UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC., MOTOROLA MOBILITY LLC, HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC., HUAWEI INVESTMENT & HOLDING CO.,
`LTD., HUAWEI TECHNOLOGIES CO., LTD., AND HUAWEI DEVICE
`(DONGGUAN) CO., LTD.,
`Petitioners,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`Case IPR2017-02081
`Patent 8,724,622
`
`DECLARATION OF WILLIAM C EASTTOM II
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC., MOTOROLA MOBILITY LLC, HUAWEI DEVICE CO., LTD.,
`HUAWEI DEVICE USA, INC., HUAWEI INVESTMENT & HOLDING CO.,
`LTD., HUAWEI TECHNOLOGIES CO., LTD., AND HUAWEI DEVICE
`(DONGGUAN) CO., LTD.,
`Petitioners,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`Case IPR2017-02081
`Patent 8,724,622
`
`DECLARATION OF WILLIAM C EASTTOM II
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ....................................................................................... 1
`
`BACKGROUND AND QUALIFICATIONS .............................................. 2
`
`III.
`
`LEGAL STANARDS USED IN MY ANALYSIS ....................................... 2
`
`A. Obviousness ............................................................................................ 2
`
`B. Priority Date ........................................................................................... 4
`
`C. Person of Ordinary Skill in the Art.......................................................... 4
`
`D. Broadest Reasonable Interpretation ......................................................... 6
`
`IV. OVERVIEW OF THE ‘622 PATENT ......................................................... 6
`
`V.
`
`CLAIM CONSTRUCTION ......................................................................... 9
`
`VI. VALIDITY ANALYSIS .............................................................................. 9
`
`A. No prima facie obviousness for Claims 1 and 2 ...................................... 9
`
`B. Zydney does not render obvious “wherein the instant voice messaging
`application includes a document handler system for attaching one or
`more files to the instant voice message” (claim 27) ................................10
`
`C. No prima facie anticipation or obviousness for “a display [at the client
`device] displaying a list of one or more potential recipients” and “an
`indicia for each of the one or more potential recipients indicating whether
`the potential recipient is currently available to receive an instant voice
`message” (claims 38-39) ........................................................................12
`
`VII. CONCLUSION ..........................................................................................14
`
`i
`
`
`
`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is William Charles Easttom II (Chuck Easttom) and I
`
`have been retained by Uniloc, USA, Inc., and Uniloc Luxembourg S.A.
`
`(“Uniloc” or the “Patent Owner”) to provide my expert opinions regarding
`
`U.S. Patent No. 8,724,622 (the ‘622 Patent). In particular, I have been asked
`
`to opine on whether a person of ordinary skill in the art (POSITA) at the time
`
`the inventions described in the ‘622 patent were conceived would have found
`
`all claims, Claims 1, 2, 24-34, and 36-39 (“Challenged Claims”) as
`
`unpatentable in light of the cited references and arguments in IPR2017-2081.
`
`2.
`
`Based on my review of the prior art then available, my
`
`understanding of the relevant of the relevant requirements of patent law, and
`
`my decades of experience in the field of computer science including
`
`communications systems, it is my opinion that the Challenged Claims would
`
`not have been obvious in light of the proposed combinations.
`
`3.
`
`I am being compensated for my time at my standard consulting
`
`rate of $300 per hour. I am also being reimbursed for expenses that I incur
`
`during the course of this work. Apart from that, I have no financial interest in
`
`Uniloc. My compensation is not contingent upon the results of my study or
`
`the substance of my opinions.
`
`1
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 1
`
`
`
`
`
`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`In my over 25 years of computer industry experience I have had
`
`extensive experience in communications systems, including data networks in
`
`general that have messaging capabilities. I hold 42 industry certifications,
`
`which include (among others) networking certifications. I have authored 24
`
`computer science books, several of which deal with networking topics. I am
`
`also the sole named inventor on thirteen patents.
`
`5.
`
`A more detailed description of my professional qualifications,
`
`including a list of publications, teaching, and professional activities, is
`
`contained in my curriculum vitae, a copy of which is attached hereto as
`
`Exhibit A.
`
`III. LEGAL STANARDS USED IN MY ANALYSIS
`
`6.
`
`Although I am not an attorney and I do not offer any legal
`
`opinions in this proceeding, I have been informed of and relied on certain legal
`
`principles in reaching the opinions set forth in this Declaration.
`
`A.
`
`Obviousness
`
`7.
`
`I understand that a patent claim is invalid if the differences
`
`between the subject matter and the prior art are such that the subject matter as
`
`a whole would have been obvious to a POSITA at the time of the alleged
`
`invention. I further understand that an obviousness analysis involves a review
`
`
`
`2
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 2
`
`
`
`
`
`of the scope and content of the asserted prior art, the differences between the
`
`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
`
`and objective indicia of non-obviousness such as long-felt need, industry
`
`praise for the invention, and skepticism of others in the field.
`
`8.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited prior art, the claim cannot be considered obvious.
`
`9.
`
`I have further been informed that it is improper to combine
`
`references where the references teach away from a proposed combination; and
`
`that the following factors are among those relevant in considering whether
`
`prior art teaches away:
`
`• whether a POSITA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
`• whether the prior art criticizes, discredits, or otherwise discourages
`
`investigation into the claimed invention;
`
`• whether a proposed combination would produce an inoperative
`
`result; and
`
`• whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose.
`
`
`
`3
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 3
`
`
`
`
`
`10.
`
`In addition, I have been informed that a proposed combination
`
`that changes the basic principles under which the prior art was designed to
`
`operate may fail to support a conclusion of obviousness.
`
`B.
`
`Priority Date
`
`11. The ’622 patent issued from U.S. Patent Application No.
`
`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
`
`continuation of U.S. Patent No. 7,535,890, filed on December 18, 2003. The
`
`’622 patent issued on May 13, 2014. I have assumed the priority date for the
`
`’622 patent is December 18, 2003.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`12.
`
`I understand that a POSITA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the priority date. I understand
`
`that factors that may be considered in determining the level of ordinary skill
`
`in the art may include: (a) the type of problems encountered in the art; (b)
`
`prior art solutions to those problems; (c) the rapidity with which innovations
`
`are made; (d) the sophistication of the technology; and (e) the educational
`
`level of active workers in the field.
`
`13.
`
`I have been asked to provide my opinion as to the qualifications
`
`of the person of ordinary skill in the art to which the ‘622 Patent pertains as
`
`of December 18, 2003. In my opinion, a POSITA is someone who would have
`
`
`
`4
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 4
`
`
`
`
`
`possessed on the priority date a bachelor’s degree in electrical engineering or
`
`computer science (or equivalent degree/experience) with at least two years of
`
`experience in computer programming and software development, including
`
`the development of software for communication with other computers over a
`
`network.
`
`14.
`
` I understand that Dr. Min opines that a person of ordinary skill
`
`in the art is someone who “would have had at least an undergraduate degree
`
`in computer science, electrical engineering, or a related field, and at least two
`
`years of experience in the field of telecommunications devices and systems,
`
`or an equivalent advanced education in the field of telecommunications
`
`systems.” (Ex. 1003 at ¶ 24).
`
`15.
`
`In my opinion, my and the Petitioners’ opinion concerning a
`
`person of ordinary skill in the art are essentially the same, and any differences
`
`are inconsequential to the dispute before the Board.
`
`16. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis
`
`and opinions regarding the ‘622 Patent have been based on the perspective of
`
`a person of ordinary skill in the art as of December 2003.
`
`
`
`5
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 5
`
`
`
`
`
`D. Broadest Reasonable Interpretation
`
`17.
`
`I have been informed that, for purposes of this Inter Partes
`
`Review (IPR), the terms in the claims of the ‘622 Patent are to be given their
`
`Broadest Reasonable Interpretation (BRI) in light of the specification and
`
`prosecution history of ‘622 Patent as understood by a POSITA on the priority
`
`date. I have used this standard throughout my analysis.
`
`IV. OVERVIEW OF THE ‘622 PATENT
`
`18. The ’622 patent recognized that conventional circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over
`
`such networks. According to the ’622 patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the
`
`telephone terminal to another device 20 over the [public switched telephone
`
`network or] PSTN, including another telephone terminal. During the
`
`telephone call, voice communication takes place over that communication
`
`path.” Ex. 1001, 1:29-34.
`
`19. The ’622 patent expressly distinguishes circuit-switched
`
`networks from packet-switched networks (e.g., the Internet) at least in that the
`
`latter routes packetized digital information, such as “Voice over Internet
`
`
`
`6
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 6
`
`
`
`
`
`Protocol (i.e., “VoIP”), also known as IP telephony or Internet telephony.”1
`
`
`
`Id., 1:35-36. Because legacy circuit-switched devices were unable to
`
`communicate directly over packet-switched networks, media gateways (114)
`
`were designed to receive circuit-switched signals and packetize them for
`
`transmittal over packet-switched networks, and vice versa. Id., 2:8-18. The
`
`conversion effected by media gateways (e.g., 114 and 118) highlights the fact
`
`that packetized data carried over packet-switched networks (e.g., IP network
`
`102) are different from, and are incompatible with, an audio signal carried
`
`over a dedicated packet-switched circuit. Id., 2:8-21.
`
`20. The ’622 patent further recognized that, notwithstanding the
`
`advent of instant text messages, at the time of the claimed invention there was
`
`
`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:
`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
`Huawei v. Uniloc, IPR2017-2090
`
`
`
`7
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 7
`
`
`
`
`
`no similarly convenient analog to leaving an instant voice message over a
`
`packet-switched network. Id., 2:22-53. Rather, “conventionally, leaving a
`
`voice message involves dialing the recipient’s telephone number (often
`
`without knowing whether the recipient will answer), waiting for the
`
`connection to be established, speaking to an operator or navigating through a
`
`menu of options, listening to a greeting message, and recording the message
`
`for later pickup by the recipient. In that message, the user must typically
`
`identify himself or herself in order for the recipient to return the call.” Id.,
`
`2:26-33.
`
`21. The inventor observed, therefore, that “notwithstanding the
`
`foregoing advances in the VoIP/PSTN voice communication and voice/text
`
`messaging, there is still a need in the art for providing a system and method
`
`for providing instant VoIP messaging over an IP network.” Id., 2:47-51. In
`
`certain disclosed embodiments, the ’622 patent addressed that need, in part,
`
`by providing a user-accessible client (208) that is specially configured for
`
`instant voice message (IVM) and for direct communication over a
`
`packetswitched network (e.g., through an Ethernet card). Id., 12:13-14. More
`
`specifically, the ’622 patent teaches that certain clients (208) are specially
`
`configured to “listen[] to the input audio device 212,” “record[] the user’s
`
`speech into a digitized audio file 210 (i.e., instant voice message) stored on
`
`
`
`8
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 8
`
`
`
`
`
`the IVM client 208,” and “transmit[] the digitized audio file 210” as
`
`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g.,
`
`network 204) “to the local IVM server 202.” Id., 8:8-11 and 8:21-22.
`
`V. CLAIM CONSTRUCTION
`
`22.
`
`I have been asked to provide my opinions regarding the
`
`construction of certain terms used in the claims of the ‘622 Patent as would
`
`be understood by a POSITA using the BRI.
`
`VI. VALIDITY ANALYSIS
`
`23.
`
`I have review the claims in light of the proposed combinations
`
`and believe they do not disclose the claim features.
`
`A.
`
`No prima facie obviousness for Claims 1 and 2
`
`24. Claim 1 requires a “user database storing user records”, and
`
`“wherein each of the user records includes a user name, a password and
`
`a list of other users selected by a user”. However, nothing in Zydney nor
`
`Appleman discloses a user database with user records including a user name
`
`and password. In fact, Appleman expressly describes its “Logon System” to
`
`simply “passes the User’s ID, address, or screen name to the Buddy List
`
`System”. EX1015, 6:54-59. There is nothing in Appleman to suggest user
`
`records including user names and passwords.
`
`
`
`9
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 9
`
`
`
`
`
`25. The Petition and Petitioners’ declarant, Dr. Min, concludes,
`
`without explanation or support, that the combination of Zydney and Appleman
`
`would have rendered obvious this limitation, despite no mention of user
`
`records with user names and passwords in either reference. However, Dr.
`
`Min’s declaration (paragraph 70) merely speculates that to be the case,
`
`without providing any explanation. And because there is no explanation of
`
`why a person of ordinary skill in the art would modify the prior art reference
`
`to create the claimed invention, the Petition fails to render obvious Claim 1.
`
`And because Claim 2 is dependent on Claim 1, the Petition fails as to Claim
`
`2 as well.
`
`B.
`Zydney does not render obvious “wherein the instant voice
`messaging application includes a document handler system for
`attaching one or more files to the instant voice message” (claim
`27)
`
`26.
`
` The Petition relies solely on Zydney for the limitation “wherein
`
`the instant voice messaging application includes a document handler system
`
`for attaching one or more files to the instant voice message” (recited in
`
`independent claim 27 and its challenged dependent claims).
`
`27. The Petition points to disclosure in Zydney that allegedly
`
`teaches attaching additional files (other than the digitally-recorded voice
`
`message) to a voice container. Pet. 39. However, the voice container of
`
`Zydney cannot be equated with the “instant voice message” because the claim
`
`
`
`10
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 10
`
`
`
`
`
`language requires that the one or more files be attached to the instant voice
`
`message itself. The ’622 patent repeatedly and consistently equates the
`
`“instant voice message” to the recorded audio file. EX1001, 8:7-11 (“In
`
`response to the start signal, the IVM client (softphone) 2008 listens to the
`
`input audio device 212 and records the user’s speech into a digitized audio
`
`file 210 (i.e., instant voice message) stored on the IVM client 208.”); see also
`
`8:16-17; 9:63-66; 10:36- 39; 10:44-47; 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.
`
`28. Petitioner erroneously suggests that Zydney’s voice container
`
`and voice message are one and the same. Pet. at 11. However, I have
`
`thoroughly reviewed Zydney and it is evident that Zydney expressly
`
`distinguishes between its voice containers and voice messages. For example,
`
`Zydney teaches a voice message is stored in a distinct container only after the
`
`voice message is generated and compressed: “the [voice] message is first
`
`acquired, compressed and then stored in a voice container 26 ….” Moreover,
`
`Zydney uses reference number 26 to refer to the containers (which are used
`
`only for transmission); and Zydney refers, instead, to reference number 30
`
`when referring to the voice messages. EX1005, 11:1-3.
`
`29. Therefore, Petitioners’ reliance on Zydney’s voice container
`
`does not render obvious the distinguishable limitation “a document handler
`
`
`
`11
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 11
`
`
`
`
`
`system for attaching one or more files to the instant voice message” (as recited
`
`in independent claim 27).
`
`C. No prima facie anticipation or obviousness for “a display [at
`the client device] displaying a list of one or more potential
`recipients” and “an indicia for each of the one or more potential
`recipients indicating whether the potential recipient is currently
`available to receive an instant voice message” (claims 38-39)
`
`30. Claim 38 is expressly directed to a system at the client device
`
`and recites, among other patentable limitations, “a display displaying a list of
`
`one or more potential recipients.” Claim 38 has one dependent claim (claim
`
`39), which recites the instant voice messaging application also “displays an
`
`indicia for each of the one or more potential recipients indicating whether the
`
`potential recipient is currently available to receive an instant voice message.”
`
`Thus, the plain language of Claim 39 confirms it must be at least possible for
`
`some of the potential recipients of the instant voice message to be unavailable.
`
`31.
`
`It
`
`is an
`
`intended purpose of Zydney
`
`to support
`
`the
`
`communication of voice containers to recipients regardless of whether those
`
`recipients are available or unavailable at the time the voice container is
`
`created. Zydney explicitly states that it allows unavailable recipients to be
`
`selected and stores the voice messages for such recipients. “The present
`
`invention for voice exchange and voice distribution provides the ability to
`
`store messages both locally and centrally at the server whenever the recipient
`
`
`
`12
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 12
`
`
`
`
`
`is not available”. EX1005, 2:3–5 (emphasis added). “To use the present
`
`invention system and method for voice exchange and voice distribution, the
`
`originator selects one or more intended recipients from a list of names that
`
`have been previously entered into the software agent. The agent permits a
`
`number of distinct modes of communication based on the status of the
`
`recipient. The status of all recipients entered into the software agent is
`
`frequently conveyed to the software agent by the central server. This includes
`
`whether the core states of whether the recipient is online or offline”. Id. at
`
`14:17-23.
`
`32. The Petition states that the combination of Zydney and Ente
`
`renders these limitations obvious. However, Ente teaches that only those
`
`buddies who are online can be selected as a recipient for instant messaging.
`
`EX1009, ¶¶ 64, 66. Moreover, Petitioner proffers a combination of Zydney
`
`and Ente in which the entire Buddy List System of Ente is added to Zydney.
`
`However, Ente’s buddy list does not display an offline buddy as a potential
`
`recipient for selection. Therefore, substituting Ente’s buddy list into the
`
`display of Zydney’s originator’s software agent would result in the originator
`
`of Zydney not being able to select an unavailable recipient to be a recipient
`
`of an instant voice message.
`
`
`
`13
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 13
`
`
`
`
`
`33.
`
` There could be no motivation to combine Zydney and Ente as
`
`the Petition proposes because Ente does not allow the selection of an offline
`
`recipient, as shown above. Therefore, the Petition’s proposed combination
`
`also renders Zydney unsatisfactory for an intended purpose (as described
`
`above in ¶ 31), and several operations of Zydney would cease to make sense
`
`under the proposed combination.
`
`VII. CONCLUSION
`
`34. For the reasons set forth herein, none of Claims 1, 2, 24-34, and
`
`36-39 are rendered obvious by in light of the references and testimony cited
`
`in the Petition.
`
`35.
`
`I understand that, in signing this Declaration, the Declaration will
`
`be used as evidence in an inter partes review before the Patent Trial and
`
`Appeal Board concerning the validity of the ‘622 Patent. I understand that I
`
`may be subject to cross-examination in the proceeding. I will appear for such
`
`cross-examination during the time allotted for cross-examination and at a time
`
`and location convenient for myself and the parties.
`
`36.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable
`
`
`
`14
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 14
`
`
`
`
`
`by fine or imprisonment, or both, under Section 1001 of Title 18 of the United
`
`States Code.
`
`
`
`
`
`
`Dated: January 10, 2018
`
`
`______________________________
`
`
`William C. Easttom II (Chuck)
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 15
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`EXHIBIT A
`
`16
`16
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 16
`
`Google v. Uniloc, IPR2017-2081
`Uniloc's Exhibit 2001, page 16
`
`
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