UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01799
`United States Patent No. 8,199,747
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1799
`Uniloc's Exhibit 2001
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01799
`United States Patent No. 8,199,747
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1799
`Uniloc's Exhibit 2001
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...................................................................................... 1
`
`II. MY BACKGROUND AND QUALIFICATIONS ...................................... 3
`
`III.
`
`LEGAL STANDARDS USED IN MY ANALYSIS ................................... 6
`
`A. I am Familiar with the Legal Concept of Obviousness. .......................... 6
`
`B. Priority Date of the ‘747 Patent .............................................................. 8
`
`the Technical Art
`C. The Person Having Ordinary Skill in
`(PHOSITA)............................................................................................ 8
`
`D. Broadest Reasonable Interpretation (“BRI”) .......................................... 9
`
`THE TECHNOLOGY CLAIMED IN CLAIMS 1-3, 12, AND 13 OF THE
`IV.
`’747 PATENT....................................................................................................... 9
`
`V.
`
`CLAIM CONSTRUCTION FOR THE TERM “NODE” .......................... 12
`
`VI. GRIFFIN .................................................................................................. 13
`
`VII. ZYDNEY.................................................................................................. 16
`
`VIII. ANALYSIS FOR CLAIMS 1-3, 12, AND 13 ........................................... 18
`
`A. Claims 1 and 13 ................................................................................... 18
`
`B. Claim 2 and 12 ..................................................................................... 21
`
`C. Claim 3 ................................................................................................ 26
`
`IX. A PHOSITA WOULD NOT COMBINE GRIFFIN WITH ZYDNEY AS
`PETITIONER SUGGESTS ................................................................................ 27
`
`X.
`
`CONCLUSION ........................................................................................ 33
`
`i
`
`
`
`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is William Charles Easttom II (“Chuck Easttom”).
`
`Uniloc Luxembourg S.A. (“Uniloc” or the “Patent Owner”) retained me to
`
`provide my expert opinions regarding United States Patent No. 8,199,747
`
`(“the ’747 Patent”).
`
`2.
`
`From 2003 to 2013, I taught professional development courses
`
`to IT professionals in programming (C, Java, C++, and C#), web development
`
`(HTML, JavaScript, CSS, and .net), networking, and network security at
`
`Collin College, Plano, TX. I continue to teach courses for Collin College as
`
`an outside vendor. From 2000 to 2003, I was Department Chair for Computer
`
`Information Systems at Remington College, in Garland, TX. I have been a
`
`software engineer at Alegis Corporation Systems Group and a programmer at
`
`Boeing Aerospace Operations.
`
`3.
`
`The Patent Owner asked me to study Claims 1-3, 12, and 13 (the
`
`“challenged claims”) of the ‘747 Patent (“Ex. 1001”) to determine whether a
`
`person having ordinary skill in the technical art most pertinent to the art of
`
`Claims 1-3, 12, and 13 at the priority date for the ‘747 Patent (hereafter a
`
`“PHOSITA”) would have considered those claim obvious in light of the
`
`asserted references considered as a whole.
`
`Exhibit 2001, page 1
`
`
`
`4.
`
`I reviewed the ‘747 Patent, its prosecution file wrapper, the state
`
`of the art at the time the application was filed, the references asserted by
`
`Samsung, Samsung’s Petition IPR2017-1799 (“Petition”), the Declaration of
`
`Dr. Haas (Ex. 1002) in support of the Petition, the references relied upon in
`
`the Petition (Griffin and Zydney), and the Declaration of Dr. Val DiEuliis from
`
`IPR2017-01257 in support of the Patent Owner. IPR2017-01257 also
`
`involved a challenge to the ‘747 Patent based on Zydney. I also determined
`
`the scope and content of the prior art, ascertained the differences between
`
`Claims 1-3, 12, and 13 of the ‘747 Patent and the prior art, and determined the
`
`level of ordinary skill in the art most pertinent to the claimed technology. All
`
`the opinions I express here are my own.
`
`5.
`
`Based on the above, and my familiarity with those having
`
`ordinary skill in the art at the time the application was filed, and my decades
`
`of experience in the field of computer science including communications
`
`systems, I concluded that none of the challenged claims would have been
`
`obvious in light of the arguments and references relied upon in the Petition.
`
`6.
`
`The Patent Owner compensates me at my standard consulting
`
`rate of $300 per hour. Patent Owner also reimburses my reasonable expenses
`
`necessary to this work. I have no financial interest in Patent Owner, and my
`
`Exhibit 2001, page 2
`
`
`
`compensation is not contingent upon the results of my study or the substance
`
`of my opinions.
`
`II. MY BACKGROUND AND QUALIFICATIONS
`
`7.
`
`I have worked in the computer industry for over 25 years. During
`
`that time, I have had extensive experience with network communications
`
`systems. I hold 42 industry certifications, which include certifications in
`
`network communications. I have authored 24 computer science books, and
`
`several of those deal with network communications topics. I am named
`
`inventor on thirteen United States patents:
`
`✓ United States Patent No. 9,755,887, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sept. 5,
`
`2017, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 9,754,108, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Sept. 5, 2017, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,753,957, entitled “System and
`
`Method for Document Tracking”, issued Sept. 5, 2017, assigned
`
`to Open Invention Network LLC.
`
`Exhibit 2001, page 3
`
`
`
`✓ United States Patent No. 9,686,227, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Jun. 20,
`
`2017, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 9,619,656, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Apr. 11, 2017, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,405,907, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 2, 2016, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,313,167, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Apr. 12,
`
`2016, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,984,639, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Mar. 17, 2015, assigned to Open Invention
`
`Network LLC.
`
`Exhibit 2001, page 4
`
`
`
`✓ United States Patent No. 8,825,845, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sept. 2,
`
`2014, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,825,810, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Sept. 2,
`
`2014, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,819,827, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 26, 2014, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 8,713,067, entitled “Stable File
`
`System”, issued Apr. 29, 2014, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 8,527,779, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Sept. 3, 2013, assigned to Open Invention
`
`Network LLC.
`
`8.
`
`I am also a member of the Association of Computing Machinery
`
`(ACM) and the Institute of Electrical and Electronics Engineers (IEEE). I am
`
`also a member of the ACM Distinguished Speakers program and on the
`
`Exhibit 2001, page 5
`
`
`
`advisory board for the cybersecurity program at Embry Riddle University. I
`
`attach my curriculum vitae hereto as Appendix A, which includes a more
`
`detailed description of my professional qualifications, a list of publications,
`
`teaching, and professional activities.
`
`III. LEGAL STANDARDS USED IN MY ANALYSIS
`
`9.
`
`I am not an attorney. I have, however, worked closely with
`
`counsel, including patent counsel, in over 40 litigations where I have become
`
`informed of and relied on certain recurring legal principles related to the
`
`validity of patents. I rely on counsel for the law and rely on my learning in
`
`reaching the opinions I set forth in this Declaration.
`
`A.
`
`I am Familiar with the Legal Concept of Obviousness.
`
`10.
`
`I understand that a claim in a patent can be invalidated for being
`
`“obvious” if the differences between the subject matter of the claim and the
`
`asserted prior art are such that that the subject matter as a whole would have
`
`been obvious to a person having ordinary skill in the technical art
`
`(“PHOSITA”) at the time the claimed inventions were conceived (i.e., the
`
`2003 priority date for the ’747 Patent). I understand that every determination
`
`on obviousness requires a review of the scope and content of the asserted
`
`references, analysis of the differences between those references and the patent
`
`Exhibit 2001, page 6
`
`
`
`claims at issue, and the level of ordinary skill in the pertinent art at the time
`
`the inventions were conceived.
`
`11.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited art, the claim cannot be considered obvious.
`
`12.
`
`I understand that it is improper to combine references where the
`
`references teach away from the proposed combination. I understand also that
`
`the following factors are among those relevant in considering whether a
`
`reference teaches away:
`
`• whether a PHOSITA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
`• whether the reference criticizes, discredits, or otherwise discourages
`
`investigation into the claimed invention;
`
`• whether a proposed combination would produce an inoperative
`
`result;
`
`• whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose; and
`
`• whether a proposed combination would change the basic principles
`
`under which a reference was designed to operate.
`
`13.
`
`I understand that the level of ordinary skill in the art is important
`
`in every obviousness analysis because that is the prism or lens through which
`
`Exhibit 2001, page 7
`
`
`
`the USPTO Board views the patent claims. Evaluating the claimed invention
`
`through the eyes of the PHOSITA prevents factfinders from using either their
`
`own insight or hindsight to gauge obviousness or nonobviousness. The
`
`factfinder must view the claims from the standpoint of a PHOSITA at the time
`
`just prior to the invention being made, rather than looking back from the
`
`claims as issued and using that claim as a blueprint to the claimed invention.
`
`A PHOSITA working in the art at the time of the invention cannot be assumed
`
`to be able to predict future developments in the art that in hindsight might
`
`appear to have been predictable.
`
`B.
`
`Priority Date of the ‘747 Patent
`
`14. The ’747 Patent is titled “SYSTEM AND METHOD FOR
`
`INSTANT VOIP MESSAGING.” The ’747 Patent issued June 12, 2012 from
`
`United States Patent Application No. 12/398,076, which is a Continuation of
`
`Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
`
`For purposes of this declaration, I have assumed the priority date for the ʼ747
`
`Patent is Dec. 18, 2003. EX1001 (cover page).
`
`C. The Person Having Ordinary Skill in the Technical Art
`(PHOSITA)
`
`15.
`
`I understand that a PHOSITA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the time of invention. I
`
`understand that factors that may be considered in determining the level of
`
`Exhibit 2001, page 8
`
`
`
`ordinary skill in the art may include: (a) the type of problems encountered in
`
`the art; (b) prior solutions to those problems; (c) the rapidity with which
`
`innovations are made in the field at the time; (d) the sophistication of the
`
`technology; and (e) the education and skill level of workers active in the field
`
`at the time of the invention.
`
`16. The Patent Owner asked me to provide my opinion as to the
`
`qualifications of a PHOSITA to which Claims 1-3, 12, and 13 of the ‘747
`
`Patent pertained as of 2003. In my opinion, a PHOSITA would be someone
`
`with a baccalaureate degree related to computer technology and 2 years of
`
`experience with network communications technology, or 4 years of
`
`experience without a baccalaureate degree.
`
`D. Broadest Reasonable Interpretation (“BRI”)
`
`17.
`
`I understand that the terms in Claims 1-3, 12, and 13 of the ’747
`
`Patent are to be given their broadest reasonable interpretation (“BRI”) in light
`
`of the specification of the ‘747 Patent as understood by a PHOSITA at the
`
`priority date of the ‘747 Patent. I used this understanding throughout my
`
`analysis.
`
`IV. THE TECHNOLOGY CLAIMED IN CLAIMS 1-3, 12, AND 13
`OF THE ’747 PATENT
`
`18. The ʼ747 Patent recognizes that conventional circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`Exhibit 2001, page 9
`
`
`
`disadvantages that limited development of other forms of communication over
`
`such networks. The ʼ747 Patent explains that “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the
`
`telephone terminal to another device 20 over the [public switched telephone
`
`network or] PSTN, including another telephone terminal. During the
`
`telephone call, voice communication takes place over that communication
`
`path.” Ex. 1001, 1:25-30.
`
`19. The ʼ747 Patent distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e.,
`
`“VoIP”), also known as IP telephony or Internet telephony.” Id. at 1:31-33.
`
`Because legacy circuit-switched devices were unable to communicate directly
`
`over packet-switched networks, media gateways were designed to receive
`
`circuit-switched signals and to packetize them for transmittal over packet-
`
`switched networks, and vice versa. Id. at 1:62-2:17. The conversion effected
`
`by media gateways highlights the fact that packetized data carried over
`
`packet-switched networks are different from and are incompatible with an
`
`audio signal carried over a dedicated packet-switched circuit. Id. at 1:25-30.
`
`20. The ’747 Patent provides historical context by describing how,
`
`notwithstanding the advent of instant text messages, at the time of the claimed
`
`Exhibit 2001, page 10
`
`
`
`invention there was no similarly convenient analog to leaving an instant voice
`
`message (IVM) over a packet-switched network. Id. at 2:18-49. Rather,
`
`“conventionally, leaving a voice message involves dialing the recipient’s
`
`telephone number (often without knowing whether the recipient will answer),
`
`waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and
`
`recording the message for later pickup by the recipient. In that message, the
`
`user must typically identify himself or herself in order for the recipient to
`
`return the call.” Id. at 2:12-29.
`
`21. The ʼ747 Patent also describes a user-accessible client 208 that
`
`is specially configured for IVM communication and for direct communication
`
`over a packet-switched network (e.g., through an Ethernet card). Id. at 12:5-
`
`8. Specifically, the ʼ747 Patent teaches that certain clients (208) are specially
`
`configured to “listen[] to the input audio device 212,” “record[] the user’s
`
`speech into a digitized audio file 210 (i.e., [IVM]) stored on the IVM client
`
`208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
`
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the
`
`local IVM server 202.” Id. at 8:4-18.
`
`Exhibit 2001, page 11
`
`
`
`V. CLAIM CONSTRUCTION FOR THE TERM “NODE”
`
`22. The Patent Owner asked me to provide my opinion regarding the
`
`proper construction of the term “node” as used in Claim 2 as the term would
`
`have been understood by a PHOSITA using the BRI at the time of the priority
`
`date of the ’747 Patent.
`
`23.
`
`In computer communications networks, a “node” is a term with
`
`a well-known plain and ordinary meaning. Network engineers refer to a
`
`“node” as a point of contact (that is, computer, a computer system, or another
`
`device) that is connected to and capable of communicating on the network.
`
`24.
`
`In Claim 2, a node is a device within a packet-switched network,
`
`has a connectivity status of available or unavailable, and can be selected as a
`
`recipient of an IVM. Because the connectivity status of a node is available or
`
`unavailable, a node is either available for communications or not available for
`
`communications. In my opinion, based on the claim language, and the
`
`specification of the ’747 Patent, and its prosecution history, a node is a device,
`
`such as a computer, laptop, or other device.
`
`25. A PHOSITA would not understand the term “node” to
`
`encompass a person or purely software, because hardware (either wired or
`
`wireless) would be needed to connect to the packet-switched network.
`
`Exhibit 2001, page 12
`
`
`
`26. The 1992 edition of the American Heritage Dictionary of the
`
`English Language defines “node” in the computer network context as “[a]
`
`terminal in a computer network,” which is consistent with my opinion
`
`concerning “node” as a known term of art and referring to a device rather than
`
`a person or purely software. Ex. 2003 at 3.
`
`VI. GRIFFIN
`
`27. Griffin is a patent directed to user interfaces. Griffin is not as
`
`Petitioner asserts “a system for exchanging speech (i.e., voice) chat messages
`
`in real time between wireless mobile terminals….”. Pet. p. 10. Rather, Griffin
`
`is a user interface patent for “displaying and interacting with speech and text
`
`group chat threads.” Griffin, 1:62–65.
`
`28.
`
`In my opinion, a PHOSITA would not understand Griffin as
`
`teaching real time communication of speech. Petitioner argues that Griffin
`
`supports transmission of a voice message in real time (Pet. p. 19), but neither
`
`Petitioner nor Griffin describe communication of speech in real time. Real-
`
`time communication requires both the capability for transmission in real time
`
`as well as the capability for receipt in real time. Petitioner does not account
`
`for when the recipient using the Griffin system actually receives messages. To
`
`the contrary, as I explain below, the speech Petitioner argues is transmitted in
`
`real time is quite likely not received in real time even when the target user is
`
`Exhibit 2001, page 13
`
`
`
`already using their device, because a specific chat history window required
`
`for speech message receipt is not being displayed at the device (even in the
`
`unlikely event that the chat history window was being displayed, there are still
`
`several other reasons why a PHOSITA would not combine Griffin with
`
`Zydney). Petitioner does not show
`
`that Griffin supports real-time
`
`communication of speech.
`
`29. Griffin mentions “real-time” only in the general Technical Field:
`
`“a novel technique of managing the display of a plurality of real-time speech
`
`and text conversations (e.g., chat threads) on limited display areas.” Griffin,
`
`1:9–11.
`
`30.
`
`In my opinion, Griffin contradicts Petitioner’s argument that
`
`Griffin discloses an “instant voice message.” Griffin teaches a system that has
`
`no knowledge of, or interest in, and no way to know whether a recipient is
`
`positioned to hear a message. Griffin is interested only in whether a terminal
`
`is configured to be able to receive a message at some point in the future.
`
`31. Petitioner relies on the feature in Griffin of “presence status” to
`
`argue that Griffin “includes terminals 100 that are presented with information
`
`regarding the availability of other terminals 100 for messaging and facilitates
`
`the immediate transmission of speech chat messages between available
`
`terminals 100 via server complex 204.” Pet., p. 20. Nowhere, however, does
`
`Exhibit 2001, page 14
`
`
`
`Petitioner reference Griffin’s failure to deliver a message even when the
`
`terminal is “Available,” which I further explain below.
`
`32. Griffin discloses instant text messages, but Griffin does not
`
`disclose instant voice messages. Every passage of Griffin that Petitioner relies
`
`on is directed explicitly toward text messaging. Petitioner does not point to
`
`any part of Griffin that describes instant voice messaging. All Petitioner says
`
`is that Griffin is “consistent with” passages in the ʼ747 Patent. Pet., p. 19. In
`
`my opinion, Petitioner does not explain how or why Petitioner believes that
`
`Griffin discloses an “instant voice message.”
`
`33. Petitioner cites to passages in Griffin that use the term “push-to-
`
`talk.” E.g., Pet., p. 11. However, Petitioner relies on an understanding of
`
`“push-to-talk” that is relevant today (i.e., 2017) but was not relevant in 2002
`
`when Griffin filed his application. In 2002, a PHOSITA would have
`
`understood “push-to-talk” as technology that enables a mobile device to
`
`operate as a half-duplex radio similar to a walkie-talkie. When Griffin was
`
`filed, “push-to-talk” was used by radio operators, for instance, in the Citizens
`
`Band. Every mention of push-to-talk in Griffin refers to that half-duplex,
`
`radio-based communication method. No PHOSITA would equate such a
`
`method with the claimed “instant voice message.”
`
`Exhibit 2001, page 15
`
`
`
`34. The system in Griffin has no knowledge of, or interest in, and has
`
`no way to know whether a device is ready and able to “hear” a message. In
`
`Griffin, the message to be sent from the server complex 204 is prepared based
`
`on the technical ability of a terminal to receive the message at some arbitrary
`
`point in the future. The message is only delivered if the user has the “chat
`
`history display” visible on the user interface. Griffin, 11:48-67.
`
`35. Griffin also makes only the most recent speech message available
`
`at a receiving device. Griffin states: “In a current implementation, the most
`
`recently received speech message (or at least that portion that will fit in
`
`available memory) [is] queued at the receiving terminal.” Griffin, 11:50-53.
`
`A PHOSITA would understand this to mean that only the most recently
`
`received speech message (or portion thereof) is queued at the receiving
`
`terminal, so any previous speech messages (including those that were sent
`
`before the user switched or opened to the “chat history display”) would be
`
`lost.
`
`VII. ZYDNEY
`
`36. Zydney is an International Patent Application that “relates to the
`
`field of packet communications, and more particularly to voice packet
`
`communication systems.” Zydney, 1:4-5 (referring to Zydney by page and line
`
`numbers).
`
`Exhibit 2001, page 16
`
`
`
`37. Zydney explains “[the] present invention is a system and method
`
`for voice exchange and voice distribution utilizing a voice container.” Zydney,
`
`1:19-20 (emphasis added). Those “voice containers can be stored, transcoded
`
`and routed to the appropriate recipients instantaneously or stored for later
`
`delivery.” Id. at 1:21-2. Zydney explains that a “voice container” is “a
`
`container object that contains no methods but contains voice data or voice data
`
`and voice data properties.” Id. at 12:6-8. In my opinion, a PHOSITA would
`
`have understood that Zydney’s voice container is an “object” used in object-
`
`oriented programming languages, with which I am very familiar, such as Java
`
`or C++.
`
`38.
`
`I have read the declaration of Dr. Val DiEuliis in IPR2017-
`
`01257. While I formed my own independent opinions, I am in agreement with
`
`Dr. DiEuliis. Dr. DiEuliis in IPR2017-01257, which also challenged the ’747
`
`Patent based on Zydney, used an analogy that I find apt and useful: “a
`
`container object is like a box, it holds things but it is not the things it holds.
`
`For example, if a box contains paper clips, the actual box itself is not a paper
`
`clip.” ¶ 54 from Decl. of Val DiEuliis in IPR2017-01257.
`
`39. Zydney explains that “the originator digitally records messages
`
`for one or more recipients using a microphone-equipped device and a software
`
`agent. The software agent compresses the voice and stores the file temporarily
`
`Exhibit 2001, page 17
`
`
`
`on the PC if the voice will be delivered as an entire message.” Zydney, 16:1-
`
`4. A software agent at the recipient unpacks the voice container (including
`
`various files that may be within the voice container) and plays the voice
`
`message. Zydney, 13:19-22, FIG. 18.
`
`40. Zydney also states that “voice containers may have digitized
`
`greeting cards appended to them to present a personalized greeting.” Zydney,
`
`19:1-7.
`
`VIII. ANALYSIS FOR CLAIMS 1-3, 12, AND 13
`
`41. For the reasons presented below, it is my opinion that Petitioner
`
`has failed to show that any of challenged Claims 1-3, 12, or 13 are obvious in
`
`light of the asserted combination of Griffin and Zydney.
`
`A. Claims 1 and 13
`
`42. Claim 1 recites “generating an instant voice message, wherein
`
`generating includes recording the instant voice message in an audio file and
`
`attaching one or more files to the audio file.” This language makes it clear
`
`that Claim 1 requires one or more files be attached to an audio file, and not to
`
`the instant voice message that is recorded in that audio file or to some other
`
`container that might contain the audio file.
`
`43. Petitioner argues that the outbound message 400 of Griffin is the
`
`claimed “instant voice message.” Pet., pp. 21-22. Griffin’s outbound message
`
`Exhibit 2001, page 18
`
`
`
`400 is shown in FIG.4 of Griffin. The outbound message 400 includes a
`
`message type 401, number of recipients 402, recipient IDs 403, thread ID 404,
`
`message length 405, message content 406, and number of attachments 407.
`
`Griffin, 6:38-44 and FIG. 4. Griffin teaches that attachments are to be included
`
`in a payload of the message 400, i.e., within the message 400 itself. Griffin,
`
`6:50-52.
`
`44. Thus, Griffin does not teach attaching files to an audio file. In
`
`Griffin, the attachments are included as part of the message 400, which
`
`Petitioner argues is the claimed “instant voice message.” Attaching a file to
`
`the message 400 does not disclose attaching a file to an audio file in which the
`
`claimed “instant voice message” is recorded, and also does not disclose
`
`attaching a file to any purported file or contents within the message 400.
`
`45. Zydney also does not teach attaching files to an audio file.
`
`Petitioner cites to attaching of files to Zydney’s “voice container.” Pet., pp.
`
`27-28. However, in Zydney, the voice container is separate from the file in
`
`which voice data is stored. Zydney, 16:1-4. The voice data in that file is
`
`inserted into a voice container, and it is the voice container that is sent over
`
`the network in Zydney: “A pack and send mode of operation is one in which
`
`the message is first acquired, compressed and then stored in a voice container
`
`26 which is then sent to its destination(s).” Zydney, 11:1-3.
`
`Exhibit 2001, page 19
`
`
`
`46. Zydney’s voice container is not an audio file. In fact, Zydney
`
`teaches that the voice container is specifically used to carry far more than just
`
`audio data. Specifically, FIG. 3 of Zydney shows that the voice container
`
`includes a large amount of other information, such as originator’s code,
`
`recipient codes, originating time, delivery times, number of plays, voice
`
`container source, voice container reuse restrictions, delivery priority, session
`
`values, and repeating information.
`
`47. Zydney teaches that multi-media files can be attached to the voice
`
`container (which is different from an audio file). Zydney, 19:1-7. Zydney also
`
`discloses that the Multipurpose Internet Mail Extension (MIME) format, may
`
`be used to format the voice container (not an audio file) so that attachments
`
`may be associated with it. Id. at 15:15–17, 17:2–4, 19:6-20:9.
`
`48. Thus, Zydney fails to disclose attaching one or more files to an
`
`audio file. Moreover, in my opinion, a PHOSITA would have been led away
`
`from attaching a file to an audio file because of Zydney’s specific teaching of
`
`a voice container that is distinct from the temporary voice file created on the
`
`sending device. It is a voice container that is communicated in Zydney, and
`
`that voice container already supports file attachments (e.g., through MIME).
`
`Therefore, a PHOSITA would have no reason to try and find some way to
`
`format an audio file as a MIME message, attach files to the audio file, and
`
`Exhibit 2001, page 20
`
`
`
`then create a voice container that would once again be formatted as a MIME
`
`message.
`
`49. For the above reasons, Petitioner has not shown that Claim 1, or
`
`Claim 13 which depends from Claim 1, is obvious in view of Griffin and
`
`Zydney.
`
`B. Claim 2 and 12
`
`50. Claim 2 recites “receiving a list of nodes within the packet-
`
`switched network, the list of nodes including a connectivity status of each
`
`node, said connectivity status being available and unavailable.” This language
`
`makes it clear that the received list must include a connectivity status of each
`
`node.
`
`51. Neither Griffin nor Zydney disclose “a list of nodes” as claimed.
`
`As I explained above, a PHOSITA would understand the term node to mean
`
`a device, not a person and not purely software. Despite this, the only alleged
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`lists Petitioner cites to in Griffin and Zydney that are lists of persons.
`
`52. For this element of Claim 2, Petitioner cites to FIGS. 6, 7, and 9
`
`of Griffin and their textual descriptions. Pet., pp. 45-50, 53-55. FIG. 6 of
`
`Griffin shows a buddy list update message 600 that is sent to subscribing users
`
`when the presence status 702 of a particular buddy changes. Griffin, 7:27-8:7.
`
`FIG. 7 of Griffin shows a table of presence data records 700 compiled by a
`
`Exhibit 2001, page 21
`
`
`
`presence manager 302 at the server complex, where each presence data record
`
`includes the presence status 702 of a user (if known). Griffin, 5:9-22. FIG. 9
`
`of Griffin shows a buddy list display that can be displayed on the screen of a
`
`user’s terminal 100, where the buddy list display includes a presence indicator
`
`icon 904 that varies in appearance depending on presence status 702 of a
`
`buddy. Griffin, 8:15-28.
`
`53. Of the above items in Griffin, only the buddy list update
`
`message 600 is received by a terminal 100. The presence records 700 are not
`
`sent to individual terminals and the buddy list display of FIG. 9 is generated
`
`at the terminal 100, not sent to the terminal 100. However, the buddy list
`
`update message 600 cannot be the “list of nodes,” at least because it is a list
`
`of people, not devices. There is no device-specific information in the buddy
`
`list update message 600. Rather, the buddy list update message 600 includes,
`
`for each buddy whose status is being updated, multiple names for that buddy
`
`(full name, nickname, and short name) along with the presence status 702 for
`
`that buddy (which is included in the recipient status field 607). Griffin, 7:18-
`
`8:14.
`
`54. Zydney also does not disclose the claimed “list of nodes.” Zydney
`
`describes a list of names (i.e., a list of people, not devices). For example,
`
`Zydney states “To use the present invention … the originator selects one or
`
`Exhibit 2001, page 22
`
`
`
`more intended recipients from a list of names that have previously been
`
`entered into the software agent.” Zydney, 14:17-19.
`
`55.
`
`I also note that in Zydney, the list of names is received from the
`
`originator, which is a user. FIG. 7 of Zydney, which is a flowchart “illustrating
`
`the method and system with respect to the originator” shows at Step 1.1.2 that
`
`the originator “select[s] one or more recipients from a list maintained by the
`
`originator and presented visually by the [software] agent[.]” Zydney, 3:5–6
`
`and FIG. 7. Claim 2 clearly requires that the rec
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