UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01802
`United States Patent No. 7,535,890
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Exhibit No. 2001
`
`
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-01802
`United States Patent No. 7,535,890
`______________________
`
`DECLARATION OF WILLIAM C. EASTTOM II
`
`Samsung v. Uniloc, IPR2017-1802
`Uniloc's Exhibit No. 2001
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...................................................................................... 1
`
`II. MY BACKGROUND AND QUALIFICATIONS ...................................... 3
`
`III.
`
`LEGAL STANDARDS USED IN MY ANALYSIS ................................... 6
`
`A. I am Familiar with the Legal Concept of Obviousness. .......................... 6
`
`B. Date of the ‘890 Patent .......................................................................... 8
`
`the Technical Art
`C. The Person Having Ordinary Skill in
`(PHOSITA)............................................................................................ 8
`
`D. Broadest Reasonable Interpretation (“BRI”) .......................................... 9
`
`THE TECHNOLOGY CLAIMED IN CLAIMS 1-6, 9, 14-15, 17-20, 23, 40-
`IV.
`43, 51-54, AND 57 OF THE ’890 PATENT ......................................................... 9
`
`V. GRIFFIN IS DIRECTED TO USER INTERFACES. ............................... 11
`
`THERE WOULD HAVE BEEN NO MOTIVATION TO COMBINE
`VI.
`GRIFFIN WITH ZYDNEY OR MALIK. ........................................................... 15
`
`VII. NO PRIMA FACIE EVIDENCE FOR DELIVERING THE IVM AND
`STORING THE IVM .......................................................................................... 21
`
`VIII. CONCLUSION ........................................................................................ 22
`
`i
`
`
`
`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is William Charles Easttom II (“Chuck Easttom”).
`
`Uniloc Luxembourg S.A. (“Uniloc” or the “Patent Owner”) retained me to
`
`provide my expert opinions regarding United States Patent No. 7,535,890 (the
`
`“‘890 Patent”).
`
`2.
`
`From 2003 to 2013, I taught professional development courses
`
`to IT professionals in programming (C, Java, C++, and C#), web development
`
`(HTML, JavaScript, CSS, and .net), networking, and network security at
`
`Collin College, Plano, TX. I continue to teach courses for Collin College as
`
`an outside vendor. From 2000 to 2003, I was Department Chair for Computer
`
`Information Systems at Remington College, in Garland, TX. I have been a
`
`software engineer at Alegis Corporation Systems Group and a programmer at
`
`Boeing Aerospace Operations.
`
`3.
`
`The Patent Owner asked me to study Claims 1-6, 9, 14-15, 17-
`
`20, 23, 40-43, 51-54, and 57 (the “challenged claims”) of the ‘890 Patent
`
`(“EX1001”) to determine whether a person having ordinary skill in the
`
`technical art most pertinent to the art of the challenged claims at the time the
`
`application for the ‘890 Patent was filed (hereafter a “PHOSITA”) would have
`
`Uniloc's Ex. 2001, Page 1
`
`
`
`considered those claim obvious in light of the asserted references considered
`
`as a whole.
`
`4.
`
`I reviewed the ‘890 Patent, its prosecution file wrapper, the state
`
`of the art at the time the application was filed, the references asserted by
`
`Samsung, Samsung’s Petition IPR2017-1802 (“Petition”), the Declaration of
`
`Dr. Haas (EX1002) in support of the Petition, the references relied upon in in
`
`the Petition (including Zydney, Griffin, and Malik), and the Declarations of
`
`Dr. Val DiEuliis from IPR2017-01523 and IPR2017-01524 in support of the
`
`Patent Owner. IPR2017-01523 and 01524 also involved challenges to the ‘890
`
`Patent based on Zydney. I also determined the scope and content of the prior
`
`art, ascertained the differences between the challenged claims of the ‘890
`
`Patent and the prior art, and determined the level of ordinary skill in the art
`
`most pertinent to the claimed technology. All the opinions I express here are
`
`my own.
`
`5.
`
`Based on the above, and my familiarity with those having
`
`ordinary skill in the art at the time the application was filed, and my decades
`
`of experience in the field of computer science including communications
`
`systems, I concluded that none of the challenged claims would have been
`
`obvious in light of the arguments and references relied upon in the Petition.
`
`Uniloc's Ex. 2001, Page 2
`
`
`
`6.
`
`The Patent Owner compensates me at my standard consulting
`
`rate of $300 per hour. Patent Owner also reimburses my reasonable expenses
`
`necessary to this work. I have no financial interest in Patent Owner, and my
`
`compensation is not contingent upon the results of my study or the substance
`
`of my opinions.
`
`II. MY BACKGROUND AND QUALIFICATIONS
`
`7.
`
`I have worked in the computer industry for over 25 years. During
`
`that time, I have had extensive experience with network communications
`
`systems. I hold 42 industry certifications, which include certifications in
`
`network communications. I have authored 24 computer science books, several
`
`of those deal with network communications topics. I am a named inventor on
`
`thirteen United States patents:
`
`✓ United States Patent No. 9,755,887, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sept. 5,
`
`2017, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 9,754,108, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Sept. 5, 2017, assigned to Open Invention
`
`Network LLC.
`
`Uniloc's Ex. 2001, Page 3
`
`
`
`✓ United States Patent No. 9,753,957, entitled “System and
`
`Method for Document Tracking”, issued Sept. 5, 2017, assigned
`
`to Open Invention Network LLC.
`
`✓ United States Patent No. 9,686,227, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Jun. 20,
`
`2017, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 9,619,656, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Apr. 11, 2017, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,405,907, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 2, 2016, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 9,313,167, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Apr. 12,
`
`2016, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,984,639, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Uniloc's Ex. 2001, Page 4
`
`
`
`Verification”, issued Mar. 17, 2015, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 8,825,845, entitled “Managing a
`
`Network Element Operating on a Network”, issued Sept. 2,
`
`2014, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,825,810, entitled “Domain Name
`
`Service Based Remote Programming Objects”, issued Sept. 2,
`
`2014, assigned to Open Invention Network LLC.
`
`✓ United States Patent No. 8,819,827, entitled “Method and
`
`Apparatus of Performing Data Executable
`
`Integrity
`
`Verification”, issued Aug. 26, 2014, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 8,713,067, entitled “Stable File
`
`System”, issued Apr. 29, 2014, assigned to Open Invention
`
`Network LLC.
`
`✓ United States Patent No. 8,527,779, entitled “Method and
`
`Apparatus of Performing Distributed Steganography of a Data
`
`Message”, issued Sept. 3, 2013, assigned to Open Invention
`
`Network LLC.
`
`Uniloc's Ex. 2001, Page 5
`
`
`
`8.
`
`I am also a member of the Association of Computing Machinery
`
`(ACM) and the Institute of Electrical and Electronics Engineers (IEEE). I am
`
`also a member of the ACM Distinguished Speakers program and on the
`
`advisory board for the cybersecurity program at Embry Riddle University. I
`
`attach my curriculum vitae hereto as Appendix A, which includes a more
`
`detailed description of my professional qualifications, a list of publications,
`
`teaching, and professional activities.
`
`III. LEGAL STANDARDS USED IN MY ANALYSIS
`
`9.
`
`I am not an attorney. I have, however, worked closely with
`
`counsel, including patent counsel, in over 40 litigations where I have become
`
`informed of and relied on certain recurring legal principles related to the
`
`validity of patents. I rely on counsel for the law and rely on my learning in
`
`reaching the opinions I set forth in this Declaration.
`
`A.
`
`I am Familiar with the Legal Concept of Obviousness.
`
`10.
`
`I understand that a claim in a patent can be invalidated for being
`
`“obvious” if the differences between the subject matter of the claims and the
`
`asserted prior art are such that that subject matter as a whole would have been
`
`obvious to a person having ordinary skill in the technical art (“PHOSITA”) at
`
`the time the claimed inventions were conceived. I understand that every
`
`determination on obviousness requires a review of the scope and content of
`
`Uniloc's Ex. 2001, Page 6
`
`
`
`the asserted references, analysis of the differences between those references
`
`and the patent claims at issue, and the level of ordinary skill in the pertinent
`
`art at the time the inventions were conceived.
`
`11.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited art, the claim cannot be considered obvious.
`
`12.
`
`I understand that it is improper to combine references where the
`
`references teach away from the proposed combination. I understand also that
`
`the following factors are among those relevant in considering whether a
`
`reference teaches away:
`
`• whether a PHOSITA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
`• whether the reference criticizes, discredits, or otherwise
`
`discourages investigation into the claimed invention;
`
`• whether a proposed combination would produce an inoperative
`
`result;
`
`• whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose;
`
`and
`
`• whether a proposed combination would change the basic principles
`
`under which a reference was designed to operate.
`
`Uniloc's Ex. 2001, Page 7
`
`
`
`13.
`
`I understand that the level of ordinary skill in the art is important
`
`in every obviousness analysis because that is the prism or lens through which
`
`the USPTO Board views the patent claims. Evaluating the claimed invention
`
`through the eyes of the PHOSITA prevents factfinders from using either their
`
`own insight or hindsight, to gauge obviousness or nonobviousness. The
`
`factfinder must view the claims from the standpoint of a PHOSITA at the time
`
`just prior to the invention being made, rather than looking back from the
`
`claims as issued and using that claim as a blueprint to the claimed invention.
`
`A PHOSITA working in the art at the time of the invention cannot be assumed
`
`to be able to predict future developments in the art that in hindsight might
`
`appear to have been predictable.
`
`B. Date of the ‘890 Patent
`
`14. The ʼ890 Patent is titled “System and Method for Instant VoIP
`
`Messaging.” The ʼ890 Patent issued from U.S. Pat. App. No. 10/740,030, filed
`
`December 18, 2003. The ʼ890 Patent issued May 19, 2009. See EX1001.
`
`C. The Person Having Ordinary Skill in the Technical Art
`(PHOSITA)
`
`15.
`
`I understand that a PHOSITA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the time of invention. 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
`
`Uniloc's Ex. 2001, Page 8
`
`
`
`the art; (b) prior solutions to those problems; (c) the rapidity with which
`
`innovations are made in the field at the time; (d) the sophistication of the
`
`technology; and (e) the education and skill level of workers active in the field
`
`at the time of the invention.
`
`16. The Patent Owner asked me to provide my opinion as to the
`
`qualifications of a PHOSITA to which the challenged claims of the ‘890
`
`Patent pertained as of 2003. In my opinion, a PHOSITA would be someone
`
`with a baccalaureate degree related to computer technology and 2 years of
`
`experience with network communications technology, or 4 years of
`
`experience without a baccalaureate degree.
`
`D. Broadest Reasonable Interpretation (“BRI”)
`
`17.
`
`I understand that the terms in Claims 1-6, 9, 14-15, 17-20, 23,
`
`40-43, 51-54, and 57 of the ’890 Patent are to be given their broadest
`
`reasonable interpretation (“BRI”) in light of the specification of the ‘890
`
`Patent as understood by a PHOSITA at the time the application for the ‘890
`
`Patent was filed. I used this understanding throughout my analysis.
`
`IV. THE TECHNOLOGY CLAIMED IN CLAIMS 1-6, 9, 14-15, 17-
`20, 23, 40-43, 51-54, AND 57 OF THE ’890 PATENT
`
`18. The ʼ890 Patent recognizes that conventional circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited development of other forms of communication over
`
`Uniloc's Ex. 2001, Page 9
`
`
`
`such networks. The ʼ890 Patent explains that “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the
`
`telephone terminal to another device 20 over the [public switched telephone
`
`network or] PSTN, including another telephone terminal. During the
`
`telephone call, voice communication takes place over that communication
`
`path.” EX1001, 1:18-23.
`
`19. The ʼ890 Patent distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e.,
`
`“VoIP”), also known as IP telephony or Internet telephony.” Id. at 1:24-26.
`
`Because legacy circuit-switched devices were unable to communicate directly
`
`over packet-switched networks, media gateways were designed to receive
`
`circuit-switched signals and to packetize them for transmittal over packet-
`
`switched networks, and vice versa. Id. at 1:54-2:10. The conversion effected
`
`by media gateways highlights the fact that packetized data carried over
`
`packet-switched networks are different from and are incompatible with an
`
`audio signal carried over a dedicated packet-switched circuit. Id. at 1:18-23.
`
`20. The ’890 Patent provides historical context by describing how,
`
`notwithstanding the advent of instant text messages, at the time of the claimed
`
`invention there was no similarly convenient analog to leaving an instant voice
`
`Uniloc's Ex. 2001, Page 10
`
`
`
`message (IVM) over a packet-switched network. Id. at 2:11-43. Rather,
`
`“conventionally, leaving a voice message involves dialing the recipient’s
`
`telephone number (often without knowing whether the recipient will answer),
`
`waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and
`
`recording the message for later pickup by the recipient. In that message, the
`
`user must typically identify himself or herself in order for the recipient to
`
`return the call.” Id. at 2:15-22.
`
`21. The ʼ890 Patent also describes a user-accessible client 208 that
`
`is specially configured for IVM communication and for direct communication
`
`over a packet-switched network (e.g., through an Ethernet card). Id. at 12:4-
`
`5. Specifically, the ʼ890 Patent teaches that certain clients (208) are specially
`
`configured to “listen[] to the input audio device 212,” “record[] the user’s
`
`speech into a digitized audio file 210 (i.e., [IVM]) stored on the IVM client
`
`208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
`
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the
`
`local IVM server 202.” Id. at 7:65-8:1.
`
`V. GRIFFIN IS DIRECTED TO USER INTERFACES.
`
`22. Griffin is a patent directed to user interfaces. Griffin is not as
`
`Petitioner asserts “a system for exchanging speech (i.e., voice) chat messages
`
`Uniloc's Ex. 2001, Page 11
`
`
`
`in real time between wireless mobile terminals….”. Pet. p. 9. Rather, Griffin
`
`is a user interface patent for “displaying and interacting with speech and text
`
`group chat threads.” Griffin, 1:62–65.
`
`23. Griffin does not teach real time communication. Petitioner argues
`
`that Griffin supports transmission in real time, but not communication in real
`
`time. Real-time communication requires both the capability for transmission
`
`in real time as well as the capability for receipt in real time. Petitioner does
`
`not account for when the recipient using the Griffin system actually receives
`
`messages. Petitioner does not show
`
`that Griffin supports real-time
`
`communication. To the contrary, as I explain herein, the speech Petitioner
`
`argues is transmitted in real time is quite likely not received in real time even
`
`when the target user is already using their device, because a specific chat
`
`history window required for speech message receipt is not being displayed at
`
`the device (even in the unlikely event that the chat history window was being
`
`displayed, there are still several other reasons why a PHOSITA would not
`
`combine Griffin with Zydney). Petitioner does not show that Griffin supports
`
`real-time communication of speech.
`
`24. Griffin mentions “real-time” only in the general Technical Field:
`
`“a novel technique of managing the display of a plurality of real-time speech
`
`Uniloc's Ex. 2001, Page 12
`
`
`
`and text conversations (e.g., chat threads) on limited display areas.” Griffin,
`
`1:9–11.
`
`25.
`
`In my opinion, Griffin contradicts Petitioner’s argument that
`
`Griffin discloses an “instant voice message.” Griffin teaches a system that has
`
`no knowledge of, or interest in, and no way to know whether a recipient is
`
`positioned to hear a message. Griffin is interested only in whether a terminal
`
`is configured to be able to receive a message at some point in the future.
`
`26. Petitioner relies on the feature in Griffin of “presence status” to
`
`argue that Griffin “includes terminals 100 that are presented with information
`
`regarding the availability of other terminals 100 for messaging and facilitates
`
`the real-time (i.e., immediate) transmission of speech chat messages between
`
`available terminals.” EX1002, ¶83. Nowhere, however, does Petitioner
`
`reference Griffin’s failure to deliver a message even when the terminal is
`
`“Available.” In my opinion, no PHOSITA would have understood Griffin to
`
`disclose an “instant voice message.”
`
`27. Griffin discloses instant text messages, but Griffin does not
`
`disclose instant voice messages. Every passage of Griffin that Petitioner relies
`
`on is directed explicitly toward text messaging. Petitioner does not point to
`
`any part of Griffin that describes instant voice messaging. All Petitioner says
`
`is that Griffin is “consistent with” passages in the ʼ890 Patent. In my opinion,
`
`Uniloc's Ex. 2001, Page 13
`
`
`
`Petitioner does not explain how or why Petitioner believes that Griffin
`
`discloses an “instant voice message.”
`
`28. Petitioner cites to passages in Griffin that use the term “push-to-
`
`talk.” However, Petitioner relies on an understanding of “push-to-talk” that is
`
`relevant today (i.e., 2017) but was not relevant in 2002 when Griffin filed his
`
`application. In 2002, a PHOSITA would have understood “push-to-talk” as
`
`technology that enables a mobile device to operate as a half-duplex radio
`
`similar to a walkie-talkie. When Griffin was filed, “push-to-talk” was used by
`
`radio operators, for instance, in the Citizens Band. Every mention of push-to-
`
`talk in Griffin refers to that half-duplex, radio-based communication method.
`
`No PHOSITA would equate such a method with the claimed “instant voice
`
`message.”
`
`29. The system in Griffin has no knowledge of, or interest in, and has
`
`no way to know whether a device is ready and able to “hear” a message. In
`
`Griffin, the message to be sent from the server complex 204 is prepared based
`
`on the technical ability of a terminal to receive the message at some arbitrary
`
`point in the future. The message is only delivered if the user has the “chat
`
`history display” visible on the user interface. Griffin, 11:48-67.
`
`30. Griffin also makes only the most recent speech message available
`
`at a receiving device. Griffin states: “In a current implementation, the most
`
`Uniloc's Ex. 2001, Page 14
`
`
`
`recently received speech message (or at least that portion that will fit in
`
`available memory) [is] queued at the receiving terminal.” Griffin, 11:50-53.
`
`A PHOSITA would understand this to mean that only the most recently
`
`received speech message (or portion thereof) is queued at the receiving
`
`terminal, so any previous speech messages (including those that were sent
`
`before the user switched or opened to the “chat history display”) would be
`
`lost.
`
`VI. THERE WOULD HAVE BEEN NO MOTIVATION TO
`COMBINE GRIFFIN WITH ZYDNEY OR MALIK.
`
`31.
`
`In my opinion, there was no motivation to combine Griffin with
`
`Zydney. Griffin discloses a server complex 204 that receives from a mobile
`
`terminal 100 an outbound chat message 400 that contains a list 403 of
`
`recipient terminals targeted to receive the outbound chat message 400. Griffin,
`
`4:62-5:15 and FIGS. 3-4. The list 403 is created at the mobile terminal 100
`
`without a final determination by the mobile terminal 100 of whether or not the
`
`targeted recipient terminals are technically able to receive the particular type
`
`of message. Id. It is the server complex 204 that performs this determination
`
`by consulting its presence records 700 to establish “whether [each] recipient
`
`is ready to receive the particular type of message.” Id. at 5:12-14 and 6:56-66
`
`(emphasis added). The server complex 204 subsequently forwards versions of
`
`the outbound chat message 400 as inbound chat messages 500 to the recipient
`
`Uniloc's Ex. 2001, Page 15
`
`
`
`terminals determined by the server complex 204 as ready, i.e. online and
`
`technically capable, to receive the particular type of message. Id. at 5:12-14.
`
`32. Once the inbound chat message 500 is received at a recipient
`
`terminal, the inbound chat message 500 is either shown in a chat history
`
`display at the recipient terminal (if the chat history display is visible to a user)
`
`or queued at the recipient terminal or the server complex 204 (if the chat
`
`history display is not visible to the user) for later playback via a request of the
`
`user or a return of the user to the chat history display. Griffin, 11:48-67. So,
`
`the inbound chat message 500 received at the recipient terminal is delivered
`
`only (i.e., played) to the user without queuing when receipt of the inbound
`
`chat message 500 coincides with the chat history display being visible to the
`
`user.
`
`33. Zydney, by
`
`contrast,
`
`relies on P2P
`
`(“peer-to-peer”)
`
`communication of “voice containers” when both sender and receiver are
`
`available and message format translation is not required. Zydney, 15:33-34,
`
`34:8-10. The P2P communication is started by a sending device but only if
`
`the sending device and a receiving device are both—at the time of initiating
`
`the communication—online and capable of exchanging the communication
`
`without central server intervention. The sending device initiates sending the
`
`communication directly to the receiving device conditioned on the sending
`
`Uniloc's Ex. 2001, Page 16
`
`
`
`device determining that the communication is technically feasible. Id. For this
`
`to happen, Zydney requires a sending device to know with certainty that the
`
`receiving device is available to receive the communication directly from the
`
`sending device without central server intervention at the time of the
`
`communication. Zydney discloses in Fig. 4 an implementation where the
`
`sending device, upon determining that a P2P communication with the
`
`receiving device is not possible, sends a message instead to a central server
`
`for later retrieval. Zydney discloses in Fig. 8 another implementation where
`
`all messages are sent to and stored on the central server. Thus, Zydney
`
`describes a sending device that routes voice containers directly “to the
`
`appropriate recipients instantaneously.” Zydney, 1:19-22 (emphasis added).
`
`Zydney discloses schemes in which the sending device independently
`
`determines which messages can be delivered instantaneously (i.e. without
`
`relying on the central server).
`
`34. Petitioner’s combination of Griffin and Zydney is inoperable for
`
`text-only buddies. If Zydney’s concept of available/unavailable was inserted
`
`in place of the status 702 in Griffin, then a text-only buddy such as JaneT (in
`
`FIG. 7 of Griffin) would be considered available for instant voice messaging
`
`simply by virtue of having an Internet connection (e.g., that enables
`
`communication with the server complex 204). However, JaneT does not have
`
`Uniloc's Ex. 2001, Page 17
`
`
`
`the ability to receive and/or play speech messages (which is why she was
`
`designated “TextOnly” in the first place). A PHOSITA would realize that this
`
`would lead to erroneous behavior, because JaneT should not be considered
`
`available for instant voice messaging. Petitioner has not even acknowledged
`
`this problem, let alone explained how to deal with it. A PHOSITA would
`
`avoid such erroneous behavior, and would therefore not combine Griffin and
`
`Zydney in the manner Petitioner has.
`
`35.
`
`In addition, attempting to combine the system of Zydney in the
`
`system described by Griffin would frustrate the purpose of Zydney to deliver
`
`messages instantaneously, because Griffin is indifferent to whether the
`
`receiving terminal can receive a message at the instant it was sent, and Griffin
`
`intentionally delays delivery of messages even if the recipient is otherwise
`
`available (as that term is understood by Zydney), just because the recipient
`
`does not have the chat history display active.
`
`36. Furthermore, Griffin and Zydney have opposite principles of
`
`operation. Griffin is a server-based messaging paradigm in which technical
`
`feasibility of communicating a message to a recipient terminal is determined
`
`at the server complex 204 rather than at the mobile terminal 100 and in which
`
`only the messages vetted by the server complex 204 are subsequently
`
`communicated by the server complex 204. The server complex 204 of Griffin
`
`Uniloc's Ex. 2001, Page 18
`
`
`
`sends, rather than stores, all outbound chat messages 400 it receives that are
`
`technically capable of being received by the receiving terminals 100 (subject
`
`to later queuing after receipt at a targeted recipient terminal). In contrast,
`
`Zydney is so concerned with instantaneous delivery of its voice container that
`
`it bypasses its Central Server entirely if at all possible, such as when P2P
`
`communication is possible between sender and receiver. Petitioner’s
`
`suggested combination would require Griffin to be substantially changed
`
`before its principle of operation could be compatible with Zydney.
`
`37. Because Griffin enlists a server complex 204 that determines
`
`message-delivery feasibility and only sends messages determined to be
`
`feasible, the server complex 204 conditionally queues messages. Griffin thus
`
`would not gain any advantage or derive benefit from Zydney’s P2P direct
`
`communication paradigm.
`
`38.
`
`In my opinion, Petitioner is just speculating when suggesting that
`
`Griffin would benefit from Zydney’s “status information received [by sending
`
`devices] from the central server” (see Zydney, 16:7-10 and ¶ bridging pp. 14-
`
`15) for accomplishing Zydney’s P2P communication. Griffin already has the
`
`above discussed presence status 702 indicator, which may contain content
`
`such as “Available” and “Off.” Griffin, Fig. 7.
`
`Uniloc's Ex. 2001, Page 19
`
`
`
`39. Petitioner proposes several grounds for combining Griffin and
`
`Zydney, but the ability of Zydney to provide the sending device with P2P
`
`communication feasibility information does not benefit the system of Griffin.
`
`Petitioner’s proposal for importing Zydney’s P2P “status information” into
`
`Griffin’s server-based system does not appear to benefit Griffin. To the extent
`
`even possible, such P2P “status information” of Zydney configured for use at
`
`Zydney’s sending device, if hypothetically imported into Griffin and if
`
`configurable for use at Griffin’s server complex 204, would appear to overlap
`
`with Griffin’s existing technology (while introducing erroneous behavior for
`
`text-only buddies and due to dropped messages, as I explain herein). That is,
`
`rather than enhancing Griffin’s presence status 702 server-based paradigm,
`
`such a hypothetical combination would introduce redundancy into Griffin’s
`
`existing server complex 204 in which an “Off” status and conditional storage
`
`of messages are already provided, and Petitioner does not appear to assert
`
`otherwise.
`
`40. Petitioner also appears to ignore the fact that its suggested
`
`combination of Griffin and Zydney would result in lost speech messages. As I
`
`explained above, Griffin makes only the most recent speech message available
`
`at a receiving device. Because only the most recently received speech message
`
`(or portion thereof) is queued at the receiving terminal, any earlier speech
`
`Uniloc's Ex. 2001, Page 20
`
`
`
`messages (that were sent after the user last switched away from the “chat
`
`history display”) would be lost.
`
`41. Petitioner’s proposed combination of Griffin and Zydney is
`
`therefore inoperable (for text-only buddies and due to dropped messages),
`
`would render Zydney unsuitable for an intended purpose, and would require
`
`changing the principle of operation of Griffin and/or Zydney. Thus, it is my
`
`opinion that a PHOSITA would not combine Griffin and Zydney as suggested
`
`by Petitioner.
`
`VII. NO PRIMA FACIE EVIDENCE FOR DELIVERING THE IVM
`AND STORING THE IVM
`
`42.
`
`In my opinion, independent Claims 14 and 51 of the ’890 Patent
`
`are not obvious over Griffin plus Zydney and Malik. Independent Claim 14
`
`recites a server “delivering the [IVM] to the selected recipients over the
`
`external network . . . [and] storing the [IVM] if a selected recipient is
`
`unavailable.” EX1001, 25:32-37; see also Claim 51 at 30:22-25. Petitioner
`
`relies on Malik only to show a local/external network configuration. Pet., pp.
`
`50-72. But Malik has the same deficiencies as Griffin and Zydney and
`
`therefore fails to cure the deficiencies identified above with respect to Griffin
`
`plus Zydney. Malik does not disclose or suggest a server “delivering the [IVM
`
`to] the selected [external] recipients over the [external] network” as in the
`
`challenged claims. In addition to Zydney failing to disclose this limitation
`
`Uniloc's Ex. 2001, Page 21
`
`
`
`(because the same IVM as the one sent by the sending device is only delivered
`
`to a receiving device in a P2P fashion, and not through the central server),
`
`Malik also fails to disclose or suggest this limitation. For instance, Fig. 2 in
`
`Malik and the accompanying text provide only for situations in which the
`
`server translates an incoming message into a format required for a third party
`
`instant messenger server. I do not equate this translated message with the same
`
`IVM generated by the client, as required by the challenged claims.
`
`VIII. CONCLUSION
`
`43. For the reasons set forth herein, Claims 1-6, 9, 14-15, 17-20, 23,
`
`40-43, 51-54, and 57 of the ’890 Patent are not rendered obvious in light of
`
`the references and testimony cited by Petitioner.
`
`44.
`
`I understand that, in signing this Declaration, the Declaration will
`
`be used as evidence in an inter partes review before the Patent Trial and
`
`Appeal Board concerning the validity of the ’890 Patent. I understand that I
`
`may be subject to cross-examination in the proceeding. I will appear for such
`
`cross-examination during the time allotted for cross-examination and at a time
`
`and location convenient for myself and the parties.
`
`45.
`
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`Uniloc's Ex. 2001, Page 22
`
`
`
`knowledge that willful false statements and the like so made are punishable
`
`by fine or imprisonment, or both, under Section 1001 of Title 18 of the United
`
`States Code.
`
`
`
`
`Dated Tuesday, November 7, 2017
`
`
`
`
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