IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Rojas
`In re Patent of:
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`7,535,890
`U.S. Pat. No.:
`May 19, 2009
`Issue Date:
`Appl. Serial No.: 10/740,030
`Filing Date:
`Dec. 18, 2003
`Title:
` SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING
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`Attorney Docket No.: 19473-0372IP1
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`DECLARATION OF PAUL S. MIN, Ph.D.
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`GOOGLE 1003
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`Rojas
`In re Patent of:
`
`7,535,890
`U.S. Pat. No.:
`May 19, 2009
`Issue Date:
`Appl. Serial No.: 10/740,030
`Filing Date:
`Dec. 18, 2003
`Title:
` SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING
`
`
`
`Attorney Docket No.: 19473-0372IP1
`
`
`
`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 ’890 PATENT ..................................................... 14
`A. Subject Matter Overview............................................................................. 15
`B.
`File History of the ’890 Patent .................................................................... 17
`VII. OVERVIEW OF CONCLUSIONS FORMED AND PRIOR ART
`REFERENCES................................................................................................ 19
`VIII. ANALYSIS OF ZYDNEY (CLAIMS 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-
`43, 46-47, 49, 51-54, 57-58, AND 60) ........................................................... 20
`IX. ADDITIONAL REMARKS ........................................................................... 98
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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. 7,535,890 (“the ’890 patent”) (Ex.
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`1001).
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`I have been asked to provide my independent analysis of the ’890
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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 ’890 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 ’890 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 ’890 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 ’890 patent was made,
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`I do know that the ’890 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. 1002, 172-175). For purposes of
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`my analysis here, I have applied a date of August 15, 2003 as the date of the
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`alleged invention in my obviousness analysis, although in many cases the same
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`analysis would hold true even if the date of the alleged invention occurred earlier
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`than August 15, 2003 (especially given the earlier publication date of the prior art
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`in Exhibits 1004 and 1005 as described below). See, infra, ¶25.
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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 ’890 patent and file history, I believe that person of ordinary skill in the art at
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`the time of the alleged invention (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 two years of experience in the field of telecommunications devices and
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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 ’890 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 1004
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`and 1005).
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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 ’890 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 ’890 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. 7,535,890 to Rojas (“the ’890 patent”) (Ex. 1001)
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` Prosecution History of the ’890 patent (Serial No. 10/740,030) (Ex.
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`1002)
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` International Publication No. WO01/11824 (“Zydney”) (Ex. 1004)
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` Gralla, HOW THE INTERNET WORKS (6th Ed. 2001) (“Gralla”)
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`(Ex. 1005)
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` THE NETWORK ENCYCLOPEDIA,
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`(http://www.thenetworkencyclopedia.com/entry/packet-switching/)
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`(Ex. 1009)
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` Nwana, SOFTWARE AGENTS: AN OVERVIEW (1996),
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`(http://agents.umbc.edu/introduction/ao/) (Ex. 1010)
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` Shuler, HOW DOES THE INTERNET WORK? (2002),
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`(http://www.theshulers.com/whitepapers/internet_whitepaper/) (Ex.
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`1011)
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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 ’890 PATENT
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`A.
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`Subject Matter Overview
` The ’890 patent describes various embodiments of “an instant voice
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`messaging system . . . for delivering instant messages over a packet-switched
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`network” such as the Internet. Ex. 1001, Abstract. The ’890 patent describes
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`transmission of instant voice messages in a Voice Over IP or “VoIP” setting, while
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`also allowing for connectivity with the public switched telephone network or
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`“PTSN.” Id., 1:7-11; 2:46-48, 6:37-39. As explained by ’890 Patent, the PSTN is
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`the communications medium for “traditional telephony.” Id., 1:13-14. “In the
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`PSTN, a telephone terminal is electrically connected to a conventional or legacy
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`switch.” Id., 1:14-16. A physical communication path or “dedicated circuit”
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`between telephone terminals is established by physically manipulating the
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`switch—i.e., “circuit switching.” Id., 1:18-23. VoIP is a well-known alternative to
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`the PSTN. Ex. 1001, 1:24-26. In VoIP communications, “a VoIP terminal device
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`is connected to a packet-switched network (e.g., Internet) and voice
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`communication from the VoIP terminal device is digitized, packetized and
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`transmitted over the packet-switched network to a destination VoIP terminal
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`device[.]” Id., 1:26-30.The ’890 patent describes traditional voice messaging used
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`“in both the VoIP and PSTN” that were well-known prior to the ’890 patent, and
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`further concedes that “[i]nstant text messaging is likewise known.” Ex. 1001,
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`1:64-2:10. The ’890 patent goes on to explain the widely known techniques for
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`sending text messages by “select[ing] one or more persons to whom the message
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`will be sent and typ[ing] in a text message. The text message is sent immediately
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`via the text-messaging server to the selected one or more persons.” Id., 2:23-35.
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` A significant portion of the ’890 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 simply applying them to
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`voice messages. For example, the ’890 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. Ex. 1001, 8:30-9:12; 6:67-7:12. Each of these features was
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`well-known with respect to instant text messages prior to the earliest asserted
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`priority date of the ’890 patent (as admitted by the ’890 patent itself) and are
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`simply applied by the ’890 patent to instant voice messages rather than instant text
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`messages. Furthermore, as explained in greater detail below, not only were these
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`features well-known in the area of instant text messaging, they were also well-
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`known in the area of instant voice messaging, including instant voice messaging
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`using both PSTN and VoIP networks, well before the earliest asserted priority date
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`of the ’890 patent, as exemplified by the Zydney reference.
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`B.
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`File History of the ’890 Patent
` As part of my preparation of this declaration, I reviewed the file
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`history of the ’890 patent (Ex. 1002). I understand that the application that led to
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`the ’890 patent was filed on December 18, 2003. The ’890 patent eventually
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`issued on May 19, 2009. See Ex. 1001, Cover Page.
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` Prosecution of the ’890 patent included three rejections issued by the
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`Patent Office with three subsequent responses from the applicant. In the first
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`office action, the majority of the 76 pending claims were rejected as either
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`anticipated by U.S. Patent No. 6,763,226 to McZeal (“McZeal”) or rendered
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`obvious by McZeal in view of one or more additional references. Ex. 1002, 224-
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`230. Other claims were deemed allowable but objected to as depending from a
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`rejected base claim. Id. The applicant responded to this rejection by amending the
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`independent claims to include the subject matter recited by dependent claims 6, 21,
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`36, 46, 58 and 70 that had previously been deemed allowable. Id., 188-216. For
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`example, independent claim 1 was amended to additionally recite “the server
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`temporarily storing the instant voice message if a selected recipient is unavailable
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`and delivering the stored instant voice message to the selected recipient once the
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`selected recipient becomes available.” Id., 188. The same or a similar amendment
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`was made to each of the other pending independent claims. Id., 188-213.
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`In the second office action, the examiner rejected all pending claims
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`as being obvious based on McZeal in view of U.S. Pat. Pub. No. 2007/0174403 to
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`Barry (“Barry”) alone or one or more additional references. Ex. 1002, 176-182.
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`The applicant responded by submitting a declaration under 37 C.F.R. § 1.131
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`attesting that the claimed invention was completed prior to August 15, 2003,
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`thereby swearing behind the cited Barry reference. Id., 119-170.
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`In the third office action, the examiner rejected all pending claims as
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`obvious based on McZeal in view of U.S. Pat. Pub. No. 2004/00128356 to
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`Bernstein et al. (“Bernstein”) alone or one or more additional references. Ex. 1002,
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`105-112. The applicant responded by asserting that the cited prior art references
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`art “fail[ed] to teach (i) any consideration of availability/unavailability; (ii)
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`temporarily storing the instant voice message; and (iii) delivering the stored
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`instant voice message to the selected recipient once the selected recipient becomes
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`available.” Id., 94 (emphasis original).
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` The Examiner subsequently issued a Notice of Allowance on
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`December 5, 2008, stating as reasons for allowance:
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`The prior art fails to teach/disclose applicant’s instant voice
`messaging system having a server that temporarily stores an instant
`voice message if a recipient is unavailable.
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`Id., 80. Based on my review of the record, it appears that none of the prior art
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`publications listed above (and which I analyze below) were cited in any office
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`action by the Examiner during prosecution.
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` As explained in detail below, 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 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-43, 46-47, 49, 51-54, 57-58, 60
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`are patentable over the prior art. The Zydney reference (Ex. 1004), for example,
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`does in fact provide a straightforward teaching of an “instant voice messaging
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`system having a server that temporarily stores an instant voice message if a
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`recipient is unavailable,” the precise feature which originally lead to allowance of
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`the claims of the ’890 patent.
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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 1-6, 9-10, 12,
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`14, 16-20, 23-24, 26, 40-43, 46-47, 49, 51-54, 57-58, 60 of the ’890
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`patent are anticipated by International Publication No. WO01/11824
`
`(“Zydney”).
`
`
`
`19
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`
`
`VIII. ANALYSIS OF ZYDNEY (CLAIMS 1-6, 9-10, 12, 14, 16-20, 23-24, 26,
`40-43, 46-47, 49, 51-54, 57-58, AND 60)
` For the reasons articulated in detail below, and based on my review of
`
`the ’890 patent, file history, and the prior art references, I am confident that a
`
`POSITA would have readily understood that the teachings of Zydney plainly
`
`provide all elements of claims 1-6, 9-10, 12, 14, 16-20, 23-24, 26, 40-43, 46-47, 49,
`
`51-54, 57-58, and 60.
`
` Zydney describes a system for “voice exchange and voice distribution
`
`[that] allows a software agent with a user interface in conjunction with a central
`
`server to send, receive and store messages using voice containers.” Ex. 1004, 1:19-
`
`2:10. Zydney describes that “voice containers can be stored, transcoded and routed
`
`to the appropriate recipients instantaneously or stored for later delivery.” Id.
`
`Specifically, Zydney discloses the very feature identified by the examiner of
`
`the ’890 patent in the reasons for allowance that was allegedly missing from the
`
`prior art: “the ability to store messages both locally and centrally at the server
`
`whenever the recipient is not available for a prescribed period of time” such that
`
`once the recipient device is available “all messages that have been stored on the
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`message server will be sent to the appropriate software agent.” Id., 2:3-10; 25:1-9.
`
` Not only does Zydney disclose the feature believed to be missing
`
`from the prior art, Zydney further discloses each and every element of claims 1-6,
`
`9-10, 12, 14, 16-20, 23-24, 26, 40-43, 46-47, 49, 51-54, 57-58, and 60, including
`
`
`
`20
`
`
`
`communication of instant voice messages over a packet switched network with
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`PSTN support. FIGs. 1 and 1A (reproduced below) of Zydney show the system
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`architecture of Zydney that allows for recording and transmission of instant voice
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`messages to and from devices connected to both a packet-switched network (e.g.,
`
`the Internet) and the PTSN. Zydney’s system utilizes a sender software agent (22,
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`yellow) interfacing with a central server (24, pink) to send a voice container (26) to
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`a recipient software agent (28, blue). Ex. 1004, 10:11-11:22. Communications
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`between the software agents (22, 28) and the central server (24) are conducted over
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`one or more packet-switched networks, such as the Internet (purple), intranets,
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`and/or extranets, with traditional PSTN network (orange) support. Id., 5:3-14.
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`Ex. 1004, FIG. 1A (annotated).
`
`
`
`21
`
`
`
`
`
` Zydney’s system allows a user of the “PC Software Agent” (22) to
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`locally record a voice message that is “stored in a voice container” that is then
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`transmitted over the Internet to the central server. Ex. 1004, 10:11-11:22. The
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`central server (24) receives the voice container and either instantly delivers the
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`voice message if the recipient device is available, or stores the voice message for
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`later delivery once the recipient device becomes available. Ex. 1004, 1:19-2:10;
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`10:11-11:22; 13:12-22; 25:1-13; FIG. 8.
`
` Based on my review of the intrinsic record of the ’890 patent and
`
`Zydney, and my knowledge and experience in the field, I am confident that a
`
`POSITA would have readily recognized that all the elements of claims 1-6, 9-10,
`
`12, 14, 16-20, 23-24, 26, 40-43, 46-47, 49, 51-54, 57-58, and 60 are disclosed by
`
`Zydney. As part of my analysis, I will address each of the elements of claims 1-6,
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`9-10, 12, 14, 16-20, 23-24, 26, 40-43, 46-47, 49, 51-54, 57-58, and 60 as follows.
`
`[1.0] An instant voice messaging system for delivering instant
`messages over a packet-switched network, the system comprising:
` Even if the preamble of claim 1 is considered to be a limiting element
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`of claim 1, Zydney teaches an instant voice messaging system for delivering
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`instant messages over a packet-switched network. For example, Zydney discloses
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`a system “for voice exchange and voice distribution” that routes “voice containers”
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`containing instant voice messages “to the appropriate recipients instantaneously”
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`when the recipient devices are available. Ex. 1004, 1:19-22. These messages are
`
`
`
`22
`
`
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`delivered over a “packet-switched network” specifically the Internet. Id., 1:3-2:10
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`(“This invention relates to the field of packet communications”); 5:3-18; 10:11-
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`11:22. As Zydney describes the “voice intercom system with instant messaging [is]
`
`distributed over the Internet.” Ex. 1004, 10:11-23. Based upon my knowledge and
`
`experience in this field and my review of the publications cited herein, it is clear
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`that a POSITA would have recognized that the Internet operated as a packet-
`
`switched network. Indeed, this widely known fact was corroborated in a variety of
`
`contemporary publications at the time. See, e.g., Ex. 1009, 1 (“The Internet is the
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`prime example of a packet-switched network.”).
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`[1.1.a] a client connected to the network
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` Zydney discloses a client connected to the network. For example, as
`
`shown in FIG. 1A, Zydney’s system includes multiple PC software agents
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`connected to the Internet (e.g., the packet-switched network in Zydney’s system)
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`that function as both sender and recipient devices:
`
`
`
`23
`
`
`
`
`
`Ex. 1004, FIG. 1A (annotated).
`
` Zydney discloses that the software agents communicate with "a
`
`central server to send, receive and store messages using voice containers." Ex.
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`1004, 1:19-2:10; 10:11-11:22. The software agent provides a user interface that
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`allows users to select intended recipients for the instant voice messages. Id.,
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`10:19-23; 13:19-14:23. Zydney describes the software agent as "a simple software
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`agent loaded on a Personal Computer (PC) or other Internet compatible appliance."
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`Id., 14:2-5. A POSITA reading Zydney in its entirety would have understood that
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`the known fact that a software agent is a component of software and/or hardware
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`which is capable of acting exactingly in order to accomplish tasks on behalf of its
`
`
`
`24
`
`
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`user. Indeed, this fact is corroborated by Zydney itself, which incorporates by
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`reference a publication providing an overview of software agents. Id., 10:1-9
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`(incorporating by reference "Software Agents: An Overview", included as Ex.
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`1010 and explaining on page 2 that software agents are "a component of software
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`and/or hardware which is capable of acting exactingly in order to accomplish tasks
`
`on behalf of its user").
`
` Zydney discloses numerous different devices that can function
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