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 IPR2017-01801
`United States Patent No. 8,995,433
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1801
`Uniloc's Exhibit No. 2001
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01801
`United States Patent No. 8,995,433
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1801
`Uniloc's Exhibit No. 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 ’433 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 1-5, 7-12, 14-17, 25, AND
`IV.
`26 OF THE ’433 PATENT ................................................................................... 9
`
`V. GRIFFIN IS DIRECTED TO USER INTERFACES. ............................... 18
`
`VI.
`
`THE VOICE CONTAINERS OF ZYDNEY ARE NOT AUDIO FILES. . 21
`
`VII. GRIFFIN CANNOT BE COMBINED WITH ZYDNEY ......................... 26
`
`VIII. PETITIONER’S RELIANCE ON CLARK IS MISPLACED. .................. 30
`
`IX. CONCLUSION ........................................................................................ 36
`
`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. 8,995,433 (the
`
`“’433 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, McKinney, TX. 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 1-5, 7-12, 14-17,
`
`25, and 26 (the “challenged claims”) of the ’433 Patent (“EX1001”) to
`
`determine whether a person having ordinary skill in the technical art most
`
`pertinent to the art of the challenged claims at the time of the priority date for
`
`the ’433 Patent (hereafter a “PHOSITA”) would have considered those claim
`
`obvious in light of the asserted references considered as a whole.
`
`Uniloc's Exhibit 2001, page 1
`
`
`
`4.
`
`I reviewed the ’433 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 IPR2017-1801 (“Petition”), the Declaration of
`
`Dr. Haas (EX1002) in support of the Petition, the references relied upon in the
`
`Petition (including Zydney and Griffin) and the Declaration of Dr. Val
`
`DiEuliis from IPR2017-01428 in support of the Patent Owner. IPR2017-
`
`01428 also involved a challenge to the ’433 Patent based on Zydney. I also
`
`determined the scope and content of the prior art, ascertained the differences
`
`between the challenged claims of the ’433 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
`
`Uniloc's 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, several
`
`of those deal with network communications topics. I am a named inventor on
`
`thirteen United States patents:
`
`✓ United States Patent No. 9,755,887, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sep. 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 Sep. 5, 2017, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,753,957, entitled “System and
`
`Method for Document Tracking”, issued Sep. 5, 2017, assigned
`
`to Open Invention Network LLC.
`
`Uniloc's 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.
`
`Uniloc's Exhibit 2001, page 4
`
`
`
`✓ United States Patent No. 8,825,845, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sep. 2, 2014,
`
`assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,825,810, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Sep. 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 Sep. 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
`
`Uniloc's 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 claims and the
`
`asserted prior art are such that that subject matter as a whole would have been
`
`obvious to a PHOSITA at the time the claimed inventions were conceived
`
`(i.e., the priority date for the ’433 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 claims at issue, and the level of ordinary skill in the pertinent
`
`art at the time the inventions were conceived.
`
`Uniloc's Exhibit 2001, page 6
`
`
`
`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
`
`the USPTO Board views the patent claims. Evaluating the claimed invention
`
`Uniloc's Exhibit 2001, page 7
`
`
`
`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 ’433 Patent
`
`14. U.S. Patent No. 8,995,433 (“’433” or “EX1001”), titled System
`
`and method for instant VoIP messaging, was issued on Mar. 31, 2015. The
`
`application 14/224,125, by inventor Michael J. Rojas, was filed on Mar. 24,
`
`2014 and claims priority
`
`to,
`
`inter alia, U.S. Patent Application
`
`No. 10/740,040 filed on Dec. 18, 2003. For purposes of this declaration, I have
`
`assumed the priority date for the ’433 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
`
`Uniloc's 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 the challenged claims of the ’433
`
`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 1-5, 7-12, 14-17, 25, and
`
`26 of the ’433 Patent are to be given their broadest reasonable interpretation
`
`(“BRI”) in light of the specification of the ’433 Patent as understood by a
`
`PHOSITA at the time of the priority date for the ’433 Patent. I used this
`
`understanding throughout my analysis.
`
`IV. THE TECHNOLOGY CLAIMED IN CLAIMS 1-5, 7-12, 14-17,
`25, AND 26 OF THE ’433 PATENT
`
`18. The ’433 Patent “relates to Internet telephony (IP telephony).
`
`More particularly, the inventions are directed to systems and methods for
`
`Uniloc's Exhibit 2001, page 9
`
`
`
`enabling local and global instant VoIP messaging over an IP network, such as
`
`the Internet, with PSTN support.” Id. at 1:19-23.
`
`19. The ’433 Patent provides the historical context by describing
`
`how “[traditional] telephony was based on a public switched telephone
`
`network (i.e., “PSTN”). EX1001 at 1:25-35. This is the well-known telephone
`
`system that has served the world for well over a century.
`
`20. The ’433 Patent explains “An alternative to the PSTN is Voice
`
`over Internet Protocol (i.e., "VoIP"), also known as IP telephony or Internet
`
`telephony. Id. at 1:36-38. The patent elaborates as follows:
`
`In the IP telephony, a VoIP terminal device is connected to a
`
`packet-switched
`
`network
`
`(e.g.,
`
`Internet)
`
`and
`
`voice
`
`communication from the VoIP terminal device is digitized,
`
`packetized and transmitted over the packet-switched network to
`
`a destination VoIP terminal device, which reconstructs the
`
`packets and audibly plays, stores or otherwise processes the
`
`transmission. The VoIP terminal device may be a VoIP telephone
`
`or a general-purpose personal computer (PC) enabled for IP
`
`telephony. More specifically, the PC is programmed with the
`
`software and equipped with audio input/output devices (e.g., a
`
`combination of microphone and speaker or a headset) to serve as
`
`a VoIP terminal device. The PC so enabled and equipped will
`
`herein be referred to as a VoIP terminal device or a VoIP
`
`softphone.
`
`Uniloc's Exhibit 2001, page 10
`
`
`
`(Id. at 1:38-51) (underlining added.)
`
`21. After explaining how VoIP and instant text messaging were
`
`nascent arts, inventor Mr. Rojas explained the motivation for his invention as
`
`follows:
`
`However, notwithstanding the foregoing advances in the
`
`VoIP/PSTN voice communication and voice/text messaging,
`
`there is still a need in the art for providing a system and method
`
`for providing instant VoIP messaging over an IP network. More
`
`particularly, there is a need in the art for providing local and
`
`global instant voice messaging over VoIP with PSTN support.
`
`(Id. at 2:48-54) (underlining added.)
`
`22. Fig. 2 from the ’433 Patent, reproduced below is “an exemplary
`
`illustration of a local instant voice messaging (IVM) system 200 according to
`
`the present invention. The instant voice messaging system 200 comprises a
`
`local IVM server 202 that “provides the core functionality for enabling instant
`
`voice messaging with PSTN support according to the present invention.” Id.
`
`at 6:54-59 (emphasis added).
`
`Uniloc's Exhibit 2001, page 11
`
`
`
`
`
`Fig. 2 of the ’433 Patent: System Diagram of the Instant Voice
`
`Messaging System (IVM)
`
`23. The local IVM server 202 “is enabled to provide instant voice
`
`messaging to one or more IVM clients 206 and 208, as well support instant
`
`voice messaging for PSTN legacy telephones 110.” Id. at 6:62-65. The local
`
`IP network 204, a packet-switched network, connects the IVM server 202 to
`
`clients 208 (viz., a computer system), VoIP Phone 206, and legacy telephone
`
`110 (e.g., a
`
`land-line phone). Clients
`
`incorporate devices such as
`
`Uniloc's Exhibit 2001, page 12
`
`
`
`microphones, which enable a person’s voice to be recorded, and speakers to
`
`allow voice messages to be heard by the users. Id. at 7:9-26.
`
`24. A PHOSITA would have understood, upon studying the totality
`
`of the ’433 Patent, and specifically the written descriptions above and
`
`elsewhere in the ’433 Patent, that “clients” in the ’433 Patent are devices, such
`
`as computers and telephones, and not the people who use the devices. See e.g.,
`
`Id. at 9:31-32. The patent expresses this in the following exemplary passages:
`
`The IVM client 208 is a general-purpose programmable
`
`computer equipped with a network interface (not shown), such
`
`as an Ethernet card, to provide connectivity to the network 204.
`
`Id. at 12:13-16 (underlining added.)
`
`The user operates the IVM client 208 by using the input device
`
`218 to indicate a selection of one or more IVM recipients from
`
`the list.
`
`Id. at 8:5-8; also 8:60-62 (underlining added.)
`
`The one or more recipients are enabled to display an indication
`
`that the instant voice message has been received and audibly play
`
`the instant voice message to an associated user.
`
`Id. at 8:33-36 (underlining added.)
`
`25. The exemplary passages above demonstrate that the user is not
`
`the client, which is a device, but rather an entity (e.g., person, another device,
`
`Uniloc's Exhibit 2001, page 13
`
`
`
`software) that interfaces with and operates the client device using input and
`
`output devices.
`
`26. The first passage above explicitly discloses that the client is a
`
`computer. The second passage explicitly discloses that the “user” operates the
`
`client.
`
`27. Finally, the third passage explains that “recipients are enabled to
`
`... “audibly play the instant voice message to an associated user.” Id. This
`
`exemplary statement explains that a “recipient” is not the “user.” A PHOSITA
`
`would have understood, after studying the totality of the ’433 Patent, that
`
`“recipients” are client devices, not people.
`
`28. Regarding the operation of at least one embodiment, the ’433
`
`Patent explains “the IVM client (VoIP telephone) 208 is connected over the
`
`network 204 to the IVM server 202, which as aforementioned enables instant
`
`voice messaging functionality over the network 204.” Id. at 8:53-56. The
`
`operations proceed generally, according to an exemplary embodiment, as
`
`follows:
`
`• The client displays a list, provided and stored by the server, of one or
`
`more IVM recipients. Id. at 8:56-58.
`
`• “The user operates the IVM client 206 by using a keypad on the VoIP
`
`telephone 206 to indicate a selection of one or more IVM recipients
`
`from the list.” Id. at 8:60-62.
`
`Uniloc's Exhibit 2001, page 14
`
`
`
`• The client transmits the selection of the recipient(s) to the server. Id. at
`
`8:62-63.
`
`• The client begins recording audio and the user speaks into a microphone
`
`or headset or telephone handset of the client. Id. at 8:62-9:1.
`
`• The client records the user’s speech into an audio file, which may be
`
`stored in a storage device (e.g., memory, magnetic disk). Id. at 9:1-4;
`
`see also Id. at 8:11-15.
`
`• The client transmits the recorded audio file (i.e., instant voice message)
`
`to the server via the network. Id. at 9:6-8; see also Id. at 8:25-26.
`
`• The server transmits the instant voice message (that is, the audio file)
`
`to the recipient(s) who are currently connected to the network. Id. at
`
`9:16-25. If a recipient is not currently connected to the network, the
`
`server temporarily saves the instant voice message and delivers it to the
`
`IVM client when the IVM client connects to the local IVM server. Id.
`
`29. The ’433 Patent also teaches “when an instant voice message is
`
`to be transmitted to the one or more IVM recipients, one or more documents
`
`may be attached to the instant voice message to be stored or displayed by the
`
`one or more selected IVM recipients.” Id. at 12:32-36. Regarding attachments,
`
`the ’433 Patent teaches:
`
`The user may also open any file attachments and move or save
`
`the files to a separate location on the client using a drag-and-drop
`
`process.
`
`Id. at 13:9-12.
`
`Uniloc's Exhibit 2001, page 15
`
`
`
`The attachment of one or more files is enabled conventionally
`
`via a methodology such as “drag-and-drop” and the like, which
`
`invokes the document handler 306 to make the appropriate
`
`linkages to the one or more files and flags the messaging system
`
`320 that the instant voice message also has the attached one or
`
`more files.
`
`Id. at 13:35-40.
`
`30.
`
`In my opinion, a PHOSITA would have understood that the
`
`Mr. Rojas refers to files, such as documents, spreadsheets, pictures, and so
`
`forth, as entities separate from the audio file itself, and that the term
`
`“attachment” should be interpreted as other files or information that are sent
`
`with a message. For example, a text message may contain a picture
`
`attachment, which is a separate file that is distinct from the actual text in the
`
`message.
`
`31.
`
`I copy here, for the convenience of the Board, Claims 1, 6, and
`
`9, which are in independent format:
`
`1. A system comprising:
`
`an instant voice messaging application including a client
`
`platform system for generating an instant voice message and a
`
`messaging system for transmitting the instant voice message over a
`
`packet-switched network via a network interface;
`
`wherein the instant voice messaging application displays a list
`
`of one or more potential recipients for the instant voice message;
`
`Uniloc's Exhibit 2001, page 16
`
`
`
`wherein the instant voice messaging application includes a
`
`message database storing the instant voice message, wherein the
`
`instant voice message is represented by a database record including a
`
`unique identifier; and
`
`wherein the instant voice messaging application includes a file
`
`manager system performing at least one of storing, deleting and
`
`retrieving the instant voice messages from the message database in
`
`response to a user request.
`
`EX1001, 23: 65 - 24:15.
`
`6. A system comprising:
`
`an instant voice messaging application including a client
`
`platform system for generating an instant voice message and a
`
`messaging system for transmitting the instant voice message over a
`
`packet-switched network via a network interface;
`
`wherein the instant voice messaging application displays a list
`
`of one or more potential recipients for the instant voice message;
`
`wherein the instant voice messaging application includes a file
`
`manager system performing at least one of storing, deleting and
`
`retrieving the instant voice messages from a message database in
`
`response to a user request; and
`
`wherein the instant voice messaging application includes a
`
`compression/decompression system for compressing the instant voice
`
`messages to be transmitted over the packet-switched network and
`
`decompressing the instant voice messages received over the packet-
`
`switched network.
`
`EX1001, 24:33-51.
`
`Uniloc's Exhibit 2001, page 17
`
`
`
`9. A system, comprising:
`
`an instant voice messaging application comprising:
`
`a client platform system for generating an instant voice message;
`
`a messaging system for transmitting the instant voice message
`
`over a packet-switched network, and wherein the instant voice
`
`message application attaches one or more files to the instant voice
`
`message.
`
`EX1001, 24:60-67.
`
`V. GRIFFIN IS DIRECTED TO USER INTERFACES.
`
`32. 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. 9. Rather, Griffin
`
`is a user interface patent for “displaying and interacting with speech and text
`
`group chat threads.” Griffin, 1:62–65.
`
`33. Griffin does not teach real time communication. Petitioner argues
`
`that Griffin supports transmission in real time, 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
`
`Uniloc's Exhibit 2001, page 18
`
`
`
`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.
`
`34. The only mention of “real-time” in Griffin is 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.
`
`35.
`
`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.
`
`36. 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 real-time (i.e., immediate) transmission of speech chat messages between
`
`available terminals.” EX1002, ¶83. Nowhere, however, does Petitioner
`
`Uniloc's Exhibit 2001, page 19
`
`
`
`reference Griffin’s failure to deliver a message even when the terminal is
`
`“Available,” which I further explain below.
`
`37. Griffin discloses instantaneous 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 ʼ433 Patent. In my
`
`opinion, Petitioner does not explain how or why Petitioner believes that
`
`Griffin discloses an “instant voice message.”
`
`38.
`
`In my opinion, Petitioner relies on an understanding of “push-to-
`
`talk” that is relevant today (i.e., 2017), but was not relevant in 2002. Pet. at
`
`pp. 10, 16, 35, 61. In 2002, when Griffin filed his application, 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.”
`
`39. But even if “push-to-talk” could be stretched to cover an “instant
`
`voice message,” the communication in Griffin did not take place “over a
`
`Uniloc's Exhibit 2001, page 20
`
`
`
`packet-switched network.” In 2003, all such communication was made over
`
`circuit-switched networks.
`
`40. 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.
`
`VI. THE VOICE CONTAINERS OF ZYDNEY ARE NOT AUDIO
`FILES.
`
`41. Zydney “relates to the field of packet communications, and more
`
`particularly to voice packet communication systems.” EX1006 at 1:4-5.3
`
`(referring to Zydney by page and line numbers).
`
`42. Zydney explains “[the] present invention is a system and method
`
`for voice exchange and voice distribution utilizing a voice container.”
`
`EX1006 at 1:19-20 (underlining added). Moreover, “voice containers can be
`
`stored, transcoded and routed to the appropriate recipients instantaneously or
`
`stored for later delivery.” Id. at 1:21-2 (emphasis added). Zydney defines
`
`“voice container” as “a container object that contains no methods but contains
`
`voice data or voice data and voice data properties.” Id. at 12:6-8. A PHOSITA
`
`would have understood that this definition means Zydney’s voice container is
`
`Uniloc's Exhibit 2001, page 21
`
`
`
`a data construct (viz., an “object”) used in object-oriented programming
`
`languages, such as Java or C++, to hold other data constructs, such as data
`
`values and other objects, but performs no functions (methods). Dr. Val
`
`DiEuliis has an apt analogy. He testified in IPR2017-01257 (which challenged
`
`a patent related to the ’433 Patent based on Zydney) that 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.
`
`43. Zydney teaches “the originator digitally records messages for one
`
`or more recipients using a microphone-equipped device and the software
`
`agent. The software agent compresses the voice and stores the file temporarily
`
`on the PC if the voice will be delivered as an entire message.” Id. at 16:1-4
`
`(emphasis added). A PHOSITA would have understood that Zydney may
`
`temporarily store the audio data in a file, which is another type of data
`
`structure and which may even be stored on a magnetic disk drive or other
`
`medium.
`
`44. Before the voice data is sent to a recipient, it is placed in the voice
`
`container and the container is sent. Zydney explains this process:
`
`The present invention system and method for voice exchange and
`
`voice distribution 20 allows a software agent 22 with a user
`
`interface in conjunction with a central server 24 to send, receive
`
`and store messages using voice containers illustrated by
`
`Uniloc's Exhibit 2001, page 22
`
`
`
`transmission line 26 in a pack and send mode of operation to
`
`another software agent 28. 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).
`
`Id. at 10:20-11:3 (underlining added.)
`
`45. The passage above explains that Zydney’s voice message is the
`
`audio data; however, it is stored in a voice container, which is a type of data
`
`structure, distinct from a file.
`
`46. After the voice container is received by a recipient, “voice files
`
`can be played and recorded using voice container enabled devices.” Id. at
`
`21:14-16. Thus, Zydney teaches that a recipient must have a device that is able
`
`to process voice containers in order to audibly play back the voice data.
`
`47. Zydney’s voice container contains additional components
`
`besides the “voice data or voice data and voice data properties.” Fig. 3 and its
`
`accompanying text explain that communications and application oriented
`
`information is included, such as an originator’s code, recipients’ codes,
`
`originating time, delivery time(s), number of plays, voice container source,
`
`voice container reuse restrictions, delivery priority, session values and
`
`number, and more. Id. at 23:1-12.
`
`Uniloc's Exhibit 2001, page 23
`
`
`
`48. Zydney explains that files, such as multi-media files, may be
`
`attached to a voice container. Id. at 19:2-5. Zydney states “[for] example, the
`
`voice container may have digitized greeting cards appended to them to present
`
`a personalized greeting.” Id. Zydney explains that various industry standards,
`
`such as Multipurpose Internet Mail Extension (MIME) format, may be used
`
`to format the voice container so that attachments may be associated with it.
`
`Id. at 19:6-20:9.
`
`49. Zydney discloses two ways to send a voice message: (a) pack and
`
`send; and (b) intercom. First, the “pack and send” method “is one in which
`
`the message is first acquired, compressed and then stored in a voice container
`
`26 which
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
