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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`LG ELECTRONICS, INC.,
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`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`______________
`
`Case IPR2017-02087
`U.S. Patent 8,995,433
`______________
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`DECLARATION OF DR. VAL DIEULIIS
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`DECEMBER 19, 2017
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 4
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`2. QUALIFICATIONS ...................................................................................... 5
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 8
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`4. INFORMATION CONSIDERED ...............................................................11
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`5. LEGAL STANDARDS .................................................................................12
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`6. THE ’433 PATENT ......................................................................................13
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`6.1 Claims.................................................................................................... 21
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`7. ORDINARY SKILL IN THE ART .............................................................22
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`8. CLAIM CONSTRUCTION .........................................................................23
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`8.1 “instant voice messaging application” .................................................... 24
`8.2 “client platform system” ...................................................................... 31
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`9. INTERNATIONAL APPLICATION WO 01/11824
`(“ZYDNEY”) ................................................................................................32
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`10. U.S. PATENT NO. 6,725,228 (“CLARK”) ..................................................41
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`11. THE PROPOSED COMBINATION OF ZYDNEY AND CLARK
`FAILS TO RENDER OBVIOUS ANY CHALLENGED CLAIM
`OF THE 433 PATENT .................................................................................46
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`11.1 The Modification of Zydney with Clark’s Database
`Renders Inoperative Zydney’s Teaching of Temporary
`Storage of Voice Messages .................................................................... 47
`11.2 The Proposed Combination of Zydney and Clark Fails to
`Render Obvious “wherein the instant voice message
`application generates an audible or visual effect
`indicating receipt of an instant voice message” (Claim 8) ...................... 51
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`12. U.S. PATENT NO. 6,750,881 (“APPELMAN”) ..........................................53
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 2 of 63
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`13. THE PROPOSED COMBINATION OF ZYDNEY AND CLARK
`WITH APPELMAN FAILS TO RENDER OBVIOUS
`“WHEREIN THE INSTANT VOICE MESSAGING
`APPLICATION 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” (CLAIM 7) ..............................................................................57
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`13.1 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 ................................................................... 60
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 3 of 63
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
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`1.
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`1.
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`Introduction
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`My name is Val DiEuliis, and I have been retained by
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`Uniloc, USA, Inc., and Uniloc Luxembourg S.A. (“Uniloc” or the “Patent
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`Owner”). My client Uniloc and its associated counsel, Etheridge Law
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`Group, have asked me to study U.S. Patent No. 8,995,433 (“the ’433
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`patent”), the Petition, the proffered prior art in this case, and other
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`relevant documents. I document my findings in this declaration.
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`2.
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`I have concluded that International Application WO
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`01/11824 (“Zydney”) [EX1003] combined with U.S. Patent No.
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`6,725,228 (“Clark”) [EX1008] and/or 6,750,881 (“Appelman”) [EX1004]
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`do not render obvious any challenged claim of the patent at issue, the’433
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`patent, at least for the following reasons:
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`• A POSITA would not have been motivated to modify Zydney with
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`Clark because, if combined, neither Zydney nor Clark would
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`operate according to their intended purposes. (Claims 1 and 6)
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`• A POSITA would not have been motivated to combine Zydney and
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`Clark with Appelman because Zydney teaches away from
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`Appelman and if combined, Zydney would have been rendered
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`unsatisfactory for an intended purpose. (Claim 7)
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 4 of 63
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`• The proposed combination of Zydney and Clark fails to render
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`obvious “wherein the instant voice message application generates
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`an audible or visual effect indicating receipt of an instant voice
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`message.” (Claim 8)
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`3.
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`The limited scope of my opinions and analysis in this
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`declaration do not imply that I may not later express other opinions or
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`report other results from other investigations concerning other issues
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`raised by the Petitioners or their experts in this IPR.
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`2.
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`4.
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`Qualifications
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`I am an electrical engineer with over 45 years of experience
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`developing, programming, and analyzing computer algorithms and
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`software. I am experienced with and able to create, read, and interpret
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`firmware and software in C, C++, Java, assembly language, HTML, and
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`other computer programming languages. I have served as an expert
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`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
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`concerning my results.
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`5.
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`During my career, I have developed and managed projects
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`for various applications, including sensors, controls, communications,
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 5 of 63
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`user interfaces, device firmware, handheld devices, medical devices and
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`systems, and test systems for optical and magnetic disk systems.
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`6.
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`I have designed, developed, and implemented hardware and
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`software for digital communication networks, including factory
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`networks; document capture and distribution; and communications links
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`for various applications. See DiEuliis CV (See e.g., Website
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`Development, Industrial Valve Position Sensor, Condition-Based
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`Maintenance System, Avionics Environmental Monitor, Radio Frequency
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`Billboard Network, Wireless Bar Code System for Hospitals, and ISA
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`Board for 4-Port RS422 Serial Communications Multiplexer.). See also
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`Id. at 3 (Digital Document Storage Technology). I also developed an
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`optical disk digital data storage system that captured, recorded, played
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`back, and stored digital audio data. Id. at 2 (Optical Disk Technology).
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`7.
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`As a graduate student at the University of
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`Illinois at Urbana-Champaign, I obtained extensive training in the
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`complexity of algorithms; the complexity of databases; information
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`theory; combinatorics and combinatorial algorithms; and the mathematics
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`and algorithms of error correcting codes, a field closely related to
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 6 of 63
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`cryptography. In addition, as a part of my graduate research, I created and
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`developed heuristic algorithms and wrote software to synthesize
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`non-linear codes for optimizing the spectra of coded digital
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`communications signals.
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`8.
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`I received the Ph.D. and M.S. degrees in electrical
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`engineering from the University of Illinois at Urbana-Champaign in 1978
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`and 1976, respectively, and the B.S. degree in electrical engineering from
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`the University of Notre Dame in 1972. I am a Registered Professional
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`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
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`of the Institute of Electrical and Electronics Engineers (IEEE).
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`Additionally, I am a co-inventor of two patents.
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`9.
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`I have been an independent engineering consultant, doing
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`business as Electronics Consultants, since 1984. My clients have
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`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
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`among others. Prior to that, I worked as a research engineer for the 3M
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`Company in St. Paul, Minnesota for five years. In addition, before my
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`graduate studies, I worked as an electrical engineer in the U. S. Army
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 7 of 63
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`with the U.S. Army Security Agency for two years, during which time I
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`held a Top Secret W/Crypto and SI Access security clearance.
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`10.
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`As an adjunct instructor at the University of Saint Thomas in
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`St. Paul, Minnesota, I developed and presented a lecture on classical
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`linear control theory for graduate students; developed and taught a
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`graduate course on computer networks; and taught an undergraduate
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`analog and digital electronics course to mechanical engineering students.
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`11.
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`This and other information about my background is included
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`in my CV, which is attached to this declaration as Attachment A.
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`3.
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`12.
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`Compensation, Testimony, and Publications
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`I am being paid $440 per hour for the time I spend working
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`on this matter. My compensation is not contingent on my performance,
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`the outcome of this IPR, or any issues involved in or related to this IPR.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 8 of 63
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`13.
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`During the past four years, I have testified at trial, hearing,
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`or deposition in the following cases:
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`• Cisco Systems, Inc. v. Uniloc Luxembourg S.A.; US PTO Inter Partes
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`Reviews IPR2017-00058 and IPR2017-00198. Testifying expert in two
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`Inter Partes Reviews of patents related to systems to facilitate voice
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`conferences. I testified at a deposition.
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`• Facebook, Inc. and Whatsapp, Inc. v. Uniloc USA et al.; US PTO Inter
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`Partes Review IPR2017-01756. Testifying expert in an Inter Partes
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`Review of a patent related to systems to facilitate voice conferences. I
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`testified at a deposition.
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`• Terremark North America, LLC, et al. v. Joao Control &
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`Monitoring Systems, LLC.; US PTO Inter Partes Review
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`IPR2015-01466; Joao Control & Monitoring on behalf of Joao
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`Control & Monitoring; 2016. I testified at a deposition.
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`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
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`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
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`2016. I testified at a deposition.
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`• Sega of America, Inc. et al. v. Uniloc USA, Inc. et al.; USPTO
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`Inter Partes Review IPR2014-01453; Uniloc USA on behalf of
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`Uniloc USA; 2015. I testified at a deposition.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 9 of 63
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`• Uniloc USA, Inc. et al. v. Activision Blizzard, Inc. et al.; United
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`States District Court for the Eastern District of Texas (Tyler); Civil
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`Action No. 6:13-cv-00256-LED; and Uniloc USA, Inc. v.
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`Electronic Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson
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`Bumgardner Casto and Carter, Scholer, Arnett, Hamada, and
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`Mockler on behalf of Uniloc USA et al.; 2013-2014. I
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`testified at three depositions and a jury trial.
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`• In the Matter of Certain Optical Disc Drives, Components thereof,
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`and Products Containing Same; U.S.I.T.C. Investigation No.
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`337-TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
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`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
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`Lenovo, Greenberg Traurig on behalf of LG Electronics,
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`McDermott Will & Emery on behalf of Nintendo and Panasonic,
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`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
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`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
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`deposition.
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`• Taser International, Inc. v. Karbon Arms, LLC; United States
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`District Court for the District of Delaware; Civil Action No.
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`1:11-cv-426-RGA; Smith, Gambrell & Russell, LLP, on behalf of
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`Karbon Arms, 2013. I testified at a deposition.
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`14.
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`
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`I have had no publications in the past 10 years.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 10 of 63
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`4.
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`15.
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`Information Considered
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`In order to arrive at my opinions, I have reviewed and
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`considered the materials listed below:
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`• Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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`(Petition 1 of 2 – Claims 1-8), and exhibits, Case No.
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`IPR2017-01427, May 10, 2017 [Pet.]
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`• U.S. Patent No. 8,995,433 (“’433”) [EX1001], and its prosecution
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`history
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`• Declaration of Tal Lavian, Ph.D., May 10, 2017 [EX1002]
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`• International Application WO 01/11824 (“Zydney”) [EX1003]
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`• U.S. Patent No. 6,750,881 (“Appelman”) [EX1004]
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`• U.S. Patent No. 6,725,228 (“Clark”) [EX1008]
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`• Microsoft Press Computer Dictionary, 1997 (definition of
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`“application”) [EX1009]
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`• Internet News Post, American Dialect Society, “App” voted 2010
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`word of the year by the American Dialect Society, dated
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`January 8, 2011 [EX2002]
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`• Decision to Institute Inter Partes Review, IPR2017-00225,
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`May 25, 2017
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 11 of 63
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`5.
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`16.
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`Legal Standards
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`I understand there are certain legal rules, standards, or
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`requirements that I accept for the purpose of my analysis of the opinions
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`and conclusions set forth in this declaration.
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`17.
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`I understand a patent is obvious “if the differences between
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`the subject matter sought to be patented and the prior art are such that the
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`subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which
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`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
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`determination must be based on four factual inquiries: (1) the scope and
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`content of the prior art; (2) the differences between the claims and the
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`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
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`of nonobviousness.
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`18.
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`I have been informed that if a single limitation of a claim is
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`absent from the prior art, the claim cannot be considered obvious.
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`19.
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`I further understand that it is improper to combine references
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`where the references teach away from their combination. A prior art
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`reference teaches away from the claimed invention when a person of
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 12 of 63
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`ordinary skill, upon reading the reference would be led in a direction
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`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]
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`investigation into the claimed invention. Additionally, a reference teaches
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`away from a combination when using it in that combination would
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`produce an inoperative result. A reference also teaches away from a
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`combination when using it in that combination would render the
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`invention described in the reference unsatisfactory for its intended
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`purpose.
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`20.
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`In addition, I understand that if a proposed modification or
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`combination of the prior art would change the principle of operation of
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`the prior art device being modified, then the teachings of the references
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`are not sufficient to render the claims prima facie obvious.
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`6.
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`21.
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`The ’433 Patent
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`U.S. Patent No. 8,995,433 (“’433”), titled System and
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`method for instant VoIP messaging, was issued on March 31, 2015. The
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`application 14/224,125, by inventor Michael J. Rojas, was filed on
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`March 24, 2014. See EX1001.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 13 of 63
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`22.
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`The ’433 patent “relates to Internet telephony (IP
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`telephony). More particularly, the present invention is directed to a
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`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
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`support.” Id. at 1:19-23.
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`23.
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`The ’433 patent provides the historical context in its prior art
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`discussion by noting that “[traditional] telephony is based on a public
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`switched telephone network (i.e., “PSTN”). EX1001 at 1:25-35. This is
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`the well-known telephone system that has served the world for well over
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`a century.
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`24.
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`The ’433 patent further explains “An alternative to the
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`PSTN is Voice over Internet Protocol (i.e., "VoIP"), also known as IP
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`telephony or Internet telephony. Id. at 1:36-38. The patent elaborates as
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`follows:
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`
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`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
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 14 of 63
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`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
`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 1:38-51) (Emphasis added.)
`
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`25.
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`After noting that VoIP and instant text messaging were
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`known arts, the ’433 patent explains the motivation for its invention as
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`follows:
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`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 2:48-54) (Emphasis added.)
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`26.
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`FIG. 2, reproduced below is “an exemplary illustration of a
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`local instant voice messaging (IVM) system 200 according to the
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 15 of 63
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`present invention. The instant voice messaging system 200 comprises a
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`local IVM server 202 that “provides the core functionality for enabling
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`instant voice messaging with PSTN support according to the present
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`invention.” Id. at 6:54-59 (emphasis added).
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`FIG. 2 of the ’433 Patent: System Diagram of the Instant Voice
`Messaging System (IVM)
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`
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`27.
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`The local IVM server 202 “is enabled to provide instant
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`voice messaging to one or more IVM clients 206 and 208, as well support
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 16 of 63
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`instant voice messaging for PSTN legacy telephones 110.” Id. at 6:62-65.
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`The local IP network 204, a packet-switched network, connects the IVM
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`server 202 to clients 208 (viz., a computer system), VoIP Phone 206, and
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`legacy telephone 110 (e.g., a land-line phone). Clients incorporate
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`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.
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`Id. at 7:9-26.
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`28.
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` A POSITA would have understood, upon studying the
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`totality of the ’433 patent, and specifically the written descriptions above
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`and elsewhere in the ’433 patent, that “clients” in the ’433 patent are
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`devices, such as computers and telephones, and not the people who use
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`the devices. See e.g., Id. at 9:31-32. The patent expresses this in the
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`following exemplary passages:
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`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 12:13-16)
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`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.
`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 17 of 63
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`(Id. at 8:5-8; also 8:60-62) (Emphasis added.)
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`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 8:33-36) (Emphasis added.)
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`
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`29.
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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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`30.
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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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`31.
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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 ’433 patent, that “recipients” are client devices, not people.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 18 of 63
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`32.
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`Regarding the operation of at least one embodiment, the
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`’433 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 8:53-56. 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 8:56-58.
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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 8:60-62.
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`• The client transmits the selection of the recipient(s) to the server.
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`Id. at 8:62-63.
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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. Id. at
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`8:62-9:1.
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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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`
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 19 of 63
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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 9:6-8; see also
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`Id. at 8:25-26.
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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 9:16-25. 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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`33.
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`The ’433 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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`or displayed by the one or more selected IVM recipients.”
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`Id. at 12:32-36. 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 13:9-12) (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
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 20 of 63
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`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 13:35-40)
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`34.
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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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`6.1
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`35.
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`Claims
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`In this declaration, I primarily focus on three limitations
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`recited by the challenged claims.
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`36.
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`First, claim 1, an independent system claim recites the
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`limitation “wherein the instant voice messaging application includes a
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`message database storing the instant voice message, wherein the instant
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`voice message is represented by a database record including a unique
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`identifier” EX1001 24:7-10.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 21 of 63
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`37.
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`Second, claim 7, a system claim dependent on claim 1,
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`recites the further limitation “wherein the instant voice messaging
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`application displays an indicia for each of the one or more potential
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`recipients indicating whether the potential recipient is currently available
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`to receive an instant voice message.” Id. at 24:52-56.
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`38.
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`Third, claim 8, a system claim dependent on claim 1, recites
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`the further limitation “wherein the instant voice message application
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`generates an audible or visual effect indicating receipt of an instant voice
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`message.” Id. at 24:57-59.
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`7.
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`39.
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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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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 22 of 63
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`40.
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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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`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 ’433
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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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`41.
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`Claim Construction
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`The Petitioners construe the phrases “instant voice
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`messaging application” and “client platform system,” and state their
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`constructions “provide the broadest reasonable interpretation in light of
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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 ’433 patent. EX1001 at (63). I am not aware of any dispute in
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`this IPR concerning the priority date.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 23 of 63
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`the specification to a person of ordinary skill in the art.” Pet. at 9; see
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`also EX1002 at ¶ 19.
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`42.
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`My interpretation of the claims, discussed below, including
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`my analysis of the terms “instant voice messaging application” and
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`“client platform system,” is based on the broadest reasonable
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`interpretation standard, fully taking into account the specification. I
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`understand that the broadest reasonable interpretation is the claim
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`language itself, and that the claim language itself is the first and most
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`important element of intrinsic evidence informing a POSITA of the
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`meaning of the claims.
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`43.
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`The limited scope of my opinions and analysis concerning
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`claim construction in this declaration does not imply that I may not later
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`express other opinions, express more analysis, construe other terms, or
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`report other results from other investigations concerning other issues
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`raised by the Petitioners or their experts in this IPR.
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`8.1
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`44.
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`“instant voice messaging application”
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`In my opinion, a POSITA would have understood the term
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`“application” in the context of the ’433 patent to mean a software
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 24 of 63
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`program that performs a particular task or function(s). Thus, a POSITA
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`would have understood that whole phrase “instant voice messaging
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`application” means “a software program that performs instant voice
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`messaging tasks or functions.”
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`45.
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`The Petitioners propose that “instant voice messaging
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`application” means “hardware and/or software used for instant voice
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`messaging.” Pet. at 9 (citing EX1002 at ¶¶ 48-56). In my opinion, the
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`Petitioners’ inclusion of “hardware” in its interpretation is unreasonable
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`and conflicts with the understanding of a POSITA on the priority date,
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`that is, as “software that performs a task or function.”
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`46.
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`The Petitioners and their expert Dr. Lavian, acknowledge
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`that a POSITA would understand the term “application” means
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`“computer software for performing a particular function.” Pet. at 10
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`(citing EX1002 at ¶ 52 [citing EX1009, the Microsoft Computer
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`Dictionary defining “application as “[a] program designed to assist in the
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`performance of a specific task, such as word processing, accounting, or
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`inventory management.”]). On the other hand, the Petitioners and
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`Dr. Lavian then assert that, based on the written description of the ’433
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 25 of 63
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`patent, the term “instant voice messaging application” should not be
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`limited to software. Pet. at 10; see also EX1002 at ¶ 52. As I explain
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`below, the Petitioners’ purported support in the written description of the
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`’433 patent for this proposition falls short of the mark.
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`47.
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`The Petitioners assert that the ’433 patent discloses that
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`functions associated with instant voice messaging are performed by the
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`IVM client 208, which is a “general-purpose programmable computer.”
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`Pet. at 10 (citing EX1001 at 12:13-15). The Petitioners also point to
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`FIG. 3, reproduced below, which is “an exemplary illustration of the
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`architecture in the IVM client 208 for enabling instant voice messaging
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`according to the present invention.” EX1001 at 12:6-8. A POSITA would
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`have understood that “architecture” in the context of FIG. 3, means the
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`structure and functions of the software in the client computer.
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 26 of 63
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`48.
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`FIG. 3 in the ’433 Patent: Client Architecture
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` Referring to FIG. 3, the IVM client 208, which is a device
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`that includes software running on a processor, “comprises a client
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`platform 302 for generating an instant voice message and a messaging
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`system 320 for messaging between the IVM client 208 and the IVM
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`server 202 for enabling instant voice messaging.” EX1001 at 12:8-12
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`(emphasis added). The Petitioners appear to contend that because the
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`“written description does not identify a specific software program that
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`LGE v. Uniloc, IPR2017-02087
`Uniloc’s Exhibit 2001
`Declaration of Dr. Val DiEuliis, Page 27 of 63
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`contains those components,” and because the “client” is a computer
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`system that the “application” may be hardware. Pet. at 11-12. I disagree.
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`49.
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`I understand that a patent need not include every detail of an
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`invention if the descriptions are adequate for a POSITA to understand it.
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`FIG. 3 is such a case because it does not explicitly show a labeled box for
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`the “application” that comprises a “client platform 302” and a
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`“messaging system 320,” but a POSITA would have understood that,
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`despite the lack of an explicit application label in FIG. 3, the application
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`as claimed is an implied box around client platform 302 and messaging
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`system 320. Furthermore, the application