IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Backholm, et al.
`In re Patent of:
`10,027,619 Attorney Docket No.: 39521-0089IP1
`U.S. Patent No.:
`July 17, 2018
`
`Issue Date:
`Appl. Serial No.: 14/609,189
`
`Filing Date:
`Jan. 29, 2015
`
`Title:
`MESSAGING CENTRE FOR FORWARDING E-MAIL
`
`DECLARATION OF PATRICK TRAYNOR, Ph.D.
`
`
`
`I, Patrick Traynor, Ph.D., of Gainesville, FL, declare that:
`
`
`
`
`
`ASSIGNMENT
`1.
`
`I have been retained as a technical expert by counsel on behalf of
`
`Petitioner Apple Inc. (“Apple” or “Petitioner”). I understand that Apple is
`
`requesting that the Patent Trial and Appeal Board (“PTAB” or “Board”) institute
`
`an inter partes review (“IPR”) proceeding of U.S. Patent No. 10,027,619 (“the
`
`’619 patent”) (APPLE-1001).
`
`2.
`
`I have been asked to provide my independent analysis of the ’619
`
`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 ’619 patent, the prior art publications cited
`
`below, and the issues related thereto, and I will not receive any added
`
`1
`
`APPLE 1003
`
`
`
`
`Backholm, et al.
`In re Patent of:
`10,027,619 Attorney Docket No.: 39521-0089IP1
`U.S. Patent No.:
`July 17, 2018
`
`Issue Date:
`Appl. Serial No.: 14/609,189
`
`Filing Date:
`Jan. 29, 2015
`
`Title:
`MESSAGING CENTRE FOR FORWARDING E-MAIL
`
`DECLARATION OF PATRICK TRAYNOR, Ph.D.
`
`
`
`I, Patrick Traynor, Ph.D., of Gainesville, FL, declare that:
`
`
`
`
`
`ASSIGNMENT
`1.
`
`I have been retained as a technical expert by counsel on behalf of
`
`Petitioner Apple Inc. (“Apple” or “Petitioner”). I understand that Apple is
`
`requesting that the Patent Trial and Appeal Board (“PTAB” or “Board”) institute
`
`an inter partes review (“IPR”) proceeding of U.S. Patent No. 10,027,619 (“the
`
`’619 patent”) (APPLE-1001).
`
`2.
`
`I have been asked to provide my independent analysis of the ’619
`
`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 ’619 patent, the prior art publications cited
`
`below, and the issues related thereto, and I will not receive any added
`
`1
`
`APPLE 1003
`
`
`
`compensation based on the outcome of any IPR or other proceeding involving the
`
`’619 patent.
`
` QUALIFICATIONS
`4. My qualifications for forming the conclusions set forth in this report
`
`are summarized here and explained in more detail in my curriculum vitae, which is
`
`attached as Appendix A, and which includes a list of publications I have authored
`
`over the course of my career.
`
`5.
`
`I received a B.S. in Computer Science from the University of
`
`Richmond in 2002 and an M.S. and a Ph.D. in Computer Science and Engineering
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`from the Pennsylvania State University in 2004 and 2008, respectively. My
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`dissertation, entitled “Characterizing the Impact of Rigidity on the Security of
`
`Cellular Telecommunications Networks,” focused on security problems that arise
`
`in cellular infrastructure when gateways to the Internet are created.
`
`6.
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`I am currently a Professor in the Department of Computer and
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`Information Science and Engineering (CISE) at the University of Florida. I was
`
`hired under the “Rise to Preeminence” Hiring campaign and serve as the Associate
`
`Chair for Research for my Department, and am the John and Mary Lou Dasburg
`
`Preeminent Chair in Engineering. Prior to joining the University of Florida, I was
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`an Associate Professor from March to August 2014 and an Assistant Professor of
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`Computer Science from 2008 to March 2014 at the Georgia Institute of
`
`2
`
`
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`Technology. I have supervised many Ph.D., M.S. and undergraduate students
`
`during the course of my career.
`
`7.
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`I am a Senior Member of the Association for Computing Machinery
`
`(ACM) and the Institute of Electrical and Electronics Engineers (IEEE). I am also
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`a member of the USENIX Advanced Computing Systems Association.
`
`8. My area of expertise is security, especially as it applies to mobile
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`systems and networks, including cellular networks. As such, I regularly teach
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`students taking my courses and participating in my research group to program and
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`evaluate software and architectures for mobile and cellular systems.
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`9.
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`I have published over 70 articles in the top journals and conferences in
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`the areas of information security, mobility and networking. Many of my results are
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`highly cited, and I have received a number of “Best Paper” Awards. I have also
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`written a book entitled Security for Telecommunications Networks, which is used
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`in wireless and cellular security courses at a number of top universities.
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`10.
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`I serve as an Associate Editor for the ACM Transactions on Privacy
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`and Security (TOPS), have been the Program Chair for seven conferences and
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`workshops, and have served as a member of the Program Committee for over 50
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`different conferences and workshops.
`
`11.
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`I have received numerous awards for research and teaching, including
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`being named a Kavli Fellow (2017), a Fellow of the Center for Financial Inclusion
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`3
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`
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`(2016) and a Research Fellow of the Alfred P. Sloan Foundation (2014), won the
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`Lockheed Inspirational Young Faculty Award (2012), was awarded a National
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`Science Foundation (NSF) CAREER Award (2010), and the Center for the
`
`Enhancement of Teaching and Learning at Georgia Tech’s “Thanks for Being a
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`Great Teacher” Award (2009, 2012, 2013).
`
`12.
`
`I was a co-Founder and Research Fellow for the private start-up,
`
`Pindrop Security, from spring 2012 to spring 2014. Pindrop provides anti-fraud
`
`and authentication solutions for Caller-ID spoofing attacks in enterprise call
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`centers by creating and matching acoustic fingerprints.
`
`13.
`
`I was a co-Founder and Chief Executive of a private start-up,
`
`CryptoDrop. CryptoDrop developed a ransomware detection and recovery tool to
`
`provide state of the art protection to home, small business and enterprise users.
`
`14.
`
`I am a co-Founder and Chief Executive of a private start-up, Skim
`
`Reaper. Skim Reaper developed tools to detect credit card skimming devices, and
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`currently works with a range of banks, law enforcement, regulators, and retailers.
`
`15.
`
`I have taught courses on the topics of network and systems security,
`
`cellular networks, and mobile systems at both Georgia Tech and the University of
`
`Florida. I also advised and instructed the Information Assurance Officer Training
`
`Program for the United States Army Signal Corps in the spring of 2010.
`
`4
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`
`
`16.
`
`I am a named inventor on two United States patents, which are listed
`
`in my CV. These patents detail methods for determining the origin and path taken
`
`by phone calls as they traverse networks and for providing a secure means of
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`indoor localization.
`
`17. Further detail on my education, work, and teaching experience, and
`
`the cases in which I have previously given testimony in at least the past four years
`
`are contained in my curriculum vitae (CV) included as Appendix A.
`
`18. Based on my experience and education, I believe that I am qualified to
`
`opine as to the knowledge and level of skill of one of ordinary skill in the art at the
`
`time of the alleged invention of the ’619 patent (which I further describe below)
`
`and what such a person would have understood at that time, and the state of the art
`
`during that time. Based on my above-described experience in wireless
`
`communications technology, and the acceptance of my publications and
`
`professional recognition by societies in my field, I believe that I am qualified to be
`
`an expert in wireless communications.
`
` LEGAL PRINCIPLES
`19.
`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.
`
`5
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`
`
` Anticipation
`20.
`I have been informed that a patent claim is invalid as anticipated if
`
`each and every element of a claim, as properly construed, is found either explicitly
`
`or inherently in a single prior art reference. Under the principles of inherency, I
`
`understand that if the prior art necessarily functions in accordance with, or includes
`
`the claimed limitations, it anticipates.
`
`21.
`
`I have been informed that a claim is invalid if the claimed invention
`
`was known or used by others in the U.S., or was patented or published anywhere,
`
`before the Applicant’s invention. I further have been informed that a claim is
`
`invalid if the invention was patented or published anywhere, or was in public use,
`
`on sale, or offered for sale in this country, more than one year prior to the filing
`
`date of the patent application (critical date). I have also been informed that a claim
`
`is invalid if an invention described by that claim was described in a U.S. patent
`
`granted on an application for a patent (or in a published application for a U.S.
`
`patent) that was filed by another in the U.S. before the date of invention for such a
`
`claim.
`
` Obviousness
`22.
`I have been informed that a patent claim is invalid as “obvious” in
`
`light of one or more prior art references if it would have been obvious to a person
`
`of ordinary skill in the art at the time of the alleged invention (“POSITA”; refer to
`
`6
`
`
`
`¶27 below), taking into account (1) the scope and content of the prior art, (2) the
`
`differences between the prior art and the claims, (3) the level of ordinary skill in
`
`the art, and (4) any so called “secondary considerations” of non-obviousness,
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`which include: (i) “long felt need” for the claimed invention, (ii) commercial
`
`success attributable to the claimed invention, (iii) unexpected results of the claimed
`
`invention, and (iv) “copying” of the claimed invention by others.
`
`23. While I do not know the exact date that the alleged invention claimed
`
`in the ’619 patent was made, I do know that the ’619 patent claims priority to a
`
`foreign application filed as early as Nov. 22, 2004 (APPLE-1001 at cover page).
`
`For purposes of my analysis here, I have applied a date of Nov. 22, 2004 as the
`
`date of the alleged invention in my obviousness analysis, although in many cases
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`the same analysis would hold true even if the date of the alleged invention
`
`occurred earlier than Nov. 22, 2004 (especially given the earlier publication or
`
`filing dates of the prior art in Exhibits APPLE-1004 through APPLE-1010).
`
`24.
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a
`
`single prior art reference or multiple prior art references, there must be a reason
`
`that would have prompted a POSITA to modify the single prior art reference, or
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`combine two or more references, in a manner that provides the elements of the
`
`claimed invention. This reason may come from a teaching, suggestion, or
`
`7
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`
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`motivation to combine, or may come from the reference(s) themselves, the
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`knowledge or “common sense” of a POSITA, or from the nature of the problem to
`
`be solved, and this reason may be explicit or implicit from the prior art as a whole.
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`I have been informed that, under the law, the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. I also understand it is improper to rely on hindsight in
`
`making the obviousness determination.
`
` Claim Construction
`25.
`I understand that, for purposes of my analysis in this inter partes
`
`review proceeding, the terms appearing in the patent claims should be interpreted
`
`according to their “ordinary and customary meaning.” In determining the ordinary
`
`and customary meaning, the words of a claim are first given their plain meaning
`
`that those words would have had to a POSITA. I understand that the structure of
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`the claims, the specification, and the file history also may be used to better
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`construe a claim insofar as the plain meaning of the claims cannot be understood.
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`Moreover, treatises and dictionaries may be used, albeit under limited
`
`circumstances, to determine the meaning attributed by a person of ordinary skill in
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`the art to a claim term at the time of filing. I have followed this approach in my
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`analysis, and for all of the claim terms considered in this declaration, I have
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`applied the plain and ordinary meaning of those terms.
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`8
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`26.
`
`I also understand that the words of the claims should be interpreted as
`
`they would have been interpreted by a POSITA 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 date of Nov. 22, 2004 for reasons explained in ¶23,
`
`supra. However, the plain meanings/interpretations that I employed in my analysis
`
`below would have also been correct if the date of invention was anywhere within
`
`the early 2000s.
`
` PERSON OF ORDINARY SKILL IN THE ART
`27. Based on my knowledge and experience in the field and my review of
`
`the ’619 patent and its file history, I believe a person of ordinary skill in the art
`
`(“POSITA”) at the time of the earliest possible priority date of the ’619 patent
`
`would have had either a Bachelor of Science in computer science, computer
`
`engineering, electrical engineering, or a related field, with at least 2-5 years of
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`experience in research, design, or development of wireless communications
`
`devices or systems. Additional education might substitute for some of the
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`experience, and substantial experience might substitute for some of the educational
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`background. I understand that a person of ordinary skill in the art is not a specific
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`real individual, but rather a hypothetical individual having the qualities reflected
`
`by the factors discussed above.
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`9
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`
`
` MATERIALS CONSIDERED
`28. My analyses set forth in this declaration are based on my experience
`
`in the field of wireless communications, mobile computing, and cellular and
`
`mobile security. Based on my above-described experience in the field, 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 this field
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`during the early 2000s and specifically during the time before the alleged priority
`
`date (November 22, 2004) for the ’619 patent, and not only was I a POSITA during
`
`the relevant time frame, I have taught, participated in organizations, and worked
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`closely with many such persons in the field during that time frame.
`
`29. As part of my independent analysis for this declaration, I have
`
`considered the following: the background knowledge/technologies that were
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`commonly known to persons of ordinary skill in this field during the time before
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`the alleged priority date for the ’619 patent; my own knowledge and experiences
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`gained from my work experience in the fields of communications systems
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`generally; my experience in teaching and advising others in those subjects; and my
`
`experience in working with others involved in those fields. In addition, I have
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`analyzed the following publications and materials:
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`• U.S. Patent No. 10,027,619 (“the ’619 patent”) (APPLE-1001), and its
`
`accompanying prosecution history (APPLE-1002)
`
`10
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`
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`• PCT Publication No. WO2002/025890 to Hind et al. (“Hind”)
`
`(APPLE-1004)
`
`• PCT Publication No. WO/2001/040605 to Nielsen (“Nielsen”)
`
`(APPLE-1005)
`
`• PCT Publication No. WO2001/029731 to Thompson et al.
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`(“Thompson”) (APPLE-1006)
`
`• U.S. Patent Pub. No. 2005/0060551 A1 to Barchi et al. (“Barchi”)
`
`(APPLE-1007)
`
`• U.S. Patent Pub. No. 2005/0210259 to Richardson (“Richardson”)
`
`(APPLE-1008)
`
`• U.S. Patent Pub. No. 2003/0101343 A1 to Eaton et al. (“Eaton”)
`
`(APPLE-1009)
`
`• U.S. Patent Pub. No. 2004/0049599 A1 to Friend et al. (“Friend”)
`
`(APPLE-1010)
`
`30. Although for the sake of brevity this Declaration refers to selected
`
`portions of the cited references, it should be understood that one of ordinary skill in
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`the art would have viewed the references cited herein in their entirety, and in
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`combination with other references cited herein or cited within the references
`
`themselves. The references used in this Declaration, therefore, should be viewed
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`as being incorporated herein in their entirety.
`
`11
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`
`
` BACKGROUND INFORMATION
` Overview of the ’619 Patent
`31. The specification of the ’619 patent describes “a messaging centre for
`
`transmitting e-mail messages to and from a mobile terminal.” APPLE-1001, 1:20-
`
`24. As shown in Figure 1, an example system described by the ’619 patent
`
`includes a host system 100 and a mobile terminal 102, with each being equipped to
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`“send an[d] receive e-mail messages.” APPLE-1001, 3:9-15. The host system 100
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`and mobile terminal 102 can receive e-mails from and send e-mails to remote
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`terminals such as the external e-mail terminal 104 shown in Figure 1. APPLE-
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`1001, 3:13-15. The goal of the ’619 patent is to allow the host system 100 and
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`mobile terminal 102 to “use a single e-mail account as transparently as possible”
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`such that “the users of the external e-mail terminals 104, when sending or
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`receiving e-mail, do not need to know if the user of the host system 100 actually
`
`uses the host system 100 or the mobile terminal 102 to communicate via e-mail.”
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`APPLE-1001, 3:15-28. This transparency is provided by a messaging centre 110,
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`which “maintains an association 122 for each mobile terminal supported by it.
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`Each association 122 joins three fields, namely an e-mail address 122A assigned to
`
`the mobile terminal or its user, encryption information 122C and a temporary
`
`wireless identity 122D of the mobile terminal in the access network.” APPLE-
`
`1001, 3:41-4:28. These various components of the system of the ’619 patent are
`
`12
`
`
`
`shown in Figure 1:
`
`
`
`APPLE-1001, FIG. 1. The ’619 patent specification describes that the messaging
`
`centre 110 redirects e-mails intended for the user of the host system 100 to the
`
`mobile terminal 102. As described by the ’619 patent, “the messaging centre 110
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`detects and retrieves the incoming e-mail from the e-mail server 108. For instance,
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`the messaging centre 110 may regularly poll the e-mail server 108 or it may
`
`register itself as a listener to the e-mail server.” APPLE-1001, 5:56-60. After
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`receiving an e-mail intended for the user of the host system 100, the messaging
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`centre 110 “encrypts, and optionally packs, the e-mail message” and then
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`“transmits the encrypted and packed e-mail to the mobile terminal that decrypts
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`and unpacks it.” APPLE-1001, 5:56-6:9. The ’619 patent describes that some of
`
`13
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`
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`this functionality can be performed by a “connectivity function 600” of the
`
`messaging centre 110 and that in some instances “the connectivity function 600
`
`can be installed in each host system 100, or the host system 100 can be interpreted
`
`as a separate server configured to support multiple users.” APPLE-1001, 8:5-34.
`
`32. The ’619 patent also describes a process by which the mobile terminal
`
`102 can register with the host system 100 to receive e-mail messages, describing
`
`that “the mobile terminal 102 generates and displays a service activation code”
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`such that “the host system 100 authenticates the person who enters the service
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`activation code.” APPLE-1001, 4:56-62. The ’619 patent goes on to describe that
`
`“the service activation code may be entered manually or via a local connection,
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`such as a wired or optical interface or a short-range wireless interface, such as
`
`Bluetooth.” APPLE-1001, 5:3-8. The mobile terminal is then registered to receive
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`e-mails intended for the host system 100. Id.
`
`
`File History of the ’619 Patent
`33. As part of my preparation of this declaration, I reviewed the file
`
`history of the ’619 patent (APPLE-1002). I understand that Application no.
`
`14/609,189, which led to the ’619 patent, was filed on Jan. 29, 2015. APPLE-
`
`1001, Cover. I also understand that the ’619 patent was issued on Jul. 17, 2018.
`
`Id.
`
`14
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`34. The application that led to the ’619 patent was filed with a single
`
`claim, with new claims 2-22 being added in an initial preliminary amendment.
`
`APPLE-1002, 496, 445-450, 535. The independent claims at issue in the Petition
`
`which this declaration accompanies (and therefore, the independent claims
`
`addressed below) are issued claims 22, 37, and 51, which were added to the
`
`application as pending claims 23, 37, and 55 (respectively) in an office action
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`response filed on April 1, 2016. APPLE-1002, 353-362, 45-46. Independent
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`claims 23, 37, and 55 were amended several times over the course of prosecution
`
`of the application in attempts to differentiate the claims with respect to prior art
`
`references cited by the examiner. Finally, independent claims 23, 37, and 55 were
`
`each amended to include the recitation “optically receive information including a
`
`displayed service activation code from a remote device” in amendments submitted
`
`on February 9, 2017 and these independent claims were subsequently allowed and
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`issued as independent claims 22, 37, and 51 (respectfully). APPLE-1002, 221-226,
`
`128-130, 24-33 (underlining in original). That is, the changes made to the three
`
`independent claims analyzed herein (claims 22, 37, and 51 of the ’619 patent) were
`
`allowed by the examiner only after the Applicant specified that the service
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`activation code was “optically receive[d]” and that the service activation code is “a
`
`displayed service activation code.” Based on this fact and my review of the
`
`prosecution history as a whole, it is clear that the claims that I analyze below,
`
`15
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`
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`including independent claims 22, 37, and 51 of the ’619 patent, were allowed
`
`because the examiner believed that the prior art did not disclose “optically receive
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`information including a displayed service activation code from a remote device.”
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`As by the references cited herein, and in the below analysis, it was known in prior
`
`art systems to optically receive information including displayed service activation
`
`code from a remote device.
`
`
`35.
`
`Interpretations of the ’619 Patent Claims at Issue
`
`I understand that, for purposes of my analysis in this inter partes
`
`review proceeding, the terms appearing in the patent claims should be interpreted
`
`according to what is referred to as the “Phillips” standard. Phillips v. AWH Corp.,
`
`415 F.3d 1303 (Fed. Cir. 2005); 37 C.F.R. § 42.100. I further understand that the
`
`words of the claims should be given their plain meaning unless that meaning is
`
`inconsistent with the patent specification or the patent’s history of examination
`
`before the Patent Office. I also understand that the words of the claims should be
`
`interpreted as they would have been interpreted by a POSITA at the time of the
`
`invention (not today). Without further information on what date the invention as
`
`claimed was made, I have used the earliest possible priority date of U.S. Patent No.
`
`10,027,619 as the point in time for claim interpretation purposes. That date was
`
`November 22, 2004.
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`16
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`36.
`
`I have been asked to provide my interpretation of the following term
`
`of the ’619 patent set forth below. In providing the following interpretation, I have
`
`carefully considered and applied the claim construction standard referred to above.
`
`37.
`
`Independent claim 22 recites “the device is operable to.” I interpret
`
`the plain and ordinary meaning of the word “device” in the claim phrase “the
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`device is operable to” to mean “a computing device, such as a host system.” The
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`’619 patent specification only uses the word “device” in the background section, in
`
`reference to “a mobile data communication device (mobile terminal)” that is in
`
`communication with a “host system.” APPLE-1001, 1:26-48. A POSITA would
`
`have recognized that the “mobile data communication device” discussed in the
`
`background section is similar to the mobile terminal 102 discussed in the detailed
`
`description and depicted in Figure 1 and also the “remote device” recited by the
`
`claims (See construction for “remote device,” ¶39, below). APPLE-1001, 3:9-28,
`
`FIG. 1. Based on the functionality ascribed to the “device” recited by claim 22
`
`(including “optically receiv[ing]” the service activation code from the remote
`
`device and registering the remote device for access to a messaging account), a
`
`POSITA would have recognized that the word “device” is similar to the host
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`system 100 depicted in Figure 1. APPLE-1001, 3:9-28, FIG. 1. The ’619 patent
`
`specification further describes that “the connectivity function 600 can be installed
`
`in each host system 100” which further indicates that the “device” recited by claim
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`17
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`
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`22 is similar to the host system 100 described in the ’619 specification APPLE-
`
`1001, 8:5-34. The host system 100 is shown in the example of Figure 1 as a
`
`desktop computer but a POSITA would understand that the recited “device” could
`
`also take the form of a laptop computer, server, or other suitable computing device.
`
`APPLE-1001, 8:5-34 (“…or the host system can be interpreted as a separate
`
`server…”). Therefore, the plain and ordinary meaning of the word “device” as
`
`recited by claim 22 is “a computing device, such as a host system.”
`
`38.
`
`Independent claims 22, 37, and 51 and dependent claims 23-24, 26,
`
`32-33, 38-40, and 46, and 52 each recite the term “service activation code.” I
`
`interpret this term to mean a “code relaying information used to authenticate a
`
`user’s access to a messaging account.” The specification of the ’619 patent
`
`explains that the service activation code is used to authenticate the mobile terminal
`
`102 for access to an email account controlled by the host system 100 to allow the
`
`mobile terminal 102 “to access and manipulate e-mail” associated with that
`
`account. APPLE-1004, 4:40-5:37. As an example of the type of information that
`
`can serve as a “service activation code,” the ’619 patent identifies a “user name
`
`and password combination” used to authenticate the mobile terminal 102 to receive
`
`access to the email account. Id., 4:60-64. The Applicant emphasized that the
`
`service activation code is a code that acts to authenticate a user’s access to a
`
`messaging account in a similar manner to a user name password combination
`
`18
`
`
`
`during prosecution of the ’619 patent, stating that “to register to a messaging
`
`account, the service activation code must relay information to the host system such
`
`as user name and password combination.” APPLE-1002, 163. Therefore, the term
`
`“service activation code” is properly interpreted as a “code relaying information
`
`used to authenticate a user’s access to a messaging account.”
`
`39.
`
`Independent claims 22, 37, and 51 and dependent claims 23, 33, 36,
`
`38, 50, and 52 each recite the term “remote device.” I interpret this term to mean “a
`
`computing device that is physically distinct from the claimed device.” The
`
`specification of the ’619 patent does not use the term “remote device” or describe
`
`any of the computing devices described therein as being “remote.” However, both
`
`the claims and the specification of the ’619 patent indicate that the word “remote”
`
`is relative when used in context of the term “remote device.” That is, based on a
`
`review of the ’619 patent as a whole, and the claims in particular, the term “remote
`
`device” does not require any minimum distance of separation between the “device”
`
`recited by the claims and the “remote device” recited by the claims. Dependent
`
`claim 25 indicates that the off-line communication between the device and the
`
`remote device in which the service activation code is received by the device of
`
`claim 22 “involves a local connection.” APPLE-1001, 5-25. The specification of
`
`the ’619 patent gives additional guidance on what is meant by the term “local
`
`connection, describing that the host system 100 and mobile terminal 102 exchange
`
`19
`
`
`
`a service activation code “via a local connection, such as a wire or optical interface
`
`or a short-range wireless interface.” APPLE-1001, 4:56-5:8. Thus, a POSITA
`
`would have recognized that the term “local connection” contemplates a fairly close
`
`communication and therefore the claims indicate that the “remote device” will,
`
`during at least some points in time, be in relatively close physical proximity of the
`
`“device” recited by the claims.
`
` OVERVIEW OF CONCLUSIONS FORMED
`40.
`I have reviewed the Petition for inter partes review of the ’619 Patent,
`
`and agree with the analysis contained therein. In summary, it is my opinion that
`
`each and every limitation of each and every challenged claim would have been
`
`anticipated and/or obvious to one of ordinary skill in the art at the time of the
`
`alleged invention in view of the prior art cited in the petition and further explained
`
`in this declaration. To summarize my conclusions below:
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 22-26, 33, 36-40,
`
`and 50-52 of the ’619 patent are rendered obvious by Hind in view of
`
`Nielsen.
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 22-26, 33, 36-40,
`
`20
`
`
`
`and 50-52 of the ’619 patent are rendered obvious by Hind in view of
`
`Nielsen and Thompson.
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 22-28, 33, 36-42,
`
`and 50-52 of the ’619 patent are rendered obvious by Hind in view of
`
`Nielsen, Thompson, and Barchi.
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 32 and 46 of the
`
`’619 patent are rendered obvious by Hind in view of Nielsen,
`
`Thompson, Barchi, and Richardson.
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claim 33 of the ’619 patent
`
`is rendered obvious by Hind in view of Nielsen, Thompson, Barchi,
`
`and Eaton.
`
`• Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 36, 50, and 52 of
`
`the ’619 patent are rendered obvious by Hind in view of Nielsen,
`
`Thompson, Barchi, and Friend.
`
`21
`
`
`
` ANALYSIS OF THE PRIOR ART
`A. ANALYSIS OF HIND IN VIEW OF NIELSEN WITH
`RESPECT TO CLAIMS 22-26, 33, 36-40, AND 50-52
`41. For the reasons articulated in detail below, and based on my review of
`
`the ’619 patent and the Hind and Nielsen references, I am confident that a POSITA
`
`would have readily understood that the predictable combination of Hind with
`
`Nielsen provides all elements of claims 22-26, 33, 36-40, and 50-52.
`
`
`
`Overview of Hind
`
`42. Hind describes a communications system that, among other
`
`functionality, allows a mobile device to register with a host system (such as a
`
`desktop computer) to register for access to an e-mail or other messaging accounts
`
`such that messages are redirected by the host system to the mobile device to allow
`
`a user to review and respond to messages when away from their desktop computer.
`
`Hind specifically describes “a wireless data network” in which “one or more
`
`redirector applications for enabling real-time mirroring (or redirection) of user data
`
`items from a user's office computer (or corporate server) to the user's mobile
`
`device. In such a redirector application, user data items, such as e-mail messages,
`
`calendar events, etc., are received at the user's office computer, which then
`
`redirects (or mirrors) the data items to the user's mobile device via the wireless
`
`data network.” APPLE-1004, 4:9-20. As shown in Figure 1, the systems and
`
`22
`
`
`
`methods described by Hind include redirection of user data items (such as message
`
`A or C) from a user's office PC (host system) 10 to the user's mobile data
`
`communication device 24, where the redirector software 12 is operating at the
`
`user's PC.” APPLE-1004, 9:18-32. I have included a version of Hind’s Figure 1,
`
`below, that is annotated with red circles to show the message A (which is sent by
`
`another computer, described as “desktop 26”), the user’s desktop computer (host
`
`system 10), which includes redirection software 12, and the mobile data
`
`communication device 24:
`
`APPLE-1004, FIG. 1.
`
`23
`
`
`
`
`
`43. One of the improvements over earlier message redirection systems
`
`(such as those described in Hind’s background section) is that the mobile device
`
`uses a PIN number to authenticate itself such that the host system uses the PIN
`
`number to register the mobile device to receive redirected emails using the PIN.
`
`As Hind explains, “redirector 12 associates the mailbox of the user with a PIN.”
`
`APPLE-1004, 17:18-31. Hind describes that this PIN is communicated from the
`
`mobile device 24 to the host system 10 executing the redirector software 12. Id.
`
`As described below, this PIN of Hind, which is used by the redirector software 12
`
`to associate the mobile device with the user’s email account, operates in the same
`
`manner as the service activation code recited by the claims of the ’619 patent.
`
`
`
`Overview of Nielsen
`
`44. Nielsen describes a system in which a mobile computing device (such
`
`as a mobile phone or PDA) transmits a code (referred to as an “access code” in
`
`Nielsen) to another computing device to gain access to secure information,
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