`
`Haller et al.
`In re Patent of:
`U.S. Patent No.: 7,039,033
`Issue Date:
`May 2, 2006
`Appl. Serial No.: 09/850,399
`Filing Date:
`May 7, 2001
`Title:
`SYSTEM, DEVICE AND COMPUTER READABLE
` MEDIUM FOR PROVIDING A MANAGED WIRELESS
`NETWORK USING SHORT-RANGE RADIO SIGNALS
`
`
`
`
`
`Atty Docket No.: 00035-0004IP1
`
`
`
`
`
`DECLARATION OF SAYFE KIAEI
` My name is Dr. Sayfe Kiaei. I understand that I am submitting a
`
`declaration in connection with Inter Partes review (“IPR”) proceedings before the
`
`United States Patent and Trademark Office for U.S. Patent Number 7,039,033
`
`(“’033 Patent”).
`
`
`
`I have been retained on behalf of Samsung Electronics Co. Ltd.,
`
`Samsung Electronics America, Inc., and Apple Inc. My compensation is not based
`
`on the outcome of my opinions.
`
` My curriculum vitae (“CV”) is provided as an Exhibit.
`
`
`
`I received a Bachelor’s of Science in Electrical Engineering from
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`Washington State University in 1982; a Master’s of Science in Electrical and
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`Computer Engineering from Washington State University in 1987; and a Ph.D. in
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`Electrical and Computer Engineering from Washington State University in 1987.
`
`
`
`I am a Professor in the School of Electrical, Computer and Energy
`
`Engineering Department at Arizona State University. I have held this position
`
`since 2001. I am also the Director of the National Science Foundation Center
`
`SAMSUNG 1003
`
`1
`
`APPLE 1031
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`
`
`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`“Connection One,” which is an industry/university cooperative research center
`
`with over thirty industrial members and five university members focused on
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`developing communication system and networking technologies. I have graduated
`
`over 100 MS and PhD students working under my supervision on their thesis, and
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`many of them are professors in academia, or have senior positions in the industry.
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`Currently, I have 8 MS, PhD and postdoc students working with in my lab on
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`research related to communication and networking systems, wireless and wireline
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`systems, RF, and integrated circuits. My research is funded by various industries,
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`federal agencies including NSF, DARPA, ONR, DOE, etc., with an average
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`research funding of $1M per year.
`
`
`
`I have been involved with communication and networking systems,
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`wireless and wireline systems, cellular systems, RF, digital signal processing, and
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`related areas for the last 30 years starting with the first generation of mobile
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`phones (analog AMPS mobile phones), 2G, and 3G including GSM, EDGE, IS-95,
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`1X CDMA, Wide band CDMA, Bluetooth, GPS, Wireless LAN, and related areas.
`
`I designed the baseband communication system for Motorola’s Talkabout Radio of
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`which over 100 million are currently in the market place. At Motorola, I designed
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`systems for DSL, DMT, OFDM, wireline and wireless systems, wireless
`
`networking, 1G-3G, UMTS, GPS and Bluetooth systems.
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`Page 2 of 44
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`
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
`
`
`From 1987 through 1993, I was a Professor at Oregon State
`
`University (tenured) in the Electrical and Computer Engineering Department. In
`
`my over thirty years of teaching experience, I have taught courses in networking,
`
`communication systems, RF, and electronics.
`
`
`
`From 1993 to 2001, I was a Senior Member of Technical Staff with
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`the Wireless Technology Center and Broadband Operations at Motorola Inc.,
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`where I was responsible for the development of wireless system, cellular system,
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`RF integrated circuits, GPS, and Digital Subscriber Lines (DSL) transceivers.
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`From 1985 through 1987, I worked with Boeing on the development of signal
`
`processing and control systems. I have also been a consultant on various projects
`
`with Intel (designing 2G and 3G cellular transceivers), Texas Instrument
`
`(developing 3G cellular and Bluetooth technologies), Sony Wireless (developing
`
`GPS technologies), Tektronics (designing wireless systems), and various other
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`consultancies.
`
`
`
`From 1997-2001, I was the standards technical analyst for Motorola
`
`and attended various standard setting committees, including ITU, IEEE, and ETSI
`
`related to DSL, OFDM, CDMA, 2G, and 3G systems.
`
`
`
`I have published over a hundred journal and conference papers
`
`covering topics such as communication systems, signal processing, radio
`
`frequency, integrated circuits (IC), filter design, and related areas.
`
`Page 3 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
`
`
`I am an IEEE Fellow, a distinction and highest level membership
`
`awarded for extraordinary accomplishments. I am a member of IEEE Circuits and
`
`Systems Society, IEEE Solid State Circuits Society, and IEEE Communication
`
`Society, IEEE RF and Microwave committees, IEEE Low Power Symposium
`
`Committee, IEEE Signal Processing Society, IEEE Fellow Selection Committee,
`
`and many other International Electrical Engineering societies. I was one of the key
`
`organizers to establish the IEEE Radio Frequency Integrated Circuits (RFIC)
`
`symposium in 1995, and have been on the executive committee, and technical
`
`committee of RFIC for the last 16 years. The RFIC Symposium has grown and is
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`now the premier international symposium in the world where the latest RF circuits
`
`and components are presented. I have been involved in several international
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`conferences in the areas of RF, Communication, Signal Processing, and IC design.
`
`
`
`I have received several awards including the Carter Best Teacher
`
`Award, the IEEE Darlington Award (which is given for the best technical paper on
`
`circuits and systems in the IEEE CAS Society), and the Motorola 10X Rapid
`
`Design Cycle Reduction Award.
`
`
`
`I have reviewed the ’033 Patent, including the claims of the patent in
`
`view of the specification and the file history. In addition, I have reviewed the
`
`following documents:
`
`Page 4 of 44
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`
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
` Patent Cooperation Treaty (PCT) Publication No. WO 01/76154
` (“Marchand PCT”)
` U.S. Patent Application No. 09/541,529 (“Marchand Priority”)
` U.S. Patent No. 6,560,642 (“Nurmann”)
` U.S. Patent No. 6,771,635 (“Vilander”)
` U.S. Patent No. 6,836,474 (“Larsson”)
` Handley et al., Request for Comments 2543 SIP: Session Initiation
`Protocol, The Internet Society, March, 1999 (“RFC 2543”)
` K. Arnold et al., The JINITM Specification, Addison-Wesley, June 1,
`1999 (“JINI Spec.”)
` R. Droms, Request for Comments 2131 Dynamic Host Con-figuration
`Protocol, The Internet Society, March, 1997 (“RFC 2131”)
` U.S. Patent No. 6,622,017 to Hoffman (“Hoffman”)
`
`S. M. Bellovin et al, Network Firewalls, Network Firewalls, IEEE
`Communications Magazine, Vol. 32, Issue 9, pp. 50-57, 1999
`(“Bellovin”)
` Counsel has informed me that I should consider these materials
`
`through the lens of one of ordinary skill in the art related to the ’033 patent at the
`
`time of the earliest purported priority date of the ’033 patent, and I have done so
`
`during my review of these materials. The ’033 Patent issued on May 2, 2006 from
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`U.S. Patent Application No. 09/850,399 (“’399 application”), which was filed on
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`May 7, 2001. Because the ’033 Patent does not include a priority claim, the filing
`
`date of May 7, 2001 appears to be the earliest possible priority date to which this
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`Page 5 of 44
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`
`
`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`patent is entitled. A conception date of February 20, 2001 was asserted during
`
`prosecution of the ’399 application. As I am not a lawyer or legal practitioner, I
`
`cannot state whether the Applicant of the ’399 application sufficiently
`
`demonstrated an invention date earlier than May 7, 2001, but will assume for the
`
`purposes of this petition, that the Patent Owner can demonstrate an invention date
`
`as of at least February 20, 2001 (“Critical Date”).
`
` A person of ordinary skill in the art as of the Critical Date (hereinafter
`
`a “POSITA”) would have had a Master’s of Science Degree (or a similar technical
`
`Master’s Degree, or higher degree) in an academic area emphasizing electrical
`
`engineering, computer engineering, or computer science with a concentration in
`
`communication and networking systems or, alternatively, a Bachelor’s Degree (or
`
`higher degree) in an academic area emphasizing electrical or computer engineering
`
`and having two or more years of experience in communication and networking
`
`systems. Additional education in a relevant field, such as computer science,
`
`computer engineering, or electrical engineering, or industry experience may
`
`compensate for a deficit in one of the other aspects of the requirements stated
`
`above.
`
`
`
`I am familiar with the knowledge and capabilities of one of ordinary
`
`skill in the areas mention above, notably including the areas of computer
`
`networking, communication systems, wireless systems, and cellular systems. My
`
`Page 6 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`experience working in industry and academia, with undergraduate and post-
`
`graduate students, with colleagues from academia, and with engineers practicing in
`
`industry has allowed me to become directly and personally familiar with the level
`
`of skill of individuals and the general state of the art in these areas. Unless
`
`otherwise stated, my testimony below refers to the knowledge of one of ordinary
`
`skill in the fields as of the Critical Date, or before.
`
` This declaration is organized as follows:
`
`I.
`
`II.
`
`Brief Overview of the ’033 Patent (pg. 7)
`
`Terminology (pg. 8)
`
`III. Discussion of References (pg. 10)
`
`IV. Legal Principles (pg. 41)
`
`
`
`
`
`VII. Additional Remarks (pg. 44)
`
`I.
`
`Brief Overview of the ’033 Patent
` The ’033 Patent describes a gateway device that provides wireless
`
`communication between a personal area network (PAN) and a wide area network
`
`(WAN), such as the Internet. ’033 Patent at Fig. 1; 4:8-59. A system 100 of the
`
`’033 Patent is illustrated in Figure 1:
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`Page 7 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
`
`
` The gateway device 106 is coupled to terminals 107 by short-range
`
`radio signals (using, for example, Bluetooth) to form the PAN. Id. at 4:15-22. The
`
`gateway device 106 is also coupled to the cellular network 105 by cellular signals.
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`Id. at 4:50-58. The cellular network 105 is coupled to a carrier backbone 104,
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`which in turn is coupled to the Internet 103. Id. The gateway device 106 has a
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`“component for accessing information from the Internet responsive to a first short-
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`range radio signal” from one of the terminals 107. Id. at Abstract; 2:6-11; 7:30-58.
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`The gateway device also has a “component for obtaining and providing an
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`availability of a service from” one of the terminals 107. Id. at 2:45-48; 12:9-13:18.
`
`II. Terminology
`
`I am not a lawyer. However, I have been informed that, during an IPR
`
`proceeding involving the ’033 Patent, claim terminology is given the broadest
`
`reasonable interpretation at the time of the Critical Date. I have been informed that
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`Page 8 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`this means the claims should be interpreted as broadly as their terms reasonably
`
`allow, but that such interpretation should not be inconsistent with the patent’s
`
`specification and with usage of the terms by a POSITA when considering the
`
`broadest reasonable interpretation. I have used the Critical Date as the point in time
`
`for claim interpretation purposes, although in many cases the same analysis would
`
`hold true even at an earlier time than the Critical Date. Counsel has also informed
`
`me that this may yield interpretations that are broader than the interpretation
`
`applied during a District Court proceeding.
`
`
`
`I have been informed that it would be useful to provide some guidance
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`in this proceeding with respect to the terms below. As part of that, I considered the
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`context of the terms within the claims, use of the terms within the specification,
`
`and my understanding of how a POSITA would have understood the terms as of
`
`the Critical Date.
`
`
`
`I have considered how to interpret the phrase “identifies whether the
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`service is available at a particular time,” as recited in claim 4 of in the ’033 Patent,
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`under the broadest reasonable interpretation. From my review I believe this phrase
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`should be interpreted under the broadest reasonable interpretation standard as
`
`encompassing the service being registered. According to the ’033 Patent, “a service
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`offered by [an] application, or a hardware capability offered by terminal driver” is
`
`registered with a service repository software component 704. Ex. 1001 at 12:35-37.
`
`Page 9 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`Registration of the services “describes the terminals and the services that are
`
`available at a particular time, but . . . does not describe the current status of the
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`services.” Ex. 1001 at 13:5-11. The ’033 Patent notes that “a service might be
`
`available in a PAN but not necessarily accessible since another application is
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`exclusively using the service.” Id. “[S]ervice unregistration that cancels a
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`registered service” is performed when the service is no longer available. Ex. 1001
`
`at 12:38-39.
`
` Under the broadest reasonable interpretation, the ’033 Patent appears
`
`to indicate that, when services are registered, the services are identified as
`
`available at that moment in time, even if it does not indicate whether or not those
`
`services are currently accessible. In other words, the mere fact of the service being
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`registered identifies that the service is available at a particular time (that is, at any
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`time while it is registered). Accordingly, in my opinion, this term should be
`
`construed under the broadest reasonable interpretation standard as encompassing
`
`the service being registered. Such an interpretation is also not inconsistent with an
`
`understanding a POSITA would ascribe to the term.
`
`III. Discussion of References
`A. Marchand
` Marchand discloses “an ad-hoc network that can be efficiently, easily,
`
`and inexpensively established for a plurality of devices, and a gateway that
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`Page 10 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`provides access through the ad-hoc network to external wireless IP networks.”
`
`Marchand PCT at 4:15-19; Marchand Priority at 6:21–7:2. An example of this
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`system is shown below in FIG. 3 of Marchand Priority. A similar FIG. 3 is
`
`provided in Marchand PCT.
`
`
`
` Referring to Marchand’s FIG. 3, Marchand discloses a mobile phone
`
`33 that functions “as a gateway between the ad-hoc network and a 3G wireless IP
`
`network 35 such as the General Packet Radio Service (GPRS) network.” Marchand
`
`PCT at 7:12-14; Marchand Priority at 11:16–18. As a result, “the mobile phone [is]
`
`simultaneously . . . connected to a cellular network [(that is, the 3G wireless IP
`
`network)] and to an ad-hoc Bluetooth Piconet.” Marchand PCT at 6:23-25;
`
`Marchand Priority at 10:15-17. Marchand’s mobile phone 33 would be understood
`
`as being a cellular telephone at least because the mobile phone 33 is a phone used
`
`to send and receive telephone calls over a cellular network. Marchand PCT at 6:23-
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`Page 11 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`7:2; Marchand Priority at 10:15–11:2. A POSITA would also understand that the
`
`Bluetooth Piconet is a short distance wireless network since the Bluetooth Piconet
`
`employs “short-range radio link[s].” Marchand PCT at 1:29-31; Marchand Priority
`
`at 2:15-20. Marchand discloses that the devices on the ad-hoc network may
`
`include, for example, a laptop computer, a printer, or a personal digital assistant
`
`(PDA). Marchand PCT at 6:23-27, 7:9-11, 10:18-21; Marchand Priority at 11:12-
`
`115, 16:20-17:2. A POSITA would consider the printer as having a low power
`
`central processor and operating system relative to the laptop computer or to the
`
`PDA. While Marchand describes specific examples of the devices on the ad-hoc
`
`network, a POSITA would understand that any device that is “Bluetooth-compliant
`
`and JINI/Java-capable” could be part of the ad-hoc network 30. Marchand PCT at
`
`7:9-11. Marchand Priority at 11:13-15.
`
` A POSITA would consider any of Marchand’s laptop computer,
`
`printer, or PDA, as corresponding to the second and third wireless handheld
`
`devices recited in claim 42. In particular, claim 45 of the ’033 Patent indicates that
`
`“a laptop computer [and] a personal digital assistant” are wireless handheld
`
`devices. ’033 Patent at 18:50-54. In addition, the ’033 Patent describes the
`
`“terminals 107 [that] are coupled to the gateway 106 by short-range radio signals
`
`110” as being implemented by a “hand-held device [350],” and that the terminals
`
`107 can be a number of different devices, including “a printer.” ’033 Patent at
`
`Page 12 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`4:17-25; 5:43-46. In view of this, a POSITA would consider a printer to be the
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`second or third wireless handheld device recited in claim 42.
`
` The mobile phone 33 is “used to connect [the devices in the network
`
`30] to an IP-based network such as the Internet.” Marchand PCT at 13:12-14;
`
`Marchand Priority at 21:12-15. Accordingly, the mobile phone 33 performs routing
`
`for IP packets between the local ad-hoc network 30 and the external wireless
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`network 35. Marchand PCT at 7:12-17. Marchand Priority at 11:16-21. To perform
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`routing between the two different networks, the mobile phone 33 “has two IP
`
`addresses.” Marchand PCT at 10:30-31. Marchand Priority at 17:12–13. On the
`
`local side, the mobile phone 33 has “a private IP address” recognized by devices
`
`on the local network 30. Marchand PCT at 4:23-30. Marchand Priority at 7:8–17.
`
`On the external side, the mobile phone 33 has “a public IP address recognized in
`
`the wireless IP network such as an external GPRS network.” Id. During operation,
`
`the mobile phone 33 receives IP packets from the public network 35 “through its
`
`public IP address, and forwards the received packets to the private IP address of
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`the destination device” in the local network 30. Marchand PCT at 7:14-17.
`
`Marchand Priority at 11:16–22. The mobile phone 33 “also translates in the other
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`direction for data going out of” the local network 30 to the external IP network
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`35.” Id. Therefore, Marchand would be understood as disclosing a signal
`
`containing IP packets that are sent from a device in the ad-hoc Bluetooth Piconet
`
`Page 13 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`network 30 to the mobile phone 33 over a short-range radio link, resulting in the
`
`mobile phone 33 accessing information on the Internet through the cellular GPRS
`
`network 35. A POSITA would understand that the translation of a “public IP
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`address of the mobile phone” in an IP packet received from the GPRS network “to
`
`the private IP address of the appropriate device” is performed by a network address
`
`translator (NAT) software component in a software component of the mobile
`
`phone 33. I note that Marchand appears to recognize that some implementations of
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`NAT experience an IP address mismatch condition to the extent that such NAT
`
`implementations are deployed without the benefits Marchand’s teachings, while
`
`also indicating that such conditions are not present in implementations that employ
`
`Marchand’s call control Application Programming Interface (API). Marchand at
`
`11:23-12:3. A POSITA would understand this portion of Marchand as disclosing
`
`that a NAT can be used effectively in a mobile phone that communicates with a
`
`device that includes Marchand’s call control API.
`
`
`
`In Marchand, the devices on the ad-hoc network 30 “are all Bluetooth-
`
`compliant and JINI/Java-capable.” Marchand PCT at 7:9-11. Marchand Priority at
`
`11:13-15. The “JINI (Java) technology is utilized to publish and share services
`
`between the devices” on the ad-hoc network 30. Marchand PCT at 6:3-6;
`
`Marchand Priority at 9:15-18. In particular, the JINI technology provides “the
`
`capability for an application 21 to discover, join, and download services 22 from a
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`Page 14 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`JINI [Lookup Service] (LUS).” Marchand PCT at 6:21-22; Marchand Priority at
`
`10:13-14. The LUS is included in the ad-hoc Bluetooth Piconet network 30 “for
`
`making services available to the plurality of devices in the Piconet.” Marchand
`
`PCT at 5:13-14; Marchand Priority at 7:21-22. “The LUS contains a list of
`
`available services provided by [devices on the ad-hoc network 30].” Marchand
`
`PCT at 3:11-12; Marchand Priority at 4:22-5:1. When a device in the ad-hoc
`
`Bluetooth Piconet network 30 would like to share or offer a service to the ad-hoc
`
`Bluetooth Piconet network 30, it registers the service with a JINI LUS using a
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`“discovery and join” protocol. Marchand PCT at 6:19-22, 7:23-25, 8:11-28;
`
`Marchand Priority at 10:11-15, 12:7-9, 13:6-14:2; JINI Spec. at pp. 72-75.
`
` As noted above, Marchand’s JINI LUS is part of a Java-technology-
`
`centered distributed software system that includes Java software code. Marchand
`
`PCT at 2:27-3:16; Marchand Priority at 4:5-5:7. The ’033 Patent describes gateway
`
`software 400, including the service repository software component 704, as being
`
`implemented using “a software program, a software object, a software function, a
`
`software subroutine, a software method, a software instance, a code fragment,
`
`singly or in combination.” ’033 Patent at 5:64-6:2. A POSITA would understand
`
`that Marchand’s JINI LUS corresponds to the ’033 Patent’s “service repository
`
`software component” at least because the JINI LUS identifies and provides
`
`services from one device to another in the ad-hoc Bluetooth Piconet network 30,
`
`Page 15 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`and is implemented using at least one of “a software program, a software object, a
`
`software function, a software sub-routine, a software method, a software instance,
`
`a code fragment, singly or in combination.”
`
` The mobile phone 33 acts a master device in the ad-hoc Bluetooth
`
`Piconet network 30 and provides cellular call services to other devices 31, 32 (i.e.,
`
`slave devices) in the ad-hoc Bluetooth Piconet network 30 using JINI technology.
`
`Marchand PCT at 8:2-5; Marchand Priority at 12:18-22. The mobile phone 33
`
`therefore can act “as a call-control server for client devices in the ad-hoc network”
`
`and “a call-control client for a server in the wireless IP network.” Marchand PCT
`
`at 4:23-27; Marchand Priority at 7:8-13. As a result, “any Bluetooth-compliant
`
`device in a Piconet that is multimedia capable is able to establish a call as long as
`
`one of the devices (e.g., the mobile phone) in the Piconet contains a cellular radio
`
`modem and a call control client, and is connected to the wireless IP network.”
`
`Marchand PCT at 7:14-21; Marchand Priority at 11:18-12:14. A POSITA would
`
`appreciate that mobile phone 33’s acting as “a call-control server for client devices
`
`in the ad-hoc network” and “a call-control client for a server in the wireless IP
`
`network,” as well as the mobile phones 33’s routing of data packets and translation
`
`of addresses of data packets received between the ad-hoc Bluetooth network 30
`
`and cellular network 35 means that the mobile phone 33 controls access between
`
`Page 16 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`the ad-hoc Bluetooth network 30 and the cellular network 35. Marchand PCT at
`
`4:23-27; 7:14-17; Marchand Priority at 7:8-13; 12:18-22.
`
` Further, in Marchand, “a JINI call control API 47 is published by the
`
`mobile phone 33 and enables the applications 21 in the laptop and other devices in
`
`the Piconet to make use of the facilities of, for example, the SIP client 42 in the
`
`mobile phone.” Marchand PCT at 9:20-22; Marchand Priority at 15:8-11. The JINI
`
`call control API is “an abstraction of a SIP and/or H.323 call control client.”
`
`Marchand PCT at 6:27-29; 9:22; Marchand Priority at 10:20-22; 15:11-12. When a
`
`slave device requests the call service from the LUS, “this [JINI call control] API is
`
`downloaded to the Bluetooth device involved in an external wireless call” (that is,
`
`the requesting slave device). Marchand PCT at 6:29-7:2. Marchand Priority at
`
`10:22-11:5. At least in some cases, the JINI call control API is “downloaded from
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`the gateway,” i.e., mobile phone 33. Marchand PCT at claim 6. Marchand Priority
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`at claim 6. The JINI call control API is then employed by the slave device to use
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`the call control service of the mobile phone 33. Marchand PCT at 9:20-26;
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`Marchand Priority at 15:8-15.
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` Marchand discloses the various devices include a combination of soft-
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`ware and hardware to perform the functionality described above. For example,
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`Marchand discloses hardware such as the “cellular radio modem” for the mobile
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`phone to communicate with the external IP network 35, and a “Bluetooth chipset”
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`Page 17 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`for the various devices on the ad-hoc Bluetooth Piconet network 30 to
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`communicate using Bluetooth. Marchand PCT at 2:7-16; 3:31-4:1; 6:23-25; 7:14-
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`25; 11:7-8; Marchand Priority at 3:5-15; 7:18-20; 10:15-17; 12:1-6; 18:1-3.
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`Further, to perform their noted functionality, the mobile phone 33 and other
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`devices in the ad-hoc network 30 include the protocol stack shown below in
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`Marchand’s FIG. 2, which includes a physical layer 15, and various software such
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`as a link layer 16, a network transport layer 17, “an operating system layer 18, a
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`Java technology layer 19 and a JINI technology layer 20.” Marchand PCT at 6:16-
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`22; Marchand Priority at 10:5-15. The physical layer 15 and link layer 16 provide
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`connection to devices in the ad-hoc Bluetooth Piconet network 30, and the
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`operating system 18, Java technology layer 19, and JINI technology layer 20
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`implement the JINI technology providing the capability for an application 21 to
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`discover, join, and download services. Marchand PCT at 6:16-22; Marchand
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`Priority at 10:5-15.
`
`
`See FIG. 2 of Marchand Priority. Marchand PCT illustrates a similar FIG. 2.
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
` Marchand’s FIG. 4 also illustrates the protocol stack. Marchand’s
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`FIG. 4 illustrates certain features of Marchand’s ad-hoc Bluetooth Piconet network
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`30, but does not expressly illustrate all the features of the ad-hoc Bluetooth Piconet
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`network 30. For example, based on Marchand’s disclosure including, for example,
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`that network 30 devices such as the laptop computer 31, printer 32, and personal
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`digital assistant (PDA) are all “Bluetooth-compliant and JINI/Java-capable,” a
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`POSITA would understand that the protocol stack shown in Marchand’s FIGS. 2
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`and 4 is also included in the mobile phone 33, even though the protocol stack is not
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`shown in FIG. 4 as being included in the mobile phone 33. Marchand PCT at 2:17-
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`25, 6:23-7:4, 7:28-8:17; Marchand Priority at 3:17-4:4, 10:15-11:15, 12:12-13:13.
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`The mobile phone 33 would be understood to include the layers in the protocol
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`stack to implement Bluetooth communications and JINI-based communications.
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` Although not expressly described in Marchand, a POSITA would
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`understand that Marchand’s mobile phone 33 also includes a storage device and a
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`processor coupled to the storage device to implement various functions of the
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`mobile phone 33. As is generally understood in the art, functions implemented by
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`software, as in Marchand, require software code to be stored and executed on a
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`device. For a function to be executed, the stored software code must be retrieved
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`from the storage device and executed by a processor on the device.
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`Page 19 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
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`
` As an example, I refer to FIGS. 3 and 4 of U.S. Patent No. 6,622,017
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`(“Hoffman”), which illustrate a mobile telephone / handset 5 that includes: “a flash
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`memory 53 for storing various software routines and mobile configuration
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`settings;” and “a microprocessor 51 [that] controls all operations of the handset 5.”
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`Hoffman at 12:4, 48-57. “The flash memory 53 has sufficient space to store the
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`core programming of the handset 5.” Hoffman at 12:48-57. As shown in FIG. 3,
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`the microprocessor 51 is coupled to the flash memory 53. The microprocessor 51
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`accesses the flash memory 53 to store programs and install or download modules
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`for software packages. Hoffman at 13:1-25.
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`Page 20 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`
` As evidenced by Hoffman, it was known at the time of the Critical
`
`Date of the ’033 Patent, that a mobile phone, such as Marchand’s mobile phone 33,
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`would include a processor coupled to a storage device to “control all operations” of
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`the mobile phone including the storing and execution of various code or software
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`components on the mobile phone. Referring back to Marchand, a POSITA would
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`understand that Marchand’s mobile phone 33 would include a processor coupled to
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`the storage device to store, generate, and execute the software associated with the
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`various functions of the mobile phone 33 described above. For example, the
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`storage device would store software associated with layers of the protocol stack
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`shown in Marchand’s FIG. 2, such as a link layer 16, a network transport layer 17,
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`an operating system layer 18, a Java technology layer 19 and a JINI technology
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`layer 20, and software associated with programming interfaces such as different
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`interfaces and service APIs (e.g., JINI call control service, SIP call control client,
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`H.323 call control client, abstraction of a SIP and/or H.323 call control client). Ex.
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`1005 at 6:16-29; Ex. 1006 at 10:5-22.
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` Marchand does not expressly state that the JINI LUS is located on
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`mobile phone 33. In addition, I note that FIG. 4 of Marchand implies that the JINI
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`LUS may be located elsewhere since the LUS 46 is illustrated on the laptop
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`computer side of the Bluetooth radio link illustrated in that figure. However, for at
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`least the following reasons, a POSITA would appreciate that Marchand implicitly
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`Page 21 of 44
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`Declaration of Dr. Sayfe Kiaei
`U.S. Patent No.: 7,039,033
`Atty Docket No.: 00035-0004IP1
`
`teaches an implementation in which the JINI LUS is located in the mobile phone
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`33.
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` As discussed above, Marchand teaches that an API is downloaded to a
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`slave device (e.g., a Bluetooth network device 31 or 32) that would like to make an
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`external wireless call using the call control service of the mobile phone 33.
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`Marchand PCT at 6:27-7:2; Marchand Priority at 10:20-11:5. This API
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`corresponds to a service object stored in a JINI LUS. As described in the JINI
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`Spec., for a given service, the LUS stores a proxy object for the service. JINI Spec.
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`at pp. 5-12. When a client wants to access that service, the client downloads the
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`proxy object from the LUS. Id. The proxy object implements the interfaces for the
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`service and, accordingly, is used by the client to access the service. Id. In view of
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`this, a POSITA would understand that Marchand’s API corresponds to a JINI
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`proxy object. Marchand’s claim 6 explicitly recites that the API (or proxy object)
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`is downloaded from the gateway to other devices in the ad-hoc network. Since, in
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`JINI, proxy o