`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`APPLE INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`
`
`Case IPR2017-00225
`Patent 8,995,433
`
`
`
`
`
`DECLARATION OF LEONARD J. FORYS, PH.D.
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Facebook Ex. 1003
`U.S. Pat. 8,995,433
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`TABLE OF CONTENTS
`
`
`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 
`
`
`
`- i -
`
`
`
`

`

`IPR2017-00225
`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 
`
`
`
`
`
`
`- ii -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`I.
`
`Introduction
`
`I, Dr. Leonard J. Forys, declare as follows:
`
`1.
`
`I have been retained as an expert witness by Sterne, Kessler,
`
`Goldstein & Fox PLLC to provide testimony on behalf of Apple, Inc. (“Apple” or
`
`“Petitioner”) for the above-captioned inter partes review proceeding. This
`
`Declaration concerns technical subject matter relevant to the inter partes review
`
`petition (“Petition”) concerning U.S. Patent No. 8,995,433 (“the ’433 Patent”)
`
`titled “System and method for instant VoIP messaging” by Michael J. Rojas. It is
`
`my understanding that the ’433 Patent is currently assigned to Uniloc Luxembourg
`
`S.A.
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so.
`
`3.
`
`I have reviewed and am familiar with the specification, claims, and
`
`prosecution history of the ’433 Patent. I will cite to the specification using the
`
`following format: (’433 Patent, 1:1-10). This example citation points to the ’433
`
`patent specification at column 1, lines 1-10.
`
`4.
`
`I have reviewed and am familiar with the following documents and
`
`materials:
`
`
`
`
`
`
`
`
`- 1 -
`
`

`

`Exhibit No.
`
`IPR2017-00225
`U.S. Pat. No. 8,995,433
`Description
`
`1001
`
`1002
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`Rojas, U.S. Patent No. 8,995,433 (filed March 25,
`2014, issued March 31, 2015).
`
`File History for U.S. Patent No. 8,995,433.
`
`Abburi, U.S. Patent Application Publication No.
`2003/0147512 (filed February 1, 2002, published
`August 7, 2003).
`
`Väänänen, U.S. Patent No. 7,218,919 (filed August 8,
`2001, issued May 15, 2007).
`
`(filed
`Holtzberg, U.S. Patent No. 6,625,261
`December 20, 2000, issued September 23, 2003).
`
`Logan et al., U.S. Patent No. 5,732,216 (filed October
`2, 1996, issued March 24, 1998).
`
`Vuori, U.S. Patent Application Publication No.
`2002/0146097 (filed July 23, 2001, published October
`10, 2002).
`
`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).
`
`Locascio, U.S. Patent No. 6,603,757 (filed April 14,
`1999, issued August 5, 2003).
`
`Lotito et al., U.S. Patent No. 4,625,081 (filed
`November 30, 1982, issued November 25, 1986).
`
`Excerpts from American Heritage Dictionary, 4th ed.
`(2001).
`
`
`
`- 2 -
`
`

`

`Exhibit No.
`
`1016
`
`1017
`
`IPR2017-00225
`U.S. Pat. No. 8,995,433
`Description
`
`File History of U.S. Patent No. 7,535,890.
`
`Pershan, U.S. Patent No. 5,260,986 (filed April 23,
`1991, issued November 9, 1993).
`
`
`
`5.
`
`To the best of my knowledge, Exhibits 1001 to 1016 are true and
`
`accurate copies of what they purport to be. An expert in the field would reasonably
`
`rely on them to formulate opinions such as those set forth in this declaration.
`
`6.
`
`The ’433 patent describes “[m]ethods, systems and programs for
`
`instant voice messaging over a packet-switched network.” (Ex. 1001, ’433 Patent,
`
`Abstract.) I am familiar with the technology described in the ’433 patent as of its
`
`December 18, 2003 priority date.
`
`7.
`
`I have been asked to provide my technical review, analysis, insights,
`
`and opinions regarding the ’433 Patent and the references that form the basis for
`
`the grounds of rejection set forth in the Petition for Inter Partes Review of the ’433
`
`Patent.
`
`II. Qualifications and Expertise
`
`8.
`
`I have nearly 50 years of experience in the telecommunications
`
`industry working for corporations including AT&T Bell Telephone Laboratories
`
`for almost two decades and Bellcore (formerly Bell Communications Research),
`
`the research and development organization for the Bell Operating Companies (e.g.,
`
`
`
`- 3 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`Bell Atlantic, Southwestern Bell, US West, etc.), for over a decade. As detailed
`
`below, I have worked on many projects and technologies highly relevant to the
`
`subject matter of the ’433 Patent.
`
`9. My academic background in electrical engineering and computer
`
`science provides a technical foundation for work in telephone communications and
`
`packet-based communication networks. I received a Bachelor of Science Degree in
`
`Electrical Engineering from the University of Notre Dame in 1963. I received both
`
`a Science Master in Electrical Engineering and the degree of Electrical Engineer
`
`from the Massachusetts Institute of Technology in 1965. I received the degree of
`
`Doctor of Philosophy in Electrical Engineering and Computer Science from the
`
`University of California at Berkeley in 1968.
`
`10. While at Berkeley, I was an Assistant Professor of Electrical
`
`Engineering and Computer Science, teaching courses in network theory, systems
`
`theory and communications theory, performing research in communications
`
`systems and serving as faculty advisor to 20 undergraduates.
`
`11. From 1968 to 1973, I was a member of the technical staff at Bell
`
`Telephone Laboratories (known commonly as Bell Labs). I engaged in various
`
`research activities involving network engineering and performance management in
`
`telephone networks. I taught several in-house courses in performance analysis and
`
`traffic engineering in telephone networks.
`
`
`
`- 4 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`12. From 1973 to 1984, I was Technical Supervisor at Bell Telephone
`
`Laboratories, heading a group of technical experts, primarily Ph.D.’s. I was
`
`responsible for performance management/analysis and development of traffic
`
`engineering algorithms for various telecommunications networks and their
`
`components, primarily processor based voice switches, automatic call distributors,
`
`and Private Branch Exchanges (“PBXs”). As part of this effort, I successfully
`
`rescheduled the processor tasks in several of these systems to increase their
`
`capacity and improve their performance. My department did the original traffic
`
`engineering work for the Advanced Mobile Phone System, AMPS, which was the
`
`predominant mobile service in North America in the 1980s. I provided
`
`management reviews for this work. I also was responsible for all of the call center
`
`staffing algorithms for the Bell System and for the engineering of the network
`
`elements used for call centers such as the TSPS (Traffic Service Position System),
`
`Rockwell ACDs, and the #5 CrossBar ACD. ACDs are Automatic Call
`
`Distributors, special purpose switches used to provide call center functionality.
`
`13. From 1984 to 1994, I was District Manager for Bell Communications
`
`Research (“Bellcore”), heading a group of 7 to 15 technical experts, primarily
`
`Ph.D.’s. I was responsible for the specification and testing of a variety of voice
`
`network components. This work included writing sections of the requirements used
`
`by the Bell Operating Companies to buy network components in their networks. I
`
`
`
`- 5 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`also tested the compliance (to the requirements) of several voice switches made by
`
`various companies, e.g., Nortel, Lucent, Ericsson, Fujitsu, NET, and Siemens. The
`
`testing involved various billing options and their impact on switch performance.
`
`14. During this time period, I further consulted on the engineering and
`
`performance of various supplemental telephonic services such as Voice Mail
`
`systems, including those manufactured by Boston Technologies, Unisys, and
`
`Digital Sound Corporation, as well as supporting equipment such as SMDI
`
`(Simplified Message Display Interface) links. Also during this time period, I
`
`headed a group doing architectural and performance studies of Personal Cellular
`
`Service (PCS). This work was done on behalf of the Regional Bell Operating
`
`Companies, the RBOCs. I was asked to chair a session on traffic performance of
`
`PCS at an international symposium. The PCS technologies I researched included
`
`SMS capabilities. I also participated and contributed to various national and
`
`international voice and data standards organizations.
`
`15. During this period, I continued my involvement with call center
`
`technology. In particular, I was responsible for the engineering of all call centers
`
`for the Bell Operating Companies. This included analyzing specific network
`
`elements used to handle inmate telephone calls such as Nortel’s TOPS (Traffic
`
`Operator Position System) and MPP (Multi-Purpose Position) systems and
`
`AT&T’s No. 5 OSPS (Operator Services Position Station).
`
`
`
`- 6 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`16. Another of my responsibilities while at Bellcore was analyzing and
`
`providing engineering algorithms for data network components used by the Bell
`
`Operating Companies. As part of this endeavor, I was a leader in developing novel
`
`traffic engineering methods for Internet data networks and other high speed data
`
`networks such as Asynchronous Transfer Mode (ATM) and Frame Relay. This
`
`included characterizing Internet traffic and developing loading guidelines for
`
`network components including routers and switches. I also worked on some of the
`
`earliest deployed packet-based networks, some of which included voice over
`
`packet technologies.
`
`17.
`
`I was Bellcore’s prime technical leader for determining root causes of,
`
`and proposed solutions for, several Signaling System No. 7 (“SS7”) data network
`
`outages, including the famous 1990 AT&T nationwide outage, as well as the 1991
`
`Washington, D.C., Pittsburgh, and Los Angeles outages. SS7 is also the protocol
`
`used to transport SMS messages in mobile networks. I was responsible for writing
`
`new sets of requirements for SS7 networks and was involved in a large scale
`
`testing and analysis program for a wide variety of SS7 network components.
`
`18.
`
`I was named a Bellcore Fellow in 1992 – only the fifth person to
`
`receive such an award.
`
`19. From 1994 to 1995, I was a Chief Scientist at Bellcore, overseeing the
`
`technical work of 50 technical experts, many of whom had Ph.D.’s. I was involved
`
`
`
`- 7 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`in the teaching of teletraffic engineering and performance management to various
`
`bodies, including the Federal Communications Commission, which included
`
`various aspects of both voice and data networks, including voice mail systems. I
`
`served as a “trouble shooter,” responsible for identifying root causes for diverse
`
`network problems involving a variety of technologies including both high speed
`
`data networks as well as telephone networks. I analyzed the potential impact of
`
`earthquakes and other natural disasters on
`
`telecommunications network
`
`performance. The National Science Foundation sponsored me to be the sole U.S.
`
`telecommunications industry representative at the First International Joint U.S.-
`
`Japan Earthquake Symposium in 1993.
`
`20. Since 1995, I have been President of my own company, The Forys
`
`Consulting Group, Inc., providing consulting in voice and data communications
`
`services including mobile telephony. Relevant to the subject matter of this case, I
`
`analyzed the performance of AT&T’s wireless (mobile) network which provided
`
`both voice and data services to interstate transport haulers, e.g., Highway Master.
`
`This was in support of a legal case brought about by Highway Master after AT&T
`
`canceled their contract. Highway Master charged that AT&T service was
`
`substandard. I also used HP’s SS7 network monitoring capabilities to analyze
`
`Internet traffic patterns in a large metro area. As part of a team of international
`
`experts, I investigated a wide range of issues involving the introduction of a new
`
`
`
`- 8 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`line of vendor products in a foreign national network. In 1995 I experimented with
`
`some of the first commercial VoIP systems, including a 1996 version of Vocaltec’s
`
`Internet Phone.
`
`21. As a consultant to a large telephone company, I advised them on
`
`quality of service issues in providing voice over ATM (with and without IP), Voice
`
`over IP, Internet and Multiprotocol Label Switching (MPLS) networks, which are
`
`used extensively in VoIP. I further analyzed various supplier components for
`
`providing hybrid fiber coax access in cable networks. I consulted with a large
`
`company on the economic and technical problems associated with providing voice
`
`and data communications over a foreign cable network.
`
`22. During this period, I also performed extensive consulting for various
`
`data communications systems, including Internet access using satellite systems
`
`with LAN-in-the-sky technologies for airplanes. I analyzed the performance,
`
`provided traffic inputs and helped specify traffic network management/congestion
`
`controls for three satellite data communications systems capable of handling both
`
`packetized voice as well as Internet traffic.
`
`23.
`
`In the period between 1995–2001 I worked as a consultant (and was
`
`part owner) to GLADSIS. GLADSIS provided software for servers that controlled
`
`screen based landline phones (often with keyboards) using the Analog Display
`
`Service Interface (ADSI) protocol which alternated data and voice. During this
`
`
`
`- 9 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`time, GLADSIS developed software for providing SMS receipt and delivery to
`
`British Telecom customers using ADSI capable telephones. I was involved in
`
`developing various marketing and billing strategies for the use of these types of
`
`phones, particularly for the application in the UK. In addition, I researched the use
`
`of SMS to control Bluetooth capable devices for a possible patent application. I
`
`have been involved in a number of consulting tasks involving VoIP networks using
`
`both H.323 and SIP signaling technologies. These included several patent cases,
`
`including cases brought against major VoIP carriers such as Level 3, Comcast,
`
`Time Warner Cable, Verizon FIOS, and Sprint. I also have been involved in
`
`various consulting tasks involving alternative billing strategies such as pre-paid
`
`calling cards provided by Alternative Service Providers.
`
`24.
`
`In the early 2003 time frame, I led a small group that successfully
`
`developed a demonstration version of a Carrier Grade Notification System (CGNS)
`
`for a large client. CGNS enabled entities such as communities (and small
`
`businesses) to develop group lists, record voice messages for these groups and send
`
`them en masse using the PSTN. The messages could also be stored and delivered at
`
`prescribed times. For members having voice mail service, the messages could be
`
`stored on traditional voice mail servers in the event the message could not be
`
`delivered directly to the member. The messages could additionally be text-to-
`
`speech messages wherein text could be inputted in lieu of speech. This demo was
`
`
`
`- 10 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`developed using off-the-shelf hardware components e.g. line cards. I researched
`
`and developed a patent proposal for using SMS networks to remotely operate
`
`appliances in the home and/or business. This would also include printing of
`
`specified text on a remote printer.
`
`25. My Curriculum Vitae is provided as Exhibit 1004, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert opinion. My work on this case is being billed at a rate of $400
`
`per hour, with reimbursement for actual expenses. My compensation is not
`
`contingent upon the outcome of this inter partes review.
`
`III. Legal Understanding
`
`A. My Understanding of Claim Construction
`26.
`I understand that, during an inter partes review proceeding, claims are
`
`to be given their broadest reasonable construction in light of the specification as
`
`would be read by a person of ordinary skill in the relevant art at the time the
`
`application was filed. I understand that claim terms are given their ordinary and
`
`customary meaning as would be understood by a person of ordinary skill in the
`
`relevant art in the context of the entire disclosure. A claim term, however, will not
`
`receive its ordinary meaning if the patentee acted as his own lexicographer and
`
`clearly set forth a definition of the claim term in the specification. In this case, the
`
`claim term will receive the definition set forth in the patent.
`
`
`
`- 11 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`B. A Person of Ordinary Skill in the Art
`27.
`I understand that a person of ordinary skill in the relevant art (also
`
`referred to herein as “POSITA”) is presumed to be aware of all pertinent art, thinks
`
`along conventional wisdom in the art, and is a person of ordinary creativity—not
`
`an automaton.
`
`28.
`
`I have been asked to consider the level of ordinary skill in the field
`
`that someone would have had at the time the claimed invention was made. In
`
`deciding the level of ordinary skill, I considered the following:
`
` the levels of education and experience of persons working in the
`
`field;
`
` the types of problems encountered in the field; and
`
` the sophistication of the technology.
`
`29. My opinion below explains how a person of ordinary skill in the art
`
`would have understood the technology described in the references I have identified
`
`herein around the December 2003 timeframe. I have been advised that the earliest
`
`possible effective filing date of the ’433 patent is December 18, 2003.
`
`30. Based on the disclosure of the ’433 patent, one of ordinary skill in the
`
`art would have a B.S. degree in Electrical Engineering, Computer Science, or an
`
`equivalent field as well as at least 3–5 years of academic or industry experience in
`
`
`
`- 12 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`communications systems, particularly in messaging systems, data networks
`
`including VoIP and mobile telephony, or comparable industry experience.
`
`31.
`
`I am well qualified to determine the level of ordinary skill in the art.
`
`First, I am personally very familiar with the technology of the ’433 Patent in the
`
`December 2003 timeframe.
`
`32. By 2003, I had completed my formal education and had been working
`
`in the relevant field for more than 35 years. I have supervised, recruited, advised,
`
`and taught individuals at all levels of training in the relevant field. And as a
`
`technical consultant, I have worked with individuals in industry at all levels of
`
`training in the relevant field.
`
`33.
`
`I was a person of at least ordinary skill in the art at this timeframe. So
`
`regardless if I do not explicitly state that my statements below are based at this
`
`timeframe, all of my statements are to be understood as a POSITA would have
`
`understood something as of the alleged effective filing date of the ’433 patent.
`
`34. Regardless if I use “I” or a “POSITA” during my technical analysis
`
`below, all of my statements and opinions are always to be understood to be based
`
`on how a POSITA would have understood or read a document.
`
`C. My Understanding of Obviousness
`35.
`I am not a lawyer and will not provide any legal opinions. Although I
`
`am not a lawyer, I have been advised certain legal standards are to be applied by
`
`
`
`- 13 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`technical experts in forming opinions regarding meaning and validity of patent
`
`claims.
`
`36.
`
`I understand that a patent claim is invalid if the claimed invention
`
`would have been obvious to a person of ordinary skill in the art at the time the
`
`application was filed. I understand that this means that even if all of the
`
`requirements of the claim cannot be found in a single prior art reference that would
`
`anticipate the claim, the claim can still be invalid.
`
`37. To obtain a patent, a claimed invention must have, as of its priority
`
`date, been nonobvious in view of the prior art in the field. I understand that a
`
`patent claim is obvious when the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person of ordinary skill in the
`
`art.
`
`38.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a claim obvious, it is necessary to (1) identify the particular references that,
`
`singly or in combination, make the claim obvious; (2) specifically identify which
`
`elements of the claim appear in each of the asserted references; and (3) explain
`
`how the prior art references could have been combined to teach or suggest the
`
`limitations in the claim.
`
`
`
`- 14 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`I also understand that prior art references can be combined under
`
`39.
`
`several different circumstances. For example, it is my understanding that one such
`
`circumstance is when a proposed combination of prior art references results in a
`
`system that represents a predictable variation, which is achieved using prior art
`
`elements according to their established functions.
`
`40.
`
`I understand that certain objective indicia (secondary indicia) can be
`
`important evidence in determining whether a claim is obvious or nonobvious. Such
`
`indicia include: commercial success of products covered by the patent claims; a
`
`long-felt need for the invention; failed attempts by others to make the invention;
`
`copying of the invention by others in the field; unexpected results achieved by the
`
`invention as compared to the closest prior art; praise of the invention by the
`
`infringer or others in the field; the taking of licenses under the patent by others;
`
`expressions of surprise by experts and those skilled in the art at the making of the
`
`invention; and the patentee proceeded contrary to the accepted wisdom of the prior
`
`art. At this point, I am not aware of any secondary indicia of non-obviousness. I
`
`reserve the right to supplement or amend my opinions to the extent that any
`
`secondary indicia are brought to my attention.
`
`41.
`
`I understand that so-called secondary indicia may be relevant to the
`
`determination of whether a claim is obvious should Patent Owner Uniloc allege
`
`such evidence. As discussed above, such objective considerations can include
`
`
`
`- 15 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`evidence of commercial success caused by an invention, evidence of a long-felt
`
`need that was solved by an invention, evidence that others copied an invention, or
`
`evidence that an invention achieved a surprising result. I understand that such
`
`evidence must have a nexus, or causal relationship to the elements of a claim, in
`
`order to be relevant to the obviousness or non-obviousness of the claim.
`
`42.
`
`It is my opinion that secondary considerations do not support the non-
`
`obviousness of the challenged claims of the ’433 patent. I have seen no evidence
`
`that supports any secondary considerations tending to show non-obviousness,
`
`including commercial success, long-felt need, failure of others, skepticism, praise,
`
`teaching away, recognition of a problem, or copying by competitors.
`
`43.
`
`I do not recall hearing about any innovation in the field of
`
`communications systems, particularly in messaging systems, data networks
`
`including VoIP and mobile telephony by Patent Owner or any previous owners of
`
`this patent. I am not aware of any products in the field of communications systems,
`
`particularly in messaging systems, data networks including VoIP and mobile
`
`telephony by Patent Owner, any customers of Patent Owner, or anything
`
`suggesting commercial success of any such products developed by Patent Owner.
`
`In addition to my personal knowledge of messaging systems, I have done a general
`
`search of my own resources and resources available to me and have likewise been
`
`unable to identify any commercial success of products in the field of in
`
`
`
`- 16 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`communications systems, particularly in messaging systems, data networks
`
`including VoIP and mobile telephony developed by Patent Owner.
`
`44.
`
`I am also unaware of any long-felt need at the time of the alleged
`
`invention for an invention utilizing the elements recited in the challenged claims of
`
`the ’433 patent. Instant VoIP messaging systems and methods were well-known to
`
`one having ordinary skill in the art, including but not limited to the short voice
`
`message (SVM) service method, apparatus and system described in Vuori, which
`
`pre-dates the priority date of the ’433 patent.
`
`45.
`
`I am also not aware of any failure of others to design or implement an
`
`invention similar to the ones recited in the challenged claims of the ’433 patent. In
`
`fact, I believe there are numerous similar instant VoIP messaging systems or
`
`methods, including but not limited to the ones described in Abburi, Väänänen, and
`
`Vuori, which pre-date the ’433 patent’s priority date.
`
`46.
`
`I have reviewed numerous prior art references from around the time of
`
`the alleged invention and am not aware of any skepticism, praise, or teaching away
`
`by others of the alleged invention recited in the ’433 patent. In fact, the opposite is
`
`true: prior art references explain the ready combination of the cited prior art
`
`systems. I am likewise unaware of any recognition afforded to any instant VoIP
`
`messaging systems or methods developed by Patent Owner.
`
`
`
`- 17 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`I am not aware of any praise or acclaim for the patents, e.g., no
`
`47.
`
`reference in academic journals, discussion at conferences, etc.
`
`48.
`
`I do not recall hearing of the ’433 patent before being engaged as an
`
`expert, notwithstanding my expertise in the field and awareness of the relevant
`
`technology.
`
`49.
`
`I am not aware of any competitors of instant VoIP messaging systems
`
`or methods developed by Patent Owner and am not aware of any copying of
`
`designs or products of Patent Owner.
`
`50. Moreover, for the reasons I set out below, in my opinion, the prior art
`
`references demonstrate a strong case of obviousness against the ’433 patent.
`
`51. Should Patent Owner assert that secondary considerations support a
`
`finding of non-obviousness, I reserve the right to submit a Declaration addressing
`
`those new assertions.
`
`52. My analysis below is always from the perspective of a POSITA unless
`
`otherwise noted, even if that is not explicitly stated. My analysis of the prior art is
`
`always made as of the time of the alleged invention was made from the perspective
`
`of a POSITA.
`
`IV. Background of the Technologies Disclosed in the ’433 Patent
`
`53. The ’433 Patent applies a known instant messaging method over a
`
`known packet-switched network. For example, the ’433 Patent acknowledges that
`
`
`
`- 18 -
`
`

`

`IPR2017-00225
`U.S. Pat. No. 8,995,433
`VoIP packet-switch