IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
`
`
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`_______________
`
`
`Case IPR2018-00129. IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent 5,822,523 & 6,226,686
`_______________
`
`
`
`
`
`
`
`
`
`
`DECLARATION OF NANCY MIRACLE
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
`TABLE OF CONTENTS
`
`Introduction ........................................................................................................... 1
`I.
`II. Qualifications ......................................................................................................... 2
`III. Materials Reviewed ............................................................................................... 3
`IV. Legal Principles ..................................................................................................... 5
`A. Anticipation ................................................................................................... 5
`B. Obviousness ................................................................................................... 6
`1. Motivation to Combine .............................................................................. 7
`2. Non-Analogous Art .................................................................................... 7
`3. Combination of Prior Art Renders Prior Art Device Inoperable For Its
`Intended Purpose ............................................................................................... 8
`4. References Teach Away From Combination ............................................. 8
`5. Secondary Considerations of Non-Obviousness ........................................ 8
`V. Person of Ordinary Skill in the Art ....................................................................... 9
`VI. Claim Construction ................................................................................................ 9
`A. “group messaging server” (Claim 1 of the ‘523 Patent and Claim 12 of the
`‘686 Patent) ................................................................................................................ 9
`B. “message group” (Claim 1 of the ‘523 Patent and Claims 1, 3, 7, 12, and 18
`of the ‘686 Patent) .................................................................................................... 10
`C. “portion for identifying said first message group” (Claim 1 of the ‘523
`Patent), “portion that is used to identify said message group” (Claims 1, 3, 7,
`and 18 of the ‘686 Patent), and “portion that is used to identify said first
`message group” (Claim 12 of the ‘686 Patent) ........................................................ 10
`D. “aggregated message” (Claim 1 of the ‘523 Patent and Claims 1, 3, 7, and 12
`of the ‘686 Patent) and “server message” (Claim 18 of the ‘686 Patent) ............... 11
`E. “payload portion” (Claim 1 of the ‘523 Patent and Claims 1, 3, 7, 12, and 18
`of the ‘686 Patent) .................................................................................................... 15
`F. “aggregated payload” (Claim 1 of the ‘523 Patent and Claims 1, 7, and 12 of
`the ‘686 Patent), “aggregating said payload portions” (Claim 3 of the ‘686
`Patent), and “aggregating said payload portion with the payload portion of a
`second host message” (Claim 18 of the ‘686 Patent) .............................................. 16
`VII. Request for Comments and State of the Internet in 1994 ................................... 18
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`20
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`
`VIII. ......... Claim 1 of the ‘523 Patent and Claims 1, 3, 7, 12, and 18 of the ‘686 Patent
`A. Petitioner’s Assertion that Aldred Inherently or Obviously Discloses a
`portion for identifying a message group is flawed .................................................. 20
`B. RFC 1692 Does Not Disclose or Suggest “aggregating . . . said payload
`portions of said messages to create an aggregated payload” (Claim 1 of the ‘523
`Patent and Claims 7 and 12 of the ‘686 Patent); “aggregating said payload
`portions of said host messages . . . to create an aggregated payload” (Claims 1
`and 3 of the ‘686 Patent); “aggregating said payload portion with the payload
`portion of a second host message” (Claim 18 of the ‘686 Patent) .......................... 25
`C. RFC 1692 Does Not Disclose or Suggest “forming an aggregated message
`using said aggregated payload” (Claim 1 of the ‘523 Patent and Claims 1 and
`12 of the ‘686 Patent); “create an aggregated message” (Claim 3 of the ‘686
`Patent); “said aggregated message” (Claim 7 of the ‘686 Patent); and “forming
`a server message . . .” (Claim 18 of the ‘686 Patent) .............................................. 33
`1. Petitioner does not provide sufficient motivation to combine Aldred and
` RFC 1692 ............................................................................................................. 34
`2. ... RFC 1692 does not disclose or suggest “forming an aggregated message using
`said aggregated payload,” (Claim 1 of the ‘523 Patent and Claim 12 of the
`‘686 Patent) “create an aggregated message” (Claim 3 of the ‘686 Patent);
`“said aggregated message” (Claim 7 of the ‘686 Patent); and “forming a
`server message . . .” (Claim 18 of the ‘686 Patent) ............................................... 36
`D. Aldred in view of RFC 1692 does not render obvious Claim 8 of the ‘523
`Patent .................................................................................................................43
`E. Aldred in view of RFC 1692 does not render obvious Claim 33 of the
`‘523 Patent nor Claims 29, 48 and 65 of the ‘686 Patent..................................44
`F. Aldred in view of RFC 1692 does not render obvious Claims 2-7, 9, 10,
`15-27, 31, 32, 34-37, 41, 42, and 44-47 of the ‘523 Patent ..............................48
`G. GROUND 2 of IPR2018-00129: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and RFC 1459 Renders Obvious Claims 38-40 of
`the ‘523 Patent ...................................................................................................49
`H. GROUND 3 of IPR2018-00129: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and Denzer Renders Obvious Claim 43 of the
`‘523 Patent .........................................................................................................49
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`I. GROUND 2 of IPR2018-00130: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and Ulrich Renders Obvious Claim 11-15, 23,
`and 27-30 of the ‘523 Patent .............................................................................50
`J.Aldred in view of RFC 1692 does not render obvious Claims 2, 4, 8-11, 13-
`17, 19-21, 26-30, 34, 35, 39, 40, 45-49, 53, 54, 56, 57, 62-66 and 70 of the
`‘686 Patent .........................................................................................................50
`K. GROUND 2 of IPR2018-00131: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and RFC1459 Renders Obvious Claims 31-33,
`50-52, and 67-69 of the ‘686 Patent ..................................................................51
`L. GROUND 2 of IPR2018-00132: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and Ulrich Renders Obvious Claims 22-27, 41-
`46, and 58-63 of the ‘686 Patent .......................................................................51
`M. GROUND 3 of IPR2018-00132: Petitioner Has Not Demonstrated that
`Aldred in View of RFC 1692 and Denzer Renders Obvious Claims 36 and 55
`of the ‘686 Patent ...............................................................................................52
`IX. Conclusion ........................................................................................................... 53
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`
`
`I, Nancy Miracle, declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I have been retained by the law firm of Munck Wilson Mandala, LLP
`
`on behalf of Paltalk Holdings, Inc. (“Paltalk” or “Patent Owner”) as an
`
`independent expert consultant in this proceeding before the Patent Trial and
`
`Appeal Board of the United States Patent and Trademark Office. All statements
`
`herein made of my own knowledge are true, and all statements herein made based
`
`on information and belief are believed to be true. I am over 21 and otherwise
`
`competent to make this declaration. Although I am being compensated at my
`
`standard hourly rate for my time spent on this matter, my opinions herein are my
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`own, no part of my compensation depends on the outcome of this proceeding, and I
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`have no other interest in this proceeding.
`
`2.
`
`I understand Petitioner Riot Games, Inc. has requested inter partes
`
`review of U.S. Patent No. 5,822,523 (“the ‘523 Patent) in inter partes review
`
`proceeding Nos. IPR2018-00129 and IPR2018-00130. I understand Petitioner has
`
`also requested inter partes review of U.S. Patent No. 6,226,686 (“the ‘686 Patent)
`
`in inter partes review proceeding Nos. IPR2018-00131 and IPR2018-00132.
`
`3.
`
`I have been asked to opine on whether certain other patents and
`
`materials, if combined, would meet all the limitations of the ‘523 and ‘686 patents,
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`1
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`PATENT OWNER'S EX. 2001 Page 1
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`and if there was a motivation to combine these other patents and materials before
`
`the February 1, 1996 priority date of the ‘523 Patent and the ‘686 Patent.
`
`4.
`
`I have been asked to opine on certain technical aspects of the ‘523
`
`Patent and the ‘686 Patent, and on certain technical aspects of the other patents and
`
`materials, namely, WIPO Publication No. 94/11814 (Ex. 1009, “Aldred”) and RFC
`
`1692 (Ex. 1010).
`
`II. Qualifications
`
`5. My current and complete curriculum vitae, which includes a more
`
`detailed summary of my background, experience, and publications, is attached as
`
`Appendix A.
`
`6.
`
`I am currently the founder and senior partner at Digital Miracles,
`
`L.L.C., a consulting organization that specializes in the area of intellectual property
`
`and systems analysis, design, development, and implementation. In this role, I
`
`provide advice and assistance in the design and execution of technical investigative
`
`studies, infringement analysis, invalidity analysis, prior art and prior use analysis,
`
`expert
`
`testimony
`
`in
`
`software matters, and design, development, and
`
`implementation of web-accessible software products, among other tasks.
`
`7.
`
`I received a Bachelor of Arts degree in Design from Stanford
`
`University in 1973. I was a member of various software companies from 1962-
`
`1978. I held various positions in IT and Operations from 1978 to 1990 at Fairchild
`
`2
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`Camera and Instrument, Schlumberger, and National Semiconductor. I held the
`
`position of Director, Operations, from 1990-1993 at Fujitsu Personal Systems, Inc.
`
`I held the position of Vice President of Operations from 1993-1996 at Networth,
`
`Inc. From 1996-1998, I held the position of Chief Technical Officer at Intelect
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`Visual Communications and the position of Vice President of Operations at
`
`Intelect Network Technologies. Thereafter, from 1998-2011, I held the position of
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`Chief Technical Officer and Board Member at TIAS.com, Inc. In 1998, I also
`
`started Digital Miracles and have remained employed by Digital Miracles since
`
`that time.
`
`8.
`
`In sum, I have over 50 years of experience in the areas of systems
`
`design and analysis with a focus on software and hardware product design. I have
`
`extensive experience in general management and operations management. I
`
`designed, wrote and managed the implementation of large bodies of code in perl,
`
`JavaScript, AJAX, VBScript, C++, LISP, BASIC, APL, COBOL, FORTRAN,
`
`PL/1, RPG/III, Sybol and Databus as well as various assembler and machine
`
`languages. My design and programming experience ranges from vacuum-tube
`
`computers to current technology.
`
`III. Materials Reviewed
`
`9.
`
`In forming my opinions, I have reviewed the following documents:
`
` U.S. Patent No. 5,822,523 (attached as Ex. 1001 to Petitioner’s petitions);
`
`3
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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` U.S. Patent No. 6,226,686 (attached as Ex. 1002 to Petitioner’s petitions);
`
` The Prosecution History and Reexamination History of the ‘523 Patent
`
`(attached as Exs. 1003 and 1005, respectively, to Petitioner’s petition);
`
` The Prosecution History and Reexamination History of the ‘686 Patent
`
`(attached as Exs. 1004 and 1006, respectively, to Petitioner’s petition);
`
` WIPO Publication No. 94/11814 to Aldred et al. (“Aldred”) (attached as
`
`Ex. 1009 to Petitioner’s petition);
`
` Request for Comments: 1692, titled “Transport Multiplexing Protocol
`
`(TMux)” (“RFC 1692”) (attached as Ex. 1010 to Petitioner’s petition);
`
` Declaration of David H. Crocker (attached as Ex. 1026 to Petitioner’s
`
`petition);
`
` Request for Comments: 1602, titled “The Internet Standards Process –
`
`Revision 2” (attached as Ex. 1021 to Petitioner’s petition);
`
` Request for Comments: 1459, titled “Internet Relay Chat Protocol”
`
`(attached as Ex. 1025 to Petitioner’s petition);
`
` U.S. Patent No. 5,466,200 to Ulrich et al. (“Ulrich”) (attached as Ex.
`
`1012 to Petitioner’s Petition); and
`
` U.S. Patent No. 5,307,413 to Denzer (“Denzer”) (attached as Ex. 1014 to
`
`Petitioner’s Petition).
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`4
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`IV. Legal Principles
`
`10.
`
`I have been informed by counsel regarding certain legal principles and
`
`standards that apply to these proceedings. I have applied these principles and
`
`standards in providing my opinion in this Declaration.
`
`11.
`
`I understand that claims in U.S. patents have a presumptive invention
`
`date that is the priority date for the claim. For the purposes of my declaration, I
`
`assume the invention date for the ‘523 Patent and the ‘686 Patent is February 1,
`
`1996. When I refer to the “time of the invention,” or the “critical date,” I refer to
`
`the time in or around the date of invention I have assumed for this declaration.
`
`12.
`
`I understand that claims are to be understood from the perspective of a
`
`person having ordinary skill in the art at the time of the invention. I am aware that
`
`the Patent Owner has proposed certain claim constructions for the ’523 and ‘686
`
`Patents, some of which have been considered in previous U.S. district court
`
`proceedings. I have reviewed these claim constructions and applied them in
`
`forming my opinions.
`
`A.
`
`13.
`
`Anticipation
`
`I understand that a prior art reference is anticipatory only if it, and it
`
`alone, discloses each and every limitation of the claim (as properly construed) at
`
`issue. In other words, every limitation of a claim must identically appear in a single
`
`prior art reference for it to anticipate a claim. I understand that for a claim to be
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`anticipated, each claim limitation must be disclosed in a single prior art reference,
`
`and the claimed arrangement or combination of those limitations must also be
`
`disclosed in that same prior art reference.
`
`14.
`
`I understand that for a reference to be anticipatory, the reference must
`
`contain an enabling disclosure. I understand that merely naming or describing the
`
`subject matter
`
`is
`
`insufficient
`
`if
`
`it cannot be produced without undue
`
`experimentation.
`
`B. Obviousness
`15.
`
`I understand that a claimed invention is unpatentable if the differences
`
`between the invention 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 the subject matter pertains. To prove invalidity
`
`for obviousness, the proposed combination of prior art references must disclose
`
`each claim limitation of the challenged patent.
`
`16.
`
`I understand that the factual analysis relevant to obviousness requires
`
`that the following four inquiries be made: (1) the scope and content of the prior art
`
`are to be determined; (2) the differences between the prior art and the claims at
`
`issue are to be ascertained; (3) the level of ordinary skill in the art are resolved; and
`
`(4) objective indicia of obviousness or nonobviousness, which include “secondary
`
`considerations” such as the commercial success of the invention, licensing of the
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`invention, long felt but unsolved needs, unexpected results, and the failure of
`
`others to arrive at the invention. I understand that mere identification in the prior
`
`art of each component of a composition does not show that the combination as a
`
`whole lacks the necessary attributes for patentability, i.e. is obvious.
`
`1. Motivation to Combine
`
`17.
`
`I understand that when considering the obviousness of a patent claim,
`
`one should consider whether a teaching, suggestion, motivation, or other apparent
`
`reason to combine the references exists so as to avoid impermissibly applying
`
`hindsight when considering the prior art. I understand this test should not be rigidly
`
`applied, but that the test can be important to avoiding such hindsight. I understand
`
`that it is impermissible to apply hindsight in conducting an obviousness analysis.
`
`18.
`
`I understand that something in the prior art as a whole must suggest
`
`the desirability, and thus the obviousness, of making the combination. That the
`
`claimed invention may employ known principles does not in and of itself establish
`
`that the invention would have been obvious.
`
`2.
`
`Non-Analogous Art
`
`19.
`
`I understand that it is improper to combine references where the
`
`references are non-analogous.
`
`20.
`
`I understand that two criteria are relevant in determining whether the
`
`prior art is analogous: (1) whether the art is from the same field of endeavor,
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`regardless of the problem addressed, and (2) if the reference is not within the field
`
`of the inventor’s endeavor, whether the reference is still reasonably pertinent to the
`
`particular problem with which the inventor is involved.
`
`Combination of Prior Art Renders Prior Art Device
`3.
`Inoperable For Its Intended Purpose
`
`21.
`
`I understand that if the teachings of a prior art reference would lead
`
`one skilled in the art to make a modification that would render another prior art
`
`device inoperable, then such a modification would generally not be obvious. I
`
`understand that if a proposed modification would render the prior art device
`
`unsatisfactory for its intended purpose, then the proposed modification would
`
`generally not be obvious.
`
`4.
`
`References Teach Away From Combination
`
`22.
`
`I understand that it is improper to combine references where the
`
`references teach away from their combination. I understand that a reference may be
`
`said to teach away when a person of ordinary skill, upon reading the reference,
`
`would be discouraged from following the path set out in the reference, or would be
`
`led in a direction divergent from the path that was taken by the applicant.
`
`5.
`
`Secondary Considerations of Non-Obviousness
`
`23.
`
`I understand that one must consider whether or not there is objective
`
`evidence of non-obviousness, which is also referred to as secondary considerations
`
`of non-obviousness.
`
`8
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`24.
`
`I understand that Courts have considered the following secondary
`
`considerations in determining obviousness: (1) the invention's commercial success,
`
`(2) long felt but unresolved needs, (3) the failure of others, (4) skepticism by
`
`experts, (5) praise by others, (6) teaching away by others, (7) recognition of a
`
`problem, (8) copying of the invention by competitors, (9) licensing/acquiescence,
`
`and (9) other relevant factors.
`
`V.
`
`Person of Ordinary Skill in the Art
`
`25. The ‘523 Patent and the ‘686 Patent have a priority date of February
`
`1, 1996. A person of ordinary skill in the art in February 1996 would possess at
`
`least a bachelor’s degree in computer science, computer engineering, or physics,
`
`and/or at least four years of practical experience in connection with networked
`
`interactive applications, or the equivalent, which would include experience in
`
`network programming.
`
`VI. Claim Construction
`
`26.
`
`I have been advised that the first step of assessing the validity of a
`
`patent claim is to interpret or construe the meaning of the claim. I understand that
`
`Patent Owner has proposed the constructions set forth below.
`
`A.
` “group messaging server” (Claim 1 of the ‘523 Patent and Claim
`12 of the ‘686 Patent)
`
`27.
`
`I understand that Patent Owner has proposed to construe this term as
`
`“a server or computer system with a network interface that maintains a set of
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`message groups used by the host computers to communicate information between
`
`themselves. The group messaging server must be capable of receiving messages
`
`from the host computers addressed to a message group and sending messages to
`
`the host computers that have joined the message group. A group messaging server
`
`can process messages with or without aggregated payloads, and can allow for
`
`group membership to change very rapidly.” In my opinion, this interpretation is
`
`consistent with the disclosures of the ‘523 Patent and the ‘686 Patent.
`
`B.
` “message group” (Claim 1 of the ‘523 Patent and Claims 1, 3, 7,
`12, and 18 of the ‘686 Patent)
`
`28.
`
`I understand that Patent Owner has proposed to construe this term as
`
`“A collection of one or more host computers that (1) have joined a particular group
`
`and (2) receive group messages addressed to that particular group.” In my opinion,
`
`this interpretation is consistent with the disclosures of the ‘523 Patent and the ‘686
`
`Patent.
`
`C.
`“portion for identifying said first message group” (Claim 1 of the
`‘523 Patent), “portion that is used to identify said message group”
`(Claims 1, 3, 7, and 18 of the ‘686 Patent), and “portion that is used to
`identify said first message group” (Claim 12 of the ‘686 Patent)
`
`29.
`
`I understand the Patent Owner has proposed to construe this term as
`
`“Any part of a message, sent by a host computer to a group messaging server, that
`
`identifies the message group of a receiving host computer.” In my opinion, this
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`interpretation is consistent with the disclosures of the ‘523 Patent and the ‘686
`
`Patent.
`
`D.
`“aggregated message” (Claim 1 of the ‘523 Patent and Claims 1,
`3, 7, and 12 of the ‘686 Patent) and “server message” (Claim 18 of the
`‘686 Patent)
`
`30.
`
`I understand that Patent Owner has proposed to construe this term as
`
`“one or more messages containing a single transport layer message header,
`
`destination data, and data items from an aggregated payload.” In my opinion, this
`
`construction is consistent with the disclosure of the ‘523 Patent.
`
`31. The aggregated message or server message recited in the claims of the
`
`‘523 and ‘686 Patents includes a message generated by the group messaging server
`
`including a single message header and an aggregated payload that does not include
`
`additional headers. In my opinion, this interpretation is consistent with the
`
`disclosures of the ‘523 Patent and the ‘686 Patent.
`
`32. Figure 7, below, of the ‘523 Patent illustrates the messages
`
`transmitted by the Group Messaging Server.
`
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`33. Each of the messages 100, 101, 102 and 103 received by a host from a
`
`server includes the aggregated payloads (Pn1, Pn2, Pn3) in each message and a
`
`header portion consisting of a transport layer protocol source address (S) of the
`
`server, a transport layer protocol destination address (A, B, C or D) for the
`
`destination host and a destination upper layer protocol (ULP) address (H, I, J or K)
`
`for the destination host. Ex. 1001 and Ex. 1002, col. 8, col. 9, col. 10, Fig 7. As
`
`can be seen from the disclosure of Fig. 7 and the associated discussion thereof,
`
`only a single message header consisting of the transport layer protocol source
`
`address, the transport layer protocol destination address and the ULP address is
`
`12
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`utilized. This single message header is then combined with the aggregated payload
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`generated by the previous aggregating step.
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`34. More detail of the datagram structure is provided with respect to
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`Figure 9 of the ‘523 Patent, as shown in Patent Owner’s annotated Figure 9 below.
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`
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`35.
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`In my opinion, the annotated version of Figure 9 above is an accurate
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`representation of the datagram structure of the ‘523 and ‘686 Patents. As shown
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`above, the overall structure of an aggregated message includes a message header
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`(blue) a payload (green), and multiple payload elements (red) included as part of
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`an aggregated payload. Ex. 1001 and Ex. 1002, col. 14:48-50. An upper layer
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`protocol (ULP) message comprises the transport header 123, the ULP message
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`type field 124, the destination ULP address 125, the address count field 126, the
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`auxiliary destination addresses 127, 128 and the payload 129. Id. at 13:60-14:50,
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`Fig. 9. The fields 123, 124, 125, 126, 127 and 128 constitute the message header.
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`The structure of the payload 129 is illustrated in the center portion of the figure.
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`The “payload format . . . is defined by items 116, 117, 118, 119, 120, 121, and
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`122.” Id. at 14:37-40. For example, Claim 1 of the ‘523 Patent requires, in a first
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`and separate step, aggregating the payload portions to “create an aggregated
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`payload,” which is shown by the payload portion 129, and items 116-122 of FIG.
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`9. Each of the payload elements include the source ULP address 117 of the
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`transmitted payload element, the data length 118 of the payload element and the
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`actual data 119. Id. at 14:37-50.
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`36. The ‘523 and ‘686 Patents describe that “[a]ggregation will also
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`reduce the total data rate to the hosts since aggregation eliminates the need for
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`separate message headers for each payload item. The savings will be significant
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`for small payload items since there will be only one message header comprising
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`fields 123, 124 and 125 for multiple payload items.” Ex. 1001 and Ex. 1002,
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`24:23-28. Thus, the aggregated message or server message as disclosed by the
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`‘523 and ‘686 Patents include a single message header and an aggregated payload
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`that does not include additional message headers. Therefore, in my opinion, an
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`accurate construction of “aggregated message” or “server message” is “one or
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`more messages containing a single transport layer message header, destination
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`data, and data items from an aggregated payload.”
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`E.
`“payload portion” (Claim 1 of the ‘523 Patent and Claims 1, 3, 7,
`12, and 18 of the ‘686 Patent)
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`37.
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`I understand that Patent Owner has proposed to construe this term as
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`“a portion of the original network message (that contains data item(s) conveying
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`information) sent to the group messaging server remaining after the transport layer
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`header is removed.” In my opinion, this interpretation is consistent with the
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`disclosures of the ‘523 Patent and the ‘686 Patent.
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`38. The above Section VI.D regarding the Patent Owner’s construction
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`for “aggregated message” describes that messages including a payload portion,
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`such as messages 96, 97, 98, and 99 in FIG. 7, are received by the group messaging
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`server. The ‘523 and ‘686 Patents further describe that the payload portions of
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`these items are removed by the group messaging server. The ‘523 and ‘686
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`Patents state:
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`The host sends the send message onto the network with TLP header
`addressing the data . . . The GMS receives the message and the GMS
`control function 136 determines that it is a send message datagram
`and looks up the implicit destination address in its implicit ULP
`address list 138 . . . If the address is valid, the GMS control function
`removes the TLP header from the datagram and sends the ULP
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`portion to the ULP server process corresponding to the destination
`implicit ULP address . . . The ULP server process 140 will extract the
`single payload item from the message 117, 118, and 119 and place the
`payload item in each of the message queues 143.
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`Ex. 1001 and Ex. 1002, 20:14-30.
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`39. Therefore, in my opinion, an accurate construction of “payload
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`portion” is “a portion of the original network message (that contains data item(s)
`
`conveying information) sent to the group messaging server remaining after the
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`transport layer header is removed.”
`
`F.
`“aggregated payload” (Claim 1 of the ‘523 Patent and Claims 1, 7,
`and 12 of the ‘686 Patent), “aggregating said payload portions” (Claim
`3 of the ‘686 Patent), and “aggregating said payload portion with the
`payload portion of a second host message” (Claim 18 of the ‘686 Patent)
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`40.
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`I understand that Patent Owner has proposed to construe this term as
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`“A collection of two or more data items that does not include transport layer
`
`headers.” In my opinion, this interpretation is consistent with the disclosure of the
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`disclosures of the ‘523 Patent and the ‘686 Patent.
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`41. The above Sections VI.D and VI.E regarding the Patent Owner’s
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`construction for “aggregated message” and “payload portion” describe that payload
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`portions of messages, such as the messages 96, 97, 98, and 99 in FIG. 7, received
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`by the group messaging server have TLP headers removed and are aggregated to
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`be included into a single message with a single message header to be sent to a host,
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`where the message includes payload portions from the messages sent by the hosts.
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`As explained above in Section VI.D, the specifications of the ‘523 and ‘686
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`Patents describe that transport layer headers are removed from messages sent to the
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`group messaging server. Ex. 1001 and Ex. 1002 at 20:14-30.
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`42. The process of creating the aggregated payload is further described by
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`the ‘523 and ‘686 Patents at 23:50-24:52. The ‘523 and ‘686 Patents state:
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`[t]he ULP server process 140 removes payload items from a message
`queue 143 for a host and accumulates them in an aggregation buffer
`149 . . . At the end of the aggregation period, the each host
`aggregation buffer may hold multiple payload items. The host
`aggregation buffer will hold a message count of the payload items
`followed b