UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01471
`Patent 6,836,654
`
`__________________________________
`
`SECOND DECLARATION OF HENRY HOUH
`
`
`
`
`
`Page 1
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01471
`Patent 6,836,654
`
`__________________________________
`
`SECOND DECLARATION OF HENRY HOUH
`
`
`
`
`
`Page 1
`
`
`
`I, Henry Houh, do hereby declare as follows:
`
`1.
`
`I have been retained as an independent expert on behalf of Microsoft
`
`
`
`Corporation in connection with the above-captioned Petition for Inter Partes
`
`Review (“IPR”) to provide my analyses and opinions on certain technical issues
`
`related to U.S. Patent No. 6,836,654 (hereinafter “the ’654 patent”).
`
`2.
`
`This Second Declaration is in addition to the first declaration, Ex.
`
`1010, that I prepared for the ’654 patent PTAB proceedings, signed and dated
`
`August 8, 2019 (Ex. 1010). In this Second Declaration, I refer back to and
`
`incorporate analysis provided in Ex. 1010.
`
`3.
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`Among other things, Ex. 1010 lays out my education and professional
`
`background in paragraphs 4-20, and Appendix 1 (my CV), as well as my analysis
`
`of the ’654 patent and the prior art relied on therein. Therefore, I will not repeat
`
`this information here.
`
`4.
`
`In addition to the materials identified in paragraph 13 of Ex.1010, in
`
`connection with my work on this matter, I have reviewed the February 11, 2020,
`
`Institution Decision and the May 5, 2020, Patent Owner Response (Paper 9)
`
`submitted in this IPR proceeding.
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`5. With this Second Declaration, I wish to respond to three discrete
`
`issues raised by the Patent Owner Response (“POR”).
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`SECOND DECLARATION OF HENRY HOUH
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`Page 2
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`
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`
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`6.
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`First, Patent Owner relies on the statement in the Nokia Manual that a
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`Nokia Communicator Device can recognize five SIM cards. POR, p. 10. A
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`PHOSITA would understand that notwithstanding the Manual’s statement about
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`five SIM cards, in many cases the owner of the device will use only a single SIM
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`card with the device. For example, a PHOSITA would understand that a phone
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`with no linked SIM cards would not be able to make subscriber calls, and that at
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`least one linked SIM card would enable the Nokia device to be able to be used to
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`make such calls. A PHOSITA would understand that in many cases, the owner of
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`the device would have no need to link or otherwise use a second SIM card.
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`Additionally, a PHOSITA would understand that multiple linked SIM cards only
`
`allow the ability to access different phone accounts.
`
`7.
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`Second, Patent Owner argues that a PHOSITA would not have been
`
`motivated to combine Nokia and Barvesten and further that Barvesten teaches
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`away from Nokia. POR, p. 12. I disagree.
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`8.
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`As I explained in Ex. 1010, the teachings of Nokia and Barvesten are
`
`completely complementary as they both seek to improve security of mobile
`
`devices. Patent Owner contends that if Barvesten’s teachings were implemented in
`
`Nokia, the network operator would not have been able to control when and how the
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`subsidized devices are used. POR, p. 12.
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`SECOND DECLARATION OF HENRY HOUH
`
`Page 3
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`
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`
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`9.
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`Patent Owner’s reasoning is flawed. A PHOSITA would understand
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`that the device subsidy applies to the device, not the SIM card that represents the
`
`account for a phone line. A PHOSITA would further understand that a network
`
`operator offering a device capable of supporting multiple SIM cards could be more
`
`profitable since the network operator would only need to subsidize one device and
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`further SIM cards linked to the same device require no additional subsidy while
`
`reaping additional monthly line charges.
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`10.
`
`Incorporating the teachings of Barvesten into the Nokia device would
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`protect the device and each of the accounts represented by each linked SIM card,
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`thereby increasing security and reducing the potential for unauthorized and/or
`
`fraudulent use of the device and/or the linked SIM cards’ phone accounts.
`
`11. As with Nokia, a PHOSITA would understand Barvesten to disclose
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`the scenario where a single SIM card is linked to a particular device. For example,
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`Barvesten discloses that the invention stores an IMSI code “for a given number (n)
`
`of access units (SIM) …” Ex. 1006, 2:29-30. A PHOSITA would understand that
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`the “n” could be one, such that there would be a single SIM card associated with
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`the device.
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`12. Barvesten goes on to explain that “it is possible to, apart from storing
`
`of the identity of the own [sic] SIM-card, i.e. its IMSI-code, also store the IMSI-
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`codes of a number of other SIM-cards which should have a simplified or
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`SECOND DECLARATION OF HENRY HOUH
`
`Page 4
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`
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`prioritized access to the terminal unit or the telephone 1.” Id., 4:33-38. There is
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`nothing about this disclosure that would require multiple SIM cards or multiple
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`IMSI-codes to be used in connection with Barvesten. Instead, a PHOSITA would
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`readily understand that Barvesten discloses the scenario of a single SIM card being
`
`
`
`linked to a single device.
`
`13. To conclude, nothing in Patent Owner’s Response changes my
`
`opinion that claims 10-20 of the ’654 patent would have been obvious to a
`
`PHOSITA for the reasons stated herein and in my First Declaration.
`
`
`
`
`
`
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`SECOND DECLARATION OF HENRY HOUH
`
`Page 5
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`
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`I, Henry Houh, do hereby declare and state, that all statements made herein
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`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
`
`knowledge that willful false statements and the like so made are punishable by fine
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`or imprisonment, or both, under Section 1001 of Title 18 of the United States
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`Code.
`
`Signature
`
`SECOND DECLARATION OF HENRY HOUH
`
`Page6
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`
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