`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Rojas
`In re Patent of:
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`8,724,622
`U.S. Pat. No.:
`May 13, 2014
`Issue Date:
`Appl. Serial No.: 13/546,673
`Filing Date:
`July 11, 2012
`Title:
` SYSTEM & METHOD FOR INSTANT VOIP MESSAGING
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`Attorney Docket No.: 19473-0370IP1
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`DECLARATION OF PAUL S. MIN, Ph.D.
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`GOOGLE 1003
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`TABLE OF CONTENTS
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`ASSIGNMENT ................................................................................................. 3
`I.
`II. QUALIFICATIONS ......................................................................................... 3
`III. LEGAL PRINCIPLES ...................................................................................... 8
`A. Anticipation ................................................................................................... 8
`B. Obviousness ................................................................................................... 9
`C. Claim Construction ...................................................................................... 11
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 12
`V. MATERIALS CONSIDERED ....................................................................... 13
`VI. BACKGROUND OF THE ’622 PATENT ..................................................... 15
`A. Subject Matter Overview............................................................................. 15
`B.
`File History of the ’622 Patent .................................................................... 20
`VII. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES................................................................................................ 23
`VIII. ANALYSIS OF ZYDNEY (CLAIMS 3-8, 11, 13, 18-21) ............................ 24
`IX. ANALYSIS OF ZYDNEY IN VIEW OF ENETE (CLAIMS 3-8, 11, 13,
`AND 18-23) .................................................................................................... 56
`X. ANALYSIS OF ZYDNEY IN VIEW OF ENETE AND STERN (CLAIMS
`10 AND 14-17) ............................................................................................... 73
`XI. ANALYSIS OF ZYDNEY IN VIEW OF ENETE AND COUSSEMENT
`(CLAIM 12) .................................................................................................... 91
`XII. ANALYSIS OF ZYDNEY IN VIEW OF ENETE AND RFC2131 (CLAIM 9)
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`XIII. ADDITIONAL REMARKS .........................................................................107
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`I, Dr. Paul S. Min of St. Louis, Missouri, declare that:
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`I.
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`ASSIGNMENT
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`I have been retained as a technical expert by counsel on behalf of
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`Google Inc. (“Google” or “Petitioner”). I understand that Google is requesting that
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`the Patent Trial and Appeal Board (“PTAB” or “Board”) institute inter partes
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`review (“IPR”) proceedings of U.S. Patent No. 8,724,622 (“the ’622 patent”) (Ex.
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`1001).
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`I have been asked to provide my independent analysis of the ’622
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`patent in light of the prior art publications cited below.
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`I am not, and never have been, an employee of Google. I received no
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`compensation for this declaration beyond my normal hourly compensation based
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`on my time actually spent analyzing the ’622 patent, the prior art publications cited
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`below, and the issues related thereto, and I will not receive any added
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`compensation based on the outcome of any IPR or other proceeding involving
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`the ’622 patent.
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`II. QUALIFICATIONS
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`I earned a Bachelor of Science degree in Electrical Engineering in
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`1982, a Master of Science degree in Electrical Engineering in 1984, and a Ph.D.
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`degree in Electrical Engineering in 1987, all from the University of Michigan in
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`Ann Arbor. All of my degrees from the University of Michigan are with
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`distinction. In addition, I received several academic awards, including a best
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`graduate student award and a best teaching assistant award, during my study at the
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`University Michigan. I also received a best paper award in a major international
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`symposium for the paper based on my Ph.D. thesis.
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`After obtaining my Ph.D., I worked at Bellcore (now Telcordia
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`Technologies, Inc.) in New Jersey from August 1987 until August 1990, as a lead
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`engineer in major projects for the Regional Bell Operating Companies. In these
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`projects, I was responsible for developing and analyzing next generation
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`technologies to be incorporated in Regional Bell Operating Companies’
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`communication networks, including transmission and switching technologies based
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`on wireless and optical media and a variety of service and application
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`infrastructures.
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`In September 1990, I joined the faculty at Washington University in
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`St. Louis. I was an Assistant Professor of Electrical Engineering until June 1996,
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`and then was promoted to an Associate Professor of Electrical Engineering with
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`tenure. Since July 2002, I have been an Associate Professor of Electrical and
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`Systems Engineering at Washington University.
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` My research activities at Washington University have focused on
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`multi-media, high-speed communication and computing, including high
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`performance switches and routers used in the Internet and in various types of local
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`area networks (“LANs”). I have received grants from the National Science
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`Foundation, the Air Force Office of Scientific Research, and the Defense
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`Advanced Research Project Agency. I have also received numerous grants and
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`contracts from companies and organizations around the world, and have
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`undertaken many research projects involving development of high performance
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`switches and routers for the Internet and LANs, which include multi-media and
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`multi-services capabilities.
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`At Washington University, I have taught many courses in electronics,
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`communications, and computing, and supervised more than 50 graduate students,
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`10 of whom received a doctoral degree under my direction. I have trained a
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`number of students in these fields, many of whom are now leading professionals in
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`their respective specialties.
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`Outside the university, I have also founded two companies: MinMax
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`Technologies, Inc. (May 1997), a fabless semiconductor company, which
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`developed switch fabric semiconductor chips for the Internet, and Erlang
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`Technology, Inc. (March 1999), which focused on the design and development of
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`semiconductor chips and software for the Internet. Erlang’s switch fabric chips
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`received a best product of the year award for 2004 from a major Internet industry
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`trade journal.
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`In 1996, I participated in a competitive wireless licensure process
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`offered by the government of the Republic of Korea. Among numerous entries
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`from Korea and overseas countries including many from the U.S.A., I was the
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`primary technical author of the winning proposal by Hansol PCS for nation-wide
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`deployment of Qualcomm's CDMA cellular technology. The Hansol PCS network,
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`which I have designed, is one of the earliest commercial scale digital wireless
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`networks in the world. I also understand that the Hansol PCS network may have
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`been the first commercial scale CDMA wireless network in the world.
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`I have also served as an advisor and consultant to a number of
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`companies and organizations around the world, including Bell Atlantic Personal
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`Communications, AT&T, SBC Communications, NTT Docomo, Korea Telecom,
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`Southern New England Telecom, Electronics and Telecommunications Research
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`Institute, and SK Telecom. For example, I have designed metropolitan scale
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`wireless networks for Bell Atlantic Personal Communications (now Verizon
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`Wireless) in 1995-1996, developed routing and switching technologies for
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`Electronics and Telecommunications Research Institute during 1993-2003, and
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`consulted on traffic management and service deployment for Korea Telecom
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`during mid to late 1990s. Most of my advisory and consultant roles included
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`development, deployment, and assessment of wireless and/or wired technologies
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`integrated together to provide state-of-art communication infrastructures.
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`I have served on the program committee for the International
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`Association of Science and Technology for Development International Conference
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`on Communications, Internet and Information Technology, the Wireless and
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`Optical Communications Conference, and the International Conference on
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`Computer Communications and Networks.
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`I am a member of, and actively involved in, professional organizations.
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`For example, I am a Senior Member of the Institute of Electrical and Electronics
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`Engineers (IEEE), an Ambassador of the McDonnell International Scholars
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`Academy, the Secretary for the Saint Louis Section of the IEEE, and a member of
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`the Eta Kappa Nu Honor Society for electrical engineers.
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`I am a named inventor on nine U.S. patents and have authored
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`numerous technical papers, reports, and memoranda, and presented at numerous
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`conferences, seminars, and workshops around the world. I have also organized
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`several international conferences and served as an editor for international journals.
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`I have received a number of professional awards, such as the Wall Street Journal
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`Businessman of the Year (2003), the Outstanding Achievement Award from
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`Bellcore (1990), and the Rockwell Fellowship (1985 and 1986).
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` Based on my experience and education, I believe that I am qualified to
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`opine as to knowledge and level of skill of one of ordinary skill in the art at the
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`time of the alleged invention of the ’622 patent (which I further describe below)
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`and what such a person would have understood at that time, and the state of the art
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`during that time.
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` My curriculum vitae, which includes a more detailed summary of my
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`background, experience, and publications, is attached as Appendix A.
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`III. LEGAL PRINCIPLES
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`In forming my analysis and conclusions expressed in this declaration,
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`I have applied the legal principles described in the following paragraphs, which
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`were provided to me by counsel for the Petitioner.
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`A. Anticipation
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`I have been informed that a patent claim is invalid as anticipated
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`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
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`is found either explicitly or inherently in a single prior art reference. Under the
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`principles of inherency, if the prior art necessarily functions in accordance with, or
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`includes the claimed limitations, it anticipates.
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`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
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`if the claimed invention was known or used by others in the U.S., or was patented
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`or published anywhere, before the Applicant’s invention. I further have been
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`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
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`patented or published anywhere, or was in public use, on sale, or offered for sale in
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`this country, more than one year prior to the filing date of the patent application
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`(critical date). And a claim is invalid, as I have been informed, under 35 U.S.C. §
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`102(e), if an invention described by that claim was described in a U.S. patent
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`granted on an application for a patent (or in a published application for a U.S.
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`patent) that was filed by another in the U.S. before the date of invention for such a
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`claim.
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`B. Obviousness
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`I have been informed that a patent claim is invalid as “obvious” under
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`35 U.S.C. § 103 in light of one or more prior art references if it would have been
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`obvious to a person of ordinary skill in the art at the time of the alleged invention
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`(“POSITA”), taking into account (1) the scope and content of the prior art, (2) the
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`differences between the prior art and the claims, (3) the level of ordinary skill in
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`the art, and (4) any so called “secondary considerations” of non-obviousness,
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`which include: (i) “long felt need” for the claimed invention, (ii) commercial
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`success attributable to the claimed invention, (iii) unexpected results of the claimed
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`invention, and (iv) “copying” of the claimed invention by others. While I do not
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`know the exact date that the alleged invention claimed in the ’622 patent was made,
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`I do know that the ’622 patent claims priority to applications filed as early as
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`December 18, 2003 (Ex. 1001, cover page) and that during the prosecution of one
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`of the priority applications, the applicant provided declarations testifying to an
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`invention date as early as August 15, 2003 (Ex. 1004, 124 (generally 124-127)).
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`For purposes of my analysis here, I have applied a date of August 15, 2003 as the
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`date of the alleged invention in my obviousness analysis, although in many cases
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`the same analysis would hold true even if the date of the alleged invention
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`occurred earlier than August 15, 2003 (especially given the earlier publication or
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`filing dates of the prior art in Exhibits 1005, 1006, 1008, 1009, and 1012 as
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`described below).
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`I have been informed that a claim can be obvious in light of a single
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`prior art reference or multiple prior art references. To be obvious in light of a
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`single prior art reference or multiple prior art references, there must be a reason
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`that would have prompted a POSITA to modify the single prior art reference, or
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`combine two or more references, in a manner that provides the elements of the
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`claimed invention. This reason may come from a teaching, suggestion, or
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`motivation to combine, or may come from the reference(s) themselves, the
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`knowledge or “common sense” of a POSITA, or from the nature of the problem to
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`be solved, and this reason may be explicit or implicit from the prior art as a whole.
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`I have been informed that, under the law, the combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than
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`yield predictable results. I also understand it is improper to rely on hindsight in
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`making the obviousness determination.
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`C. Claim Construction
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`I understand that, for purposes of my analysis in this inter partes
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`review proceeding, the terms appearing in the patent claims should be interpreted
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`according to their “broadest reasonable construction in light of the specification of
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`the patent in which it appears.” 37 C.F.R. § 42.100(b). In that regard, I understand
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`that the best indicator of claim meaning is its usage in the context of the patent
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`specification as understood by a POSITA. I further understand that the words of
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`the claims should be given their plain meaning unless that meaning is inconsistent
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`with the patent specification or the patent’s history of examination before the
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`Patent Office. Also, I understand that it is important not to import into a claim any
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`limitation from the specification that is not part of the claim language. Under the
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`broadest reasonable interpretation standard, an inventor can act as his own
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`lexicographer for a claim term only where the inventor clearly and unambiguously
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`sets forth an explicit definition of a claim term in the specification.
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`I also understand that the words of the claims should be interpreted as
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`they would have been interpreted by a POSITA at the time the alleged invention
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`was made (not today). Because I do not know at what date the alleged invention
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`was made, I have used the date of August 15, 2003 for reasons explained in ¶20
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`(above) and ¶25 (below). However, the plain meanings/interpretations that I
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`employed in my analysis below would have also been correct if the date of
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`invention was anywhere within the late-1990s to early-2000s.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
` Based on my knowledge and experience in the field and my review of
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`the ’622 patent and file history, I believe that a POSITA would have had at least an
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`undergraduate degree in computer science, electrical engineering, or a related field,
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`and at least two years of experience in the field of telecommunications devices and
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`systems, or an equivalent advanced education in the field of telecommunications
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`systems. My analysis and conclusions as expressed herein are thus based on the
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`perspective of a person of ordinary skill in the art having this level of knowledge
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`and skill at the time of the ’622 patent..
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` Because Patent Owner has alleged a date of conception before August
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`15, 2003, I have used this alleged invention date as the point in time from which
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`my opinions from the perspective of one of ordinary skill in the art are based. Here
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`again, my analysis of the prior art and the conclusion herein would also apply even
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`if the date of the alleged invention as claimed was anywhere within the late-1990s
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`to early-2000s (e.g., refer to the earlier publication or filing dates of Exhibits 1005,
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`1006, 1008, 1009, and 1012).
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`V. MATERIALS CONSIDERED
` My analyses set forth in this declaration are based on my experience
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`in the field of network communication systems and associated technologies. Based
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`on my above-described experience in the field of network communication systems,
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`I believe that I am considered to be an expert in the field. Also, based on my
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`experiences, I understand and know of the capabilities of persons of ordinary skill
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`in this field during the late-1990s to early-2000s and specifically during the time
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`before the alleged invention date (August 15, 2003) for the ’622 patent, and I
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`taught, participated in organizations, and worked closely with many such persons
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`in the field during that time frame.
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` As part of my independent analysis for this declaration, I have
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`considered the following: the background knowledge/technologies that were
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`commonly known to persons of ordinary skill in this field during the time before
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`the alleged invention date for the ’622 patent; my own knowledge and experiences
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`gained from my work experience in the fields of electrical engineering and
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`network communication systems generally; my experience in teaching and
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`advising others in those subjects; and my experience in working with others
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`involved in those fields. In addition, I have analyzed the following publications
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`and materials:
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` U.S. Pat. No. 8,995,622 to Rojas (“the ’622 patent”) (Ex. 1001)
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` Select Portions of the Prosecution History of the ’622 patent (Serial
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`No. 13/546,673) (Ex. 1002)
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` Selection Portions of the Prosecution History of U.S. Pat. No.
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`7,535,890 (Serial No. 10/740,030) (Ex. 1004)
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` International Publication No. WO01/11824 (“Zydney”) (Ex. 1005)
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` International Publication No. WO98/47252 (“Stern”) (Ex. 1006)
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` U.S. Pub. No. 2002/0055967 (“Coussement”) (Ex. 1008)
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` U.S. Pub. No. 2003/0208543 (“Enete”) (Ex. 1009)
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` M. Day, et al., A Model for Presence and Instant Messaging, Internet
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`Engineering Task Force, Request for Comments 2778 (“RFC2778”)
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`(Ex. 1011)
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` R. Droms, Dynamic Host Configuration Protocol, Internet
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`Engineering Task Force, Request for Comments 2131 (“RFC2131”)
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`(Ex. 1012)
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` M. Day, et al., Instant Messaging / Presence Protocol Requirements,
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`Internet Engineering Task Force, Request for Comments 2779
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`(“RFC2779”) (Ex. 1013)
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` U.S. Pat. No. 7,372,826 (“Dahod”) (Ex. 1017)
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` Although this Declaration refers to selected portions of the cited
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`references for the sake of brevity, it should be understood that these are examples,
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`and that one of ordinary skill in the art would have viewed the references cited
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`herein in their entirety and in combination with other references cited herein or
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`cited within the references themselves. The references used in this Declaration,
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`therefore, should be viewed as being incorporated herein in their entireties.
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`VI. BACKGROUND OF THE ’622 PATENT
`A.
`Subject Matter Overview
` The technology of the ’622 patent is directed to an “instant voice
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`messaging (IVM) system.” Ex. 1001, 6:50-52. The system taught by the ’622
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`patent includes an instant voice message (IVM) server and IVM clients that
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`transmit instant voice messages over the packet-switched network (e.g., the
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`Internet) via the IVM server. Id., 6:50-7:52. Figure 2, for example, illustrates a
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`preferred embodiment of an IVM system in which a local IVM server 202
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`facilitates instant voice messaging between IVM clients 206 and 208:
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`Ex. 1001, FIG. 2. The ’622 patent teaches that the local IVM server 202 includes
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`within a “server communication platform 402” a “client manager 406” that
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`“controls the IVM clients 206, 208, providing contact presence (connection)
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`information and message scheduling and delivery.” Id., 14:67-15:3. The local
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`IVM server 202 routes instant voice messages from originating IVM clients to
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`IVM clients identified as intended recipients of the messages, and maintains the
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`current status of the IVM clients connected to the local IVM server 202, where the
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`status indicates “whether the IVM client 208 is ‘on-line.’” Id., 12:51-58.
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` An IVM client can be a general-purpose programmable computer
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`equipped with a network interface to provide connectivity to the network. Id.,
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`12:11-14. The IVM client includes a client platform for generating an instant
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`voice message and a messaging system for messaging between the IVM client and
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`the IVM server. Id., 12:4-11, FIG. 3. The client platform includes a client engine
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`which controls other components such as the document handler, file manager,
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`audio file creation, signal processing, encryption/decryption, and
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`compression/decompression. Id., 12:17-50.
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` The IVM client is connected to a microphone that enables the
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`recording of an instant voice message into an audio file for transmission to the
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`IVM server over the network. Id., 7:6-10. The IVM client is connected to an input
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`device by which a user selects recipients that are to receive the recorded instant
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`voice message. Id., 7:10-13. The IVM client is connected to a display device to
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`display instant voice messages recorded and received by the IVM client. Id., 7:15-
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`17, 7:25-28. The IVM client is also connected to a speaker for audibly playing the
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`instant voice messages. Id., 7:17-22.
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` The IVM system supports a “record mode” and an “intercom mode”
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`of operation. Id., 7:57-61. In the “record mode,” a user of the IVM client selects
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`one or more recipients from a list of recipients displayed by the IVM client. Id.,
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`8:1-7, 8:52-58, 13:13-15. The IVM client transmits the user’s selection of
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`recipients to the IVM server. Id., 8:4, 8:58-59. The IVM client records the user’s
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`speech into a digitized audio file, compresses and encrypts the audio file, and
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`transmits the audio file to the IVM server. Id., 8:7-26, 8:61-9:14, 10:59-11:29,
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`13:15-28. After receiving the audio file, the IVM server delivers the instant voice
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`message to the selected recipients via the IP network. Id., 8:27-31, 9:14-16. If a
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`recipient is not current connected to the IVM server, the IVM server temporarily
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`saves the instant voice message and delivers it when the recipient connects to the
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`IVM server. Id., 8:34-41, 9:18-23. The recipient’s device displays an indication
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`that the instant voice message has been received and audibly plays the instant voice
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`message. Id., 8:27-34, 9:15-19, 13:1-3.
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`In the “intercom mode,” the IVM system provides real-time instant
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`voice messaging. Id., 11:31-36. Instead of creating an audio file, the IVM client
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`uses one or more buffers to write successive portions of the instant message. Id.,
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`11:36-44. Once a buffer is full, the IVM client transmits the content of the buffer
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`to the IVM server for transmission to a recipient while writing the next successive
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`portion to another buffer. Id., 11:41-49. The contents of the buffer can be
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`encrypted and compressed before transmission. Id., 11:67-12:3. The buffering is
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`repeated until the entire instant voice message has been transmitted to the IVM
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`server for transmission to the recipient. Id., 11:51-60.
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` Both recorded and received instant voice messages are stored in a
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`message database of the IVM client and represented as database records. Id.,
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`12:36-40. Each database record includes a message identifier and the instant voice
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`message. Id. One or more documents may be attached to an instant voice message
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`to be stored or displayed by a recipient. Id., 12:26-34, 13:33-38. A listing of
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`available messages are displayed on the IVM client, and the messages stored in the
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`database can be sent, played, deleted, and retrieved at the request of the user of the
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`IVM client. Id., 13:4-7.
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` The ’622 patent describes traditional voice messaging used “in both []
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`VoIP and PSTN” that were well-known prior to the ’622 patent, and further
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`concedes that “[i]nstant text messaging is likewise known.” Id., 2:23-46. The ’622
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`patent goes on to explain the widely known techniques for sending text messages
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`by “select[ing] one or more persons to whom the message will be sent and typ[ing]
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`in a text message. The text message is sent immediately via the text-messaging
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`server to the selected one or more persons.” Id. at 2:34-46.
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` A significant portion of the ’622 patent specification is directed
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`toward acknowledging techniques and features that were already well-known with
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`respect to sending and receiving instant text messages and then applying them to
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`voice messages. For example, the ’622 patent describes functions such as
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`displaying a list of potential recipients for a message on a client device, allowing a
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`user of the device “to select one or more recipients that are to receive the recorded
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`instant voice message” and transmitting the instant voice message over a packet-
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`switched network (e.g., the Internet, a WAN, or a LAN) to the one or more
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`selected recipients. Id., 8:40-9:23; 7:11-24. Each of these features was well-
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`known with respect to instant text messages prior to the earliest asserted priority
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`date of the ’622 patent (as admitted by the ’622 patent itself) and are simply
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`applied by the ’622 patent to instant voice messages rather than instant text
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`messages. As I explain in greater detail below, many of these features were also
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`well-known in the area of instant voice messaging long before the earliest asserted
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`priority date of the ’622 patent, as exemplified by the Zydney reference.
`B.
`File History of the ’622 Patent
` As part of my preparation of this declaration, I reviewed the file
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`history of the ’622 patent (Ex. 1002). I understand that the application that led to
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`the ’622 patent was filed on July 11, 2012, and claimed priority to an application
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`that was filed on December 18, 2003. The ’622 patent eventually issued on May
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`13, 2014. See Ex. 1001, Cover Page.
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` The USPTO mailed a first office action on June 5, 2013. In that office
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`action, the Examiner rejected claim 1 (the only pending claim) based on non-
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`statutory double patenting and additionally under 35 U.S.C. § 102(e) over U.S. Pat.
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`No. 7,372,826 (“Dahod”) (Ex. 1017). Ex. 1002, 209-212. In response to this first
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`20
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`office action, the Applicant cancelled original claim 1 and added new claims 2-33.
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`The Applicant remarked that the “the cited portion of Dahod does not disclose or
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`suggest, ‘a network interface connected to a packet-switched network,’ as recited
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`in claim 2, or ‘a network interface coupled to the client device and connecting the
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`client device to a packet-switched network,’ as recited in claim 20.” Ex. 1002,
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`181-192.
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` The USPTO mailed a second office action on November 29, 2013. Ex.
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`1002, 166-173. In that office action, the Examiner rejected all pending claims 2-33
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`based on non-statutory double patenting and as allegedly anticipated by U.S. Pat.
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`No. 7,372,826 (“Dahod”) (Ex. 1017). Id. Additionally, claims 2, 3, 6, 11, 17, 18,
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`20, 22, 23, 26, 32, and 33 were rejected under 35 U.S.C. § 102(e) as allegedly
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`anticipated by U.S. Pat. No. 7,372,826 (“Dahod”) (Ex. 1017); claims 9 and 10
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`were rejected under 35 U.S.C. § 103(a) as allegedly obvious over Dahod in view of
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`U.S. Pat. Pub. No. 2004/0223599 (“Bear”); claim 16 was rejected under 35 U.S.C.
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`§ 103(a) as allegedly obvious over Dahod in view of U.S. Pat. Pub. No.
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`2005/0117591 (“Hurtta”); and claim 24 was rejected under 35 U.S.C. § 103(a) as
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`allegedly obvious over Dahod in view of U.S. Pat. Pub. No. 2013/0279681
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`(“Weiner”). However, dependent claims 4, 5, 7, 8, 12-15, 19, 21, 25, and 27-31
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`were “objected to as being dependent upon a rejected base claim, but would be
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`21
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`allowable if rewritten in independent form including all of the limitations of the
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`base claim and any intervening claims.” Ex. 1002, 172.
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` In response to the second office action, the Applicant amended the
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`claims so that independent claims 2, 6, 13, 20, and 29 recited features from certain
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`ones of the dependent claims that had been objected to, but which had otherwise
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`been indicated as reciting allowable subject matter. Ex. 1002, 138-152.
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` The Examiner subsequently issued a Notice of Allowance on March 6,
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`2014, stating as reasons for allowance:
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`The prior art fails to disclose applicant’s instant voice messaging
`system that has a database of user records where each record includes
`a user’s name, password, and a list of other users selected by a user.
`Neither does the prior art teach applicant’s instant voice messaging
`system that has an object field including a digitized audio file, nor
`does the instant voice messaging system include displaying a list of
`recipients for an instant voice message.
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`Id., 114.
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` As explained in detail below, and based upon my knowledge and
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`experience in this field and my review of the publications cited here, I do not agree
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`that claims 3-23 are patentable over the prior art. For example, Zydney provides a
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`straightforward teaching of an object field in an instant voice message that includes
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`a digitized audio file. Additionally, Zydney discloses the well-known practice of
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`displaying a list of potential recipients in an instant messaging system. My
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`22
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`analysis of how the prior art teaches these and the other elements of claims 3-23 is
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`set forth in Sections VIII-XII below.
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`VII. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES
` This Declaration explains the conclusions that I have formed based on
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`my independent analysis. To summarize those conclusions:
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` Based upon my knowledge and experience, and my review of the
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`prior art publications listed above, I believe that claims 3-8, 11, 13,
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`and 18-21 of the ’622 patent are anticipated in light of International
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`Publication No. WO01/11824 (“Zydney”) (Ex. 1005).
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` Based upon my knowledge and experience, and my review of the
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`prior art publications listed above, I believe that claims 3-8, 11, 13,
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`and 18-23 of the ’622 patent are obvious in light of Zydney in view of
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`U.S. Publication No. 2003/0208543 (“Enete”) (Ex. 1009).
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` Based upon my knowledge and experience, and my review of the
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`prior art publications listed above, I believe that claims 10 and 14-17
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`of the ’622 patent are obvious in light of Zydney in view of Enete and
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`International Publication No. WO98/47252 (“Stern”) (Ex. 1006).
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` Based upon my knowledge and experience, and my review of the
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`prior art publications listed above, I believe that claim 12 of the ’622
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`23
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`patent is obvious in light of Zydney in view of Enete and U.S. Pub.
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`No. 2002/0055967 (“Coussement”) (Ex. 1008).
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` Based upon my knowledge and experience, and my review of the
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`prior art publications listed above, I believe that claim 9 of the ’622
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`patent is obvious in light of Zydney in view of Enete and R. Droms,
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`Dynamic Host Configuration Protocol, Internet Engineering Task
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`Force, Request for Comments 2131 (“RFC2131”) (Ex. 1012).
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`VIII. ANALYSIS OF ZYDNEY (CLAIMS 3-8, 11, 13, 18-21)
` For the reasons articulated in detail below, and based on my review of
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`the ’622 patent, file history, and the prior art references cited here, I am confident
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`that a POSITA would have readily understood that the teachings of Zydney
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`provide all elements of claims 3-8, 11, 13, and 18-21.
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` Zydney describes a system for “voice exchange and voice distribution
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`[that] allows a software agent with a user interface in conjunction with a central
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`server to send, receive