UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`Case IPR2017-00222
`Patent 8,243,723
`
`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. No. 8,243,723
`
`

`

`IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`TABLE OF CONTENTS
`
`
`Introduction ......................................................................................................... 1
`I.
`II. Qualifications and Expertise ............................................................................... 6
`I. Legal Understanding .........................................................................................13
`A. My Understanding of Claim Construction ....................................................13
`B. A Person of Ordinary Skill in the Art ............................................................14
`C. My Understanding of Obviousness ...............................................................16
`III. Background of the Technologies Disclosed in the ’723 Patent ....................21
`A. Technical Overview of Instant Voice Messaging Technology .....................21
`IV. Overview of the ’723 Patent ..........................................................................32
`A. Claims 1–8 .....................................................................................................35
`V. Overview of the Prior Art .................................................................................35
`A. Vuori ..............................................................................................................35
`B. Malik ..............................................................................................................39
`C. Lerner .............................................................................................................41
`D. Stubbs.............................................................................................................44
`E. Abburi ............................................................................................................46
`VI. Claim Construction ........................................................................................47
`A. “intercom mode” ............................................................................................48
`VII. Vuori Renders Claim 1 Obvious. ..................................................................48
`A. Claim 1 ...........................................................................................................48
`VIII. The Combination of Vuori and Malik Renders Claims 2-7 Obvious ...........61
`A. Claim 2 ...........................................................................................................62
`B. Claim 3 ...........................................................................................................65
`C. Claim 4 ...........................................................................................................70
`D. Claim 5 ...........................................................................................................74
`E. Claim 6 ...........................................................................................................76
`F. Claim 7 ...........................................................................................................78
`IX. The Combination of Vuori, Malik, and Lerner Renders Claim 8 Obvious ...82
`A. Claim 8 ...........................................................................................................83
`
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`U.S. Pat. No. 8,243,723
`X. The Combination of Stubbs and Abburi Renders Claims 1-7 Obvious............92
`A. Claim 1 ...........................................................................................................93
`B. Claim 2 .........................................................................................................108
`C. Claim 3 .........................................................................................................111
`D. Claim 4 .........................................................................................................115
`E. Claim 5 .........................................................................................................119
`F. Claim 6 .........................................................................................................122
`G. Claim 7 .........................................................................................................127
`XI. The Combination of Stubbs, Abburi, and Lerner Renders Claims 8 Obvious.
`
`131
`A. Claim 8 .........................................................................................................131
`XII. Conclusion ...................................................................................................142
`
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`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. 8,243,723 (“the ’723 Patent”)
`
`titled “System and method for instant VoIP messaging” by Michael J. Rojas. It is
`
`my understanding that ’723 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 would 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 ’723 Patent. I will cite to the specification using the
`
`following format: (’723 Patent, 1:1-10). This example citation points to the ’723
`
`patent specification at column 1, lines 1-10.
`
`4.
`
`I have reviewed and am familiar with the following documents and
`
`materials:
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Rojas, U.S. Patent No. 8,243,723 (earliest priority date December 18,
`2003; filed March 4, 2009; issued August 14, 2012).
`
`File History for U.S. Patent No. 8,243,723.
`
`Vuori, U.S. Patent Application Publication No. 2002/0146097 (filed
`July 23, 2001, published October 10, 2002).
`
`SMSS, Universal Mobile Telecommunications System (UTMS);
`Technical realization of the Short Message Service (SMS) (3G TS
`23.040 version 3.5.0 Release 1999) (published on August 16, 2000).
`
`Holtzberg, U.S. Patent No. 6,625,261 (filed December 20, 2000,
`issued September 23, 2003).
`
`Väänänen, U.S. Patent No. 7,218,919 (filed August 8, 2001, issued
`May 15, 2007).
`
`Dahod et al., U.S. Patent Application Publication No. 2004/0022208
`(filed on August 1, 2002, published February 5, 2004).
`
`Hogan et al., U.S. Patent No. 5,619,554 (filed June 8, 1994, issued
`April 8, 1997).
`
`Logan et al., U.S. Patent No. 5,732,216 (filed October 2, 1996, issued
`March 24, 1998).
`
`Peersman et al., The Global System for Mobile Communications
`Short Message Service, IEEE Personal Communications (June 2000).
`
`SMS Forum, SMPP v3.4 Protocol Implementation guide for GSM /
`UMTS, Version 1.0 (May 30, 2002).
`
`Clarke et al., Experiments with packet switching of voice traffic, IEE
`Proceedings G - Electronic Circuits and Systems, Vol.130, Pt. G, No.
`4, pp. 105-13 (August 1983).
`
`
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`Exhibit
`
`Description
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`Oouchi et al., Study on Appropriate Voice Data Length of IP Packets
`for VoIP Network Adjustment, Proceedings of the IEEE Global
`Telecommunications Conference (GLOBECOM) 2002, V. 2, Taipei,
`Taiwan, 2002, pp. 1618–1622.
`
`Lotito et al., U.S. Patent No. 4,625,081 (filed November 30, 1982,
`issued November 25, 1986).
`
`Pershan, U.S. Patent No. 5,260,986 (filed April 23, 1991, issued
`November 9, 1993).
`
`Old Version of AOL Instant Messenger 2.1 Download, retrieved
`from http://www.oldapps.com/aim.php?old_aim=4#screenshots.
`
`Malik, Patent Publication No. 2003/0219104 (filed August 19, 2002,
`published November 27, 2003).
`
`Staack et al., WO Patent Publication No. 02/07396 (filed July 13,
`2000, published January 24, 2002).
`
`Lerner et al., U.S. Patent No. 6,192,395 (filed December 17, 1999,
`issued February 20, 2001).
`Stubbs, WO Patent Publication No. 99/63773 (filed June 3, 1999,
`published December 9, 1999).
`Abburi, U.S. Patent Application Publication No. 2003/0147512 (filed
`on February 1, 2002, published August 7, 2003).
`File History for U.S. Patent No. 7,535,890.
`
`Day et al., A Model for Presence and Instant Messaging, Network
`Working Group, RFC 2778, pp. 1-17 (February 2000).
`
`International Telecommunication Union, General Aspects of Digital
`Transmission Systems, Terminal Equipments, Pulse Code
`Modulation (PCM) of Voice Frequencies, ITU-T Recommendation
`G.711., pp. 1-10 (ITU 1993).
`
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`Description
`
`Gayomali, C., “The text message turns 20: A brief history of SMS,”
`The Week, December 3, 2012, retrieved from
`http://www.theweek.com/articles/469869/text-message-turns-20-
`brief-history-sms.
`
`Exhibit
`
`1027
`
`
`
`+++
`
`U.S. Patent Application Publication No. 2002/0146097
`to Vuori (“Vuori”), titled “Short voice message (SVM)
`service method, apparatus and system.” I understand that
`Vuori is prior art to the ’723 Patent and has been
`provided as Exhibit 1005.
`
`U.S. Patent Publication No. 2003/0219104 to Malik
`(“Malik”), titled “Voice message delivery over instant
`messaging.” I understand that Malik is prior art to the
`’723 Patent and has been provided as Exhibit 1019.
`
`U.S. Patent No. 6,192,395 to Lerner et al. (“Lerner”),
`titled “System and method for visually identifying
`speaking participants in a multi-participant networked
`event.” I understand that Lerner is prior art to the ’723
`Patent and has been provided as Exhibit 1007.
`
`WO Patent Publication No. 1999/063773 to Stubbs
`(“Stubbs”), titled “Dynamic allocation of radio resources
`in a packet switched communications-system.”
`I
`
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`understand that Stubbs is prior art to the ’723 Patent and
`has been provided as Exhibit 1008.
`
`U.S. Patent Application Publication No. 2003/0147512
`
`to Abburi (“Abburi”), titled “Audio messaging system
`
`and method.” I understand that Abburi is prior art to the
`
`’723 Patent and has been provided as Exhibit 1009.
`
`+++
`
`5.
`
`To the best of my knowledge, Exhibits 1001-10 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 ’723 patent describes “an instant voice messaging system (and
`
`method) for delivering instant messages over a packet-switched network.” (Ex.
`
`1001, ’723 Patent, Abstract.) I am familiar with the technology described in the
`
`’723 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 ’723 Patent and the references that form the basis for
`
`the grounds of rejection set forth in the Petition for Inter Partes Review of the ’723
`
`Patent.
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
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`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.,
`
`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 ’723 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.
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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.
`
`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.
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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
`
`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.
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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).
`
`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
`
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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
`
`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
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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
`
`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 the
`
`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
`
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`U.S. Pat. No. 8,243,723
`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 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
`
`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.
`
`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.
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`In the early 2003 time frame, I led a small group that successfully
`
`25.
`
`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
`
`developed using off-the-shelf hardware components e.g. line cards.
`
`26. My Curriculum Vitae is provided as Exhibit 1004, which contains
`
`further details on my education, experience, publications, and other qualifications
`
`to render an expert option. 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.
`
`I.
`
`Legal Understanding
`A. My Understanding of Claim Construction
`I understand that, during an inter partes review proceeding, claims are
`27.
`
`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
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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.
`
`B. A Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the relevant art (also
`28.
`
`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.
`
`29.
`
`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.
`
`30. 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
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`herein around the December 2003 timeframe. I have been advised that the earliest
`
`possible effective filing date of the ’723 patent is December 18, 2003.
`
`31. Based on the disclosure of the ’723 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
`
`communications systems, particularly in messaging systems, data networks
`
`including VoIP and mobile telephony, or comparable industry experience.
`
`32.
`
`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 ’723 Patent in the
`
`December 2003 timeframe.
`
`33. 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.
`
`34.
`
`I was a person of at least ordinary skill in the art at this timeframe. So
`
`regardless if I do not explicitly state my statements below are based on 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 ’723 patent.
`
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`35. 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
`I am not a lawyer and will not provide any legal opinions. Although I
`36.
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`am not a lawyer, I have been advised that certain legal standards are to be applied
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`by technical experts in forming opinions regarding the meaning and validity of
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`patent claims.
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`37.
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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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`38. To obtain a patent, a claimed invention must have, as of its priority
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`date, been non-obvious 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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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`I understand that to prove that prior art, or a combination of prior art,
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`39.
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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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`40.
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`I also understand that prior art references can be combined under
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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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`41.
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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 non-obvious.
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`Such indicia include: commercial success of products covered by the patent claims;
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`a 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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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`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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`42.
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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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`43.
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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 ’723 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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`44.
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`I do not recall hearing about any innovation 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 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 in communications
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`IPR2017-00222
`U.S. Pat. No. 8,243,723
`systems, particularly in messaging systems, data networks including VoIP and
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`mobile 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 semiconductors, 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
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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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`45.
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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 ’723 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, whi