UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`APPLE INC.,
`Petitioner
`v.
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`_______________________
`Case No. IPR2018-00884
`Patent No. 8,539,552
`
`
`DECLARATION OF WILLIAM C. EASTTOM II (CHUCK EASTTOM)
`
`
`
`
`
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`

`

`
`
`I.
`
`II.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................................4
`
`BACKGROUND AND QUALIFICATIONS .....................................................................4
`
`III.
`
`CLAIM CONSTRUCTION ............................................................................................4
`
`A. Intercepting Signaling Messages .......................................................................5
`
`B. Claim 1: “sender device,” “recipient device,” and “device profile” ............... 10
`
`IV.
`
`THE ‘552 PATENT .................................................................................................. 10
`
`V.
`
`ONE OF ORDINARY SKILL IN THE ART ................................................................... 12
`
`VI.
`
`GENERAL ISSUES ................................................................................................... 13
`
`A. Motivation to combine ................................................................................... 13
`
`VII.
`
`SPECIFIC CLAIMS ................................................................................................... 15
`
`A. Claim 1 preamble “1[Preamble]: “A method for controlling a plurality of
`services in packet-based networks, the method comprising” ....................... 15
`
`B. Claim 1[A]: “a network entity intercepting a signaling message associated
`with a call between a sender device of the message and an intended
`recipient device of the message” ................................................................... 16
`
`C. Claim 1[B]: “wherein the signaling message includes an indication of one type
`of the plurality of services which the signaling message is intended to invoke”
`
`18
`
`D. Claim 1[C] the network entity making a determination of whether either the
`sender device or the intended recipient device is authorized to invoke the
`type of service indicated in the signaling message based in part on a device
`profile maintained in part on a remote enforcement point,.......................... 22
`
`E. Claim 1 [E] the network entity filtering the signaling message based on the
`determination such that the signaling message is transmitted to the intended
`recipient device if either the sender device or the intended recipient device is
`authorized to invoke the type of service indicated in the signaling message. 24
`
`
`
`1
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`

`

`
`
`F. Claim 4: “wherein filtering the signaling message comprises discarding the
`signaling message having an indication of services which the sender device or
`the intended recipient devices is unauthorized to use” ................................. 26
`
`G. Claim 6[A]: “a network entity intercepting a message associated with a call
`between a sender of the message and an intended recipient of the message;
`
`27
`
`H. Claim 21. The method of claim 18, wherein the message is a session initiation
`protocol (SIP) message.................................................................................... 32
`
`I. Remaining Challenged Claims ......................................................................... 33
`
`VIII.
`
`CONCLUSIONS ....................................................................................................... 33
`
`IX.
`
`APPENDIX A – EASTTOM CV .................................................................................. 35
`
`A. Education ........................................................................................................ 35
`1. University Degrees ........................................................................ 35
`2.
`Industry Certifications ................................................................... 35
`3. Security and Forensics Related Certifications............................... 37
`4. Software Certifications ................................................................. 37
`5. Licenses ......................................................................................... 37
`
`B. Publications ..................................................................................................... 38
`1. Books 38
`2. Papers, presentations, & articles. ................................................. 39
`
`C. Patents ............................................................................................................ 41
`
`D. Standards and Certification Creation.............................................................. 42
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`E. Professional Awards and Memberships ......................................................... 43
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`F. Speaking Engagements ................................................................................... 43
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`G. Litigation Support Experience ......................................................................... 46
`1. Testifying Experience .................................................................... 51
`
`H. Professional Experience .................................................................................. 54
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`I. Continuing Professional Education ................................................................. 57
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`J. References to my work ................................................................................... 58
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`2
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`
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`1. Media References ......................................................................... 58
`2. References to publications ........................................................... 59
`3. Universities using my books ......................................................... 64
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`K. Training ........................................................................................................... 66
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`L. Technical Skills ................................................................................................ 67
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`
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`3
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`
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Uniloc to provide my expert opinions regarding
`
`validity of U.S. Patent No. 8,539,552 (“’552 Patent”).
`
`2.
`
`I am being compensated for my time at my standard consulting rate of
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`$300 per hour. I am also being reimbursed for expenses that I incur during the course of
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`this work. My compensation is not contingent upon the results of my study or the
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`substance of my opinions.
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`II.
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`BACKGROUND AND QUALIFICATIONS
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`3.
`
`I have 25+ years of experience in the computer science industry including
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`extensive experience with computer security, computer programming, and computer
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`networking. I have authored 26 computer science books, including textbooks used at
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`universities around the world. I hold 42 different computer industry certifications,
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`including many in networking subjects. I am experienced with multiple programming
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`languages. I also have extensive experience in computer networking. In fact, in the late
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`1990’s I was a senior software engineer for a telecommunications company. I am an
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`inventor with 14 computer science patents. I am a Distinguished Speaker for the
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`Association of Computing Machinery (ACM), and a reviewer for the IEEE Security and
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`Privacy journal, as well as a reviewer for the International Journal of Cyber Warfare and
`
`Terrorism (IJCWT). My CV is attached as appendix A.
`
`III.
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`CLAIM CONSTRUCTION
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`4.
`
`Fort the purposes of an IPR, claim terms are given their broadest
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`reasonable meaning.
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`
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`4
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`

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`
`
`A.
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`5.
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`Intercepting Signaling Messages
`
`The petitioner has claimed “A POSITA would readily understand that
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`intercepting signaling messages, as described by the ’552 Patent, is used to indicate the
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`signaling is received by a network entity located between the endpoints of the call (i.e.,
`
`between the caller and callee). Rubin Decl. (EX1003) at ¶35”
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`6.
`
`This completely ignores the meaning of the word “intercept” as both
`
`understood by a POSA, and as used in the ‘552 patent.
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`7.
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`First the patent itself defines intercept in the same manner as is used in
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`normal language:
`
`8.
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`“The signaling and call control server 112 intercepts call set-up messages
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`sent between the end-user clients, e.g., intelligent client 104 c, and the core packet
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`network” Note the call setup messages are between end-user clients, and the signaling
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`and call control server intercepts them. The messages were not sent to the signaling and
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`call control server.
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`9.
`
`The inventors use of the word intercept is even more clear in claim 1 “a
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`network entity intercepting a signaling message associated with a call between a sender
`
`device of the message and an intended recipient device of the message” Note that the
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`network entity doing the intercepting is not the intended recipient device of the message.
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`There is a sender and a recipient, and there is a third party that intercepts that message.
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`10.
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`The inventor’s use of the word intercept is consistent with standard
`
`dictionary definitions of the word. The Oxford Dictionary1 defines intercept as follows:
`
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`1 https://en.oxforddictionaries.com/definition/intercept
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`
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`5
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`

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`
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`11. Merriam-Webster’s2 defines intercept as follows:
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`
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`2 https://www.merriam-webster.com/dictionary/intercept
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`
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`6
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`

`
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`12.
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`The Cambridge Dictionary3 defines intercept as follows:
`
`
`
`13. McGraw-Hill Dictionary of Electrical and Computer Engineering published
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`in 2003 has the following definition for interception
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`
`
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`3 https://dictionary.cambridge.org/dictionary/english/intercept
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`7
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`14.
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`Newton’s Telecom Dictionary published in 2000 defines intercept as
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`
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`follows:
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`
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`8
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`15.
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`It is unclear what definitions the petitioner is using. For may analysis I used
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`the plain and ordinary definitions of these terms, as a POSA would do. All the definitions
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`I found, both in standard dictionaries and in engineering and telecommunications
`
`dictionaries all define intercepting as someone other than the intended recipient getting
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`the message. When a message is sent to its intended recipient, it is by definition, not
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`being intercepted.
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`
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`9
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`
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`16.
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`All of these definitions involve some entity other than the intended
`
`recipient, somehow getting the message. This is consistent with the inventors use of the
`
`word intercept in the patent. However, all of these definitions are contrary to what the
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`petitioner has asserted. The petitioner’s definition of intercept as merely “...received by
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`a network entity...” is contrary to the use of the word in the ‘552 patent and contrary to
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`common definitions.
`
`B.
`
`Claim 1: “sender device,” “recipient device,” and “device profile”
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`17.
`
`The petitioner’s have several paragraphs on this issue, but never clearly
`
`articulate definitions for any of these terms. Instead the petitioner makes the following
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`statement:
`
`IV.
`
`THE ‘552 PATENT
`
`18.
`
`The '552 patent originated as patent application 10/671,375 filed
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`September 25, 2003. The patent was granted September 17, 2013. The '552 patent is an
`
`
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`
`
`10
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`

`

`
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`invention for controlling services on a network. This invention allows an operator of an
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`IP network two enforce authorization or privileges of intelligent end-user clients to utilize
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`or invoke services in the network.
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`19.
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`One feature of the invention is that access to services and features is
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`controlled. This allows only authorized users to access those features or services. Figures
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`1 and 2 are exemplary embodiments and are shown here:
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`
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`11
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`
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`V.
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`ONE OF ORDINARY SKILL IN THE ART
`
`20.
`
`Patent claims must be viewed from the perspective of one of ordinary skill
`
`in the art. A Person of Ordinary Skill in the Art (POSA) in September, 2003 would have
`
`been one with a bachelor’s degree in engineering, computer science, or related technical
`
`area with 2 years of experience related to networking. Additional experience can
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`compensate for a lack of a degree.
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`21.
`
`I am aware that Dr. Rubin has a different view of a POSA. While I disagree
`
`with Dr. Rubin, even if one adopts his view of a POSA, it would not alter my opinions.
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`Furthermore, Dr. Rubin’s opinion of a POSA and my opinion of a POSA are similar.
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`
`
`12
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`

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`
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`VI.
`
`GENERAL ISSUES
`
`22.
`
`The petitioner relies heavily on U.S. patent 6,324,279 ("Kalmanek").
`
`However, there are substantial differences between Kalmanak and the ‘552 patent. These
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`differences appear to have been overlooked by the petitioner and their expert, Dr. Rubin.
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`The entire purpose of Kalmanek is quite different. Quoting the summary of the invention
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`"Signaling messages are exchanged for a call between a calling party to a called party. A
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`setup message for the call is exchanged through at least one gate controller. Network
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`resources are reserved fro the call based on the exchanged setup messages. An end-to-
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`end message for the call is exchanged without the end-to-end message being routed
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`through the at least one gate controller.
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`23.
`
`Kalmanak is not even about authorization for services. In order to portray
`
`Kalmanak as prior art to the ‘552 patent, the petitioners and their expert Dr. Rubin simply
`
`label items from Kalmanak differently than either how Kalmanak describes them, or how
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`a POSA would understand them. This is illustrated with specific claim elements later in
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`this declaration.
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`
`
`A.
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`Motivation to combine
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`24.
`
`The petitioner and their expert Dr. Rubin claim that a POSITA would have
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`been motivated to combine Kalmanek and Strathmeyer to bring the SIP protocol to
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`Kalmanek.
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`
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`13
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`

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`25.
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`The SIP protocol was standardized as RFC 2543 in March of 1999. The
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`petitioner even includes this standard as Exhibit 1009 to their petition. Kalmanek was
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`filed as an application in August 1999. Strathmeyer was filed as an application in March
`
`13, 2001. A POSITA would readily recognize that not only did Kalmanek not disclose SIP,
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`Kalmanek could not have envisioned SIP. Therefore, a POSITA would understand that
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`altering Kalmanek to include SIP would have been a significant re-engineering. Moving
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`from H.323 is a difficult task requiring significant re-engineering. I base this on both my
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`experience, having worked directly in telecommunications programming the late 1990’s
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`to early 2000, and numerous references detailing either the differences between H.323
`
`and SIP4,5 and/or the difficulty in transitioning from H.323 to SIP6.
`
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`4 https://www.packetizer.com/ipmc/h323_vs_sip/
`5 https://www.cs.columbia.edu/~hgs/papers/Schu9807_Comparison.pdf
`6 http://ivci.com/wp-content/uploads/2016/07/whitepaper-unified-communications-
`drive-protocol-convergence-1.pdf
`
`
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`14
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`

`

`
`
`VII.
`
`SPECIFIC CLAIMS
`
`Claim 1 preamble “1[Preamble]: “A method for controlling a plurality of
`A.
`services in packet-based networks, the method comprising”
`
`26.
`
`The petitioner has claimed:
`
`
`
`27.
`
`The petitioner fails to fully read Kalmanek. In Kalmanek the messages the
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`petitioner points to (SETUP and GATESETUP) are sent from one gate controller to
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`another. These devices are not intercepting, they are the intended recipients of
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`the messages. Later in the petition, the petitioner does acknowledge that other
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`devices are the senders and recipients:
`
`
`
`15
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`

`

`
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`
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`28.
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`The petitioners misreading of claim 1 stems from their misunderstanding
`
`of the meaning of the word ‘intercept’. The intended recipient of a message, by
`
`definition, is not intercepting the message. Receiving and intercepting are not synonyms.
`
`Claim 1[A]: “a network entity intercepting a signaling message
`B.
`associated with a call between a sender device of the message and an intended
`recipient device of the message”
`
`29.
`
`Contrary to the petitioners claims, the gate controller in Kalmanek does
`
`not intercept, it is in fact the target of the message:
`
`
`“At step 210, a setup message for a call between a calling party and a called party is sent
`from the originating TIU 170 to the originating gate controller 110 and the terminating
`gate controller 111. For example, upon receiving the setup message at the originating
`gate controller 110, the setup message (possibly modified with additional information)
`can be forwarded to the terminating gate controller 111 through communication
`network 100. In one embodiment, the setup message can be, for example, in the form
`of the SETUP message described below in Section 7 entitled “Protocol Description”.
`30.
`The gate controller is not intercepting, it is in fact the actual target of the
`
`message. This is clear in figure 3:
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`
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`16
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`

`

`
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`31.
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`The petitioners misreading of this claim element stems from their
`
`misunderstanding of the meaning of the word ‘intercept’. The intended recipient of a
`
`
`
`
`
`17
`
`

`

`
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`message, by definition, is not intercepting the message. Receiving and intercepting are
`
`not synonyms.
`
`Claim 1[B]: “wherein the signaling message includes an indication of
`C.
`one type of the plurality of services which the signaling message is intended to
`invoke”
`
`32.
`
`The petitioner repeatedly cites to the SETUP message in Kalmanek’s as
`
`being the signaling message from the ‘552. However, claim 1 of the ‘552 states "a network
`
`entity intercepting a signaling message associated with a call between a sender device of
`
`the message and an intended recipient device of the message". It is clear that the signaling
`
`message is from the sender device and to the recipient device. The petitioner actually
`
`states:
`
`33.
`
`The GATESETUP message is not from the sender to the recipient.
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`Therefore, it cannot be the signaling message, regardless of what it does or does not
`
`
`
`contain.
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`
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`18
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`

`

`
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`34.
`
`The petitioner makes the assertion that simply having caller-ID is indicating
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`a service. However, the petitioner is ignoring that it must be the signaling message that
`
`includes an indication of one type of plurality of services. Further it must be the signaling
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`message that invokes the service. Citing the petitioner’s words:
`
`35.
`
`Nothing in this even suggests that any message at all has caller ID. What
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`the petitioner states is that the gate controller checks to see if the customer has
`
`subscribed for Caller ID. The petitioner does not even cite to anything in Kalmanek having
`
`a signaling message that indicates caller ID and invokes caller ID.
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`
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`19
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`

`

`
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`36.
`
`Later the petitioner states:
`
`
`
`37.
`
`This does not state that the SETUP message indicates a service or invokes
`
`any service. Instead it states that if the gate controller sees a caller ID flag, it can then
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`check to see if the customer line has Caller ID, and if so return the phone number.
`
`38.
`
`The petitioner then claims that Kalmanek’s SETUP message indicates
`
`CODEC:
`
`
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`20
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`

`

`
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`39.
`
`As any POSA would understand, quality of service is a common term in
`
`networking. It does not refer to a service. But rather the quality of the networking
`
`communications itself. This is measured by a variety of parameters including packet loss.
`
`In fact, the petitioner cites Kalmanek’s definition of quality of service “Kalmanek further
`
`teaches that “[q]uality of service is a measure of communication service quality during a
`
`call, and can include, for example, the bandwidth, delay and latency associated with the
`
`call”. On this item the petitioner is correct. Quality of service is a measure of the quality
`
`of the communication and is not itself a service.
`
`
`
`21
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`

`

`
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`40. More to the point, quality of service is not mentioned in the ‘552 patent,
`
`and in face the petitioner cites “Namely, Claim 1 recites “caller-ID, call waiting, multi-way
`
`calling, multi-line service, and codec specification.” The petitioner seems aware that
`
`quality of service is not what the ‘552 patent was describing with services.
`
`Claim 1[C] the network entity making a determination of whether either
`D.
`the sender device or the intended recipient device is authorized to invoke the
`type of service indicated in the signaling message based in part on a device
`profile maintained in part on a remote enforcement point,
`
`41.
`
`The petitioner makes the argument “A POSITA would understand that
`
`“caller-id blocking” could be included in the originating SETUP message, could be stored
`
`as a setting in the caller’s profile, or both. Rubin Decl. EX1003) at ¶ 61.”
`
`42.
`
`The first issue with this claim is that Kalmanek does not actually disclose
`
`caller-id blocking being included in the SETUP message, nor being stored in the caller’s
`
`profile. A fact the petitioner’s expert, Dr. Rubin, seems to be admitting. Furthermore,
`
`Kalmanek provides several examples of SETUP messages. None of which even suggest this
`
`feature.
`
`43. What Kalmanek says about caller-id blocking is “Service features that
`
`depend on the privacy of the calling information, such as caller-ID blocking, are
`
`implemented by the gate controllers.” This clearly demonstrates that caller-ID blocking
`
`is an inherent feature in gate controllers, and there is no setup message needed.
`
`Kalmanek teaches aware from the ‘552 method of implementing services like caller-ID
`
`blocking. In Kalmanek these services must be part of the configuration of the gate
`
`controller. In the ‘552 patent these services are determined based in the device profile.
`
`
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`22
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`

`

`
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`44.
`
`The petitioner further claims that Kalmanek discloses a codec. It must first
`
`be noted that the term codec is a common one in the art, and the inventors of Kalmanek
`
`would have been familiar with it. However, that word does not even appear in his patent.
`
`The petitioner is not even clear what they are claiming is the codec in Kalmanek. They
`
`seem to point to a coding parameter and the ability to manage bandwidth as both being
`
`codecs.
`
`45.
`
`It is clear what Kalmanek meant by coding “CODING specifies a list of
`
`possible encapsulations and coding methods that the originator will perform. Each
`
`parameter is at least three items separated by commas, where the first item specifies a
`
`message size, the second item gives the interval between packets, the third item gives
`
`the coding algorithm, and fourth and later items (optional) give additional parameters
`
`specific to the coder.”
`
`46.
`
`Kalmanek clearly defined coding as how the message originator
`
`encapsulates. The petitioner ignores Kalmanek’s definitions and instead attempts to
`
`conflate the message originator encapsulation of Kalmanek with a codec in the ‘552
`
`patent.
`
`
`
`23
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`

`

`
`
`47.
`
`Later the petitioner argues “To the extent it is argued that Kalmanek does
`
`not teach authorizing a specific codec using the user profile of both the caller and callee,
`
`it would have been obvious to a POSITA to modify Kalmanek in such a manner.”
`
`48.
`
`If Kalmanek had invented something different than what is described in his
`
`patent, then he could have hypothetically included features not in the actual patent.
`
`Simply speculating that a given invention could have included things that it does not
`
`include, nor even suggest, is an odd argument. Using that analysis, any invention at all
`
`could have included any feature any petitioner wishes to point to. One could speculate
`
`than any patent at all could have included any feature one wishes to invalidate.
`
`
`
`Claim 1 [E] the network entity filtering the signaling message based on
`E.
`the determination such that the signaling message is transmitted to the intended
`recipient device if either the sender device or the intended recipient device is
`authorized to invoke the type of service indicated in the signaling message.
`
`49.
`
`The petitioner states “Dr. Rubin explains that FIG. 23 and its corresponding
`
`disclosures at 25:39-43 and 56:17-35 informs a POSITA that the terminating gate
`
`controller transmits a SETUP message to the terminating BTI if the terminating BTI has
`
`subscribed to the caller ID service and alters the message to remove identifying
`
`information if caller-id blocking has been invoked and authorized.”
`
`50.
`
`The phrasing “informs a POSITA”, as well as Dr. Rubin’s phrasing “A POSITA
`
`would understand” are clear indications that the petition and Dr. Rubin are well aware
`
`that Kalmanek does not disclose what they are asserting. Instead they are piling
`
`assumptions on top of assumptions as to what a POSITA would read into Kalmanek, that
`
`is not actually in Kalmanek.
`
`
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`24
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`

`
`
`51.
`
`Beyond that issue, is the fact that Figure 23 and the corresponding
`
`disclosures don’t actually state what Dr. Rubin claims they do. First consider figure 23
`
`from Kalmanek:
`
`
`
`52.
`
`The text of Kalmanek that the petitioner points to also does not describe
`
`what the petitioner is asserting. The passage 25:39-43 describes optional caller-id
`
`information. 56:17-35 is actually referring figure 18, not figure 23. Furthermore, it
`
`describes Caller ID.
`
`53.
`
`Finally, the last portion of the petitioner’s statement is “and alters the
`
`message to remove identifying information if caller-id blocking has been invoked and
`
`authorized”. Kalmanek implements caller-id blocking at the gate controller: “Service
`
`
`
`25
`
`

`

`
`
`features that depend on the privacy of the calling information, such as caller-ID blocking,
`
`are implemented by the gate controllers”. Nothing in Kalmanek discusses, describes, nor
`
`even suggests “filtering the signaling message based on the determination such that the
`
`signaling message is transmitted to the intended recipient device if either the sender
`
`device or the intended recipient device is authorized to invoke the type of service
`
`indicated in the signaling message”. Instead with Kalmanek the gate controller alone is
`
`responsible for caller-ID blocking.
`
`
`
`Claim 4: “wherein filtering the signaling message comprises discarding
`F.
`the signaling message having an indication of services which the sender device
`or the intended recipient devices is unauthorized to use”
`
`54.
`
` The petitioner claims: “Id. at 56:20-25. Per Dr. Rubin, a POSITA would
`
`understand the gate controllers in Kalmanek would discard the responsive SETUP
`
`message in the event that the terminating customer is not authorized to receive Caller ID
`
`services” “Dr. Rubin further opines that, to the extent it is found that Kalmanek does not
`
`teach such discarding, it would be obvious to modify Kalmanek to discard a setup message
`
`if the customer is not authorized, as Kalmanek already teaches only enabling authorized
`
`services. Id”
`
`55.
`
`As the petitioner seems to admit themselves, there is nothing in Kalmanek
`
`to indicate the gate controllers would discard the responsive SETUP message. Contrary to
`
`the petitioners claim that it would be obvious to modify Kalmanek to discard setup
`
`messages if a customer is not authorized, it would in fact be obvious to a POSA not to do
`
`so. A failed attempt at authorization should, at a minimum be logged. A POSA would
`
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`26
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`
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`understand that it might be advantageous to store such messages in order to ascertain
`
`the reasons for the failure. This data could be utilized to improve telephony service.
`
`Claim 6[A]: “a network entity intercepting a message associated with a
`G.
`call between a sender of the message and an intended recipient of the
`message;
`
`56.
`
`As discussed previously in this declaration, the gate controllers of
`
`Kalmanek do not intercept messages. They are in fact the intended recipients of the
`
`messages the petitioner points to. The petitioner continues to attempt to use the word
`
`‘recipient’ and ‘intercept’ as synonymous. A POSA would readily understand that these
`
`are very different words with very different meanings.
`
`57.
`
`The petitioners arguements completely ignore the meaning of the word
`
`“intercept” as both understood by a POSA, and as used in the ‘552 patent.
`
`58.
`
`First the patent itself defines intercept in the same manner as is used in
`
`normal language:
`
`59.
`
`“The signaling and call control server 112 intercepts call set-up messages
`
`sent between the end-user clients, e.g., intelligent client 104 c, and the core packet
`
`network” Note the call setup messages are between end-user clients, and the signaling
`
`and call control server intercepts them. The messages were not sent to the signaling and
`
`call control server.
`
`60.
`
`The inventors use of the word intercept is even more clear in claim 1 “a
`
`network entity intercepting a signaling message associated with a call between a sender
`
`device of the message and an intended recipient device of the message” Note that the
`
`
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`27
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`
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`network entity doing the intercepting is not the intended recipient device of the message.
`
`There is a sender and a recipient, and there is a third party that intercepts that message.
`
`61.
`
`The inventor’s use of the word intercept is consistent with standard
`
`dictionary definitions of the word. The Oxford Dictionary7 defines intercept as follows:
`
`62. Merriam-Webster’s8 defines intercept as follows:
`
`
`
`
`7 https://en.oxforddictionaries.com/definition/intercept
`8 https://www.merriam-webster.com/dictionary/intercept
`
`
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`28
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`
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`63.
`
`The Cambridge Dictionary9 defines intercept as follows:
`
`
`
`64. McGraw-Hill Dictionary of Electrical and Computer Engineering published
`
`in 2003 has the following definition for interception
`
`
`
`
`9 https://dictionary.cambridge.org/dictionary/english/intercept
`
`
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`29
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`
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`65.
`
`Newton’s Telecom Dictionary published in 2000 defines intercept as
`
`
`
`follows:
`
`
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`30
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`
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`66.
`
`It is unclear what definitions the petitioner is using. For may analysis I used
`
`the plain and ordinary definitions of these terms, as a POSA would do. All the definitions
`
`I found, both in standard dictionaries and in engineering and telecommunications
`
`dictionaries all define intercepting as someone other than the intended recipient getting
`
`the message. When a message is sent to its intended recipient, it is by definition, not
`
`being intercepted.
`
`
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`31
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`

`
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`
`
`Claim 21. The method of claim 18, wherein the message is a session
`H.
`initiation protocol (SIP) message.
`
`67.
`
`The petitioner and their expert Dr. Rubin claim that a POSITA would have
`
`been motivated to combine Kalmanek and Strathmeyer to bring the SIP protocol to
`
`Kalmanek.
`
`
`
`
`
`68.
`
`The SIP protocol was standardized as RFC 2543 in March of 1999. The
`
`petitioner even includes this standard as Exhibit 1009 to their petition. Kalmanek was
`
`filed as an application in August 1999. Strathmeyer was filed as an application in March
`
`13 2001. A POSITA would readily recognize that not only did Kalmanek not disclose SIP,
`
`Kalmanek could not have envisioned SIP. Therefore, a POSITA would understand that
`
`altering Kalmanek to include SIP would have been a significant re-engineering. Moving
`
`from H.323 is a difficult task requiring significant re-engineering.
`
`
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`32
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`

`
`
`I.
`
`Remaining Challenged Claims
`
`69.
`
`Each of the independent claims, Claims 1, 6, 18, 23, and 24, recite a
`
`requirement for a “signaling message”, and for the reasons described above in at least
`
`Section VII.B, the Petition fails to show that Kalamanek discloses the required “signaling
`
`message”. Furthermore, for its argument against the remaining independent claims, the
`
`Petition relies exclusively on its discussion of Claim 1.
`
`70.
`
`Additionally, independent claims 1, 6, 18, and 23 each recite a requirement
`
`for “intercepting” a message. For the reasons described above in at least Section VII.A,
`
`the Petition fails to show that Kalamanek discloses the required “intercepting” a message.
`
`Furthermore, for its argument against independent claims 6, 18 and 23, the Petition relies
`
`exclusively on its discussion of Claim 1.
`
`71.
`
`For at least the reasons above, the Petition fails as to Claims 1, 6, 18, 23,
`
`and 24.
`
`72. Moreover, the Petition fails as to all of the remaining challenged
`
`dependent claims, because every challenged dependent claim depends from either
`
`Claims 1, 6, 18, 23, or 24.
`
`VIII.
`
`CONCLUSIONS
`
`73.
`
`For the reasons discussed in this declaration it is my opinion that Kalmanek
`
`does not anticipate or render obvious the challenged