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 IPR2017-02084
`Patent 7,535,890
`
`DECLARATION OF DR. VAL DIEULIIS
`
`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________
`
`FACEBOOK, INC. AND WHATSAPP, INC.,
`
`Petitioners,
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`______________
`
`Case IPR2017-01523
`U.S. Patent 7,535,890
`______________
`
`DECLARATION OF DR. VAL DIEULIIS
`
`
`
`SEPTEMBER 8, 2017
`
`
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 1
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`
`TABLE OF CONTENTS
`
`1. INTRODUCTION ......................................................................................... 5
`
`2. QUALIFICATIONS ...................................................................................... 6
`
`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 9
`
`4. INFORMATION CONSIDERED ...............................................................11
`
`5. LEGAL STANDARDS .................................................................................12
`
`6. THE ’890 PATENT ......................................................................................13
`
`6.1 Claims.................................................................................................... 21
`
`7. ORDINARY SKILL IN THE ART .............................................................23
`
`8. INTERNATIONAL APPLICATION WO 01/11824
`(“ZYDNEY”) ................................................................................................24
`
`9. ZYDNEY DOES NOT RENDER OBVIOUS ANY
`CHALLENGED CLAIM OF THE ’890 PATENT .....................................36
`
`9.1 Zydney Does Not Disclose “transmitting the selected
`recipients and the instant voice message therefor over the
`network” or “the server receiving the selected recipients
`and the instant voice message therefor” (Claim 1) ................................. 38
`9.1.1 Zydney Does Not Disclose that “the selected
`recipients” are transmitted or received ........................................ 38
`9.1.2 Zydney Does Not Disclose the Separate
`Transmission of the Voice Data and the List of
`Recipients ................................................................................... 41
`9.2 Zydney Does Not Disclose “transmitting the selected
`recipients and the instant voice message therefor over the
`network from the client to a server” or “the server
`receiving the selected recipients and the instant voice
`message therefor at the server” (Claim 40) ............................................ 43
`
`10. ZYDNEY DOES NOT DISCLOSE OR RENDER OBVIOUS
`THE FURTHER LIMITATIONS OF DEPENDENT CLAIM 5,
`6, 42, OR 43 ...................................................................................................43
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`10.1 The Petitioners fail to show that Zydney discloses
`“wherein the server delivers the instant voice message to
`the selected recipients that are available” (Claim 5) and
`“delivering the instant voice message from the server to
`the selected recipients that are available” (Claim 42) ............................. 45
`10.2 The Petitioners fail to show that Zydney discloses
`“wherein the client records the instant voice message in
`an audio file, transmits the audio file to the server, and
`the server delivers the audio file to the selected
`recipients, the selected recipients being enabled to
`audibly play the audio file” (Claim 6) and “recording the
`instant voice message at the client in an audio file;
`transmitting the audio file to the server; delivering the
`audio file from the server to the selected recipients; and
`audibly playing the audio file at the least one of the
`selected recipients.” (Claim 43) ............................................................. 48
`10.2.1 Zydney does not disclose or render obvious
`“transmitting the audio file to the server” ................................... 49
`10.2.2 Zydney does not disclose or render obvious “the
`server delivers the audio file to the selected
`recipients” .................................................................................. 50
`10.2.3 Zydney does not disclose or render obvious
`“audibly playing the audio file” .................................................. 51
`
`11. U.S. PATENT NO. 6,750,881 (“APPELMAN”) ..........................................53
`
`12. THE PROPOSED COMBINATION OF ZYDNEY IN VIEW OF
`APPELMAN AND MARTIN-FLATIN FAILS TO RENDER
`OBVIOUS CLAIM 4 OR 41 OF THE ’890 PATENT ................................56
`
`12.1 The Proposed Combination of Zydney and Appelman is
`Improper Because the Combination of Zydney and
`Appelman Would Render Zydney Unsatisfactory for an
`Intended Purpose of Zydney .................................................................. 57
`12.2 The Proposed Combination of Zydney in view of
`Appelman and Martin-Flatin Fails to Render Obvious
`“wherein the client requests a list of recipients associated
`with the client from the server and the server transmits
`the list of recipients to the client for selection of the one
`or more recipients” (Claim 4)................................................................. 60
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`12.2.1 Zydney does not disclose the client “requesting a
`list of recipients associated with the client from
`the server” .................................................................................. 61
`12.2.2 Zydney does not disclose the server transmitting
`the list of recipients to the client ................................................. 63
`12.3 The Proposed Combination of Zydney in view of
`Appelman and Martin-Flatin Fails to Render Obvious
`“requesting from the client a list of recipients associated
`with the client from the server; and transmitting from the
`server the list of recipients to the client for selection of
`the one or more recipients” (Claim 41) .................................................. 64
`
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
`
`1.
`
`1.
`
`Introduction
`
`My name is Val DiEuliis, and I have been retained by
`
`Uniloc, USA, Inc. and Uniloc Luxembourg S.A. (“Uniloc” or the “Patent
`
`Owner”). My client Uniloc and its associated counsel, Etheridge Law
`
`Group, have asked me to study U.S. Patent No. 7,535,890 (“the ’890
`
`patent”), the Petition, the proffered prior art in this case, and other
`
`relevant documents. I document my findings in this declaration.
`
`2.
`
`I have concluded that International Application
`
`WO 01/11824 (“Zydney”) [EX1003], alone or in view of Appelman
`
`[EX1004] and Martin-Flatin [EX1009] does not render obvious any
`
`challenged claim of the patent at issue, the’890 patent, at least for the
`
`following reasons:
`
`• Zydney fails to disclose “transmitting the selected recipients and
`
`the instant voice message therefor over the network” recited in
`
`independent claim 1.
`
`• Zydney fails to disclose “the server receiving the selected
`
`recipients and the instant voice message therefor” recited in
`
`independent claim 1.
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`
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`• Zydney fails to disclose “transmitting the selected recipients and
`
`the instant voice message therefor over the network from the client
`
`to a server” recited in independent claim 40.
`
`• Zydney fails to disclose “receiving the selected recipients and the
`
`instant voice message therefor at the server” recited in independent
`
`claim 40.
`
`3.
`
`In addition, the Petitioners fail to show that the further
`
`limitations of at least dependent claims 5, 6, 42, or 43 are rendered
`
`obvious.
`
`4.
`
`The limited scope of my opinions and analysis in this
`
`declaration do not imply that I may not later express other opinions or
`
`report other results from other investigations concerning other issues
`
`raised by the Petitioners or their experts in this IPR.
`
`2.
`
`5.
`
`Qualifications
`
`I am an electrical engineer with over 45 years of experience
`
`developing, programming, and analyzing computer algorithms and
`
`software. I am experienced with and able to create, read, and interpret
`
`firmware and software in C, C++, Java, assembly language, HTML, and
`
`other computer programming languages. I have served as an expert
`
`witness in multiple cases for which I analyzed computer source code in
`
`
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`various languages and testified at ITC hearings and two jury trials
`
`concerning my results.
`
`6.
`
`During my career, I have developed and managed projects
`
`for various applications, including sensors, controls, communications,
`
`user interfaces, device firmware, handheld devices, medical devices and
`
`systems, and test systems for optical and magnetic disk systems.
`
`7.
`
`I have designed, developed, and implemented hardware and
`
`software for digital communication networks, including factory
`
`networks; document capture and distribution; and communications links
`
`for various applications. See DiEuliis CV (See e.g., Website
`
`Development, Industrial Valve Position Sensor, Condition-Based
`
`Maintenance System, Avionics Environmental Monitor, Radio Frequency
`
`Billboard Network, Wireless Bar Code System for Hospitals, and ISA
`
`Board for 4-Port RS422 Serial Communications Multiplexer.). See also
`
`Id. at 3 (Digital Document Storage Technology). I also developed an
`
`optical disk digital data storage system that captured, recorded, played
`
`back, and stored digital audio data. Id. at 2 (Optical Disk Technology).
`
`8.
`
`As a graduate student at the University of
`
`Illinois at Urbana-Champaign, I obtained extensive training in the
`
`complexity of algorithms; the complexity of databases; information
`
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`theory; combinatorics and combinatorial algorithms; and the mathematics
`
`and algorithms of error correcting codes, a field closely related to
`
`cryptography. In addition, as a part of my graduate research, I created and
`
`developed heuristic algorithms and wrote software to synthesize
`
`non-linear codes for optimizing the spectra of coded digital
`
`communications signals.
`
`9.
`
`I received the Ph.D. and M.S. degrees in electrical
`
`engineering from the University of Illinois at Urbana-Champaign in 1978
`
`and 1976, respectively, and the B.S. degree in electrical engineering from
`
`the University of Notre Dame in 1972. I am a Registered Professional
`
`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
`
`of the Institute of Electrical and Electronics Engineers (IEEE).
`
`Additionally, I am a co-inventor of two patents.
`
`10.
`
`I have been an independent engineering consultant, doing
`
`business as Electronics Consultants, since 1984. My clients have
`
`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
`
`among others. Prior to that, I worked as a research engineer for the 3M
`
`Company in St. Paul, Minnesota for five years. In addition, before my
`
`graduate studies, I worked as an electrical engineer in the U. S. Army
`
`
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`with the U.S. Army Security Agency for two years, during which time I
`
`held a Top Secret W/Crypto and SI Access security clearance.
`
`11.
`
`As an adjunct instructor at the University of Saint Thomas in
`
`St. Paul, Minnesota, I developed and presented a lecture on classical
`
`linear control theory for graduate students; developed and taught a
`
`graduate course on computer networks; and taught an undergraduate
`
`analog and digital electronics course to mechanical engineering students.
`
`12.
`
`This and other information about my background is included
`
`in my CV, which is attached to this declaration as Attachment A.
`
`3.
`
`13.
`
`Compensation, Testimony, and Publications
`
`I am being paid $440 per hour for the time I spend working
`
`on this matter. My compensation is not contingent on my performance,
`
`the outcome of this IPR, or any issues involved in or related to this IPR.
`
`14.
`
`During the past four years, I have testified at trial, hearing,
`
`or deposition in the following cases:
`
`• Terremark North America, LLC, et al. v. Joao Control &
`
`Monitoring Systems, LLC.; US PTO Inter Partes Review
`
`IPR2015-01466; Joao Control & Monitoring on behalf of Joao
`
`Control & Monitoring; 2016. I testified at a deposition.
`
`
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`
`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
`
`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
`
`2016. I testified at a deposition.
`
`• Sega of America, Inc. et al. v. Uniloc USA, Inc. et al.; USPTO
`
`Inter Partes Review IPR2014-01453; Uniloc USA on behalf of
`
`Uniloc USA; 2015. I testified at a deposition.
`
`• Uniloc USA, Inc. et al. v. Activision Blizzard, Inc. et al.; United
`
`States District Court for the Eastern District of Texas (Tyler); Civil
`
`Action No. 6:13-cv-00256-LED; and Uniloc USA, Inc. v.
`
`Electronic Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson
`
`Bumgardner Casto and Carter, Scholer, Arnett, Hamada, and
`
`Mockler on behalf of Uniloc USA et al.; 2013-2014. I testified at
`
`three depositions and a jury trial.
`
`• In the Matter of Certain Optical Disc Drives, Components thereof,
`
`and Products Containing Same; U.S.I.T.C. Investigation No.
`
`337-TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
`
`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
`
`Lenovo, Greenberg Traurig on behalf of LG Electronics,
`
`McDermott Will & Emery on behalf of Nintendo and Panasonic,
`
`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
`
`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
`
`deposition.
`
`• Taser International, Inc. v. Karbon Arms, LLC; United States
`
`District Court for the District of Delaware; Civil Action No.
`
`
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`
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`15.
`
`4.
`
`16.
`
`1:11-cv-426-RGA; Smith, Gambrell & Russell, LLP, on behalf of
`
`Karbon Arms, 2013. I testified at a deposition.
`
`I have had no publications in the past 10 years.
`
`Information Considered
`
`In order to arrive at my opinions, I have reviewed and
`
`considered the materials listed below:
`
`• Petition for Inter Partes Review of U.S. Patent No. 7,535,890
`
`(Petition 1 of 2 – Claims 1-6, 9, 40-43, 46) and exhibits, Case No.
`
`IPR2017-01523, June 2, 2017 [Pet.]
`
`• U.S. Patent No. 7,535,890 (“’890”) [EX1001], and its prosecution
`
`history
`
`• Declaration of Tal Lavian, Ph.D., June 1, 2017 [EX1002]
`
`• International Application WO 01/11824 (“Zydney”) [EX1003]
`
`• U.S. Patent No. 6,750,881 (“Appelman”) [EX1004]
`
`• Excerpt of Computer Networking Essentials, Debra Littlejohn
`
`Shinder, Cisco Systems, Inc., 2002 (“Shinder”) [EX1008]
`
`• Technical Article: Push vs. Pull in Web-Based Network
`
`Management, J.P. Martin-Flatin, 1999 [EX1009]
`
`
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`5.
`
`17.
`
`Legal Standards
`
`I understand there are certain legal rules, standards, or
`
`requirements that I accept for the purpose of my analysis of the opinions
`
`and conclusions set forth in this declaration.
`
`18.
`
`I understand a patent is obvious “if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
`
`determination must be based on four factual inquiries: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
`
`of nonobviousness.
`
`19.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the prior art, the claim cannot be considered obvious.
`
`20.
`
`I further understand that it is improper to combine references
`
`where the references teach away from their combination. A prior art
`
`reference teaches away from the claimed invention when a person of
`
`ordinary skill, upon reading the reference would be led in a direction
`
`divergent from the path that was taken by the applicant. Prior art also
`
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`teaches away when it criticize[s], discredit[s], or otherwise discourage[s]
`
`investigation into the claimed invention. Additionally, a reference teaches
`
`away from a combination when using it in that combination would
`
`produce an inoperative result. A reference also teaches away from a
`
`combination when using it in that combination would render the
`
`invention described in the reference unsatisfactory for its intended
`
`purpose.
`
`21.
`
`In addition, I understand that if a proposed modification or
`
`combination of the prior art would change the principle of operation of
`
`the prior art device being modified, then the teachings of the references
`
`are not sufficient to render the claims prima facie obvious.
`
`6.
`
`22.
`
`The ’890 Patent
`
`U.S. Patent No. 7,535,890 (“’890”), titled System and
`
`method for instant VoIP messaging, was issued on May 19, 2009. The
`
`application 10/740,030, by inventor Michael J. Rojas, was filed on
`
`December 18, 2003. See EX1001.
`
`23.
`
`The ’890 patent “relates to Internet telephony (IP
`
`telephony). More particularly, the present invention is directed to a
`
`system and method for enabling local and global instant VoIP
`
`
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`messaging over an IP network, such as the Internet, with PSTN
`
`support.” Id. at 1:7-11.
`
`24.
`
`The ’890 patent provides the historical context in its prior art
`
`discussion by noting that “[traditional] telephony is based on a public
`
`switched telephone network (i.e., “PSTN”). EX1001 at 1:13-23. This is
`
`the well-known telephone system that has served the world for well over
`
`a century.
`
`25.
`
`The ’890 patent further explains “An alternative to the
`
`PSTN is Voice over Internet Protocol (i.e., "VoIP"), also known as IP
`
`telephony or Internet telephony. Id. at 1:24-26. The patent elaborates as
`
`follows:
`
`In the IP telephony, a VoIP terminal device is
`connected to a packet-switched network (e.g.,
`Internet) and voice communication from the
`VoIP terminal device is digitized, packetized
`and transmitted over the packet-switched
`network to a destination VoIP terminal device,
`which reconstructs the packets and audibly
`plays, stores or otherwise processes the
`transmission. The VoIP terminal device may be a
`VoIP telephone or a general-purpose personal
`computer (PC) enabled for IP telephony. More
`specifically, the PC is programmed with the
`software and equipped with audio input/output
`devices (e.g., a combination of microphone and
`
`
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`speaker or a headset) to serve as a VoIP terminal
`device. The PC so enabled and equipped will
`herein be referred to as a VoIP terminal device or a
`VoIP softphone.
`(Id. at 1:26-39) (Emphasis added.)
`
`
`26.
`
`After noting that VoIP and instant text messaging were
`
`known arts, the ’890 patent explains the motivation for its invention as
`
`follows:
`
`However, notwithstanding the foregoing advances
`in the VoIP/PSTN voice communication and
`voice/text messaging, there is still a need in the
`art for providing a system and method for
`providing instant VoIP messaging over an IP
`network. More particularly, there is a need in the
`art for providing local and global instant voice
`messaging over VoIP with PSTN support.
`(Id. at 2:36-42) (Emphasis added.)
`
`
`27.
`
`FIG. 2, reproduced below is “an exemplary illustration of a
`
`local instant voice messaging (IVM) system 200 according to the
`
`present invention.” Id. at 2:40-42. The instant voice messaging system
`
`200 comprises a local IVM server 202 that “provides the core
`
`functionality for enabling instant voice messaging with PSTN support
`
`according to the present invention.” Id. at 6:42-45 (emphasis added).
`
`
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`
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`FIG. 2 of the ’890 Patent: System Diagram of the Instant Voice
`Messaging System (IVM)
`
`
`
`28.
`
`The local IVM server 202 “is enabled to provide instant
`
`voice messaging to one or more IVM clients 206 and 208, as well support
`
`instant voice messaging for PSTN legacy telephones 110.” Id. at 6:47-51.
`
`The local IP network 204, a packet-switched network, connects the IVM
`
`server 202 to clients 208 (viz., a computer system), VoIP Phone 206, and
`
`legacy telephone 110 (e.g., a land-line phone). Clients incorporate
`
`devices such as microphones, which enable a person’s voice to be
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`recorded, and speakers to allow voice messages to be heard by the users.
`
`Id. at 6:51-67.
`
`29.
`
` A POSITA would have understood, upon studying the
`
`totality of the ’890 patent, and specifically the written descriptions above
`
`and elsewhere in the ’890 patent, that “clients” in the ’890 patent are
`
`devices, such as computers and telephones, and not the people who use
`
`the devices. See e.g., Id. at 9:18-19. The patent expresses this in the
`
`following exemplary passages:
`
`The IVM client 208 is a general-purpose
`programmable computer equipped with a
`network interface (not shown), such as an Ethernet
`card, to provide connectivity to the network 204.
`(Id. at 12:2-5)
`
`The user operates the IVM client 208 by using
`the input device 218 to indicate a selection of one
`or more IVM recipients from the list.
`(Id. at 7:58-61; also 8:46-48 [“the user operates ...
`using a keypad ...”]) (Emphasis added.)
`
`The one or more recipients are enabled to display
`an indication that the instant voice message has
`been received and audibly play the instant voice
`message to an associated user.
`(Id. at 8:19-22) (Emphasis added.)
`
`
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 17 of 65
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 17
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`30.
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`The above exemplary passages demonstrate that the user is
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`not the client, which is a device, but rather an entity (e.g., person, another
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`device, software) that interfaces with and operates the client device using
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`input and output devices.
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`31.
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`The first passage above explicitly discloses that the client is
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`a computer. The second passage explicitly discloses that the “user”
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`operates the client.
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`32.
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`Finally, the third passage explains that “recipients are
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`enabled to ... “audibly play the instant voice message to an associated
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`user.” Id. This exemplary statement explains that a “recipient” is not the
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`“user.” A POSITA would have understood, after studying the totality of
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`the ’890 patent, that “recipients” are client devices, not people.
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`33.
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`Regarding the operation of at least one embodiment, the
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`’890 patent explains “the IVM client (VoIP telephone) 208 is connected
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`over the network 204 to the IVM server 202, which as aforementioned
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`enables instant voice messaging functionality over the network 204.”
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`Id. at 8:39-42. The operations proceed generally, according to an
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`exemplary embodiment, as follows:
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`• The client displays a list, provided and stored by the server, of one
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`or more IVM recipients. Id. at 8:42-44.
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 18 of 65
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`Google v. Uniloc, IPR2017-2084
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`• “The user operates the IVM client 206 by using a keypad on the
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`VoIP telephone 206 to indicate a selection of one or more IVM
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`recipients from the list.” Id. at 8:46-48.
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`• The client transmits the selection of the recipient(s) to the server.
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`Id. at 8:48-49.
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`• The client begins recording audio and the user speaks into a
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`microphone or headset or telephone handset of the client.
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`Id. at 8:52-54.
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`• The client records the user’s speech into an audio file, which may
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`be stored in a storage device (e.g., memory, magnetic disk). Id. at
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`9:1-4; see also Id. at 8:11-15.
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`• The client transmits the recorded audio file (i.e., instant voice
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`message) to the server via the network. Id. at 8:67-9:2; see also
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`Id. at 8:14-16.
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`• The server transmits the instant voice message (that is, the audio
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`file) to the recipient(s) who are currently connected to the network.
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`Id. at 9:2-11. If a recipient is not currently connected to the
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`network, the server temporarily saves the instant voice message
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`and delivers it to the IVM client when the IVM client connects to
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`the local IVM server. Id.
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`34.
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`The ’890 patent also teaches “when an instant voice message
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`is to be transmitted to the one or more IVM recipients, one or more
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`documents may be attached to the instant voice message to be stored
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 19 of 65
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 19
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`or displayed by the one or more selected IVM recipients.”
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`Id. at 12:22-26. Furthermore, regarding attachments, the patent teaches:
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`The user may also open any file attachments and
`move or save the files to a separate location on the
`client using a drag-and-drop process.
`(Id. at 12:67-13:3) (Emphasis added.)
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`The attachment of one or more files is enabled
`conventionally via a methodology such as
`"drag-and-drop" and the like, which invokes the
`document handler 306 to make the appropriate
`linkages to the one or more files and flags the
`messaging system 320 that the instant voice
`message also has the attached one or more files.
`(Id. at 13:26-31)
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`35.
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`In my opinion, a POSITA would have understood that the
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`inventor refers to files, such as documents, spreadsheets, pictures, and so
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`forth, as entities separate from the audio file itself, and that the term
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`attachment should be interpreted as other files or information that are
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`sent with a message. For example, a text message may contain a picture
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`attachment, which is a separate file that is distinct from the actual text in
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`the message.
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 20 of 65
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 20
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`6.1
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`36.
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`Claims
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`In this declaration, I primarily focus on the following
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`limitations recited by the challenged claims.
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`37.
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`First, claims 1 and 40, independent system claims, recite the
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`following limitations:
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`transmitting the selected recipients and the instant
`voice message therefor over the network
`(EX1001 at 23:60-61) (Claim 1)
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`the server receiving the selected recipients and the
`instant voice message therefor
`(Id. at 23:60-64) (Claim 1)
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`transmitting the selected recipients and the instant
`voice message therefor over the network from the
`client to a server
`(Id. at 28:27-29) (Claim 40)
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`receiving the selected recipients and the instant
`voice message therefor at the server
`(Id. at 28:30-31) (Claim 40)
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`38.
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`Second, claims 4 and 41, dependent on claims 1 and 40,
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`respectively, recite the further limitations as follows:
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`wherein the client requests a list of recipients
`associated with the client from the server and the
`server transmits the list of recipients to the client
`for selection of the one or more recipients
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 21 of 65
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`Google v. Uniloc, IPR2017-2084
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`(Id. at 24:8-12) (Claim 4)
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`wherein the method further comprises: requesting
`from the client a list of recipients associated with
`the client from the server; and transmitting from
`the server the list of recipients to the client for
`selection of the one or more recipients
`(Id. at 28:41-46) (Claim 41)
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`39.
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`Third, claims 5 and 42, dependent on claims 1 and 40,
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`respectively, recite the further limitations as follows:
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`wherein the server delivers the instant voice
`message to the selected recipients that are
`available
`(Id. at 24:13-15) (Claim 5)
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`delivering the instant voice message from the
`server to the selected recipients that are available
`(Id. at 28:47-50) (Claim 42)
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`40.
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`Fourth, claims 6 and 43, dependent on claims 1 and 40,
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`respectively, recite the further limitations as follows:
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`wherein the client records the instant voice
`message in an audio file, transmits the audio file to
`the server, and the server delivers the audio file to
`the selected recipients, the selected recipients
`being enabled to audibly play the audio file
`(Id. at 24:16-20) (Claim 6)
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 22 of 65
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 22
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`7.
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`41.
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`recording the instant voice message at the client in
`an audio file; transmitting the audio file to the
`server; delivering the audio file from the server to
`the selected recipients; and audibly playing the
`audio file at the least one of the selected recipients
`(Id. at 28:51-59) (Claim 43)
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`Ordinary Skill in the Art
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`The Petitioners’ expert, Dr. Lavian, defines a person of
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`ordinary skill in the art as a person who “would have possessed at least a
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`bachelor’s degree in computer science, computer engineering, or
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`electrical engineering with at least two years of experience in
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`development and programming relating to network communication
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`systems (or equivalent degree or experience).” EX1002 at ¶ 15; also
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`Pet. at 6.
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`42.
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`I have no reason to disagree with Dr. Lavian’s description of
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`a person of ordinary skill in the art. Moreover, based on my degrees in
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`electrical engineering, which included extensive training in software
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`development, data communications and networking, and 45-plus years of
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`experience, including significant software development, I had, on the
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`priority date, considerably more experience and expertise than the
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`POSITA. I base my opinions regarding the level of ordinary skill in the
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`IPR2017-01523: Declaration of Dr. Val DiEuliis
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`Page 23 of 65
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`Google v. Uniloc, IPR2017-2084
`Uniloc's Exhibit 2001, page 23
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`art upon this understanding and my own experience in the field. I have
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`considered the way in which a POSITA would have understood the ’890
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`patent on its priority date,
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`1
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` and I offer my opinions on that basis.
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`8.
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`43.
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`International Application WO 01/11824 (“Zydney”)
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`The International Application published with International
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`Publication Number WO 01/11824 A2 (“Zydney”), titled Method and
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`system for voice exchange and voice distribution, was published on
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`February 15, 2001. The international application number
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`PCT/US00/21555 by inventors Herbert Zydney et al. was filed on
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`August 7, 2000. See EX1003.
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`44.
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`Zydney “relates to the field of packet communications, and
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`more particularly to voice packet communication systems.”
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`EX1003 at 1:4-5.
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`2
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`1
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` The apparent priority date of December 18, 2003, is published on the
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`face of the ’890 patent. EX1001at (63). I am not aware of any dispute in
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`this IPR concerning the priority d