UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`
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`APPLE INC.,
`Petitioners,
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
`
`Case IPR2017-01805
`Patent 8,724,622
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`
`
`DECLARATION OF WILLIAM C EASTTOM II
`
`Apple v. Uniloc, IPR2017-1805
`Uniloc’s Exhibit No. 2001
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................1
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`II. BACKGROUND AND QUALIFICATIONS ................................................2
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`III. LEGAL STANARDS USED IN MY ANALYSIS .......................................... 2
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`A. Obviousness .............................................................................................3
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`B. Priority Date.............................................................................................4
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`C. Person of Ordinary Skill in the Art ...........................................................4
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`D. Broadest Reasonable Interpretation ..........................................................6
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`IV. OVERVIEW OF THE ‘622 PATENT ...........................................................6
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`V. CLAIM CONSTRUCTION ..........................................................................9
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`A. “communication platform system” ...........................................................9
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`VI. PETITIONERS’ CITED REFERENCES .................................................... 10
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`A. International Application WO 01/11824 (“Zydney”) .............................. 10
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`B. Excerpt of Computer Networking Essentials (“Shinder”) ....................... 15
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`C. Excerpt of Paul S. Hethmon, Illustrated Guide to HTTP (“Hethmon”) ..15
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`D. U.S. Patent No. 6,173,323 (“Moghe”) .................................................... 16
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`VII. VALIDITY ANALYSIS ............................................................................. 17
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`A. No prima facie obviousness for dependent Claims 4, 5 and 12 ............... 17
`1. Zydney distinguishes voice containers from voice messages ............. 17
`2. Zydney does not render obvious “wherein the instant voice
`message includes an object field” (claims 3, 4, 5 and 12) .................. 19
`3. Zydney teaches away from “wherein the instant voice message
`includes an action field identifying one of a predetermined set
`of permitted actions requested by the user” (claims 4 and 5) ............. 21
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`B. Zydney does not render obvious “wherein the messaging system receives
`connection object messages from the plurality of instant voice message
`client systems, wherein each of the connection object messages includes
`data representing a state of a logical connection with a given one of the
`plurality of instant voice message client systems” (claims 24-26) .......... 22
`1. Zydney expressly teaches away from use of “connection
`objects” as defined in the ’622 patent ................................................ 23
`2. No motivation to combine Zydney with Hethmon because
`Zyndey’s transport mechanism would not have worked with
`HTTP at that time.............................................................................. 24
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`VIII. CONCLUSION ........................................................................................... 26
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`I, Chuck Easttom, hereby declare as follows:
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`I.
`
`INTRODUCTION
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`1. My name is William Charles Easttom II (Chuck Easttom) and I
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`have been retained by Uniloc, USA, Inc., and Uniloc Luxembourg S.A.
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`(“Uniloc” or the “Patent Owner”) to provide my expert opinions regarding
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`U.S. Patent No. 8,724,622 (the ‘622 Patent). In particular, I have been asked
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`to opine on whether a person of ordinary skill in the art (POSITA) at the time
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`the inventions described in the ‘622 patent were conceived would have found
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`all claims, Claims 4, 5, 12, and 24-26 (“Challenged Claims”) as obvious in
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`light of the following referenced cited in IPR2017-01668:
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`• Ex. 1113, PCT Patent Application No. PCT/US00/21555 (“Zydney”)
`• Ex. 1114, Excerpts from Debra Littlejohn Shinder, Computer
`Networking Essentials (“Shinder”)
`• Ex. 1109, Paul S. Hethmon, Illustrated Guide to HTTP (“Hethmon”)
`• Ex. 1118, Excerpts from Microsoft Press Computer Dictionary (1991)
`(“Microsoft (1991)”)
`• Ex. 1119, U.S. Patent No. 6,173,323 (“Moghe”)
`
`2.
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`Based on my review of the prior art then available, my
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`understanding of the relevant of the relevant requirements of patent law, and
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`my decades of experience in the field of computer science including
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`communications systems, it is my opinion that the Challenged Claims would
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`not have been obvious in light of the proposed combinations.
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`Ex. 2001, Page 1
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`3.
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`I am being compensated for my time at my standard consulting
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`rate of $300 per hour. I am also being reimbursed for expenses that I incur
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`during the course of this work. Apart from that, I have no financial interest in
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`Uniloc. My compensation is not contingent upon the results of my study or
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`the substance of my opinions.
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`II. BACKGROUND AND QUALIFICATIONS
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`4.
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`In my over 25 years of computer industry experience I have had
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`extensive experience in communications systems, including data networks in
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`general that have messaging capabilities. I hold 42 industry certifications,
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`which include (among others) networking certifications. I have authored 24
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`computer science books, several of which deal with networking topics. I am
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`also the sole named inventor on thirteen patents.
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`5.
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`A more detailed description of my professional qualifications,
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`including a list of publications, teaching, and professional activities, is
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`contained in my curriculum vitae, a copy of which is attached hereto as
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`Exhibit A.
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`III. LEGAL STANARDS USED IN MY ANALYSIS
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`6.
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`Although I am not an attorney and I do not offer any legal
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`opinions in this proceeding, I have been informed of and relied on certain legal
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`principles in reaching the opinions set forth in this Declaration.
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`Ex. 2001, Page 2
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`A.
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`Obviousness
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`
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`7.
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`I understand that a patent claim is invalid if the differences
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`between the subject matter and the prior art are such that the subject matter as
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`a whole would have been obvious to a POSITA at the time of the alleged
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`invention. I further understand that an obviousness analysis involves a review
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`of the scope and content of the asserted prior art, the differences between the
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`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
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`and objective indicia of non-obviousness such as long-felt need, industry
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`praise for the invention, and skepticism of others in the field.
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`8.
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`I have been informed that if a single limitation of a claim is
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`absent from the cited prior art, the claim cannot be considered obvious.
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`9.
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`I have further been informed that it is improper to combine
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`references where the references teach away from a proposed combination; and
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`that the following factors are among those relevant in considering whether
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`prior art teaches away:
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`• whether a POSITA, upon reading the reference would be led in a
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`direction divergent from the path that was taken by the applicant;
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`• whether the prior art criticizes, discredits, or otherwise discourages
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`investigation into the claimed invention;
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`Ex. 2001, Page 3
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`• whether a proposed combination would produce an inoperative
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`result; and
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`• whether a proposed combination or modification would render the
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`teachings of a reference unsatisfactory for its intended purpose.
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`10.
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`In addition, I have been informed that a proposed combination
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`that changes the basic principles under which the prior art was designed to
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`operate may fail to support a conclusion of obviousness.
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`B.
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`Priority Date
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`11. The ’622 patent issued from U.S. Patent Application No.
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`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
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`continuation of U.S. Patent No. 7,535,890, filed on December 18, 2003. The
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`’622 patent issued on May 13, 2014. I have assumed the priority date for the
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`’622 patent is December 18, 2003.
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`C.
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`Person of Ordinary Skill in the Art
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`12.
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`I understand that a POSITA is a hypothetical person who is
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`presumed to have ordinary skill in the art as of the priority date. I understand
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`that factors that may be considered in determining the level of ordinary skill
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`in the art may include: (a) the type of problems encountered in the art; (b)
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`prior art solutions to those problems; (c) the rapidity with which innovations
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`Ex. 2001, Page 4
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`are made; (d) the sophistication of the technology; and (e) the educational
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`level of active workers in the field.
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`13.
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`I have been asked to provide my opinion as to the qualifications
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`of the person of ordinary skill in the art to which the ‘622 patent pertains as
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`of December 18, 2003. In my opinion, a POSITA is someone who would have
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`possessed on the priority date a bachelor’s degree in electrical engineering or
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`computer science (or equivalent degree/experience) with at least two years of
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`experience in computer programming and software development, including
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`the development of software for communication with other computers over a
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`network.
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`14.
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`I understand that Dr. Lavian opines that a person of ordinary skill
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`in the art is someone “a person of ordinary skill in the art for purposes of the
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`’622 patent would have possessed at least a bachelor’s degree in computer
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`science, computer engineering, or electrical engineering with at least two
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`years of experience in development and programming relating to network
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`communication systems (or equivalent degree or experience).” (Ex. 1002 at ¶
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`13-15).
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`15.
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`In my opinion, my and the Petitioners’ opinion concerning a
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`person of ordinary skill in the art are essentially the same, and any differences
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`are inconsequential to the dispute before the Board
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`Ex. 2001, Page 5
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`16. Although my qualifications and experience exceed those of the
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`hypothetical person having ordinary skill in the art defined above, my analysis
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`and opinions regarding the ‘622 Patent have been based on the perspective of
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`a person of ordinary skill in the art as of December 2003.
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`D. Broadest Reasonable Interpretation
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`17.
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`I have been informed that, for purposes of this Inter Partes
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`Review (IPR), the terms in the claims of the ‘622 patent are to be given their
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`Broadest Reasonable Interpretation (BRI) in light of the specification and
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`prosecution history of ‘622 Patent as understood by a POSITA on the priority
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`date. I have used this standard throughout my analysis.
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`IV. OVERVIEW OF THE ‘622 PATENT
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`18. The ’622 patent recognized that conventional circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over
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`such networks. According to the ’622 patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the
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`telephone terminal to another device 20 over the [public switched telephone
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`network or] PSTN, including another telephone terminal. During the
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`telephone call, voice communication takes place over that communication
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`path.” Ex. 1001, 1:29-34.
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`Ex. 2001, Page 6
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`19. The
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`’622 patent expressly distinguishes circuit-switched
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`networks from packet-switched networks (e.g., the Internet) at least in that the
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`latter routes packetized digital information, such as “Voice over Internet
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`Protocol (i.e., “VoIP”), also known as IP telephony or Internet telephony.”1
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`Id., 1:35-36. Because legacy circuit-switched devices were unable to
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`communicate directly over packet-switched networks, media gateways (114)
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`were designed to receive circuit-switched signals and packetize them for
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`transmittal over packet-switched networks, and vice versa. Id., 2:8-18. The
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`conversion effected by media gateways (e.g., 114 and 118) highlights the fact
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`that packetized data carried over packet-switched networks (e.g., IP network
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`102) are different from, and are incompatible with, an audio signal carried
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`over a dedicated packet-switched circuit. Id., 2:8-21.
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`
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`1 Consistent with the ’622 patent specification, the USPTO has also
`recognized there are significant differences between circuit-switched and
`packet-switched networks during the relevant timeframe. See, e.g., U.S.
`Application No. 90/012,728 and 90/012,789 (Notice of Intent to Issue Ex
`Parte Reexamination Certificate, dated April 10, 2014) at page 9, where the
`USPTO confirmed the following:
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`
`
`
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`Ethernet packet switching protocol, including TCP/IP, are very
`specific connectionless/packet switched protocols. In contrast to
`connection-oriented protocols, connectionless/packet switched
`protocols do not need to set up a dedicated path in advance.
`Rather, routers send fragmented messages or “packets” to their
`destination independently. Connectionless protocols have a
`number of advantages over connection-oriented protocols,
`including better use of available bandwidth.
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`Ex. 2001, Page 7
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`20. The ’622 patent further recognized that, notwithstanding the
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`advent of instant text messages, at the time of the claimed invention there was
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`no similarly convenient analog to leaving an instant voice message over a
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`packet-switched network. Id., 2:22-53. Rather, “conventionally, leaving a
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`voice message involves dialing the recipient’s telephone number (often
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`without knowing whether the recipient will answer), waiting for the
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`connection to be established, speaking to an operator or navigating through a
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`menu of options, listening to a greeting message, and recording the message
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`for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id.,
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`2:26-33.
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`21. The inventor observed, therefore, that “notwithstanding the
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`foregoing advances in the VoIP/PSTN voice communication and voice/text
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`messaging, there is still a need in the art for providing a system and method
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`for providing instant VoIP messaging over an IP network.” Id., 2:47-51. In
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`certain disclosed embodiments, the ’622 patent addressed that need, in part,
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`by providing a user-accessible client (208) that is specially configured for
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`instant voice message (IVM) and for direct communication over a packet-
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`switched network (e.g., through an Ethernet card). Id., 12:13-14. More
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`specifically, the ’622 patent teaches that certain clients (208) are specially
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`Ex. 2001, Page 8
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`configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) stored on
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`the IVM client 208,” and “transmit[] the digitized audio file 210” as
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`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g.,
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`network 204) “to the local IVM server 202.” Id., 8:8-11 and 8:21-22.
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`V. CLAIM CONSTRUCTION
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`22.
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`I have been asked to provide my opinions regarding the
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`construction of certain terms used in the claims of the ‘622 Patent as would
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`be understood by a POSITA using the BRI.
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`A.
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`“communication platform system”
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`23. Petitioners propose
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`to construe “communication platform
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`system” to mean a “system of the server which relays communications and/or
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`tracks client connection information”. Pet. at 8. In my opinion, a POSITA
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`would have realized that this construction cannot be correct because the
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`claims of the ‘622 Patent expressly defines the term:
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`
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`“a communication platform system maintaining
`connection information for each of the plurality of
`instant voice message client systems indicating
`whether there is a current connection to each of the
`plurality of instant voice message client systems”
`e.g. EX1001, 24:19-22 (emphasis added).
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`Ex. 2001, Page 9
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`24. Therefore,
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`the claims of
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`the
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`‘622 Patent define
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`the
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`“communications platform system” to be required to perform the tasks of
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`“maintaining connection information for each of the plurality of instant voice
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`message client systems” and “indicating whether there is a current connection
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`to each of the plurality of instant voice message client systems”.
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`25. For at least the reasons presented above, in my opinion, “client
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`platform system” means “a communication platform system maintaining
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`connection information for each of the plurality of instant voice message
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`client systems indicating whether there is a current connection to each of the
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`plurality of instant voice message client systems”.
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`VI. PETITIONERS’ CITED REFERENCES
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`26. Petitioners alleges that all claims, Claims 4, 5, 12, and 24-26 are
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`obvious over proposed combinations involving Zydney, Shinder, Hethmon,
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`and Moghe. I provide a brief analysis of each below.
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`A.
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`International Application WO 01/11824 (“Zydney”)
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`27. The International Application published with International
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`Publication Number WO 01/11824 A2 (“Zydney”), titled Method and system
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`for voice exchange and voice distribution, was published on February 15,
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`2001. The international application number PCT/US00/21555 by inventors
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`Herbert Zydney et al. was filed on August 7, 2000. See EX1013.
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`Ex. 2001, Page 10
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`28. Zydney “relates to the field of packet communications, and more
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`particularly to voice packet communication systems.” EX1013 at 1:4-5.2
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`29. Zydney explains “[the] present invention is a system and method
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`for voice exchange and voice distribution utilizing a voice container.”
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`EX1013 at 1:19-20 (emphasis added). Moreover, “voice containers can be
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`stored, transcoded and routed to the appropriate recipients instantaneously
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`or stored for later delivery.” Id. at 1:21-2 (emphasis added). Zydney defines
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`“voice container” as “a container object that contains no methods but
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`contains voice data or voice data and voice data properties.” Id. at 12:6-8
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`(emphasis added). A POSITA would have understood that this definition
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`means Zydney’s voice container is a data construct (viz., an “object”) used in
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`object-oriented programming languages, such as Java or C++, to hold other
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`data constructs, such as data values and other objects, but performs no
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`functions (methods). By analogy, a container object is like a box, it holds
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`things but it is not the things it holds. For example, if a box contains paper
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`clips, the actual box itself is not a paper clip.
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`30. Zydney teaches “the originator digitally records messages for
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`one or more recipients using a microphone-equipped device and the
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`
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`2 EX1003 is a copy of Zydney that has line numbers added. I refer to
`EX1003 by page and line numbers.
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`Ex. 2001, Page 11
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`software agent. The software agent compresses the voice and stores the file
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`temporarily on the PC if the voice will be delivered as an entire message.”
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`Id. at 16:1-4 (emphasis added). A POSITA would have understood that
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`Zydney may temporarily store the audio data in a file, which is another type
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`of data structure and which may even be stored on a magnetic disk drive or
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`other medium.
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`31. On the other hand, before the voice data is sent to a recipient, it
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`is placed in the voice container and the container is sent. Zydney explains this
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`process in the following:
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`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 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) (Emphasis added.)
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`
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`32. This passage explains, among other things, that Zydney’s voice
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`message is the audio data; however, it is stored in a voice container, which is
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`Ex. 2001, Page 12
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`a type of data structure, distinct from a file.3 As I mentioned above, the voice
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`container is like a box that contains the audio data, among other things,
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`but it is not the audio data. Furthermore, Zydney’s voice containers are not
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`files.
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`33. The Petitioners’ expert Dr. Lavian, cites three passages from
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`Zydney and characterizes these passages as describing “the recording of one
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`or more voice packet messages on a personal computer” as “voice files [that]
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`can be played and recorded using voice container enabled devices.” EX1002
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`at ¶ 74 (citing EX1013 at 16:1-4, 20:11-14, and 21:11-16). I have examined
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`these passages and found that they are neither consistent with nor support Dr.
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`Lavian’s characterizations. The passage that states “voice files can be played”
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`refers to playing back at the recipient’s site and do not disclose that the voice
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`message is an audio file, only that audio files can be played. This is significant
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`because a POSITA would have understood that the recipient would have been
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`able, and probably would have needed, to unpack the voice data from the
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`container, create a standard format audio file, such as an MP3 or WAV file,
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`and use a standard software player to play back the file.
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`
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`3 A “file” is a collection of data usually organized sequentially, byte-by-byte
`without built-in structural pointers. An “object” is a data construct that may
`be structured into a collection of individually addressable data structures,
`such as numbers, text, arrays, matrices, and others.
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`Ex. 2001, Page 13
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`34. Furthermore, after the voice container is received by a recipient,
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`“voice files can be played and recorded using voice container enabled
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`devices.” Id. at 21:14-16 (emphasis added). Thus, Zydney teaches that a
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`recipient must have a device that is able to process Zydney’s voice containers
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`in order to audibly play back the voice data.
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`35. Zydney’s voice container contains additional
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`information
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`(components) beyond the “voice data or voice data and voice data properties.”
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`FIG. 3 and its accompanying text explain that a considerable amount of
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`communications and application oriented information is included, such as
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`originator’s code, recipients’ codes, originating time, delivery time(s),
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`number of plays, voice container source, voice container reuse restrictions,
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`delivery priority, session values and number, and more. Id. at 23:1-12.
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`36. Zydney explains that files, such as multi-media files, may be
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`attached to a voice container. Id. at 19:2-5. Zydney states “[for] example,
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`the voice container may have digitized greeting cards appended to them to
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`present a personalized greeting (emphasis added).” Id. Zydney explains that
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`various industry standards, such as Multipurpose Internet Mail Extension
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`(MIME) format, may be used to format the voice container so that attachments
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`may be associated with it. Id. at 19:6-20:9.
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`Ex. 2001, Page 14
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`B.
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`Excerpt of Computer Networking Essentials (“Shinder”)
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`37. Computer Networking Essentials, a book by Debra Littlejohn
`
`Shinder, was published by Cisco Systems, a networking company. EX1014
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`(“Shinder”). According to Shinder, the book “helps you understand the
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`fundamentals of computer networking concepts and implementation and
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`introduces you to the client and server operating systems that run on
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`networked PCs.” Id. at xxii. Shinder’s “primary audience is professionals who
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`are beginning training in the networking industry and those who need a review
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`of basic concepts.” Id. Shinder also notes that secondary and tertiary
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`audiences include business people who “require a broad overview of the
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`concepts involved in networking ...” and general users who want to “know
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`more about how computers communicate over networks.” Id. Thus, a POSITA
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`would have understood Shinder to be an introduction and general overview of
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`computer networks, and not a detailed, advanced treatise on the subtleties of
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`the field.
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`C. Excerpt of Paul S. Hethmon, Illustrated Guide to HTTP
`(“Hethmon”)
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`38.
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`Illustrated Guide to HTTP, a book by Paul S. Hethmon, was
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`published by Manning Publications Co. EX1109 (“Hethmon”). Hethmon is a
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`description of the hypertext transfer protocol (“HTTP”). Hethmon covers the
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`material in the RFC 2068 and RFC 2069, providing a description of how the
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`Ex. 2001, Page 15
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`HTTP protocol functions. Hethmon does not provide any description of how
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`to implement HTTP in code or any programming language.
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`D. U.S. Patent No. 6,173,323 (“Moghe”)
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`
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`39. U.S. Patent No. 6,173,323 B1 (“Moghe”), titled “Adaptive
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`Polling Rate Algorithm For SNMP-Based Network Monitoring” was issued
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`on January 9, 2001. The application number 08/998,213 by Pratyush Moghe
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`was filed on December 24, 1997. See EX1119.
`
`40. Moghe relates to a network polling method, used to poll nodes
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`for status information. Moghe uses a polling method to monitor network
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`resources. See EX1119, Abstract. Moghe explains that each item is polled in
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`order (rounds). If the item does not respond it is repolled after a delay.
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`EX1119, 2:23-53. For example, Moghe explains: “Using SNMP, the network
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`manager sends a poll to each of Nj active nodes, where polls to consecutive
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`nodes are spaced by a time equal to 1/Rj” Id. 2:29-31. And “Referring to FIG.
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`2, after the last node in round j is polled, round j+l begins.” Id. 2:45-46.
`
`41. Therefore, the system of polling described by Moghe involves a
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`central station going through the list of remote stations, one at a time, asking
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`each remote station if it wishes to transmit data. The system of Moghe then,
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`is contrary to any messaging system wherein the users will often wish to
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`transmit simultaneously. Furthermore, it is contrary to both the ‘622 patent,
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`Ex. 2001, Page 16
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`

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`Zyndey, and to messaging in general, wherein the messaging is initiated by
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`the client computers, communication is not initiated by the center server.
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`VII. VALIDITY ANALYSIS
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`42.
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`I have review the claims in light of the proposed combinations
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`and believe they do not disclose the claim features.
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`A.
`
`No prima facie obviousness for dependent Claims 4, 5 and
`12
`
`43. Claims 4, 5 and 12 all ultimately depend from claim 3 (and claim
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`5 additionally depends from claim 4). Accordingly, dependent claims 4, 5 and
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`12 are all patentable over the proposed combinations at least by virtue of their
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`dependence on a nonobvious independent claim, as explained in my
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`declaration filed with Patent Owner’s Preliminary Response filed in
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`IPR2017-01667. For the convenience of the Board, the deficiencies of
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`IPR2017-01667 with respect to independent claim 3 are addressed again
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`below. Following the analysis addressing independent claim 3, additional
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`deficiencies of the present Petition with respect to claim language recited in
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`dependent claims 4 and 5 are identified.
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`Zydney distinguishes
`1.
`messages
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`voice containers
`
`from voice
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`44. The Petition repeats the same error of IPR2017-01667 here by
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`relying on Zydney’s voice container for the limitation “wherein the instant
`
`
`
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`
`
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`Ex. 2001, Page 17
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`

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`voice message includes an object field ….” Pet. 34-46. The claim language,
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`however, does not refer to a container for the “instant voice message” but
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`rather refers to the “instant voice message” itself. Notably, the ’622 patent
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`repeatedly and consistently equates the “instant voice message” to the
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`recorded audio file. EX1001, 8:7-11 (“In response to the start signal, the IVM
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`client (softphone) 2008 listens to the input audio device 212 and records the
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`user’s speech into a digitized audio file 210 (i.e., instant voice message)
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`stored on the IVM client 208.”); see also 8:16-17; 9:63-66; 10:36-39; 10:44-
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`47; 12:40-41; 16:14-17; 16:20-23; 17:22-26; 18:6-9; 18:56-58; 18:62-66;
`
`
`
`
`
`19:45-48; 20:48-51.
`
`45. Zydney’s voice container does not render the claim language
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`obvious at least because Zydney expressly distinguishes its voice container
`
`from its voice message. Petitioners incorrectly contends that Zyndey “calls”
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`voice messages by the name of voice containers. But a review of Zydney
`
`reveals that Zydney refers to its “voice messages” as “voice messages” and
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`expressly distinguishes “voice containers” from the “voice messages”
`
`contained therein. For example, Zydney teaches a voice message is stored in
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`a distinct container only after the voice message is generated and compressed:
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`“the [voice] message is first acquired, compressed and then stored in a voice
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`container 26 ….” Moreover, Zydney uses reference number 26 to refer to the
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`Ex. 2001, Page 18
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`

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`containers (which are used only for transmission); and Zydney refers, instead,
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`to reference number 30 when referring to the voice messages. EX1003, 11:1-
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`6. The above disclosures confirm that Zydney’s voice container and voice
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`message are not one and the same.
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`46. Petitioners’ reliance on alleged teachings in Zydney directed to
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`the voice container does not read on the distinguishable limitations directed,
`
`instead, to “the instant voice message” recited in independent claim 3.
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`Zydney does not render obvious “wherein the instant
`2.
`voice message includes an object field” (claims 3, 4, 5 and 12)
`
`
`
`47. Petitioners relies on Zydney for the limitation “wherein the
`
`instant voice message includes an object field.”
`
`48. A person of ordinary skill in the art would have understood that
`
`the term “field” as a term of art in the context of packet-switched networking.
`
`In the field of art, a POSITA would have understood that network packets
`
`have headers with various fields describing things such as source address,
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`destination address, port, protocol, etc.
`
`49. Petitioners concede that “Zydney does not use the word ‘field’
`
`in relation to storage of voice data ….” Pet. 35. However, Petitioners and Dr.
`
`Lavian go on to speculate that “a POSITA in the art would have understood
`
`that the voice data is contained in a field of the voice container.” Id. (citations
`
`omitted). I disagree. As Petitioners note, there is nothing in Zydney that
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`Ex. 2001, Page 19
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`

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`describes a “field”, much less an “object field” as required by the claim
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`language. Next, Petitioners state that Zydney must “necessarily” include “a
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`digitized audio file” in a distinct “object field.” Pet. 34-36. However, neither
`
`the Petition nor Dr. Lavian provides any support for that contention. It also
`
`appears that Dr. Lavian is conflating the “voice data” itself, or at least the
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`“voice container” of Zydney. However, the claim language requires that the
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`object field be included in the instant voice message.
`
`50. The Petition further speculates that Zydney must have used an
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`undisclosed “structural component” dedicated exclusively to an “audio digital
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`file” ostensibly “because without one, the recipient device could not separate
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`the voice data from the other fields of data in the voice container and play
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`back the voice data for the user – a capability the recipient in Zydney has.”
`
`Pet. at 35. However, Zydney itself shows that that is not necessarily the case.
`
`In Figure 3, an illustration of a voice container structure of Zydney, it shows
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`examples of “structural components” that each group together multiple items
`
`of information (e.g., elements 316, 318, and 320 are grouped underneath
`
`element 314). Moreover, there are many other ways that grouped information
`
`may be separated, such as by offsets and delimiters. There is no support for
`
`Petitioners’ incorrect assertion that Zydney’s silence regarding any “fields”,
`
`much less an “object field” must mean it is inherent.
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`Ex. 2001, Page 20
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`

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`51. Finally, Zydney could not have relied on the packet-switched
`
`fields of hypertext transfer protocol (“HTTP”), as it existed in August 7, 2000
`
`(Zydney’s filing date). Zydney purports to utilize transport mechanisms that
`
`rely on data compression of then-existing hardware and software available to
`
`the client: “[t]he present invention is designed to adapt to the voice and data
`
`compression capabilities of the user’s existing hardware and software.”
`
`EX1003, 11:14-16. And the only form of compression referenced in Zydney
`
`is GSM compression. EX1003 at 12:13, 25:11. Zydney could not have
`
`operated with HTTP at the time because At the time, in 2000, HTTP did not
`
`have compression. In 2003, Microsoft added compression to its IIS webserver
`
`because HTTP could not natively compress4. I