UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`IPR2018-00394
`PATENT 6,622,018
`
`DECLARATION OF WILLIAM C EASTTOM II
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ....................................................................................... 1
`
`II.
`
`BACKGROUND AND QUALIFICATIONS .............................................. 2
`
`III. LEGAL STANARDS USED IN MY ANALYSIS ....................................... 2
`
`A. Obviousness ............................................................................................ 2
`
`B. Priority Date ........................................................................................... 4
`
`C. Person of Ordinary Skill in the Art.......................................................... 4
`
`D. Broadest Reasonable Interpretation ......................................................... 6
`
`IV. OVERVIEW OF THE ‘018 PATENT ......................................................... 6
`
`V.
`
`CLAIM CONSTRUCTION ......................................................................... 8
`
`VI. PETITIONER’S CITED REFERENCES ..................................................... 8
`
`VII. GENERAL ISSUES .................................................................................... 9
`
`A. The Complete Idiot’s Guide to PalmPilot and Palm III ........................... 9
`
`B. Motivation to Combine ..........................................................................12
`
`VIII. SPECIFIC CLAIMS ...................................................................................12
`
`A. Claim 1 “broadcasting a message, said message for locating remote
`devices within range of said transceiver; and”........................................12
`1. Broadcast vs interrogate .................................................................... 15
`
`B. Claim 1 “registering a position where contact is made with a surface of
`an input device,” ....................................................................................18
`
`IX. CONCLUSIONS ........................................................................................19
`
`EASTTOM CV .....................................................................................................22
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`i
`
`
`

`

`A. Education ...............................................................................................22
`1. University Degrees ........................................................................... 22
`2. Industry Certifications ...................................................................... 23
`3. Hardware and Networking Related Certifications ............................. 23
`4. Operating System Related Certifications........................................... 23
`5. Programming and Web Development Related Certifications ............ 24
`6. Database Related Certifications ........................................................ 24
`7. Security and Forensics Related Certifications ................................... 24
`8. Software Certifications ..................................................................... 25
`9. Licenses ............................................................................................ 25
`
`B. Publications ...........................................................................................25
`1. Books 26
`2. Papers, presentations, & articles........................................................ 28
`3. Patents .............................................................................................. 30
`
`C. Standards and Certification Creation ......................................................31
`
`D. Professional Awards and Memberships .................................................32
`
`E. Speaking Engagements ..........................................................................33
`
`F. Litigation Support Experience ...............................................................37
`1. Testifying Experience ....................................................................... 44
`
`G. Professional Experience .........................................................................47
`
`H. Continuing Professional Education ........................................................51
`
`I. References to my work ..........................................................................53
`1. Media References ............................................................................. 53
`2. References to publications ................................................................ 54
`3. Universities using my books ............................................................. 62
`
`J. Training .................................................................................................64
`
`K. Technical Skills .....................................................................................66
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`ii
`
`
`
`
`
`
`
`
`

`

`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`
`
`INTRODUCTION
`
`
`1.
`My name is William Charles Easttom II (Chuck Easttom) and
`
`I
`
`have
`
`been
`
`retained
`
`by
`
`Uniloc
`
`Luxembourg
`
`S.A.
`
`(“Uniloc”
`
`or
`
`the
`
`“Patent
`
`
`
` Owner”)
`
`to provide my expert opinions regarding U.S. Patent No.
`
`6,622,018
`
`(the
`
`‘018
`
`
`
` Patent). In particular, I have been asked to
`
`opine on
`
`whether
`
`a person
`
`of ordinary skill
`
`in the art (POSITA) at the time the inventions described in
`
`the
`
`‘018
`
`
`
`patent
`
`were
`
`conceived
`
`
`
`would
`
`have
`
`found
`
`
`
`all
`
`claims,
`
`claims
`
`
`
`1-27
`
`
`
`(“Challenged
`
`Claims”)
`
`as
`
`unpatentable
`
`in
`
`light
`
`of
`
`the
`
`cited
`
`references
`
`and
`
`arguments
`
`in
`
`IPR2018-00394.
`
`
`
`
`
`of
`
`the
`
`Petition
`
`and
`
`its
`
`exhibits,
`
`and
`
`my
`
`2.
`
`Based
`
`on
`
`my
`
`review
`
`understanding of the relevant requirements of patent law, and my decades of
`
`experience
`
`in
`
`the
`
`field
`
`of
`
`computer
`
`science
`
`including
`
`communications
`
`systems,
`
`it
`
`is
`
`my
`
`opinion
`
`that
`
`
`
`the
`
`Challenged
`
`Claims
`
`
`would
`
`not
`
`have
`
`been
`
`obvious in light
`
`of the proposed combinations.
`
`
`
`3.
`
`
`
`I am being compensated for my time at my standard consulting
`
`rate
`
`of
`
`$300
`
`
`per
`
`hour.
`
`I
`
`am
`
`also
`
`being
`
`reimbursed
`
`for
`
`expenses
`
`that
`
`I
`
`incur
`
`during the course of this work. Apart from that, I have no financial interest in
`
`Uniloc.
`
`My
`
`compensation
`
`is
`
`not
`
`contingent
`
`upon
`
`the
`
`results
`
`of
`
`my
`
`study
`
`or
`
`the substance of my opinions.
`
`
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`1
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`

`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`In my over 25 years of computer industry experience I have had
`
`extensive experience in communications systems, including data networks in
`
`general that have messaging capabilities. I hold 42 industry certifications,
`
`which include (among others) networking certifications. I have authored 26
`
`computer science books, several of which deal with networking topics. I am
`
`also the sole named inventor on thirteen patents.
`
`5.
`
`A more detailed description of my professional qualifications,
`
`including a list of publications, teaching, and professional activities, is
`
`contained in my curriculum vitae, a copy of which is attached hereto as
`
`Exhibit A.
`
`III.
`
`
`
`LEGAL STANARDS USED
`
`
`
` IN MY ANALYSIS
`
`6.
`
`
`
`Although
`
`I
`
`am
`
`not
`
`an
`
`attorney
`
`and
`
`I
`
`do
`
`not
`
`offer
`
`any
`
`legal
`
`opinions in
`
`this proceeding, I have been informed of and relied on certain legal
`
`principles in reaching the opinions set forth in this Declaration.
`
`
`
`
`A.
`
`7.
`
`
`
`Obviousness
`
`
`
`I
`
`understand
`
`that
`
`a
`
`patent
`
`claim
`
`is
`
`invalid
`
`if
`
`the
`
`differences
`
`between the subject matter and the prior art
`
`are such that the subject matter as
`
`a
`
`whole
`
`would
`
`have
`
`been
`
`obvious
`
`to
`
`a
`
`POSITA
`
`at
`
`the
`
`time
`
`of
`
`the
`
`alleged
`
`invention. I further understand that an obviousness analysis involves a review
`
`of the scope and content of the asserted prior art, the differences between the
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`2
`
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`

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`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
`
`and objective indicia of non-obviousness such as long-felt need, industry
`
`praise for the invention, and skepticism of others in the field.
`
`8.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited prior art, the claim cannot be considered obvious.
`
`9.
`
`I have further been informed that it is improper to combine
`
`references where the references teach away from a proposed combination; and
`
`that the following factors are among those relevant in considering whether
`
`prior art teaches away:
`
`• whether a POSITA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
`• whether the prior art criticizes, discredits, or otherwise discourages
`
`investigation into the claimed invention;
`
`• whether a proposed combination would produce an inoperative
`
`result; and
`
`• whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose.
`
`10.
`
`In addition, I have been informed that a proposed combination
`
`that changes the basic principles under which the prior art was designed to
`
`operate may fail to support a conclusion of obviousness.
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`3
`
`
`

`

`B.
`
`Priority Date
`
`11. The 6,622,018 patent issued on September 16, 2003 and the
`
`application was U.S. Patent Application No. 09/558,413 (“the ’413
`
`application”), which was filed on April 24, 2000. For purposes of this
`
`declaration, I have assumed the priority date for the ‘018 patent is April 24,
`
`2000.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`12.
`
`I understand that a POSITA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the priority date. I understand
`
`that factors that may be considered in determining the level of ordinary skill
`
`in the art may include: (a) the type of problems encountered in the art; (b)
`
`prior art solutions to those problems; (c) the rapidity with which innovations
`
`are made; (d) the sophistication of the technology; and (e) the educational
`
`level of active workers in the field.
`
`13.
`
`I have been asked to provide my opinion as to the qualifications
`
`of the person of ordinary skill in the art to which the ‘018 patent pertains as
`
`of April 24, 2000. In my opinion, a POSITA is someone who would have
`
`possessed on the priority date a bachelor’s degree in electrical engineering or
`
`computer science (or related technical degree) with at least two years of
`
`experience in communications including wireless communications and
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`4
`
`
`

`

`networking. More experience could be substituted for educational
`
`requirements.
`14.
`I understand that Dr. Houh opines that a person of ordinary skill
`
`in the art “a B.S. degree in Electrical Engineering, Computer Engineering, or
`
`Computer Science, or equivalent training, as well as at least three years of
`
`technical experience in the field of wireless communications, wireless devices
`
`and/or mobile systems. Lack of work experience can be remedied by
`
`additional education or training, and vice versa. Such academic and/or
`
`industry experience would be necessary to appreciate what was obvious
`
`and/or anticipated in the industry and what a person of ordinary skill in the art
`
`would have thought and understood at the time.” While I disagree on some
`
`particulars with Dr. Houh, even using his definition of a POSITA would not
`
`change my opinions and any differences are inconsequential to the dispute
`
`before the Board.
`
`15. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis
`
`and opinions regarding the ‘018 Patent have been based on the perspective of
`
`a person of ordinary skill in the art as of May 2000.
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`5
`
`
`

`

`D. Broadest Reasonable Interpretation
`
`16.
`
`I have been informed that, for purposes of this Inter Partes
`
`Review (IPR), the terms in the claims of the ‘018 patent are to be given their
`
`Broadest Reasonable Interpretation (BRI) in light of the specification and
`
`prosecution history of ‘018 Patent as understood by a POSITA on the priority
`
`date. I have used this standard throughout my analysis.
`
`IV.
`
`
`
`OVERVIEW OF THE
`
`
`
`‘018
`
`
`
`
`
` PATENT
`
`17.
`
`
`
`The ’018 patent is titled “Portable Device Control Console With
`
`Wireless
`
`Connection.”
`
`The
`
`ʼ018
`
`patent
`
`issued
`
`August
`
`15,
`
`2006,
`
`from
`
`U.S.
`
`Patent
`
`Application
`
`No.
`
`09/727,727
`
`filed
`
`September
`
`16,
`
`2003
`
`and
`
`originally
`
`assigned to 3Com Corporation (3Com).
`
`
`
`18.
`
`
`
`The
`
`inventors
`
`of
`
`the
`
`’018
`
`patent
`
`observed
`
`that
`
`remote
`
`control
`
`devices
`
`at
`
`the
`
`time
`
`had
`
`a
`
`number
`
`of
`
`shortcomings.
`
`For
`
`example,
`
`a
`
`separate
`
`required
`
`for
`
`each
`
`device
`
`to
`
`be
`
`controlled.
`
`In
`
`remote
`
`control
`
`device
`
`may
`
`be
`
`some
`
`instances,
`
`
`
`the
`
`separate
`
`remotes
`
`could
`
`be
`
`replaced
`
`with
`
`a
`
`universal
`
`remote
`
`control;
`
`however,
`
`universal
`
`remotes
`
`still
`
`had
`
`their
`
`shortcomings.
`
`Generally, universal remotes at the time often did not have the resources (e.g.,
`
`memory and computational logic) to allow them
`
`
`
`to be used with all devices,
`
`or
`
`they
`
`might
`
`not
`
`be
`
`capable
`
`of
`
`controlling
`
`a
`
`new
`
`device.
`
`Id.,
`
`1:37-40.
`
`In
`
`addition,
`
`in
`
`order
`
`
`to
`
`accommodate
`
`the
`
`variety
`
`of
`
`devices
`
`to
`
`be
`
`controlled,
`
`universal
`
`remotes
`
`usually
`
`had
`
`a
`
`multiplicity
`
`of
`
`buttons
`
`and
`
`thus
`
`could
`
`be
`
`difficult to use.
`
`
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`6
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`19.
`
`
`
`According
`
`to
`
`the
`
`invention
`
`of
`
`the
`
`’018
`
`Patent,
`
`a
`
`system
`
`and
`
`method for controlling remote devices over a wireless connection is provided.
`
`In one embodiment, a portable computer system having a transceiver is used
`
`to
`
`control
`
`compliant
`
`devices.
`
`When
`
`it
`
`is
`
`necessary
`
`to
`
`locate
`
`and
`
`identify
`
`compliant devices, portable computer system transmits a broadcast message
`
`that
`
`is
`
`received
`
`by
`
`compliant
`
`remote
`
`devices.
`
`Each
`
`of
`
`the
`
`remote
`
`devices
`
`is
`
`manifested
`
`on a display device of the portable computer system, and one of
`
`the devices is selected using, for example, a stylus element. The stylus element
`
`can
`
`also
`
`be
`
`used
`
`to
`
`specify
`
`commands
`
`for
`
`controlling
`
`the
`
`remote
`
`device.
`
`A
`
`position where the stylus element makes contact with a surface of the display
`
`device of the portable computer system is registered. The particular position
`
`where the stylus element makes contact with the display
`
`
`
`device is translated
`
`into a particular command for controlling the remote device. The command is
`
`wireless
`
`connection.
`
`then
`
`transmitted
`
`to
`
`the
`
`remote
`
`device
`
`over
`
`the
`
`Additionally, a rendering of the remote device or of a mechanism that can be
`
`used
`
`to
`
`control
`
`the
`
`remote
`
`device
`
`is
`
`displayed
`
`on
`
`the
`
`display
`
`device.
`
`The
`
`contact of the stylus element with a position in the rendering is translated into
`
`a particular command for controlling the remote device. Alternatively, a menu
`
`of
`
`commands
`
`for
`
`controlling
`
`the
`
`remote
`
`device
`
`is
`
`displayed
`
`on
`
`the
`
`display
`
`device.
`
`The
`
`contact
`
`of
`
`the
`
`stylus
`
`element
`
`with
`
`a
`
`position
`
`in
`
`the
`
`menu
`
`is
`
`translated
`
`into
`
`a
`
`particular
`
`command
`
`for
`
`controlling
`
`the
`
`remote
`
`device.
`
`Furthermore, the movement of the stylus element over the surface of an input
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`7
`
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`device is recognized and translated into a particular command for controlling
`
`the remote device. By moving the stylus element over the surface of the input
`
`device, motion is imparted to the rendering on the display device of the remote
`
`device or the mechanism for controlling the remote device.
`
`V. CLAIM CONSTRUCTION
`
`20.
`
`I have been asked to provide my opinions regarding the
`
`construction of certain terms used in the claims of the ‘018 Patent as would
`
`be understood by a POSITA using the BRI. The petitioner has stated “for the
`
`purposes of this proceeding, the terms of the challenged claims should be
`
`given their plain and ordinary meaning under the BRI standard, and no terms
`
`require specific construction” For the purposes of this proceeding I will utilize
`
`the petitioners definitions and use plain and ordinary meaning.
`
`VI.
`
`
`
`PETITIONER’S
`
`
`
`CITED REFERENCES
`
`
`
`21.
`
`
`
`Petitioners
`
`
`
`allege
`
`that
`
`the
`
`challenged
`
`
`
` Claims
`
`1-7
`
`and
`
`9-10
`
`are
`
`invalid
`
`over Ben-Ze'ev in view of “The Complete Idiot’s Guide to PalmPilot
`
`and Palm III” (the “Idiot’s Guide”).
`
`
`
`22.
`
`
`
`Petitioner
`
`further
`
`alleges
`
`that
`
`claims
`
`3-5,
`
`12,
`
`13,
`
`and
`
`17
`
`are
`
`invalid
`
`
`
`over
`
`claim 8 over Ben-Ze’ev in view of the Idiot’s Guide, and Dara-
`
`Abrams.
`
`
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`8
`
`
`
`
`
`
`
`
`
`
`
`
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`

`

`23. Petitioner further alleges that claims 11-17, 19-25, and 27 are
`
`invalid over Ben-Ze’ev in view of the Idiot’s Guide, and Osterhout.
`
`24. Petitioner further alleges that claims 18 and 26 are invalid over
`
`Ben-Ze’ev in view of the Idiot’s Guide, Osterhout, and Dara-Abrams.
`
`VII. GENERAL ISSUES
`
`25.
`
`In reviewing the petition for inter partes review, and the attached
`
`exhibits and declarations, several issues stood out as pervasive to the petition
`
`and need to be addressed separate from the specific claims. Those issues are
`
`addressed here.
`A. The Complete Idiot’s Guide to PalmPilot and Palm III
`
`26.
`
`In every single
`
`instance,
`
`the petitioner relies on some
`
`combination of the “The Complete Idiot’s Guide to PalmPilot and Palm III”.
`
`This is inappropriate for several reasons.
`
`27. The first being that my understanding while non-enabling prior
`
`art may qualify under Section 103, that non-enabling reference only qualifies
`
`as prior art for what is disclosed in it. However, the entire “Idiot’s Guide”
`
`series of books cannot enable any particular claim limitation, and further the
`
`“Idiot’s Guide” here does not disclose the functionality or operation of any
`
`claim limitation. These books are designed to give a completely non-technical
`
`reader, general insight into how to use a given product. In the case of “The
`
`Complete Idiot’s Guide to PalmPilot and Palm III” the goal is for the
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`9
`
`
`

`

`technically
`
`unsophisticated
`
`reader
`
`(i.e.
`
`“The
`
`Complete
`
`Idiot”)
`
`to
`
`be
`
`able
`
`to
`
`use functions of the Palm Pilot. Nothing in the book provides details on how
`
`features
`
`are
`
`implemented.
`
`This
`
`would
`
`be
`
`outside
`
`the
`
`scope
`
`of
`
`the
`
`book
`
`and
`
`would be confusing to the reader.
`
`
`
`28.
`
`
`
`Reading
`
`the
`
`excerpts
`
`of
`
`this
`
`book
`
`provided
`
`by
`
`the
`
`petitioner
`
`further
`
`confirms
`
`this.
`
`These
`
`books
`
`are
`
`not
`
`about
`
`how
`
`the
`
`particular
`
`device
`
`was
`
`built,
`
`nor
`
`about
`
`how
`
`the
`
`internal
`
`functionality
`
`is
`
`executed.
`
`There
`
`is
`
`absolutely
`
`no
`
`information
`
`on
`
`how
`
`the
`
`device
`
`performs
`
`the
`
`functions.
`
`Therefore,
`
`
`
`it would be impossible to
`
`create any device based on the content
`
`of this book (or any of the Idiot’s Guide series). Furthermore, since no details
`
`the
`
`functionality
`
`is
`
`implemented,
`
`it
`
`is
`
`impossible
`
`to
`
`are
`
`provided
`
`of
`
`how
`
`determine
`
`the details of
`
`the specific means and operation of any functionality,
`
`thus
`
`making
`
`it
`
`useless
`
`to
`
`a
`
`POSA
`
`in
`
`making
`
`hypothetical
`
`modifications
`
`to
`
`another reference.
`
`
`
`29.
`
`
`
`Using
`
`the
`
`“The
`
`Complete
`
`Idiot’s
`
`Guide
`
`to
`
`PalmPilot
`
`and
`
`Palm
`
`III” as a resource would be essentially like looking at the outside of a car and
`
`trying to opine on the specific functionality of the car’s engine. It is surprising
`
`that
`
`the
`
`petitioner
`
`would
`
`put
`
`forward
`
`this
`
`source,
`
`not
`
`only
`
`as
`
`a
`
`source,
`
`but
`
`their primary source.
`
`
`
`30.
`
`
`
`Throughout
`
`the
`
`petition
`
`and
`
`Dr.
`
`Houh’s
`
`declaration
`
`there
`
`are
`
`continuous
`
`references
`
`to
`
`combining
`
`the
`
`“The
`
`Complete
`
`Idiot’s
`
`Guide
`
`to
`
`PalmPilot
`
`and
`
`Palm
`
`III”
`
`with
`
`various
`
`patents.
`
`This
`
`would
`
`be
`
`entirely
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`10
`
`
`
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`
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`impossible,
`
`since
`
`“The
`
`Complete
`
`Idiot’s
`
`Guide
`
`to
`
`PalmPilot
`
`and
`
`Palm
`
`III”
`
`does
`
`not
`
`disclose
`
`any
`
`details
`
`of
`
`specific
`
`operation
`
`and
`
`methods
`
`for
`
`any
`
`functionality,
`
`
`and does not provide the necessary detail to even implement the
`
`features it describes, much less to
`
`modify
`
`another reference or
`
`combine them
`
`with anything else.
`
`
`
`31.
`
`
`
`Furthermore,
`
`no
`
`POSA
`
`by
`
`any
`
`definition,
`
`would
`
`combine
`
`this
`
`book
`
`with
`
`any
`
`other
`
`source.
`
`These
`
`books
`
`are
`
`written
`
`for
`
`people
`
`with
`
`absolutely
`
`no
`
`technical
`
`training
`
`or
`
`experience.
`
`Dr.
`
`Houh
`
`has
`
`opined
`
`that
`
`a
`
`POSA
`
`would
`
`have
`
`“a
`
`B.S.
`
`degree
`
`in
`
`Electrical
`
`Engineering,
`
`Computer
`
`Engineering, or Computer Science, or equivalent training, as well as at least
`
`three
`
`years
`
`of
`
`technical
`
`experience
`
`in
`
`the
`
`field
`
`of
`
`wireless
`
`communications,
`
`wireless devices and/or mobile systems”. Such a person would not
`
`have any
`
`reason
`
`to
`
`ever
`
`consult
`
`“The
`
`Complete
`
`Idiot’s
`
`Guide
`
`to
`
`PalmPilot
`
`and
`
`Palm
`
`
`III”
`
`because
`
`by
`
`definition
`
`the
`
`book’s
`
`target
`
`audience
`
`are
`
`laymen
`
`end-users,
`
`and
`
`provides
`
`no
`
`disclosure
`
`whatsoever
`
`of
`
`the
`
`underlying
`
`methods
`
`and
`
`
`
` mechanisms that
`
`might be considered a teaching to a POSA.
`
`
`
`32.
`
`
`
`Furthermore, the people who would read “The Complete Idiot’s
`
`Guide to PalmPilot and Palm III”,
`
`by the book’s own admission,
`
`would lack
`
`the
`
`technical
`
`skill
`
`to
`
`understand
`
`technical
`
`patents,
`
`much
`
`less
`
`combine
`
`this
`
`book with any of
`
`those patents. It is telling that the petitioner, nor Dr. Houh
`
`provide any insight into a motivation to combine “The Complete Idiot’s Guide
`
`to PalmPilot and Palm III” with any of the patents they list. That is because
`
`
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`11
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`

`

`there not only is no motivation to combine, but such a combination would be
`
`completely beyond reason.
`
`
`
`B.
`
`Motivation to Combine
`
`
`
`33.
`
`
`
`The
`
`preceding
`
`section
`
`leads
`
`naturally
`
`to
`
`the
`
`motivation
`
`to
`
`combine.
`
`On
`
`paragraph
`
`39
`
`of
`
`Dr.
`
`Houh’s
`
`declaration
`
`he
`
`states
`
`“
`
`(f)
`
`some
`
`teaching, suggestion, or motivation
`
`in the prior art that would have led one of
`
`ordinary
`
`skill
`
`to
`
`modify
`
`the
`
`prior
`
`art
`
`reference
`
`or
`
`to
`
`combine
`
`prior
`
`art
`
`reference.” On this issue I am in complete agreement with Dr. Houh.
`
`
`
`
`
`declaration,
`
`not
`
`once
`
`does
`
`he
`
`34.
`
`However,
`
`throughout
`
`Dr.
`
`Houh’s
`
`explain
`
`any
`
`motivation to combine. He continually
`
`recites
`
`“it
`
`is my
`
`opinion
`
`that one of ordinary skill in the art would have been motivated to combine..”
`
`but
`
`never
`
`provides
`
`any
`
`reason
`
`at
`
`all
`
`why
`
`a
`
`POSA
`
`would
`
`be
`
`motivated
`
`to
`
`combine.
`
`
`
`VIII.
`
`
`
`
`
` SPECIFIC CLAIMS
`
`35.
`
`
`
`I have reviewed
`
`
`
` the claims in light of
`
`the proposed combinations
`
`
`
`
`
` and
`
`features.
`believe they do not disclose the claimed
`
`
`
`A.
`Claim 1 “broadcasting a message, said message for locating
`remote devices within range of said transceiver; and”
`
`
`36.
`
`
`
`The petitioner states:
`
`
`
`because
`limitation
`this
`discloses
`“Ben-Ze’ev
`adaptive
`remote
`controller
`“periodically
`
`its
`that
`teaches
`it
`interrogates
`the
`
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`12
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`

`

`existence of all appliances in its vicinity” via an “interrogation
`signal [that] is generally sent periodically to all appliances….”
`APPL-1007, 10:49-65, 8:41-58. The
`interrogation signal
`requests that a receiving appliance “identify itself.”
`A POSITA would understand that Ben-Ze’ev’s adaptive remote
`controller broadcasts the interrogation signal because the signal
`is not transmitted to any one particular recipient—it is
`transmitted to all appliances in the vicinity”
`
`
`
`37. However, using the petitioners own interpretation of Ben-Ze’ev,
`
`this is a very different process than what is described in the ‘018 patent. To
`
`fully understand this significant difference, first consider how the ‘018 patent
`
`describes its broadcast:
`
`“when it is necessary to locate and identify compliant devices, portable
`computer system transmits a broadcast message 640 (e.g., an inquiry
`504) that is received by compliant remote devices 610-630.”
`
`and
`“Portable computer system 100, either automatically or in response to
`a user input, transmits broadcast message 640 for the purpose of
`discovering compliant devices in the room.”
`
`38.
`
`In contrast Ben-Ze’ev “periodically interrogates the existence of
`
`all appliances in its vicinity.” The method in the ‘018 patent is a significant
`
`improvement. Rather than simply “Periodically” interrogating the existence
`
`of all appliances, the ‘018 only searches out new devices “when it is
`
`necessary”. Considering the state of the art in 2000, with very limited wireless
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`13
`
`
`

`

`bandwidth, unnecessary wireless communications were a significant burden.
`
`The ‘018 patent relieved this burden.
`
`39. The methodology embodied in Ben-Ze’ev is further described in
`
`the following excerpts from the patent:
`
`“According to one embodiment of the invention, the remote
`controller periodically interrogates the existence of all appliances
`in its vicinity. More particularly, the remote controller initiates a
`signal containing the remote controller device code, and an
`interrogation code asking the device to identify itself.”
`
`And
`“Claim 20. A remote controller for controlling at least one
`appliance in an environment, characterized in that it periodically
`interrogates an existence of all appliances in the environment,
`acquires from each appliance in said environment a set-up file
`containing a functional portion of at least information regarding
`the various signal formats that should be sent by the remote
`controller for activating various features of the appliance and
`information for assigning each of said features to a button of the
`remote controller, and optionally an identification information
`regarding the identification of said appliance.”
`
`
`40. To fully appreciate the advantages that the ‘018 presents, one
`
`must consider the state of wireless communication in 2000. By the late 1990's
`
`(including 1998/1999) 2G was the common cell phone network. The first
`
`commercial 3G was launched in Japan in May 2001. 802.11b was the standard
`
`for wireless, with only 11 megabits/second bandwidth.
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`14
`
`
`

`

`41. Anyone who used any form of wireless communication in the
`
`year 2000 can recall how limited bandwidth was. And any unnecessary
`
`communications would have been a burden. The ‘018 invention overcame this
`
`by limited broadcasts to “when it is necessary”. This is a substantial
`
`improvement over Ben-Ze'ev which “periodically interrogates the existence
`
`of all appliances in its vicinity”.
`
`42. The ‘018 patent explicitly discusses Bluetooth as the mechanism
`
`for communication. Bluetooth is a low bandwidth, short range wireless
`
`technology specified in the IEEE 802.15.1standard. At the time of the patent,
`
`in the year 2000, Bluetooth was rather new. In face the IEEE 802.15.1
`
`standard was not finalized until 2002. The inventor of the ’018 patent realized
`
`it was the wave of the future and fully embraced it. This is in stark contrast to
`
`Ben-Ze’ev which mentions Bluetooth in passing as one of several wireless
`
`modalities “Bluetooth, Home-RF (HomePNA), Wireless LAN”.
`
`1.
`
`Broadcast vs interrogate
`
`43. The claims of the ‘018 patent are quite clear. “Broadcasting a
`
`message” appears in claims 1, 11, and 21. This is further discussed throughout
`
`the ‘018 patent. The word, nor the concept of a broadcast message never
`
`appears in Ben-Ze’ev. Broadcast has a specific and well understood meaning.
`
`
`
` Apple v. Uniloc, IPR2018-00394
`
`Uniloc’s Exhibit 2001, page
`15
`
`
`

`

`And it would have been very familiar to a POSA in 2000. Broadcast messages
`
`were first defined as a standard in RFC 919 in 19841.
`
`44. The petitioner has stated that terms should have their plain and
`
`ordinary meaning, and for the purposes of this proceeding that is the standard
`
`I am applying. For a POSA the term broadcast would have had the meaning
`
`of a specific network message defined by the standard RFC 919, certainly for
`
`a POSA as defined by Dr. Houh: “a B.S. degree in Electrical Engineering,
`
`Computer Engineering, or Computer Science, or equivalent training, as well
`
`as at least three years of technical experience in the field of wireless
`
`communications, wireless devices and/or mobile systems.” Such a person
`
`would be quite familiar with network broadcast messages and RFC 919.
`
`45. Broadcast literally means to send a packet to all the IP addresses
`
`on a network at the same time.
`
`46. Ben-Ze‘ev uses ‘interrogation’. The Oxford Dictionary of
`
`Computer Science, 7th Edition, defines interrogation as follows:
`
`
`
`1http://www.rfc-base.org/rfc-919.html
` Apple v. Uniloc, IPR2018-00394
`Uniloc’s Exhibit 2001, page
`16
`
`
`
`
`
`
`
`

`

`
`
`47. Merriam-Webster defines interrogate (in relation to computer
`
`science) as “to give or send out a signal to (a device, such as a transponder)
`
`for triggering an appropriate response.”2
`
`48. Oxford’s Learners Dictionary defines interrogate (in relation to
`
`computer science) as “to obtain information from a computer or other
`
`machine”.
`
`49. The plain and ordinary definition of interrogate (in relation to
`
`computer science) is to communicate with an individual machine, one at a
`
`time. And if one needs to communicate with multiple machines, one can
`
`interrogate them sequentially, in a process known as polling.
`
`50. This a substantially different process than broadcasting. In fact,
`
`the standard for network broadcasting specifically describes the disadvantages
`
`of such polling