IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Trevor A. Fiatal, et al.
`In re Patent of:
`U.S. Patent No.:
`10,110,534 Attorney Docket No.: 39521-0077IP1 / -0077IP2
`October 23, 2018
`Issue Date:
`Appl. Serial No.: 15/338,238
`Filing Date:
`October 28, 2016
`Title:
`CONNECTION ARCHITECTURE FOR A MOBILE NETWORK
`
`DECLARATION OF MR. EDWARD R. TITTEL
`
`1
`
`APPLE 1003
`
`

`

`TABLE OF CONTENTS
`
`
`
`Professional Societies, Committee Memberships, and Teaching Experience
`
`ASSIGNMENT ................................................................................................. 4
`I.
`II. QUALIFICATIONS ......................................................................................... 4
`A. General Work Experience and Professional Background ............................. 4
`B. Education ....................................................................................................... 6
`C.
` ....................................................................................................................... 6
`D.
`Publications ................................................................................................... 7
`III. LEGAL PRINCIPLES .................................................................................... 10
`A. Anticipation ................................................................................................. 10
`B. Obviousness ................................................................................................. 11
`C. Claim Construction Standard ...................................................................... 15
`IV. PERSON OF ORDINARY SKILL IN THE ART ......................................... 16
`V. MATERIALS CONSIDERED ....................................................................... 17
`VI. BACKGROUND OF THE ’534 PATENT ..................................................... 19
`A.
`Subject Matter Overview............................................................................. 19
`B.
`File History of the ’534 Patent .................................................................... 22
`VII. CONSTRUED TERMS .................................................................................. 28
`VIII. OVERVIEW OF CONCLUSIONS FORMED .............................................. 30
`IX. OVERVIEW OF PRIOR ART REFERENCES ............................................. 31
`A.
`Spacey .......................................................................................................... 31
`B. McBrearty .................................................................................................... 36
`C. Chesley ........................................................................................................ 39
`
`
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`2
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`

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`D. Boyle ............................................................................................................ 41
`E.
`Fox ............................................................................................................... 44
`F. Hawkins ....................................................................................................... 46
`G. Gilmore ........................................................................................................ 50
`X. ANALYSIS OF COMBINATION BASED ON SPACEY AND
`MCBREARTY ................................................................................................ 52
`XI. ANALYSIS OF COMBINATION BASED ON SPACEY, MCBREARTY,
`AND CHESLEY ............................................................................................. 83
`XII. ANALYSIS OF COMBINATION BASED ON BOYLE AND FOX ........... 93
`XIII. ANALYSIS OF COMBINATION BASED ON BOYLE, FOX, AND
`HAWKINS ....................................................................................................133
`XIV. ANALYSIS OF COMBINATION BASED ON BOYLE AND GILMORE
` .......................................................................................................................140
`XV. ANALYSIS OF COMBINATION BASED ON BOYLE, GILMORE, AND
`HAWKINS ....................................................................................................148
`XVII. ADDITIONAL REMARKS ...................................................................150
`
`
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`
`3
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`

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`I, Edward R. Tittel, of Round Rock, Texas, declare that:
`
`I.
`
`ASSIGNMENT
`1.
`I have been retained on behalf of Apple Inc. (“Apple” or “Petitioner”)
`
`to offer technical opinions related to U.S. Patent No. 10,110,534 (the ’534 patent)
`
`(Ex-1001). I understand that Apple is requesting that the Patent Trial and Appeal
`
`Board (“PTAB” or “Board”) institute an inter partes review (“IPR”) proceeding of
`
`the ’534 patent.
`
`2.
`
`I have been asked to provide my independent analysis of the ’534
`
`patent in light of the prior art publications cited below.
`
`3.
`
`I am not, and never have been, an employee of Apple. I received no
`
`compensation for this declaration beyond my normal hourly compensation based
`
`on my time actually spent analyzing the ’534 patent, the prior art publications cited
`
`below, and issues related thereto, and I will not receive any added compensation
`
`based on the outcome of any IPR or other proceeding involving the ’534 patent.
`
`II. QUALIFICATIONS
`4.
`I am over the age of 18 and am competent to write this declaration. I
`
`have personal knowledge, or have developed knowledge of these technologies
`
`based upon education, training, or experience, of the matters set forth herein.
`A. General Work Experience and Professional Background
`5.
`I am currently a business and computing technology author and
`
`consultant, focusing on information security, markup languages, web development,
`
`
`
`4
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`

`

`e-commerce, and related technologies. I have more than thirty (30) years of
`
`technical experience in the computer and engineering field, including experience as
`
`a software developer. I have also worked as a course developer and training
`
`manager, a technical marketing manager, a director of technical marketing, a
`
`technical evangelist, a networking consultant, and editor-in-chief for an official
`
`company website. All this experience is covered in my professional résumé
`
`(attached as Appendix A), which provides a more detailed recitation of my
`
`employment history and tenure at various jobs.
`
`6.
`
`I have held numerous technical positions in the computer industry,
`
`including at NetQoS, Inc. (2006–2007) and Novell, Inc. (1988–1994). I worked as
`
`an instructor for the Adult & Continuing Education program at Austin Community
`
`College from 1997 to 2001, where I taught Introductory & Intermediate HTML
`
`(1997–2001), Introductory & Advanced TCP/IP for WebMasters (1999–2001),
`
`Windows NT Administration for WebMasters (1999–2001), and Networking for
`
`WebMasters (2000–2001). I am conversant with several computer languages (for
`
`example, C, C++, FORTRAN, Pascal, Perl, and Java), scripting languages (various
`
`Unix/Linux shells, JavaScript, PowerShell, and TcL), markup languages (HTML,
`
`XHTML, XML, and numerous XML applications), operating systems (NetWare;
`
`Windows NT; Windows 2000, XP, Vista, Windows 7, 8, and 10, and Windows
`
`Server 2003, 2008, 2012, and 2016), and network communication protocols
`
`
`
`5
`
`

`

`(TCP/IP IPv4 and IPv6, plus numerous older stacks including IPX/SPX,
`
`NetBIOS/NetBEUI, and AppleTalk).
`B.
`Education
`7.
`I graduated from Princeton University with an AB in Anthropology in
`
`1973, cum laude and Phi Beta Kappa, having attended as a National Merit Scholar.
`
`I studied at The University of Texas at Austin from 1976 to 1982, during which
`
`time I earned an MA in Anthropology in 1979, and a Bachelor’s Equivalency in
`
`Computer Science in 1981. I also completed all course requirements for a PhD in
`
`Anthropology along with the comprehensive exams, and accumulated at least 18
`
`hours toward a Master’s in Computer Science by May 1982.
`C.
`Professional Societies, Committee Memberships, and Teaching
`Experience
`8.
`I have been involved in coordinated research efforts with my peers in
`
`the field and with professional societies in the computer science field. I have held
`
`several committee memberships throughout my career.
`
`9.
`
`I was a member of the Program Committee for Education at Interop
`
`from 1993 until 2000, during which time I researched course topics, helped set the
`
`curriculum, and recruited faculty. I also taught several courses on HTML,
`
`Windows security, and Windows performance optimization as a member of the
`
`Interop Faculty from 1996 to 2001.
`
`
`
`6
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`

`

`10.
`
`I was an adjunct member of the Program Committee for The Internet
`
`Security Conference (TISC) from 1998 to 2001, where I also helped research
`
`course topics and set the curriculum. I taught a course on Windows Server security
`
`topics, with an emphasis on the web, on that faculty from 1998 to 2001 as well.
`
`11.
`
`I was on the adjunct faculty for Austin Community College from 1997
`
`to 2001 in the Adult and Continuing Education program, wherein I taught courses
`
`on HTML, TCP/IP, Windows NT Server administration, and networking, all aimed
`
`at practicing and aspiring webmasters. During this time frame, I also developed
`
`and wrote textbooks on networking, TCP/IP, and various versions of Windows
`
`Server and desktop operating systems (among other similar topics) aimed at the
`
`community college market for Course Technology, Inc.
`D.
`Publications
`12.
`I have contributed to more than 100 computer textbooks and trade
`
`books, thousands of articles, and numerous white papers, technical briefs, and
`
`online courses. Most recently, I finished Guide to TCP/IP: IPv6 and IPv4, Fifth
`
`Edition (Cengage Learning, June 2016). I also completed Beginning HTML5 and
`
`CSS3 For Dummies (Wiley Publishing, Inc., September 2013); this is the
`
`fourteenth edition of this title, whose first edition appeared in 1995).
`
`13. Some specific book titles I authored or contributed to that are relevant
`
`to the subject matter of the ’534 patent include Building Web Commerce Sites
`
`
`
`7
`
`

`

`(IDG Books Worldwide, December 1996), The CGI Bible (IDG Books Worldwide,
`
`December 1996), Foundations of WWW Programming, with HTML and CGI (IDG
`
`Books Worldwide, August 1995), XML For Dummies, 4th Edition (John Wiley &
`
`Sons, May 2005; 1st edition published May 11, 1998), XML In Record Time
`
`(Sybex Books, December 1998), XML Schemas (Sybex Books, January 2002),
`
`HTML Style Sheets Design Guide (The Coriolis Group, January 1998), Dynamic
`
`HTML Black Book (The Coriolis Group, February 1998), Mastering XHTML
`
`Premium Edition (Sybex Books, November 2001), More HTML for Dummies
`
`(IDG Books Worldwide, 2nd ed., 1997), The Intranet Bible (John Wiley & Sons,
`
`March 1997), Schaum’s Easy Outline of XML (McGraw-Hill, May 2002), The
`
`World Wide Web Encyclopedia, CD-ROM (Charles River Media, January 1996),
`
`Discover Java (Wiley Publishing, March 1997), The 60-Minute Guide to Java
`
`(IDG Books Worldwide, October 1995), and Visual Café for Java Explorer:
`
`Database Development Edition (Coriolis Group, February 1998).
`
`14.
`
`I have also worked and published extensively about TCP/IP
`
`networking protocols and services throughout my professional career. I learned
`
`TCP/IP protocol analysis on the job, starting in 1988 at Excelan (acquired in 1989
`
`by Novell). Working as a network consultant, I carried a Compaq Portable II PC
`
`running LANalyzer software to capture and analyze TCP/IP packets for diagnosis
`
`and troubleshooting. I have written numerous articles about TCP/IP protocol
`
`
`
`8
`
`

`

`analysis for various websites, and have been the principal author of a community
`
`college textbook called Guide to TCP/IP (now in its 5th edition, published in
`
`2017). The first edition of that book appeared in October 2001, and shows a
`
`copyright date of 2002 (see Amazon product page1). Starting with the freeware
`
`protocol analysis tool initially known as Ethereal, now known as Wireshark, this
`
`textbook teaches TCP/IP networking protocols and fundamentals through off-the-
`
`wire packet capture, analysis and exposition.
`
`15. Overall, I have contributed to at least 20 books for each of the
`
`following publishers: Coriolis, J. Wiley and Sons, Course Technology, and
`
`Pearson Publishing, and a lesser number of titles for other publishers that include
`
`Syngress Media (Elsevier), Que, Academic Press, Charles River Media,
`
`Osborne/McGraw-Hill, Addison-Wesley, Sybex, and others.
`
`16.
`
`I am a regular contributor/expert for numerous TechTarget.com
`
`websites that focus on security, networking, Windows systems, web services, and
`
`IT certification. I blog three times weekly on Windows enterprise desktop topics
`
`for TechTarget and Win10.Guru, once a week on IT certification and career topics
`
`for GoCertify.com, and intermittently for CompTIA and similar outlets. In the past
`
`
`1 Guide to TCP/IP 1st edtion: https://www.amazon.com/Guide-TCP-IP-Laura-
`
`Chappell/dp/0619035307/, accessed on 11/4/2019.
`
`
`
`9
`
`

`

`12 months, I have contributed online content to CompTIA.org, Business.com,
`
`Business News Daily’s website, Network World’s website, CIO Magazine’s
`
`website, Global Knowledge, numerous TechTarget websites, and other online
`
`content providers.
`
`17.
`
`In all, I have written widely and voluminously for a broad range of
`
`computing publications and computing-oriented websites. My curriculum vitae
`
`(attached as Appendix B) provides as comprehensive a record of these
`
`publications as I have been able to assemble.
`
`III. LEGAL PRINCIPLES
`18.
`In forming my analysis and conclusions expressed in this declaration,
`
`I have applied the legal principles described in the following paragraphs, which
`
`were provided to me by counsel for the Petitioner.
`A. Anticipation
`19.
`I understand that patents or printed publications that qualify as prior
`
`art can be used to invalidate a patent claim as anticipated or as obvious.
`
`20.
`
`I understand that, once the claims of a patent have been properly
`
`construed, the second step in determining anticipation of a patent claim requires a
`
`comparison of the properly construed claim language to the prior art on a
`
`limitation-by-limitation basis.
`
`
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`10
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`

`21.
`
`I understand that a prior art reference “anticipates” an asserted claim,
`
`and thus renders the claim invalid, if all limitations of the claim are disclosed in
`
`that prior art reference, either explicitly or inherently (i.e., necessarily present).
`
`22.
`
`I understand that anticipation in an inter partes review must be proven
`
`by a preponderance of the evidence.
`B. Obviousness
`23.
`I understand that even if a patent is not anticipated, it is still invalid if
`
`the differences between the claimed subject matter and the prior art are such that
`
`the subject matter as a whole would have been obvious to a POSITA at the time
`
`the invention was made.
`
`24.
`
`I understand that a person of ordinary skill in the art at the time of the
`
`claimed invention provides a reference point from which the prior art and claimed
`
`invention should be viewed. This reference point is applied instead of someone
`
`using his or her own insight or hindsight in deciding whether a claim is obvious.
`
`25.
`
`I also understand that an obviousness determination includes the
`
`consideration of various factors such as: (1) the scope and content of the prior art,
`
`(2) the differences between the prior art and the asserted claims, (3) the level of
`
`ordinary skill in the pertinent art, and (4) the existence of secondary considerations
`
`such as commercial success, long-felt but unresolved needs, failure of others, and
`
`so forth.
`
`
`
`11
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`

`26.
`
`I understand that an obviousness evaluation can be based on a
`
`combination of multiple prior art references. I understand further that prior art
`
`references themselves may provide a suggestion, motivation, or reason to combine,
`
`but that at other times the linkage between two or more prior art references is
`
`simple common sense.
`
`27.
`
`I further understand that obviousness analysis recognizes that market
`
`demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references may be supplied by the direction of the
`
`marketplace.
`
`28.
`
`I understand that if a technique has been used to improve one device,
`
`and a person of ordinary skill in the art would recognize that it would improve
`
`similar devices in the same way, using the technique is obvious unless its actual
`
`application is beyond his or her skill.
`
`29.
`
`I also understand that practical and common sense considerations
`
`should guide a proper obviousness analysis, because familiar items may have
`
`obvious uses beyond their primary purposes. I further understand that a person of
`
`ordinary skill in the art looking to overcome a problem through invention will
`
`often be able to fit together the teachings of multiple publications. I understand that
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill in the art would employ under the circumstances.
`
`
`
`12
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`

`30.
`
`I understand that a particular combination may be proven obvious
`
`merely by showing that it was obvious to try the combination. For example, when
`
`there is a design need or market pressure to solve a problem and there are a finite
`
`number of identified, predictable solutions, a POSITA has good reason to pursue
`
`the known options within his or her technical grasp because the result is likely the
`
`product not of innovation but of ordinary skill and common sense.
`
`31. The combination of familiar elements according to known methods is
`
`likely to be obvious when it does no more than yield predictable results. When a
`
`work is available in one field of endeavor, design incentives and other market
`
`forces can prompt variations of it, either in the same field or a different one. If a
`
`person of ordinary skill in the art can implement a predictable variation, the patent
`
`claim is likely obvious.
`
`32.
`
`It is further my understanding that a proper obviousness analysis
`
`focuses on what was known or obvious to a POSITA, not just the patentee.
`
`Accordingly, I understand that any need or problem known to those of ordinary
`
`skill in the field of endeavor at the time of invention and addressed by the patent
`
`can provide a reason for combining the elements in the manner claimed.
`
`33.
`
`I understand that a claim can be obvious in light of a single reference,
`
`without the need to combine references, if the elements of the claim that are not
`
`
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`13
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`

`found explicitly or inherently in the reference can be supplied by the common
`
`sense of one of ordinary skill in the art.
`
`34.
`
`I understand that secondary indicia of non-obviousness may include
`
`(1) a long felt but unmet need in the prior art that was satisfied by the invention of
`
`the patent; (2) commercial success of processes covered by the patent; (3)
`
`unexpected results achieved by the invention; (4) praise of the invention by others
`
`skilled in the art; (5) taking of licenses under the patent by others; (6) deliberate
`
`copying of the invention; (7) failure of others to find a solution to the long felt
`
`need; and (8) skepticism by experts. I understand that evidence of secondary
`
`indicia of non-obviousness, if available, should be considered as part of the
`
`obviousness analysis.
`
`35.
`
`I also understand that there must be a relationship between any such
`
`secondary considerations and the invention. I further understand that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`36.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where a person of ordinary skill in the art having the understanding and
`
`knowledge reflected in the prior art and motivated by the general problem facing
`
`the inventor, would have been led to make the combination of elements recited in
`
`the claims. Under this analysis, the prior art references themselves, or any need or
`
`
`
`14
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`

`problem known in the field of endeavor at the time of the invention, can provide a
`
`reason for combining the elements of multiple prior art references in the claimed
`
`manner.
`
`37.
`
`I understand that obviousness in an inter partes review must be
`
`proven by a preponderance of the evidence.
`C. Claim Construction Standard
`38.
`I understand that terms appearing in the patent claims are to be
`
`interpreted according to their “ordinary and customary meaning” in an inter partes
`
`review proceeding. In determining the ordinary and custom meaning, the words of
`
`a claim are first given their plain meaning as they would have been understood by
`
`a person of ordinary skill in the art at the time of the alleged invention. The
`
`structure of the claims may breathe additional meaning into the claims, and the
`
`specification and file history also may be used to inform the meaning of a claim
`
`term insofar as the plain meaning cannot be understood. I understand that even
`
`treatises and dictionaries may be consulted, albeit under limited circumstances, to
`
`determine the meaning attributed by a person of ordinary skill in the art to a claim
`
`term at the time of the alleged invention. I have followed this approach in my
`
`analysis, and have applied the ordinary and customary meaning of those terms
`
`throughout my analysis in this declaration.
`
`
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`15
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`39.
`
`I understand that the words of the claims should be interpreted as they
`
`would have been understood by a person of ordinary skill in the art at the time the
`
`alleged invention was made (not today). Because I do not know at what date the
`
`alleged invention was made, I have used the earliest claimed priority date of
`
`the ’534 patent—January 8, 2002—as the date of the invention for the reasons
`
`explained below in Section IV. However, the plain meanings/interpretations that I
`
`employed in my analysis below would have also been correct if the date of
`
`invention was anywhere from the early 2000s to the mid-2010s (consistent with the
`
`actual filing date of the ’534 patent of October 28, 2016).
`
`IV. PERSON OF ORDINARY SKILL IN THE ART
`40.
`I have been informed that a person of ordinary skill in the art is a
`
`hypothetical person who is presumed to have the skill and experience of an
`
`ordinary worker in the field at the time of the alleged invention. Based on my
`
`knowledge and experience in the field and my review of the ’534 patent and file
`
`history, I believe that a person of ordinary skill in the art in this matter would have
`
`had a bachelor’s degree in computer science, computer engineering, or an
`
`equivalent degree, and commensurate industry experience of at least two years’ in
`
`computer programming and software development, including the development of
`
`software for communication with other computers over a network. Additional
`
`
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`16
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`education related to networking protocols and services, web site development, or
`
`additional work experience in the field, may compensate for a deficit in the other.
`
`41. My analysis and conclusions as expressed herein are based on the
`
`perspective of a person of ordinary skill in the art having this level of knowledge
`
`and skill as of the date of the alleged invention of the’534 patent (“POSITA”). I
`
`have applied January 8, 2002, as the date of the alleged invention of the ’534
`
`patent. However, my analysis of the prior art and the conclusions I have formed as
`
`set forth herein would also apply even if the date of the alleged invention as
`
`claimed was anywhere from the early 2000s to the mid-2010s (consistent with the
`
`actual filing date of the ’534 patent of October 28, 2016).
`
`42. Although my qualifications and experience exceed those of the
`
`hypothetical POSITA defined above, my analysis and opinions regarding the ’534
`
`patent is based on the perspective of a POSITA as of January 8, 2002.
`
`V. MATERIALS CONSIDERED
`43. My analysis and conclusions set forth in this declaration are based on
`
`my educational background and experiences in the field (see Section II). Based on
`
`my above-described experience, I believe that I am considered to be an expert in
`
`the field. Also, based on my experiences, I understand and know of the capabilities
`
`of persons of ordinary skill in the field during the early 2000s and specifically
`
`during the time leading up to the earliest claimed priority date of the ’534 patent
`
`
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`17
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`(January 8, 2002), and I taught, participated in organizations, and worked closely
`
`with many such persons in the field during that time frame.
`
`44. As part of my independent analysis for this declaration, I have
`
`considered the following: the background knowledge/technologies that were
`
`commonly known to persons of ordinary skill in this art during the time before the
`
`earliest claimed priority date for the ’534 patent; my own knowledge and
`
`experiences gained from my work experience in the field of the ’534 patent and
`
`related disciplines; and my experience in working with others involved in this field
`
`and related disciplines.
`
`45.
`
`In addition, I have analyzed the following publications and materials:
`
` U.S. Patent No. 10,110,534 to Fiatal, et al. (EX-1001, “the ’534 patent”)
`
` Excerpts from the Prosecution File History of the ’534 Patent (EX-1002,
`“the File History”)
`
` U.S. Pat. App. Pub. No. 2002/0038371 (EX-1004, “Spacey”)
`
` U.S. Pat. No. 6,744,452 (EX-1005, “McBrearty”)
`
` U.S. Pat. No. 7,007,083 (EX-1006, “Chesley”)
`
` U.S. Pat. No. 6,138,158 (EX-1007, “Boyle”)
`
` U.S. Pat. No. 6,421,781 (EX-1008, “Fox”)
`
` U.S. Pat. App. Pub. No. 2001/0032254 (EX-1009, “Hawkins”)
`
` U.S. Pat. No. 7,334,126 (EX-1010, “Gilmore”)
`
`
`
`18
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`

` U.S. Pat. No. 6,981,041 (EX-1011, “Araujo”)
`
` U.S. Pat. No. 7,801,959 (EX-1012, “Lennie”)
`
` HDTP Specification v1.1 (July 15, 1997) (EX-1013, “HDTP Specification”)
`
` IEEE 100: The Authoritative Dictionary of IEEE Standards Terms, 7th Ed.
`(2000) (“IEEE Dictionary”) (selected excerpts) (EX-1014, “IEEE
`Dictionary”)
`
` W. Richard Stevens, TCP/IP Illustrated: The Protocols (Vol. 1) (1994) (EX-
`1015, “Stevens”)
`
` Edward Tittel et al., More HTML For Dummies (1996) (EX-1016, “More
`HTML For Dummies”)
`
`46. Although this declaration refers to certain portions of the cited
`
`references for the sake of brevity, it should be understood that these are examples,
`
`and that one of ordinary skill in the art would have viewed the references cited
`
`herein in their entireties and in combination with other references cited herein or
`
`cited within the references themselves. The references used in this declaration,
`
`therefore, should be viewed as being incorporated herein in their entireties.
`
`VI. BACKGROUND OF THE ’534 PATENT
`A.
`Subject Matter Overview
`47. The ’534 patent describes a “communication architecture” that
`
`facilitates communications between mobile devices in a mobile network and client
`
`modules in an enterprise network. See EX-1001, 1:61-63, 2:34-3:9, Abstract,
`
`FIGS, 1, 2, 6. For context, I have provided below an annotated version of the ’534
`
`
`
`19
`
`

`

`patent’s Figure 1 that shows a correspondence of disclosed elements to claimed
`
`features in the patent:
`
`
`
`EX-1001, FIG. 1 (annotated).
`
`48. Mobile device 21 operates in a mobile network 14 and a personal
`
`computer 38 operates in a private enterprise network 18, which is protected by a
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`firewall 31. EX-1001, 2:46-61. A communication management system 16 is
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`situated between networks 14 and 18, and includes a management server 28 to
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`which the mobile device 21 and personal computer 38 can both connect. Id., 2:3-9.
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`Through this configuration, the mobile device 21 and personal computer 38 can
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`20
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`exchange data (e.g., transactions) with each other through their respective
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`connections 23 and 25 to the management server 28. Id., 2:64-3:9; generally id.,
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`3:11-4:29, 7:45-8:36, FIGS. 1, 2, 6.
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`49. The ’534 patent discloses that PC 38 includes personal client software
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`40, and client 40 is programmed to initiate and continuously hold open connection
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`25 to management server 28. Id., 3:36-4:16. When mobile device 21 is caused to
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`check for new emails, it initiates a connection 23 to the management server 28 and
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`sends a transaction (e.g., a “first message”) to the management server that indicates
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`a request to view emails in the user’s mailbox. Id., (“[T]he mobile device 21 may
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`send a transaction request 62 to the personal client 40 to view emails in the users
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`mailbox 60. The transaction request 62 is sent from the mobile device 21 to the
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`management server 28 over the mobile connection 23.”). In response, the
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`management server 28 authenticates the mobile device 21 and forwards the
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`transaction (e.g., a “second message”) to the client software 40 on personal
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`computer 38 over continuous connection 25. Id., 5:7-9. Upon receiving the
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`forwarded transaction, the client software 40 checks for any emails available in the
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`user’s account at email server 34, and if emails are identified, returns an email list
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`64 (e.g., a “third message”) to the management server 28. Id., 5:9-15. In turn, the
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`management server 28 forwards the email list 64 (e.g., a “forth message”) to the
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`mobile device 21. Id., 5:9-15, 4:61-64 (“The management server 28 … operates a
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`21
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`transactional routing engine for routing transactions between the mobile devices 21
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`and the enterprise network 18.”); see also id., 7:45-56 and FIG. 6 (describing a
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`related embodiment in which mobile device 21 performs a synchronization with
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`personal client 40 through management server 28 to obtain a latest version of email
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`or other data on email server 34).
`B.
`File History of the ’534 Patent
`50. As part of my preparation of this declaration, I reviewed the file
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`history of the ’534 patent (Ex-1002). I understand that the application that led to
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`the ’534 patent was filed on October 28, 2016, and claimed priority to applications
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`filed as early as January 8, 2002, and issued on October 23, 2018. See EX1002,
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`438.
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`51. Upon filing, and following several preliminary amendments, the
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`examiner mailed a first office action on January 27, 2017, finding that certain
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`claims lacked written description support and that independent claim 22 (which
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`later issued as claim 1 of the ’534 patent) was obvious based on Araujo (EX-1011)
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`and Lennie (EX-1012). See EX-1002, 317-328. The applicant responded by
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`amending claim 22 to delete several limitations and adding new language,
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`including language for a server operable to “receive a second connection
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`associated with the second device.” EX-1002, 267-270 (original amendment), 237-
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`241 (corrected amendment). The applicant also remarked upon portions of the
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`
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`22
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`specification that purportedly provided written description support for the claimed
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`features. Id., 243-246.
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`52.
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`In a second office action mailed January 22, 2018, the examiner again
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`contended that certain claims lacked written description and maintained the
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`obviousness rejection based on Araujo and Lennie. Id., 165-176. The applicant
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`replied to these rejections by amending claim 22 to include language for “send[ing]
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`the second message to the second device” and “wherein the first connection
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`includes a connection that is initiated by the first device, wherein the second
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`connection includes a connection that is initiated by the second device.” Id., 135-
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`143. An advisory action then followed, and the applicant filed further amendments
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`that included, in claim 22, language for “receiv[ing] a third message from the
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`second device,” “generat[ing] a fourth message,” and “send[ing] the fourth
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`message to the first device over the first connection.” Id., 118-126. I understand
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`that, at various times, the applicant represented to the examiner that the
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`application’s disclosure of management server 28 receiving a message (e.g., a
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`trigger message or a request for data stored at the mobile device 21) from PC 38
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`corresponded to the claimed “server” receiving a “first message” from a “first
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`device.” E.g., EX-1002, 272-275, 243-246. Likewise, the applicant represented that
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`the application’s disclosure of management server 28 sending a message to the
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`mobile device 21 in response to the alleged first message from PC 38 corresponded
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`
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`23
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`to the claimed “server” sending a “second message” to a “second device.” Id.
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`However, as I explained above in Section VI.A, the breadth of the claims
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`encompasses an alternative read in which mobile device 21 corresponds to the
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`“firs