IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`_______________
`
`
`Cases IPR2018-00129. IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patents 5,822,523 & 6,226,686
`_______________
`
`
`
`DECLARATION OF DR. KEVIN C. ALMEROTH
`
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER EXHIBIT 2002 - COVER
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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.  MATERIALS REVIEWED ................................................................................ 4 
`III.  QUALIFICATIONS ............................................................................................ 6 
`IV.  LEGAL PRINCIPLES ...................................................................................... 10 
`A. Anticipation ...................................................................................................... 10 
`B. Obviousness ...................................................................................................... 11 
`1.  Motivation to Combine .................................................................................. 12 
`2.  Non-Analogous Art ....................................................................................... 13 
`3.  Combination of Prior Art Renders Prior Art Device Inoperable For Its
`Intended Purpose ................................................................................................ 13 
`4.  References Teach Away From Combination ................................................ 13 
`5.  Secondary Considerations of Non-Obviousness ........................................... 14 
`V.  PERSON OF ORDINARY SKILL IN THE ART.......................................... 14 
`VI.  CLAIM CONSTRUCTION .............................................................................. 15 
`A. 
`“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) ............ 17 
`B. 
`“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) ............................................... 24 
`VII.  MOTIVATION TO COMBINE ALDRED AND RFC 1692......................... 26 
`A.  Petitioner’s Alleged Motivations ..................................................................... 26 
`B.  Problems with combining Aldred and RFC 1692 ............................................ 29 
`1.  The CSP in Aldred has an “order” requirement ............................................ 30 
`2.  Effects of large packets with respect to the serialization process of Aldred . 31 
`3.  The Requirement of packet order in the Serialization process when
`Aldred and RFC 1692 are combined .................................................................. 33 
`4.  Petitioner failed to consider why a POSITA would turn to RFC 1692
`when Aldred already discusses alternative bandwidth solutions ....................... 38 
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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 ..................................................................................................... 40 
`A.  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) ........................... 40 
`B.  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) .................................................. 50 
`IX.  DEPENDENT CLAIMS ................................................................................... 59 
`A.  Aldred in view of RFC 1692 does not render obvious Claims 4, 5, 16, 17,
`34-37, 41, and 42 of the ‘523 Patent, nor Claims 30, 34, 35, 49, 53, 54, 66, and
`70 of the ‘686 Patent ................................................................................................. 59 
`B.  Aldred in view of RFC 1692 does not render obvious Claims 2, 3, 6-10, 15,
`18, 19-27, 31-33, and 44-47 of the ‘523 Patent, nor Claims 2, 4, 8-11, 13-17, 19-
`21, 26-29, 39, 40, 45-48, 56, 57, and 62-65 of the ‘686 Patent ................................ 64 
`C.  Aldred in view of RFC 1692 and RFC 1459 does not render obvious
`Claims 38-40 of the ‘523 Patent, nor Claims 31-33, 50-52, and 67-69 of the ‘686
`Patent ......................................................................................................................... 70 
`D.  Aldred in view of RFC 1692 and Denzer does not render obvious Claim 43
`of the ‘523 Patent, nor Claims 36 and 55 of the ‘686 Patent .................................... 72 
`E.  Aldred in view of RFC 1692 and Ulrich does not render obvious Claim 11
`of the ‘523 Patent, nor Claims 22, 41, and 58 of the ‘686 Patent ............................. 73 
`F.  Aldred in view of RFC 1692 and Ulrich does not render obvious Claim 12
`of the ‘523 Patent, nor Claims 23, 42, and 59 of the ‘686 Patent ............................. 76 
`G.  Aldred in view of RFC 1692 and Ulrich does not render obvious Claims 13
`and 14 of the ‘523 Patent, nor Claims 24, 25, 43, 44, 60 and 61 of the ‘686
`Patent ......................................................................................................................... 79 
`H.  Aldred in view of RFC 1692 and Ulrich does not render obvious Claims 29
`and 30 of the ‘523 Patent .......................................................................................... 81 
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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.  Aldred in view of RFC 1692 and Ulrich does not render obvious Claims
`15, 23, 27, and 28 of the ‘523 Patent, nor Claims 26, 27, 45, 46, 62, and 63 of
`the ‘686 Patent .......................................................................................................... 83 
`X.  CONCLUSION .................................................................................................. 86 
`
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`
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`I, Dr. Kevin C. Almeroth, 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 the above-captioned proceedings 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 of $650 for my time spent on this matter,
`
`my opinions herein are my own, no part of my compensation depends on the
`
`outcome of this proceeding, and I 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. I
`
`understand that the Board has instituted trial on each of these IPRs on the
`
`following grounds:
`
` IPR2018-00129:
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`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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`o Claims 1-10, 16-18, 31-37, 41, 42, and 44-47 of the ‘523 Patent
`
`as allegedly unpatentable under 35 U.S.C. § 103 over Aldred
`
`and RFC 1692;
`o Claims 38-40 of the ‘523 Patent as allegedly unpatentable under
`
`35 U.S.C. § 103 over Aldred, RFC 1692, and RFC 1459; and
`o Claim 43 of the ‘523 Patent as allegedly unpatentable under 35
`
`U.S.C. § 103 over Aldred, RFC 1692, and Denzer.
`
` IPR2018-00130:
`o Claims 1, 15, and 19-27 of the ‘523 Patent as allegedly
`
`unpatentable under 35 U.S.C. § 103 over Aldred and RFC
`
`1692; and
`o Claims 11-15, 23, and 27-30 of the ‘523 Patent as allegedly
`
`unpatentable under 35 U.S.C. § 103 over Aldred, RFC 1692,
`
`and Ulrich.
`
` IPR2018-00131:
`o Claims 1-4, 7-21, 28-30, 34, 35, 39, 40, 47-49, 53, 54, 56, 57,
`
`64-66, and 70 of the ‘686 Patent as allegedly unpatentable
`
`under 35 U.S.C. § 103 over Aldred, RFC 1692, and RFC 1459;
`
`and
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`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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`o Claims 31-33, 50-52, and 67-69 of the ‘686 Patent as allegedly
`
`unpatentable under 35 U.S.C. § 103 over Aldred and RFC
`
`1692.
`
` IPR2018-00132:
`o Claims 1, 3, 7, 12, 18, 26, 27, 45, 46, 62, and 63 of the ‘686
`
`Patent as allegedly unpatentable under 35 U.S.C. § 103 over
`
`Aldred and RFC 1692;
`o Claims 22-27, 41-46, and 58-63 of the ‘686 Patent as allegedly
`
`unpatentable under 35 U.S.C. § 103 over Aldred, RFC 1692,
`
`and Ulrich; and
`o Claims 36 and 55 of the ‘686 Patent as allegedly unpatentable
`
`under 35 U.S.C. § 103 over Aldred, RFC 1692, and Denzer.
`
`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,
`
`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 listed below under Materials Reviewed.
`
`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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`5.
`
`I am relying on nearly 30 years of experience in the field to speak to
`
`the state of the art.
`
`II. MATERIALS REVIEWED
`
`6.
`
`In forming my opinions expressed in this declaration, I have
`
`considered and relied upon my education, background, and experience. I have also
`
`reviewed and relied upon the following list of materials in preparation of this
`
`declaration, and any other cited reference in this declaration:
`
` Petitions filed by Petitioner (Paper No. 1 in each of the above-captioned
`
`inter partes review proceedings);
`
` The Declaration of Dr. Steve R. White (Exhibit No. 1007 to Petitioner’s
`
`petitions);
`
` The Institution Decisions (Paper Nos. 11) issued in each of the above-
`
`captioned inter partes review proceedings;
`
` U.S. Patent No. 5,822,523 (attached as Ex. 1001 to Petitioner’s petitions);
`
` 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);
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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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` 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);
`
` U.S. Patent No. 5,307,413 to Denzer (“Denzer”) (attached as Ex. 1014 to
`
`Petitioner’s Petition);
`
` Transcript of Deposition of Dr. Steve White (Ex. 2004); and
`
` all other exhibits listed in the Exhibit List of the Declaration of Dr. Steve
`
`White.
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`5
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`III. QUALIFICATIONS
`
`7. My current and complete curriculum vitae, which includes a more
`
`detailed summary of my background, experience, and publications, is included as
`
`Exhibit 2003.
`
`8.
`
`I hold three degrees from the Georgia Institute of Technology: (1) a
`
`Bachelor of Science degree in Information and Computer Science (with minors in
`
`Economics, Technical Communication, American Literature) earned in June, 1992;
`
`(2) a Master of Science degree in Computer Science (with specialization in
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`Networking and Systems) earned in June, 1994; and (3) a Doctor of Philosophy
`
`(Ph.D.) degree in Computer Science (Dissertation Title: Networking and System
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`Support for the Efficient, Scalable Delivery of Services in Interactive Multimedia
`
`System, minor in Telecommunications Public Policy) earned in June, 1997.
`
`9.
`
`During my education, I have taken a wide variety of courses as
`
`demonstrated by my minor. My undergraduate degree also included a number of
`
`courses that are more typical of a degree in electrical engineering including digital
`
`logic, signal processing, and telecommunications theory.
`
`10.
`
`I am currently a professor at the University of California in Santa
`
`Barbara, California, in the Department of Computer Science. Before my current
`
`position as a professor at the University of California, I held other positions at the
`
`University of California and other institutions, including positions as Associate
`
`6
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`Dean at the College of Engineering of the University of California, Vice Chair of
`
`the Department of Computer Science at the University of California, and Graduate
`
`Intern at IBM. Please see my attached curriculum vitae, for the full list.
`
`11.
`
`In the courses I teach, the class spends significant time covering all
`
`aspects of the Internet including each of the layers of the Open System
`
`Interconnect (OSI) protocol stack commonly used in the Internet. These layers
`
`include the physical and data link layers and their handling of signal modulation,
`
`error control, and data transmission. I also teach DOCSIS, DSL, and other
`
`standardized protocols for communicating across a variety of physical media
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`including cable systems, telephone lines, wireless, and high-speed Local Area
`
`Networks (LANs). I teach the configuration and operation of switches, routers, and
`
`gateways including routing and forwarding and the numerous respective protocols
`
`as they are standardized and used throughout the Internet. Topics include a wide
`
`variety of standardized Internet protocols at the Network Layer (Layer 3),
`
`Transport Layer (Layer 4), and above.
`
`12.
`
`I am an author or co-author of nearly 200 technical papers, published
`
`software systems, IETF Internet Drafts and IETF Request for Comments (RFCs).
`
`13. My involvement in the research community extends to leadership
`
`positions for several journals and conferences. I am the co-chair of the Steering
`
`Committee for the ACM Network and System Support for Digital Audio and
`
`7
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`Video (NOSSDAV) workshop and on the Steering Committees for
`
`the
`
`International Conference on Network Protocols (ICNP), ACM Sigcomm
`
`Workshop on Challenged Networks (CHANTS), and IEEE Global Internet (GI)
`
`Symposium. I have served or am serving on the editorial boards of IEEE/ACM
`
`Transactions on Networking, IEEE Transactions on Mobile Computing, IEEE
`
`Transactions on Networks and System Management, IEEE Network, ACM
`
`Computers in Entertainment, AACE Journal of Interactive Learning Research
`
`(JILR), and ACM Computer Communications Review.
`
`14.
`
`I have co-chaired a number of conferences and workshops including
`
`the IEEE International Conference on Network Protocols (ICNP), ACM
`
`International Conference on Next Generation Communication (CoNext), IEEE
`
`Conference on Sensor, Mesh and Ad Hoc Communications and Networks
`
`(SECON), International Conference on Communication Systems and Networks
`
`(COMSNETS),
`
`IFIP/IEEE
`
`International Conference on Management of
`
`Multimedia Networks and Services (MMNS), the International Workshop On
`
`Wireless Network Measurement (WiNMee), ACM Sigcomm Workshop on
`
`Challenged Networks (CHANTS), the Network Group Communication (NGC)
`
`workshop, and the Global Internet Symposium; and I have been on the program
`
`committee of numerous conferences.
`
`8
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`15.
`
`In addition, I co-founded a technology company called Santa Barbara
`
`Labs that was working under a sub-contract from the U.S. Air Force to develop
`
`very accurate emulation systems for the military’s next generation internetwork.
`
`Santa Barbara Labs’ focus was in developing an emulation platform to test the
`
`performance characteristics of the network architecture in the variety of
`
`environments in which it was expected to operate, and in particular, for network
`
`services including IPv6, multicast, Quality of Service (QoS), satellite-based
`
`communication, and security. Applications for this emulation program included
`
`communication of a variety of multimedia-based services. Within this testing
`
`infrastructure, we used a wide range of switches and routers.
`
`16.
`
`In addition to having co-founded a technology company myself, I
`
`have worked for, consulted with, and collaborated with companies such as IBM,
`
`Hitachi Telecom, Digital Fountain, RealNetworks, Intel Research, Cisco Systems,
`
`and Lockheed Martin.
`
`17.
`
`I am a Member of the Association of Computing Machinery (ACM)
`
`and a Fellow of the Institute of Electrical and Electronics Engineers (IEEE).
`
`18. Previous Expert Witness Experience
`
`19.
`
`In sum, I have nearly 30 years of experience in the area of computer
`
`networking and software.
`
`9
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`IV. LEGAL PRINCIPLES
`
`20.
`
`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.
`
`21.
`
`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.
`
`22.
`
`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.
`
`23.
`
`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
`
`10
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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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.
`
`24.
`
`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
`25.
`
`I understand that, for these proceedings, a patent claim is invalid if the
`
`claims would have been obvious to a person of ordinary skill in the art
`
`(“POSITA”) at the effective filing date of February 1, 1996. I understand that the
`
`obviousness inquiry should not be done in hindsight, but from the perspective of a
`
`POSITA as of the effective filing date of the patent claim.
`
`26.
`
`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.
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
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`27.
`
`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
`
`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
`
`28.
`
`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.
`
`29.
`
`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
`
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`claimed invention may employ known principles does not in and of itself establish
`
`that the invention would have been obvious.
`
`2.
`
`Non-Analogous Art
`
`30.
`
`I understand that it is improper to combine references where the
`
`references are non-analogous.
`
`31.
`
`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,
`
`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
`
`32.
`
`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
`
`33.
`
`I understand that it is improper to combine references where the
`
`references teach away from their combination. I understand that a reference may 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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`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
`
`34.
`
`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.
`
`35.
`
`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
`
`36.
`
`I have been asked to consider the level of ordinary skill in the art that
`
`someone would have had as of February 1, 1996. With nearly 30 total years of
`
`experience in networking, I am well informed with the level of ordinary skill,
`
`which takes into consideration:
`
` levels of education and experience of persons working in the field;
`
` types of problems encountered in the field; and
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`
` sophistication of the technology.
`
`37. 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 have had a
`
`Bachelor’s degree in Computer Science, Computer Engineering, or the equivalent,
`
`and approximately two years experience in the field of interactive, network-based
`
`applications. As a result, a person of ordinary skill in the art would have
`
`understood network protocols like the Transmission Control Protocol (TCP), the
`
`User Datagram Protocol (UDP), and the Internet Protocol (IP). A person of
`
`ordinary skill in the art would also know how to write computer applications that
`
`used “network sockets” to utilize these protocols to communicate over networks
`
`like the Internet.
`
`VI. CLAIM CONSTRUCTION
`
`38.
`
`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
`
`the ‘523 and ‘686 Patents have expired. I understand that in an inter partes review
`
`proceeding the claims of an expired patent should be given their ordinary and
`
`accustomed meaning as understood by one of ordinary skill in the art consistent
`
`with the standard expressed in Phillips v. AWH Corp., 415 F.3d 1303, 1312–13
`
`(Fed. Cir. 2005) (en banc), instead of broadest reasonable interpretation. I
`
`understand that the ordinary meaning of a term may be evidenced by a variety of
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`sources, including “the words of the claims themselves, the remainder of the
`
`specification, the prosecution history, and extrinsic evidence concerning relevant
`
`scientific principles, the meaning of technical terms, and the state of the art.”
`
`Phillips, 415 F.3d at 1314.
`
`39.
`
`I understand that Patent Owner has proposed the constructions set
`
`forth below.
`
`40. With respect to the term “aggregated payload,” and the closely related
`
`term “aggregated message,” I am not aware of a commonly understood meaning
`
`for the term “aggregated payload” at the time of filing of the ‘523 and ‘686
`
`Patents, and I was not personally aware of specific and understood meanings of the
`
`terms in the industry in 1996. While a POSITA could make an educated guess as
`
`to what could make up an “aggregated payload” or an “aggregated message,” a
`
`POSITA would have had to turn to the specific disclosure of the ‘523 and ‘686
`
`Patents to determine the exact meaning and composition of an “aggregated
`
`payload” and an “aggregated message,” as defined by the inventors of the ‘523 and
`
`‘686 Patent. I performed a search of art around the time of 1996 and before, but
`
`did not find anything that would suggest a concrete definition for the terms. There
`
`does not appear to be any indication that a POSITA upon hearing these terms
`
`would immediately understand exactly what would be included in an aggregated
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`payload or an aggregated message. Therefore, in my opinion one a POSITA would
`
`need to turn to the ‘523 and ‘686 Patents to fully understand the terms.
`
`A.
`“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)
`
`41.
`
`I understand that Patent Owner has proposed to construe these terms
`
`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 and ‘686 Patents.
`
`42. 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.
`
`43. Figure 7, below, of the ‘523 and ‘686 Patents illustrates the messages
`
`transmitted by the Group Messaging Server.
`
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`IPR2018-00129, IPR2018-00130, IPR2018-00131, IPR2018-00132
`Patent Nos. 5,822,523 & 6,226,686
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`
`44. The ‘523 and ‘686 Patents describe that the payload portions of
`
`messages 96, 97, 98, 99 are removed by the group messaging server so that the
`
`payload portions of these messages can be aggregated. The ‘523 and ‘686 Patents
`
`
`
`state:
`
`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 proc