description
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`File History of U.S. Patent No. 7,535,890.
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`Pershan, U.S. Patent No. 5,260,986 (filed April 23,
`1991, issued November 9, 1993).
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`5.
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`To the best of my knowledge, Exhibits 1001 to 1016 are true and
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`accurate copies of what they purport to be. An expert in the field would reasonably
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`rely on them to formulate opinions such as those set forth in this declaration.
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`6.
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`The ’433 patent describes “[m]ethods, systems and programs for
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`instant voice messaging over a packet-switched network.” (Ex. 1001, ’433 Patent,
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`Abstract.) I am familiar with the technology described in the ’433 patent as of its
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`December 18, 2003 priority date.
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`7.
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`I have been asked to provide my technical review, analysis, insights,
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`and opinions regarding the ’433 Patent and the references that form the basis for
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`the grounds of rejection set forth in the Petition for Inter Partes Review of the ’433
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`Patent.
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`II. Qualifications and Expertise
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`8.
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`I have nearly 50 years of experience in the telecommunications
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`industry working for corporations including AT&T Bell Telephone Laboratories
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`for almost two decades and Bellcore (formerly Bell Communications Research),
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`the research and development organization for the Bell Operating Companies (e.g.,
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`Bell Atlantic, Southwestern Bell, US West, etc.), for over a decade. As detailed
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`below, I have worked on many projects and technologies highly relevant to the
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`subject matter of the ’433 Patent.
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`9. My academic background in electrical engineering and computer
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`science provides a technical foundation for work in telephone communications and
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`packet-based communication networks. I received a Bachelor of Science Degree in
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`Electrical Engineering from the University of Notre Dame in 1963. I received both
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`a Science Master in Electrical Engineering and the degree of Electrical Engineer
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`from the Massachusetts Institute of Technology in 1965. I received the degree of
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`Doctor of Philosophy in Electrical Engineering and Computer Science from the
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`University of California at Berkeley in 1968.
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`10. While at Berkeley, I was an Assistant Professor of Electrical
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`Engineering and Computer Science, teaching courses in network theory, systems
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`theory and communications theory, performing research in communications
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`systems and serving as faculty advisor to 20 undergraduates.
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`11. From 1968 to 1973, I was a member of the technical staff at Bell
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`Telephone Laboratories (known commonly as Bell Labs). I engaged in various
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`research activities involving network engineering and performance management in
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`telephone networks. I taught several in-house courses in performance analysis and
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`traffic engineering in telephone networks.
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`12. From 1973 to 1984, I was Technical Supervisor at Bell Telephone
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`Laboratories, heading a group of technical experts, primarily Ph.D.’s. I was
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`responsible for performance management/analysis and development of traffic
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`engineering algorithms for various telecommunications networks and their
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`components, primarily processor based voice switches, automatic call distributors,
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`and Private Branch Exchanges (“PBXs”). As part of this effort, I successfully
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`rescheduled the processor tasks in several of these systems to increase their
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`capacity and improve their performance. My department did the original traffic
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`engineering work for the Advanced Mobile Phone System, AMPS, which was the
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`predominant mobile service in North America in the 1980s. I provided
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`management reviews for this work. I also was responsible for all of the call center
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`staffing algorithms for the Bell System and for the engineering of the network
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`elements used for call centers such as the TSPS (Traffic Service Position System),
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`Rockwell ACDs, and the #5 CrossBar ACD. ACDs are Automatic Call
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`Distributors, special purpose switches used to provide call center functionality.
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`13. From 1984 to 1994, I was District Manager for Bell Communications
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`Research (“Bellcore”), heading a group of 7 to 15 technical experts, primarily
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`Ph.D.’s. I was responsible for the specification and testing of a variety of voice
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`network components. This work included writing sections of the requirements used
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`by the Bell Operating Companies to buy network components in their networks. I
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`also tested the compliance (to the requirements) of several voice switches made by
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`various companies, e.g., Nortel, Lucent, Ericsson, Fujitsu, NET, and Siemens. The
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`testing involved various billing options and their impact on switch performance.
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`14. During this time period, I further consulted on the engineering and
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`performance of various supplemental telephonic services such as Voice Mail
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`systems, including those manufactured by Boston Technologies, Unisys, and
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`Digital Sound Corporation, as well as supporting equipment such as SMDI
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`(Simplified Message Display Interface) links. Also during this time period, I
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`headed a group doing architectural and performance studies of Personal Cellular
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`Service (PCS). This work was done on behalf of the Regional Bell Operating
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`Companies, the RBOCs. I was asked to chair a session on traffic performance of
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`PCS at an international symposium. The PCS technologies I researched included
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`SMS capabilities. I also participated and contributed to various national and
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`international voice and data standards organizations.
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`15. During this period, I continued my involvement with call center
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`technology. In particular, I was responsible for the engineering of all call centers
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`for the Bell Operating Companies. This included analyzing specific network
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`elements used to handle inmate telephone calls such as Nortel’s TOPS (Traffic
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`Operator Position System) and MPP (Multi-Purpose Position) systems and
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`AT&T’s No. 5 OSPS (Operator Services Position Station).
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`16. Another of my responsibilities while at Bellcore was analyzing and
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`providing engineering algorithms for data network components used by the Bell
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`Operating Companies. As part of this endeavor, I was a leader in developing novel
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`traffic engineering methods for Internet data networks and other high speed data
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`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This
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`included characterizing Internet traffic and developing loading guidelines for
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`network components including routers and switches. I also worked on some of the
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`earliest deployed packet-based networks, some of which included voice over
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`packet technologies.
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`17.
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`I was Bellcore’s prime technical leader for determining root causes of,
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`and proposed solutions for, several Signaling System No. 7 (“SS7”) data network
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`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
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`Washington, D.C., Pittsburgh, and Los Angeles outages. SS7 is also the protocol
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`used to transport SMS messages in mobile networks. I was responsible for writing
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`new sets of requirements for SS7 networks and was involved in a large scale
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`testing and analysis program for a wide variety of SS7 network components.
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`18.
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`I was named a Bellcore Fellow in 1992 – only the fifth person to
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`receive such an award.
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`19. From 1994 to 1995, I was a Chief Scientist at Bellcore, overseeing the
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`technical work of 50 technical experts, many of whom had Ph.D.’s. I was involved
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`in the teaching of teletraffic engineering and performance management to various
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`bodies, including the Federal Communications Commission, which included
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`various aspects of both voice and data networks, including voice mail systems. I
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`served as a “trouble shooter,” responsible for identifying root causes for diverse
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`network problems involving a variety of technologies including both high speed
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`data networks as well as telephone networks. I analyzed the potential impact of
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`earthquakes and other natural disasters on
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`telecommunications network
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`performance. The National Science Foundation sponsored me to be the sole U.S.
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`telecommunications industry representative at the First International Joint U.S.-
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`Japan Earthquake Symposium in 1993.
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`20. Since 1995, I have been President of my own company, The Forys
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`Consulting Group, Inc., providing consulting in voice and data communications
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`services including mobile telephony. Relevant to the subject matter of this case, I
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`analyzed the performance of AT&T’s wireless (mobile) network which provided
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`both voice and data services to interstate transport haulers, e.g., Highway Master.
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`This was in support of a legal case brought about by Highway Master after AT&T
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`canceled their contract. Highway Master charged that AT&T service was
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`substandard. I also used HP’s SS7 network monitoring capabilities to analyze
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`Internet traffic patterns in a large metro area. As part of a team of international
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`experts, I investigated a wide range of issues involving the introduction of a new
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`line of vendor products in a foreign national network. In 1995 I experimented with
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`some of the first commercial VoIP systems, including a 1996 version of Vocaltec’s
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`Internet Phone.
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`21. As a consultant to a large telephone company, I advised them on
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`quality of service issues in providing voice over ATM (with and without IP), Voice
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`over IP, Internet and Multiprotocol Label Switching (MPLS) networks, which are
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`used extensively in VoIP. I further analyzed various supplier components for
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`providing hybrid fiber coax access in cable networks. I consulted with a large
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`company on the economic and technical problems associated with providing voice
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`and data communications over a foreign cable network.
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`22. During this period, I also performed extensive consulting for various
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`data communications systems, including Internet access using satellite systems
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`with LAN-in-the-sky technologies for airplanes. I analyzed the performance,
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`provided traffic inputs and helped specify traffic network management/congestion
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`controls for three satellite data communications systems capable of handling both
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`packetized voice as well as Internet traffic.
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`23.
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`In the period between 1995–2001 I worked as a consultant (and was
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`part owner) to GLADSIS. GLADSIS provided software for servers that controlled
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`screen based landline phones (often with keyboards) using the Analog Display
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`Service Interface (ADSI) protocol which alternated data and voice. During this
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`time, GLADSIS developed software for providing SMS receipt and delivery to
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`British Telecom customers using ADSI capable telephones. I was involved in
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`developing various marketing and billing strategies for the use of these types of
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`phones, particularly for the application in the UK. In addition, I researched the use
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`of SMS to control Bluetooth capable devices for a possible patent application. I
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`have been involved in a number of consulting tasks involving VoIP networks using
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`both H.323 and SIP signaling technologies. These included several patent cases,
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`including cases brought against major VoIP carriers such as Level 3, Comcast,
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`Time Warner Cable, Verizon FIOS, and Sprint. I also have been involved in
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`various consulting tasks involving alternative billing strategies such as pre-paid
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`calling cards provided by Alternative Service Providers.
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`24.
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`In the early 2003 time frame, I led a small group that successfully
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`developed a demonstration version of a Carrier Grade Notification System (CGNS)
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`for a large client. CGNS enabled entities such as communities (and small
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`businesses) to develop group lists, record voice messages for these groups and send
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`them en masse using the PSTN. The messages could also be stored and delivered at
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`prescribed times. For members having voice mail service, the messages could be
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`stored on traditional voice mail servers in the event the message could not be
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`delivered directly to the member. The messages could additionally be text-to-
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`speech messages wherein text could be inputted in lieu of speech. This demo was
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`developed using off-the-shelf hardware components e.g. line cards. I researched
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`and developed a patent proposal for using SMS networks to remotely operate
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`appliances in the home and/or business. This would also include printing of
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`specified text on a remote printer.
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`25. My Curriculum Vitae is provided as Exhibit 1004, which contains
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`further details on my education, experience, publications, and other qualifications
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`to render an expert opinion. My work on this case is being billed at a rate of $400
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`per hour, with reimbursement for actual expenses. My compensation is not
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`contingent upon the outcome of this inter partes review.
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`III. Legal Understanding
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`A. My Understanding of Claim Construction
`26.
`I understand that, during an inter partes review proceeding, claims are
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`to be given their broadest reasonable construction in light of the specification as
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`would be read by a person of ordinary skill in the relevant art at the time the
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`application was filed. I understand that claim terms are given their ordinary and
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`customary meaning as would be understood by a person of ordinary skill in the
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`relevant art in the context of the entire disclosure. A claim term, however, will not
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`receive its ordinary meaning if the patentee acted as his own lexicographer and
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`clearly set forth a definition of the claim term in the specification. In this case, the
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`claim term will receive the definition set forth in the patent.
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`B. A Person of Ordinary Skill in the Art
`27.
`I understand that a person of ordinary skill in the relevant art (also
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`referred to herein as “POSITA”) is presumed to be aware of all pertinent art, thinks
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`along conventional wisdom in the art, and is a person of ordinary creativity—not
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`an automaton.
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`28.
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`I have been asked to consider the level of ordinary skill in the field
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`that someone would have had at the time the claimed invention was made. In
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`deciding the level of ordinary skill, I considered the following:
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` the levels of education and experience of persons working in the
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`field;
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` the types of problems encountered in the field; and
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` the sophistication of the technology.
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`29. My opinion below explains how a person of ordinary skill in the art
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`would have understood the technology described in the references I have identified
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`herein around the December 2003 timeframe. I have been advised that the earliest
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`possible effective filing date of the ’433 patent is December 18, 2003.
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`30. Based on the disclosure of the ’433 patent, one of ordinary skill in the
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`art would have a B.S. degree in Electrical Engineering, Computer Science, or an
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`equivalent field as well as at least 3–5 years of academic or industry experience in
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`communications systems, particularly in messaging systems, data networks
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`including VoIP and mobile telephony, or comparable industry experience.
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`31.
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`I am well qualified to determine the level of ordinary skill in the art.
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`First, I am personally very familiar with the technology of the ’433 Patent in the
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`December 2003 timeframe.
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`32. By 2003, I had completed my formal education and had been working
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`in the relevant field for more than 35 years. I have supervised, recruited, advised,
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`and taught individuals at all levels of training in the relevant field. And as a
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`technical consultant, I have worked with individuals in industry at all levels of
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`training in the relevant field.
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`33.
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`I was a person of at least ordinary skill in the art at this timeframe. So
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`regardless if I do not explicitly state that my statements below are based at this
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`timeframe, all of my statements are to be understood as a POSITA would have
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`understood something as of the alleged effective filing date of the ’433 patent.
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`34. Regardless if I use “I” or a “POSITA” during my technical analysis
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`below, all of my statements and opinions are always to be understood to be based
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`on how a POSITA would have understood or read a document.
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`C. My Understanding of Obviousness
`35.
`I am not a lawyer and will not provide any legal opinions. Although I
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`am not a lawyer, I have been advised certain legal standards are to be applied by
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`technical experts in forming opinions regarding meaning and validity of patent
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`claims.
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`36.
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`I understand that a patent claim is invalid if the claimed invention
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`would have been obvious to a person of ordinary skill in the art at the time the
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`application was filed. I understand that this means that even if all of the
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`requirements of the claim cannot be found in a single prior art reference that would
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`anticipate the claim, the claim can still be invalid.
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`37. To obtain a patent, a claimed invention must have, as of its priority
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`date, been nonobvious in view of the prior art in the field. I understand that a
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`patent claim is obvious when the differences between the subject matter sought to
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`be patented and the prior art are such that the subject matter as a whole would have
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`been obvious at the time the invention was made to a person of ordinary skill in the
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`art.
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`38.
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`I understand that to prove that prior art or a combination of prior art
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`renders a claim obvious, it is necessary to (1) identify the particular references that,
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`singly or in combination, make the claim obvious; (2) specifically identify which
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`elements of the claim appear in each of the asserted references; and (3) explain
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`how the prior art references could have been combined to teach or suggest the
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`limitations in the claim.
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`I also understand that prior art references can be combined under
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`39.
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`several different circumstances. For example, it is my understanding that one such
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`circumstance is when a proposed combination of prior art references results in a
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`system that represents a predictable variation, which is achieved using prior art
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`elements according to their established functions.
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`40.
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`I understand that certain objective indicia (secondary indicia) can be
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`important evidence in determining whether a claim is obvious or nonobvious. Such
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`indicia include: commercial success of products covered by the patent claims; a
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`long-felt need for the invention; failed attempts by others to make the invention;
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`copying of the invention by others in the field; unexpected results achieved by the
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`invention as compared to the closest prior art; praise of the invention by the
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`infringer or others in the field; the taking of licenses under the patent by others;
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`expressions of surprise by experts and those skilled in the art at the making of the
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`invention; and the patentee proceeded contrary to the accepted wisdom of the prior
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`art. At this point, I am not aware of any secondary indicia of non-obviousness. I
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`reserve the right to supplement or amend my opinions to the extent that any
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`secondary indicia are brought to my attention.
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`41.
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`I understand that so-called secondary indicia may be relevant to the
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`determination of whether a claim is obvious should Patent Owner Uniloc allege
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`such evidence. As discussed above, such objective considerations can include
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`evidence of commercial success caused by an invention, evidence of a long-felt
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`need that was solved by an invention, evidence that others copied an invention, or
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`evidence that an invention achieved a surprising result. I understand that such
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`evidence must have a nexus, or causal relationship to the elements of a claim, in
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`order to be relevant to the obviousness or non-obviousness of the claim.
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`42.
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`It is my opinion that secondary considerations do not support the non-
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`obviousness of the challenged claims of the ’433 patent. I have seen no evidence
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`that supports any secondary considerations tending to show non-obviousness,
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`including commercial success, long-felt need, failure of others, skepticism, praise,
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`teaching away, recognition of a problem, or copying by competitors.
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`43.
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`I do not recall hearing about any innovation in the field of
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`communications systems, particularly in messaging systems, data networks
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`including VoIP and mobile telephony by Patent Owner or any previous owners of
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`this patent. I am not aware of any products in the field of communications systems,
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`particularly in messaging systems, data networks including VoIP and mobile
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`telephony by Patent Owner, any customers of Patent Owner, or anything
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`suggesting commercial success of any such products developed by Patent Owner.
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`In addition to my personal knowledge of messaging systems, I have done a general
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`search of my own resources and resources available to me and have likewise been
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`unable to identify any commercial success of products in the field of in
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`communications systems, particularly in messaging systems, data networks
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`including VoIP and mobile telephony developed by Patent Owner.
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`44.
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`I am also unaware of any long-felt need at the time of the alleged
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`invention for an invention utilizing the elements recited in the challenged claims of
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`the ’433 patent. Instant VoIP messaging systems and methods were well-known to
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`one having ordinary skill in the art, including but not limited to the short voice
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`message (SVM) service method, apparatus and system described in Vuori, which
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`pre-dates the priority date of the ’433 patent.
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`45.
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`I am also not aware of any failure of others to design or implement an
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`invention similar to the ones recited in the challenged claims of the ’433 patent. In
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`fact, I believe there are numerous similar instant VoIP messaging systems or
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`methods, including but not limited to the ones described in Abburi, Väänänen, and
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`Vuori, which pre-date the ’433 patent’s priority date.
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`46.
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`I have reviewed numerous prior art references from around the time of
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`the alleged invention and am not aware of any skepticism, praise, or teaching away
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`by others of the alleged invention recited in the ’433 patent. In fact, the opposite is
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`true: prior art references explain the ready combination of the cited prior art
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`systems. I am likewise unaware of any recognition afforded to any instant VoIP
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`messaging systems or methods developed by Patent Owner.
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`I am not aware of any praise or acclaim for the patents, e.g., no
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`47.
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`reference in academic journals, discussion at conferences, etc.
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`48.
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`I do not recall hearing of the ’433 patent before being engaged as an
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`expert, notwithstanding my expertise in the field and awareness of the relevant
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`technology.
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`49.
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`I am not aware of any competitors of instant VoIP messaging systems
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`or methods developed by Patent Owner and am not aware of any copying of
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`designs or products of Patent Owner.
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`50. Moreover, for the reasons I set out below, in my opinion, the prior art
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`references demonstrate a strong case of obviousness against the ’433 patent.
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`51. Should Patent Owner assert that secondary considerations support a
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`finding of non-obviousness, I reserve the right to submit a Declaration addressing
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`those new assertions.
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`52. My analysis below is always from the perspective of a POSITA unless
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`otherwise noted, even if that is not explicitly stated. My analysis of the prior art is
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`always made as of the time of the alleged invention was made from the perspective
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`of a POSITA.
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`IV. Background of the Technologies Disclosed in the ’433 Patent
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`53. The ’433 Patent applies a known instant messaging method over a
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`known packet-switched network. For example, the ’433 Patent acknowledges that
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`VoIP packet-switch