`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`
`
`
`
`_________________
`
`
`DECLARATION OF TAL LAVIAN, PH.D., REGARDING
`U.S. PATENT NO. 8,724,622
`
`
`
`

`

`
`
`TABLE OF CONTENTS
`
`Pages
`INTRODUCTION AND ENGAGEMENT ................................................... 1 
`I. 
`BACKGROUND AND QUALIFICATIONS ................................................ 1 
`II. 
`III.  MATERIALS CONSIDERED
`AND INFORMATION RELIED UPON ....................................................... 5 
`IV.  PERSON OF ORDINARY SKILL IN THE ART ......................................... 8 
`V. 
`BASIS FOR MY OPINION AND
`STATEMENT OF LEGAL PRINCIPLES ................................................... 10 
`A. 
`Claim Construction ............................................................................ 10 
`B. 
`Anticipation ........................................................................................ 10 
`C. 
`Obviousness ........................................................................................ 11 
`1.  Motivation to Combine ............................................................ 14 
`VI.  RELEVANT TECHNOLOGY BACKGROUND ....................................... 15 
`A. 
`The Internet and TCP/IP Protocol Suite ............................................. 16 
`B. 
`Voice over IP (VoIP) .......................................................................... 17 
`C. 
`Instant messaging (IM) ....................................................................... 21 
`1. 
`IETF in RFC 2778 – “A Model
`for Presence and Instant Messaging” ....................................... 24 
`IETF RFC 2779 “Instant
`Messaging/Presence Protocol Requirements” ......................... 25 
`Prior Art Instant Messaging (“IM”) Systems .......................... 25 
`3. 
`VII.  THE ’622 PATENT ...................................................................................... 29 
`A. 
`The ’622 Patent’s Specification ......................................................... 29 
`B. 
`The Claims of the ’622 Patent ............................................................ 32 
`VIII.  MEANING OF CERTAIN CLAIM TERMS .............................................. 32 
`“instant voice message” ........................................................... 32 
`“attaching one or more files to the instant voice message” ..... 34 
`
`2. 
`
` 
`
` 
`
`- i -
`
`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`XI.
`
`“an instant voice messaging application” ................................ 36
`“client platform system” .......................................................... 38
`“communication platform system” .......................................... 39
`“instant voice message client system” ..................................... 41
`IX. APPLICATION OF THE PRIOR ART TO THE CLAIMS ........................ 43
`SPECIFIC PRIOR ART DESCRIPTIONS AND TEACHINGS ................ 44
`X.
`A.
`Zydney ................................................................................................ 44
`B.
`Shinder ................................................................................................ 50
`C.
`Kirkwood ............................................................................................ 53
`D.
`Boneh .................................................................................................. 56
`E.
`Griffin ................................................................................................. 59
`THE PRIOR ART DISCLOSES OR
`SUGGESTS ALL THE FEATURES OF
`CLAIMS 1, 2, 5, 9, 36, AND 37 OF THE CHALLENGED PATENT ....... 64
`A.
`CLAIM 1 IS OBVIOUS OVER
`ZYDNEY, SHINDER, AND KIRKWOOD ...................................... 65
`CLAIM 2 IS OBVIOUS OVER
`ZYDNEY, SHINDER, KIRKWOOD, AND BONEH ...................... 81
`CLAIM 5 IS OBVIOUS OVER ZYDNEY AND GRIFFIN ............. 83
`CLAIMS 9, 36, AND 37 ARE
`OBVIOUS OVER ZYDNEY AND SHINDER ............................... 114
`Claim 9 ................................................................................... 114
`Claim 36 ................................................................................. 134
`Claim 37 ................................................................................. 144
`XII. AVAILABILITY FOR CROSS-EXAMINATION ................................... 146
`
`B.
`
`C.
`D.
`
`- ii -
`
`

`

`
`I, Tal Lavian, Ph.D., declare as follows:
`
`U.S. Patent No. 8,724,622
`
`I.
`
`INTRODUCTION AND ENGAGEMENT
`1.
`I have been retained as an independent expert on behalf of Microsoft
`
`Corporation in connection with Inter Partes Reviews (“IPRs”) of the above-
`
`identified patents and specifically in order to provide my analyses and opinions on
`
`certain technical issues related to U.S. Patent No. 8,724,622 (the “’622 Patent”).
`
`2.
`
`I am being compensated at my usual and customary rate for the time I
`
`spent in connection with this IPR. My compensation is not affected by the outcome
`
`of this IPR. I hold no interest in the Petitioner (Microsoft Corporation) or the Patent
`
`Owner (Uniloc 2017 LLC).
`
`3.
`
`Specifically, I have been asked to provide my opinions regarding
`
`whether claims 1, 2, 5, 9, 36, and 37 of the ’622 Patent (each a “Challenged Claim”
`
`and collectively the “Challenged Claims”) would have been found in the prior art or
`
`obvious to a person having ordinary skill in the art (“POSITA”)prior to December
`
`2003. It is my opinion that each Challenged Claim would have been found in the
`
`cited prior art or at least obvious to a POSITA after reviewing the prior art discussed
`
`herein.
`
`II. BACKGROUND AND QUALIFICATIONS
`4.
`I have more than 25 years of experience in the networking,
`
`telecommunications, Internet, and software fields. I received a Ph.D. in Computer
`
`- 1 -
`
`

`

`
`Science, specializing in networking and communications, from the University of
`
`U.S. Patent No. 8,724,622
`
`California at Berkeley in 2006 and obtained a Master’s of Science (“M.Sc.”) degree
`
`in Electrical Engineering from Tel Aviv University, Israel, in 1996. In 1987, I
`
`obtained a Bachelor of Science (“B.Sc.”) in Mathematics and Computer Science,
`
`also from Tel Aviv University.
`
`5.
`
`I had been employed by the University of California at Berkeley and
`
`was appointed as a lecturer and Industry Fellow in the Center of Entrepreneurship
`
`and Technology (“CET”) as part of UC Berkeley College of Engineering. I had been
`
`with the University of California at Berkeley since 2000 to 2019, where I served as
`
`Berkeley Industry Fellow, Lecturer, SkyDeck researcher, Visiting Scientist, Ph.D.
`
`Candidate, and Nortel’s Scientist Liaison. I had taught several classes in the areas
`
`of innovations, wireless devices and smartphones. Some positions and projects were
`
`held concurrently, while others were held sequentially.
`
`6.
`
`I have more than 25 years of experience as a scientist, educator and
`
`technologist, and much of my experience relates to telecommunication, data
`
`communications, and computer networking technologies. For eleven years from
`
`1996 to 2007, I worked for Bay Networks and Nortel Networks. Bay Networks was
`
`in the business of making and selling computer network hardware and software.
`
`Nortel Networks acquired Bay Networks in 1998, and I continued to work at Nortel
`
`after the acquisition. Throughout my tenure at Bay and Nortel, I held positions
`
`
`
`- 2 -
`
`
`
`

`

`
`including Principal Scientist, Principal Architect, Principal Engineer, Senior
`
`U.S. Patent No. 8,724,622
`
`Software Engineer, and led the development and research involving a number of
`
`networking technologies. I led the efforts of Java technologies at Bay Networks and
`
`Nortel Networks. In addition, during 1999-2001, I served as the President of the
`
`Silicon Valley Java User Group with over 800 active members from many
`
`companies in the Silicon Valley.
`
`7.
`
`Prior to that, from 1994 to 1995, I worked as a software engineer and
`
`team leader for Aptel Communications, designing and developing wireless
`
`technologies, mobile wireless devices and network software products.
`
`8.
`
`From 1990 to 1993, I worked as a software engineer and team leader at
`
`Scitex Ltd., where I developed system and network communications tools (mostly
`
`in C and C++).
`
`9.
`
`I have extensive experience in communications technologies including
`
`wireless technologies, routing and switching architectures and protocols, including
`
`Multi-Protocol Label Switching Networks, Layer 2 and Layer 3 Virtual Private
`
`Networks, and Pseudowire technologies. Much of my work for Nortel Networks
`
`(mentioned above) involved the research and development of these technologies.
`
`For example, I wrote software for Bay Networks and Nortel Networks switches and
`
`routers, developed network technologies for the Accelar 8600 family of switches
`
`and routers, the OPTera 3500 SONET switches, the OPTera 5000 DWDM family,
`
`
`
`- 3 -
`
`
`
`

`

`
`and the Alteon L4-7 switching product family. I wrote software for Java-based
`
`U.S. Patent No. 8,724,622
`
`device management, including a software interface for device management and
`
`network management in the Accelar routing switch family’s network management
`
`system. I have also worked on enterprise Wi-Fi solutions, wireless mobility
`
`management, and wireless infrastructure.
`
`10.
`
`I am named as a co-inventor on more than 100 issued patents and I co-
`
`authored more than 25 scientific publications, journal articles, and peer-reviewed
`
`papers. Furthermore, I am a member of a number of professional affiliations,
`
`including the Association of Computing Machinery (“ACM”) and the Institute of
`
`Electrical and Electronics Engineers (“IEEE”) (senior member). I am also certified
`
`under the IEEE WCET (Wireless Communications Engineering Technologies)
`
`Program, which was specifically designed by the IEEE Communications Society
`
`(ComSoc) to address the worldwide wireless industry’s growing and ever-evolving
`
`need for qualified communications professionals.
`
`11. From 2007 to the present, I have served as a Principal Scientist at my
`
`company TelecommNet Consulting Inc., where I develop network communication
`
`technologies and provide research and consulting in advanced technologies, mainly
`
`in computer networking and Internet technologies. In addition, I have served as a
`
`Co-Founder and Chief Technology Officer (CTO) of VisuMenu, Inc. from 2010 to
`
`
`
`- 4 -
`
`
`
`

`

`
`the present, where I design and develop architecture of visual IVR technologies for
`
`U.S. Patent No. 8,724,622
`
`smartphones and wireless mobile devices in the area of network communications.
`
`12.
`
`I have worked on wireless and cellular systems using a variety of
`
`modulation technologies including time-division multiple-access (TDMA), code-
`
`division multiple-access (CDMA), and orthogonal frequency-division multiplexing
`
`(OFDM). I have additionally worked on various projects involving the transmission
`
`and streaming of digital media content.
`
`13. The above outline of my experience with communications systems is
`
`not comprehensive of all of my experience over my years of technical experience.
`
`Additional details of my background are set forth in my curriculum vitae, attached
`
`as Exhibit A to this Declaration, which provides a more complete description of my
`
`educational background and work experience.
`
`III. MATERIALS CONSIDERED AND INFORMATION RELIED UPON
`14. The analysis that I provide in this Declaration is based on my education
`
`and experience in the telecommunications and information technology industries, as
`
`well as the documents I have considered, including U.S. Patent No. 8,724,622
`
`(“’622” or “’622 Patent”) Ex. 1001, which states on its face that it issued from an
`
`application filed on July 11, 2012, in turn claiming priority back to an earliest
`
`application filed on December 18, 2003. For purposes of this Declaration, I have
`
`assumed December 18, 2003 as the effective filing date for the ’622 Patent.
`
`
`
`- 5 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`15.
`
`In preparing this declaration, I have reviewed the following materials,
`
`each of which is the sort of material that experts in my field would rely upon when
`
`forming their opinions. I also considered other background materials that are
`
`referenced in this declaration.
`
`No.
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`
`1007
`1008
`1009
`
`1010
`1011
`1012
`
`1013
`
`Description
`U.S. Patent No. 8,724,622 (“the ’622 Patent”)
`File History of U.S. Patent No. 8,724,622
`Reserved
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney
`et al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (“Zydney”) (with line numbers added)
`Excerpts
`from DEBRA LITTLEJOHN SHINDER, COMPUTER
`NETWORKING ESSENTIALS
`(Cisco Press,
`January 2002)
`(“Shinder”)
`U.K. Patent Application No. 0106915.2 to Andrew David
`Kirkwood (filed March 20, 2001, published February 20, 2002 as
`GB 2 365 664 A) (“Kirkwood”)
`U.S. Patent Pub. No. 2002/0112167 (“Boneh”)
`U.S. Patent No. 8,150,922 (“Griffin”)
`R. Droms, Dynamic Host Configuration Protocol, Internet
`Engineering Task Force, Request for Comments 2131
`Harry Newton, Newton’s Telecom Dictionary (16th. ed. 2000)
`John Rittinghouse, IM Instant Messaging Security (1st ed. 2005)
`Dreamtech Software Team, Instant Messaging Systems: Cracking
`the Code (2002)
`Upkar Varshney et al., Voice over IP, Communication of the
`ACM (2002, Vol. 45, No. 1)
`
`
`
`- 6 -
`
`
`
`

`

`U.S. Patent No. 8,724,622
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`1020
`
`Iain Shigeoka, Instant Messaging in Java: Jabber Protocols
`(2002)
`Trushar Barot & Eytan Oren, Guide to Chat Apps, TOW Center
`for Digital Journalism, Columbia University (2005)
`Samir Chatterjee et al., Instant Messaging and Presence
`Technologies for College Campuses, IEEE Network (Nov. 9,
`2005)
`Daniel Minoli & Emma Minoli, Delivering Voice Over IP
`Networks (2nd ed. 2002)
`Thomas Porter & Michael Gough, How to Cheat at VoIP Security
`(1st ed. 2007)
`Harry Newton, Newton’s Telecom Dictionary (18th. ed. 2002)
`Justin Berg, The IEEE 802.11 Standardization Its History,
`Specification, Implementations and Future, George Mason
`University, Technical Report Series (2011)
`1021 Wolter Lemstra & Vic Hayes, Unlicensed Innovation: The Case
`of Wi-Fi, Competition and Regulation in Network Industries
`(2008, Vol. 9, No. 2)
`1022
`U.S. Patent Application Publication No. 2003/0039340
`1023
`International Published Application No. WO 01/24036
`1024
`U.S. Patent No. 9,179,495
`1025
`U.S. Patent Application Publication No. 2005/0025080
`1026 WO 02/17650A1
`1027
`Oxford (Online) Dictionaries, Definition of “Default” (cached
`2000), https://en.oxforddictionaries.com/definition/default
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney
`et al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (as-published version without added line numbers)
`Excerpts from MICROSOFT COMPUTER DICTIONARY
`(Microsoft Press, 3d ed. 1997)
`
`1028
`
`1029
`
`- 7 -
`
`
`
`
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`1030
`
`1031
`
`1032
`
`Excerpts from MARGARET LEVINE YOUNG, INTERNET:
`THE COMPLETE REFERENCE (McGraw-Hill/Osborne, 2d ed.
`2002)
`U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October
`16, 2000, issued June 29, 2004)
`N. Borenstein et al., Request for Comments (RFC) 1521: MIME
`(Multipurpose Internet Mail Extensions) Part One: Mechanisms
`for Specifying and Describing the Format of Internet Message
`Bodies, September 1993 (“RFC 1521”)
`
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`16.
`I understand that an assessment of claims of the ’622 Patent should be
`
`undertaken from the perspective of a person of ordinary skill in the art as of the
`
`earliest claimed priority date, which I understand is December 18, 2003. I have also
`
`been advised that to determine the appropriate level of a person having ordinary skill
`
`in the art, the following factors may be considered: (1) the types of problems
`
`encountered by those working in the field and prior art solutions thereto; (2) the
`
`sophistication of the technology in question, and the rapidity with which innovations
`
`occur in the field; (3) the educational level of active workers in the field; and (4) the
`
`educational level of the inventor.
`
`17. The ’622 Patent states that the perceived problem and the purported
`
`solution are generally related to the field of Internet telephony (IP telephony). The
`
`patent states: “More particularly, the present invention is directed to a system and
`
`method for enabling local and global instant VoIP messaging over an IP network,
`
`
`
`- 8 -
`
`
`
`

`

`
`such as the Internet, with PSTN support.” (’622, 1:18-22.) The ’622 Patent purports
`
`U.S. Patent No. 8,724,622
`
`to describe a “voice messaging system (and method) for delivering instant messages
`
`over a packet switched network.” (Id., Abstract). The ’622 Patent purports to depict
`
`architectures of Internet and PSTN technologies, global and local IP networks, VoIP
`
`switches and gateways, and phone systems. The patent also purports to disclose
`
`local and global instant voice messaging servers communicating over an IP Network.
`
`In the Summary of the Invention, the applicant states: “The present invention is
`
`directed to a system and method for enabling local and global instant VoIP
`
`messaging over an IP network, such as the Internet.” (Id., 2:57-59.)
`
`18.
`
`In my opinion, a person of ordinary skill in the art as of December 2003
`
`would have possessed at least a bachelor’s degree in computer science, computer
`
`engineering, or electrical engineering with at least two years of experience in
`
`development, programming, and operation of network communication systems (or
`
`equivalent degree or experience).
`
`19. My opinions regarding the level of ordinary skill in the art are based
`
`on, among other things, my over 25 years of experience in computer science and
`
`network communications, my understanding of the basic qualifications that would
`
`be relevant to an engineer or scientist tasked with investigating methods and systems
`
`in the relevant area, and my familiarity with the backgrounds of colleagues, co-
`
`workers, and employees, both past and present.
`
`
`
`- 9 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`20. Although my qualifications and experience exceed those of the
`
`hypothetical person having ordinary skill in the art defined above, my analysis and
`
`opinions regarding the ’622 Patent have been based on the perspective of a person
`
`of ordinary skill in the art as of December 2003.
`
`V. BASIS FOR MY OPINION AND
`STATEMENT OF LEGAL PRINCIPLES
`21. My opinions and views set forth in this declaration are based on my
`
`education, training, and experience in the relevant field, as well as the materials I
`
`have reviewed for this matter, and the scientific knowledge regarding the subject
`
`matter that existed prior to December 2003.
`
`A. Claim Construction
`22.
`It is my understanding that, when construing a claim term, the claim
`
`term is given the plain and ordinary meaning that the term would have to a POSITA
`
`in view of the specification and the prosecution history.
`
`B. Anticipation
`23.
`It is my understanding that in order for a patent claim to be valid, the
`
`claimed invention must be novel. It is my understanding that if each and every
`
`element of a claim is disclosed in a single prior art reference, then the claimed
`
`invention is anticipated, and the invention is not patentable according to pre-AIA 35
`
`U.S.C. § 102 effective before March 16, 2013. In order for the invention to be
`
`anticipated, each element of the claimed invention must be described or embodied,
`
`
`
`- 10 -
`
`
`
`

`

`
`either expressly or inherently, in the single prior art reference. In order for a
`
`U.S. Patent No. 8,724,622
`
`reference to inherently disclose a claim limitation, that claim limitation must
`
`necessarily be present in the reference.
`
`C. Obviousness
`24. Counsel has advised me that obviousness under pre-AIA 35 U.S.C.
`
`§ 103 effective before March 16, 2013 is the basis for invalidity in the Petitions.
`
`Counsel has advised me that a patent claim may be found invalid as obvious if, at
`
`the time when the invention was made, the subject matter of the claim, considered
`
`as a whole, would have been obvious to a person having ordinary skill in the field of
`
`the technology (the “art”) to which the claimed subject matter belongs. I understand
`
`that the following factors should be considered in analyzing obviousness: (1) the
`
`scope and content of the prior art; (2) the differences between the prior art and the
`
`claims; and (3) the level of ordinary skill in the pertinent art. I also understand that
`
`certain other factors known as “secondary considerations” such as commercial
`
`success, unexpected results, long felt but unsolved need, industry acclaim,
`
`simultaneous invention, copying by others, skepticism by experts in the field, and
`
`failure of others may be utilized as indicia of nonobviousness. I understand,
`
`however, that secondary considerations should be connected, or have a “nexus”, with
`
`the invention claimed in the patent at issue. I understand that a person of ordinary
`
`skill in the art is assumed to have knowledge of all prior art. I understand that one
`
`
`
`- 11 -
`
`
`
`

`

`
`skilled in the art can combine various prior art references based on the teachings of
`
`U.S. Patent No. 8,724,622
`
`those prior art references, the general knowledge present in the art, or common sense.
`
`I understand that a motivation to combine references may be implicit in the prior art,
`
`and there is no requirement that there be an actual or explicit teaching to combine
`
`two references. Thus, one may take into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ to combine the known
`
`elements in the prior art in the manner claimed by the patent at issue. I understand
`
`that one should avoid “hindsight bias” and ex post reasoning in performing an
`
`obviousness analysis. But this does not mean that a person of ordinary skill in the
`
`art for purposes of the obviousness inquiry does not have recourse to common sense.
`
`I understand that when determining whether a patent claim is obvious in light of the
`
`prior art, neither the particular motivation for the patent nor the stated purpose of the
`
`patentee is controlling. The primary inquiry has to do with the objective reach of
`
`the claims, and that if those claims extend to something that is obvious, then the
`
`entire patent claim is invalid. I understand one way that a patent can be found
`
`obvious is if there existed at the time of the invention a known problem for which
`
`there was an obvious solution encompassed by the patent’s claims. I understand that
`
`a motivation to combine various prior art references to solve a particular problem
`
`may come from a variety of sources, including market demand or scientific
`
`literature. I understand that a need or problem known in the field at the time of the
`
`
`
`- 12 -
`
`
`
`

`

`
`invention can also provide a reason to combine prior art references and render a
`
`U.S. Patent No. 8,724,622
`
`patent claim invalid for obviousness. I understand that familiar items may have
`
`obvious uses beyond their primary purpose, and that a person of ordinary skill in the
`
`art will be able to fit the teachings of multiple prior art references together “like the
`
`pieces of a puzzle.” I understand that a person of ordinary skill is also a person of
`
`at least ordinary creativity. I understand when there is a design need or market
`
`pressure to solve a problem and there are a finite number of identified, predictable
`
`solutions, a person of ordinary skill has good reason to pursue the known options
`
`within his or her technical grasp. If these finite number of predictable solutions lead
`
`to the anticipated success, I understand that the invention is likely the product of
`
`ordinary skill and common sense, and not of any sort of innovation. I understand
`
`that the fact that a combination was obvious to try might also show that it was
`
`obvious, and hence invalid, under the patent laws. I understand that if a patent claims
`
`a combination of familiar elements according to known methods, the combination is
`
`likely to be obvious when it does no more than yield predictable results. Thus, if a
`
`person of ordinary skill in the art can implement a predictable variation, an invention
`
`is likely obvious. I understand that combining embodiments disclosed near each
`
`other in a prior art reference would not ordinarily require a leap of inventiveness.
`
`
`
`
`
`
`
`- 13 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`1. Motivation to Combine
`25.
`I have been advised by counsel that obviousness may be shown by
`
`demonstrating that it would have been obvious to modify what is taught in a single
`
`piece of prior art to create the patented invention. Obviousness may also be shown
`
`by demonstrating that it would have been obvious to combine the teachings of more
`
`than one item of prior art. I have been advised by counsel that a claimed invention
`
`may be obvious if some teaching, suggestion, or motivation exists that would have
`
`led a person of ordinary skill in the art to combine the invalidating references.
`
`Counsel has also advised me that this suggestion or motivation may come from the
`
`knowledge of a person having ordinary skill in the art, or from sources such as
`
`explicit statements in the prior art. Alternatively, any need or problem known in the
`
`field at the time and addressed by the patent may provide a reason for combining
`
`elements of the prior art. Counsel has advised me that when there is a design need
`
`or market pressure, and there are a finite number of predictable solutions, a person
`
`of ordinary skill may be motivated to apply common sense and his skill to combine
`
`the known options in order to solve the problem. The following are examples of
`
`approaches and rationales that may be considered in determining whether a piece of
`
`prior art could have been combined with other prior art or with other information
`
`within the knowledge of a person having ordinary skill in the art:
`
`
`
`- 14 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`(1) Some teaching, motivation, or suggestion in the prior art that would have
`
`led a person of ordinary skill to modify the prior art reference or to combine prior
`
`art reference teachings to arrive at the claimed invention;
`
`(2) Known work in one field of endeavor may prompt variations of it for use
`
`in the same field or a different field based on design incentives or other market forces
`
`if the variations would have been predictable to a person of ordinary skill in the art;
`
`(3) Combining prior art elements according to known methods to yield
`
`predictable results;
`
`(4) Applying a known technique to a known device, method, or product ready
`
`for improvement to yield predictable results;
`
`(5) Applying a technique or approach that would have been “obvious to try”
`
`(choosing from a finite number of identified, predictable solutions, with a reasonable
`
`expectation of success);
`
`(6) Simple substitution of one known element for another to obtain predictable
`
`results; or
`
`(7) Use of a known technique to improve similar products, devices, or
`
`methods in the same way.
`
`VI. RELEVANT TECHNOLOGY BACKGROUND
`26. The ’622 Patent, entitled “System and method for instant VoIP
`
`messaging,” purports to disclose and claim a system and method for delivering
`
`
`
`- 15 -
`
`
`
`

`

`
`instant voice messages over a packet-switched network. (Ex. 1001, Abstract.) In
`
`U.S. Patent No. 8,724,622
`
`this section, I provide a brief background discussion on technologies pertinent to the
`
`’622 Patent prior to December 2003.
`
`A. The Internet and TCP/IP Protocol Suite
`27. The Internet is the global packet-switched network based on a protocol
`
`suite known as Transmission Control Protocol/Internet Protocol (TCP/IP). The
`
`Internet originated in the late 1960s as a Department of Defense project known as
`
`ARPANET and, by the 1980s, was in use by a large number of universities and
`
`organizations. As the Internet advanced in size and speed over the years, a vast
`
`amount of research and development was invested to develop technologies and
`
`standards for enabling voice communications over IP networks (VoIP). These
`
`significant investments in research and development yielded approved standards and
`
`large-scale implementations based on these standards prior to the year 2003. Some
`
`of these key standards are discussed in the following sections.
`
`28. The Internet is based on a globally unique address space based on the
`
`Internet Protocol (IP)1 and is able to support communications using the TCP/IP suite
`
`or its subsequent extensions/follow-ons. In addition, the Internet provides, uses or
`
`makes accessible, either publicly or privately, high level services layered on the
`
`
`1 See IETF Network Working Group RFC 791 (Sept. 1981), RFC 1726 (Dec. 1994).
`
`
`
`- 16 -
`
`
`
`

`

`
`communications infrastructure. The TCP/IP protocol suite includes many different
`
`U.S. Patent No. 8,724,622
`
`standard protocols including IP, TCP, UDP, VoIP, RTP, FTP, BGP, SMTP, DHCP,
`
`HTTP, and others. Internet standards are typically published in the form of
`
`documents known as “Requests for Comments” (RFCs), which are today maintained
`
`by the Internet Engineering Task Force (IETF).
`
`B. Voice over IP (VoIP)
`29. Voice over IP (VoIP) is a family of standard technologies which allows
`
`IP networks to be used for voice applications. VoIP generally involves the
`
`transmission of voice “data packets” from a device at one IP address over the Internet
`
`to a device at another IP address. The ability to transmit voice data packets from
`
`one IP address to another over the Internet is one of the background technologies
`
`relevant to the ’622 Patent and the claims at issue, which recite communication over
`
`a “packet-switched network.”
`
`30. The technologies that enabled VoIP and implementation of applications
`
`based on these technologies were available long before the ’622 Patent’s filing date.
`
`For example, an early public domain VoIP application called NetFone (Speak
`
`Freely) was released in 1991 by Autodesk. A commercial internet VoIP application
`
`was released by VocalTec in February of 1995.2
`
`
`2 See William M. Bulkeley, Hello World! Audible chats On the Internet, WALL
`
`
`
`
`
`- 17 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`31. The real-time transport protocol (RTP) is an Internet protocol for the
`
`transfer of real-time data including voice and video. Version 1.0 of RTP was
`
`published in the early 1990s, and it was approved as a standard with the publication
`
`of RFC 1889 in January 1996.
`
`32. RTP runs on top of an IP transport (depicted in the figure below).
`
`
`
`
`Some relevant points of the protocol design are quoted from the standard: 3
`
`
`This document defines RTP, consisting of two closely linked parts:
`
`The real-time transport protocol (RTP), to carry data that
`has real-time properties.
`the RTP control protocol (RTCP), to monitor the quality
`of service and to convey information about the participants
`in an on-going session. The latter aspect of RTCP may be
`sufficient for "loosely controlled" sessions, i.e., where
`there is no explicit membership control and set-up, but it
`
`
`STREET JOURNAL, Feb. 10, 1995.
`
`3 All emphasis in quoted text in this Declaration has been added, unless otherwise
`
`noted.
`
`
`
`- 18 -
`
`
`
`

`

`
`
`U.S. Patent No. 8,724,622
`
`is not necessarily intended to support all of an application's
`control communication requirements. This functionality
`may be fully or partially subsumed by a separate session
`control protocol, which is beyond the scope of this
`document.
`Source: RFC 1889, § 1 (available at https://www.ietf.org/rfc/rfc1889.txt).
`
`Definitions
`RTP payload: The data transported by RTP in a packet,
`for example audio samples or compressed video data. The
`payload format and interpretation are beyond the scope of
`this document.
`RTP packet: A data packet consisting of the fixed RTP
`header, a possibly empty list of contributing sources (see
`below), and the payload data. Some underlying protocols
`may require an encapsulation of the RTP packet to be
`defined. Typically, one packet of the underlying protocol
`contains a single RTP packet, but several RTP packets
`may be contained if permitted by the encapsulation
`method (see Secti