UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`APPLE, INC.,
`Petitioners,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`IPR2018-00395
`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
`
`C. Leichiner ................................................................................................12
`
`VIII. SPECIFIC CLAIMS ...................................................................................15
`
`A. Claim 1 “broadcasting a message, said message for locating remote
`devices within range of said transceiver; and”........................................15
`1. Broadcast vs polling .......................................................................... 16
`
`B.
`
`
`
`Claim 1 “registering a position where contact is made with a surface of
`
`an input device,”
` ....................................................................................19
`
`
`C.
`
`
`Claim 1 “d) transmitting a command to said remote device over said
`
`wireless connection.”
` .............................................................................20
`
`
` Apple v. Uniloc, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`i
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`

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`IX. CONCLUSIONS ........................................................................................21
`
`EASTTOM CV .....................................................................................................23
`
`A. Education ...............................................................................................23
`1. University Degrees ........................................................................... 23
`2. Industry Certifications ...................................................................... 24
`3. Hardware and Networking Related Certifications ............................. 24
`4. Operating System Related Certifications........................................... 24
`5. Programming and Web Development Related Certifications ............ 25
`6. Database Related Certifications ........................................................ 25
`7. Security and Forensics Related Certifications ................................... 25
`8. Software Certifications ..................................................................... 26
`9. Licenses ............................................................................................ 26
`
`B. Publications ...........................................................................................26
`1. Books 27
`2. Papers, presentations, & articles........................................................ 29
`3. Patents .............................................................................................. 31
`
`C. Standards and Certification Creation ......................................................32
`
`D. Professional Awards and Memberships .................................................33
`
`E. Speaking Engagements ..........................................................................34
`
`F. Litigation Support Experience ...............................................................38
`1. Testifying Experience ....................................................................... 45
`
`G. Professional Experience .........................................................................48
`
`H. Continuing Professional Education ........................................................52
`
`I. References to my work ..........................................................................54
`1. Media References ............................................................................. 54
`2. References to publications ................................................................ 55
`3. Universities using my books ............................................................. 63
`
`J. Training .................................................................................................65
`
`K. Technical Skills .....................................................................................67
`
` Apple v. Uniloc, IPR2018-00395
`ii
`Uniloc’s Exhibit 2001, page
`
`
`
`
`

`

`
`
`
`
`
`
`Apple v. Uniloc, IPR2018-00395
` Apple v. Uniloc, IPR2018-00395
`
`Uniloc’s Exhibit 2001, pagei11
`Uniloc’s Exhibit 2001, page
`iii
`
`
`

`

`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, IPR2018-00395
`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, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`2
`
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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, IPR2018-00395
`
`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, IPR2018-00395
`
`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, IPR2018-00395
`
`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
`
`for
`
`each
`
`device
`
`to
`
`be
`
`controlled.
`
`In
`
`remote
`
`control
`
`device
`
`may
`
`be
`
`required
`
`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, IPR2018-00395
`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, IPR2018-00395
`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, IPR2018-00395
`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, IPR2018-00395
`
`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, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`10
`
`
`
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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
`
`would
`
`have
`
`“a
`
`B.S.
`
`degree
`
`in
`
`Electrical
`
`Engineering,
`
`Computer
`
`POSA
`
`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, IPR2018-00395
`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 38 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.
`
`34. However, throughout Dr. Houh’s declaration, not once does he
`
`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.
`
`C. Leichiner
`
`35.
`
`In addition to the previously discussed “Idiot’s Guide”, every
`
`single combination the petitioner puts forward depends on Leichner. The
`
`Leichner patent has significant and substantial differences from the ‘018
`
`patent. One of those is its method of communication. Leichiner explicitly uses
`
`
`
` Apple v. Uniloc, IPR2018-00395
`
`Uniloc’s Exhibit 2001, page
`12
`
`
`

`

`polling, which is literally the opposite approach of the ‘018 patent’s
`
`broadcasting (see section below VII sub section A).
`
`36. Furthermore, Leichiner
`
`explicitly
`
`relies
`
`on
`
`infrared
`
`communications. This is clear from the following excerpts from Leichiner:
`
`“Between the controller and the controlled device, infrared-ray
`(IR) communication links (106 and 110) are provided”
`
`"The wireless system of the present invention comprises the
`controller, which is a hand-held wireless infrared-ray remote
`control unit in one working example of the present invention."
`37. The ‘018 patent explicitly relies on Bluetooth communications.
`
`This is a significant and substantial difference. Infrared communication works
`
`by sending a signal in a straight line and requires a direct line to the target,
`
`and can be interrupted by objects between the two devices1. There are some
`
`specific and important disadvantages to infrared:
`
`“• As it is line of sight, it is difficult to control things not in line
`of sight of transmitting IR control device.
`• It can control one device at a time.
`• Maximum data transfer rate is about 4 Mbps
`• The device should be kept stable during the data transfer mode.
`• hard obstacles (such as doors, walls), bright sunlight, smoke,
`dust and fog affects Infrared communication.
`• Even though we can not see Infrared waves, it can damage eyes
`if transmitted with more signal power.”2
`
`
`2
`
`
`1
`
`https://paginas.fe.up.pt/~ee05005/tese/arquivos/wireless_ir_com.pdf
`
`
`http://www.rfwireless-world.com/Tutorials/Infrared-Communication-
`
`IrDA-tutorial.html
`
`
` Apple v. Uniloc, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`13
`
`
`
`
`
`
`
`
`
`

`

`38. The ‘018 patent utilizes Bluetooth. Bluetooth operates using
`
`radio waves which have a longer range than infrared, are not blocked by
`
`obstacles, and can communicate with multiple devices at one time3. These are
`
`substantial differences in the way Leichiner and the ‘018 patent communicate.
`
`Furthermore, the ‘018 method, utilizing Bluetooth is a significant advantage
`
`over the Leichiner infrared method.
`
`39.
`
`It must be noted that the only difference between this IPR and
`
`the other IPR the petitioner has filed is the use of Leichiner rather than Ben-
`
`Ze’ev. This can best be understood by referring to the petitioners own words
`
`on this issue:
`
`“Although the Ben-Ze’ev reference arguably includes better
`disclosure of several claim elements (for example, with respect
`to Bluetooth), Ben-Ze’ev was filed only a month before the
`priority date of ’018 Patent. Leichiner, on the other hand, was
`published more than five years before the priority date of ’018
`Patent”
`40. The petitioner freely admits that Liechiner does not disclose
`
`Bluetooth communication, and that the only reason the petitioner is using
`
`Liechiner is its early priority date. On this matter, I agree with the petitioner.
`
`Liechiner does not disclose, or even suggest Bluetooth. In fact, Liechiner
`
`teaches away from Bluetooth. And the only reason the petitioner is even using
`
`
` 3
`https://www.bluetooth.com/
`
`
`
`
`
` Apple v. Uniloc, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`14
`
`
`
`
`
`
`

`

`Liechiner is due to its priority date, as it certainly does not anticipate nor
`
`render obvious the claims of the ‘018 patent.
`
`VIII. SPECIFIC CLAIMS
`
`41.
`
`I have reviewed the claims in light of the proposed combinations
`
`and believe they do not disclose the claimed features.
`A. Claim 1 “broadcasting a message, said message for locating
`remote devices within range of said transceiver; and”
`
`42. The petitioner states:
`
`“Leichiner discloses this limitation because it teaches that the
`adaptive remote controller utilizes a polling function that
`“detects the presence” of the “devices located in the immediate
`vicinity.” APPL-1027, [0010], [0065]. Specifically, Leichiner
`teaches that the controller “generates polling messages to all of
`the controlled devices in the immediate vicinity,” making it
`“possible to conduct polling to a number of the controlled
`devices at the same time.” APPL-1027, [0022], [0012], [0065];
`see also id. at [0017]-[0018] (“The polling function is generated
`when a variety of the controlled devices in the control unit area
`are queried by the control unit regarding the availability of the
`controlled device.”).
`A POSITA would understand that Leichiner’s adaptive remote
`controller broadcasts the polling message because the message is
`not transmitted to any one particular recipient—it is transmitted
`to all devices in the vicinity for the purpose of detecting their
`presence. See APPL-1030, p. 51 (citing APPL-1012, p. 5).”
`
`
`
`43.
`
`
`
`First, even the
`
`petitioners own language states the Leichiner used
`
`polling.
`
`Polling
`
`is
`
`not
`
`broadcasting.
`
`It
`
`is
`
`in
`
`fact,
`
`a
`
`completely
`
`different
`
`methodology. Polling communicates with each device, one at a time.
`
`
`
`
`
` Apple v. Uniloc, IPR2018-00395
`Uniloc’s Exhibit 2001, page
`15
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`44. Secondly the petitioner makes an incorrect and unsupported
`
`statement: “A POSITA would understand that Leichiner’s adaptive remote
`
`controller broadcasts the polling message”. As my previous discussion of
`
`Leichiner elaborated on, Leichiner uses infrared, which is incapable of
`
`broadcasting. Certainly, 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” would understand that infrared is not capable of broadcast messages,
`
`and that polling is a very different, and opposite approach than broadcast. In
`
`fact, a POSA, as defined by Dr. Huoh, would readily see that Leichiner
`
`teaches away from the ‘018 patent.
`
`1.
`
`Broadcast vs polling
`
`45. 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. Leichiner teaches polling, which is completely different
`
`approach than broadcast. Broadcast has a specific and well understood
`
`
`
` Apple v. Uniloc, IPR2018-00395
`
`Uniloc’s Exhibit 2001, page
`16
`
`
`

`

`meaning. And it would have been very familiar to a POSA in 2000. Broadcast
`
`messages were first defined as a standard in RFC 919 in 19844.
`
`46. 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 ap