UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`U.S. Patent No.: 6,836,654
`Issued: Dec. 28, 2004
`Application No.: 09/739,507
`Filed: Dec. 18, 2000
`
`Title: ANTI-THEFT PROTECTION
`FOR A RADIOTELEPHONY DEVICE
`_________________
`
`DECLARATION OF HENRY HOUH
`
`Page 1
`
`Page 1 of 129
`
`SAMSUNG EXHIBIT 1010
`
`

`

`TABLE OF CONTENTS
`
`
`
`Page(s)
`INTRODUCTION AND ENGAGEMENT .................................................... 5
`I.
`BACKGROUND AND QUALIFICATIONS ................................................. 5
`II.
`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’654 PATENT ...............12
`IV. UNDERSTANDING OF PATENT LAW ....................................................13
`V. OVERVIEW OF THE ’654 PATENT ..........................................................16
`VI. LEVEL OF SKILL IN THE ART .................................................................19
`VII. DETAILED ANALYSIS AND OPINION ...................................................20
`A.
`Claims 1-20 Are Unpatentable Over The Nokia Combinations .........21
`1.
`The Nokia Owner’s Manual ......................................................21
`2.
`Barvesten ...................................................................................22
`3.
`Combining Nokia and Barvesten ..............................................23
`4.
`Claim 1 ......................................................................................25
`5.
`Claim 2 ......................................................................................37
`6.
`Claim 3 ......................................................................................39
`7.
`Claim 4 ......................................................................................40
`8.
`Claim 5 ......................................................................................44
`9.
`Claim 6 ......................................................................................47
`10. Claim 7 ......................................................................................50
`11. Claim 8 ......................................................................................53
`12. Claim 9 ......................................................................................57
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 2
`
`Page 2 of 129
`
`

`

`B.
`
`
`13. Claim 10 ....................................................................................59
`14. Claim 11 ....................................................................................70
`15. Claim 12 ....................................................................................72
`16. Claim 13 ....................................................................................74
`17. Claim 14 ....................................................................................75
`18. Claim 15 ....................................................................................78
`19. Claim 16 ....................................................................................82
`20. Claims 17-20 .............................................................................83
`Claims 1-20 Are Unpatentable Over The Schultz Combinations .......85
`1.
`Combining Barvesten and Schultz ............................................86
`2.
`Claim 1 ......................................................................................88
`3.
`Claim 2 ......................................................................................93
`4.
`Claim 3 ......................................................................................94
`5.
`Claim 4 ......................................................................................95
`6.
`Claim 5 ......................................................................................96
`7.
`Claim 6 ....................................................................................100
`8.
`Claim 7 ....................................................................................101
`9.
`Claim 8 ....................................................................................102
`10. Claim 9 ....................................................................................103
`11. Claim 10 ..................................................................................104
`12. Claim 11 ..................................................................................111
`13. Claim 12 ..................................................................................112
`14. Claim 13 ..................................................................................113
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 3
`
`Page 3 of 129
`
`

`

`
`15. Claim 14 ..................................................................................113
`16. Claim 15 ..................................................................................114
`17. Claim 16 ..................................................................................115
`18. Claims 17-20 ...........................................................................116
`
`
`
`
`
`
`
`
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 4
`
`Page 4 of 129
`
`

`

`
`
`I, Henry Houh, do hereby declare as follows:
`
`I.
`
`INTRODUCTION AND ENGAGEMENT
`
`1.
`
`I have been retained as an independent expert on behalf of Microsoft
`
`Corporation in connection with the above-captioned Petition for Inter Partes
`
`Review (“IPR”) to provide my analyses and opinions on certain technical issues
`
`related to U.S. Patent No. 6,836,654 (hereinafter “the ’654 patent”).
`
`2.
`
`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.
`
`3.
`
`Specifically, I have been asked to provide my opinions regarding
`
`whether claims 1-20 (each a “Challenged Claim” and collectively the “Challenged
`
`Claims”) of the ’654 patent would have been obvious to a person having ordinary
`
`skill in the art (“PHOSITA”) by December 1999. It is my opinion that each
`
`Challenged Claim would have been obvious to a PHOSITA after reviewing the
`
`prior art discussed herein.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`4.
`
`I am an expert in the fields of networking, telecommunications,
`
`communications devices, communications device software, telecommunications
`
`software and telecommunications systems. In formulating my opinions, I have
`
`relied upon my training, knowledge, and experience in the relevant art. A copy of
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 5
`
`Page 5 of 129
`
`

`

`
`
`my curriculum vitae is appended to this declaration as Appendix A and provides a
`
`description of my professional experience, including my academic and
`
`employment history, publications, conference participation, awards and honors,
`
`and more. The following is a brief summary of my relevant qualifications and
`
`professional experience.
`
`5.
`
`I received a Ph.D. in Electrical Engineering and Computer Science
`
`from the Massachusetts Institute of Technology in 1998. I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science Degree in Electrical Engineering and Computer Science in
`
`1989, and a Bachelor of Science Degree in Physics in 1990.
`
`6.
`
`I am currently self-employed as an independent technical consultant. I
`
`am also president of a company that provides supplemental science, technology,
`
`engineering, and science education to children of all ages.
`
`7.
`
`I first worked in the area of telecommunications as a summer intern
`
`at AT&T Bell Laboratories while I was an undergraduate at MIT, as part of a
`
`combined bachelor/masters degree program. During my time at Bell Labs, I took
`
`several internal courses on various aspects of communications systems. I also took
`
`graduate level course in telecommunications, communications theory, networking,
`
`and wireless networking and communications.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 6
`
`Page 6 of 129
`
`

`

`
`
`8.
`
`During my graduate studies, I was a research assistant in the
`
`Telemedia Network Systems (TNS) group at the Laboratory for Computer Science.
`
`The TNS group built a high-speed gigabit network and created applications that
`
`ran over the network. Example applications included remote video capture, video
`
`processing, and display of video on computer terminals. In addition to working on
`
`the design of core network components, designing and building the high speed
`
`links, and designing and writing the device drivers for the interface cards, I also set
`
`up the group’s web server.
`
`9.
`
`The TNS group was the first group to initiate a remote video display
`
`over the web. Vice-President Al Gore visited our group in 1996 and received a
`
`demonstration of – and remotely drove – a radio controlled toy car with a wireless
`
`video camera mounted on it; the video was encoded by TNS-designed hardware,
`
`streamed over the TNS-designed network and displayed using TNS-designed
`
`software.
`
`10.
`
`I submitted and defended my Ph.D. thesis titled, “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
`
`analyzed local-area and wide-area flows to show a more efficient method for
`
`routing packets in a network, based on traffic patterns at the time.
`
`11.
`
`I authored or co-authored twelve papers and conference presentations
`
`on our group’s research. I also co-edited the final report of the gigabit networking
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 7
`
`Page 7 of 129
`
`

`

`
`
`research effort with the Professor (David Tennenhouse) and Senior Research
`
`Scientist of the group (David Clark), who is generally considered to be one of the
`
`fathers of the Internet Protocol.
`
`12.
`
`I started building web servers in 1993, having set up the web server
`
`for the MIT Telemedia, Networks, and Systems Group, to which I belonged. It
`
`was one of the first several hundred web servers in existence, and went on to
`
`provide what was likely one of the first live Internet video sessions initiated from a
`
`web site. I co-authored papers on our web server video system and on database-
`
`backed web sites for which I attended the first World Wide Web conference to
`
`present.
`
`13. From 1997 to 1999, I was a Senior Scientist and Engineer at NBX
`
`Corporation, a start-up that made business telephone systems that streamed
`
`packetized audio over data networks instead of using traditional phone lines. NBX
`
`was later acquired by 3Com Corporation, and the phone system remains available
`
`in the secondary market today. As part of my work at NBX, I designed the core
`
`audio reconstruction algorithms for the telephones, as well as the packet
`
`transmission algorithms. I also developed software to run on the telephones. I also
`
`designed and validated the core packet transport protocol used by the phone
`
`system. The protocol is used for every interaction between each phone endpoint
`
`and the central controller. Two of the company founders and I received US Patent
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 8
`
`Page 8 of 129
`
`

`

`
`
`No. 6,967,963 titled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time sensitive data,” as a result of part of this work. The NBX
`
`telephone system included features such as the ability to log into a phone using a
`
`username and password, a software phone which could be installed on any
`
`windows computer (including laptops with wireless capability), the use of unique
`
`identifiers inside the telephone endpoints which were used to detect when
`
`telephones had moved so that calls could be properly routed to the appropriate
`
`user, and the ability to configure each phone (also based on the phone’s unique
`
`identifier) to block specific types of outgoing calls, such as international or long
`
`distance.
`
`14. Starting in 2001, I was the architect for the next generation of web
`
`testing product by Empirix known as e-Test Suite. e-Test Suite is now owned by
`
`Oracle Corporation. e-Test provided functional and load testing for web sites. e-
`
`Test emulated a user’s interaction with a web site and provided web developers
`
`with a method of creating various scripts and providing both functional testing
`
`(e.g., did the web site provide the correct response) and load testing (e.g., could the
`
`web site handle 5000 users on its web site simultaneously). Among Empirix’s
`
`customers was H&R Block, who used e-Test Suite to test the tax filing
`
`functionality of their web site as whether the web site could handle a large
`
`expected load prior to the filing deadline.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 9
`
`Page 9 of 129
`
`

`

`
`
`15. At Empirix, I also conceived, secured internal funding for, and
`
`managed the engineering for a new data platform test product known as the
`
`PacketSphere. The first capability the PacketSphere provided was to emulate a
`
`network so that lab testing could be done under conditions that mimicked the
`
`Internet, including configurable latency and packet loss. Later, PacketSphere
`
`provided the capability to generate large numbers of Voice-over-IP streams as well
`
`as measure the quality of the connection of VoIP streams. As part of my work, I
`
`continued to study the development of the Voice-over-IP market and worked with
`
`a number of Empirix customers to understand their market and product testing
`
`needs.
`
`16. Around 2006, at BBN, I helped create a search engine for audio and
`
`video which could be searched based on spoken word content. Our system used
`
`speech recognition and natural language processing to create a search index of
`
`audio and video files posted publicly on the Internet. During the search process,
`
`audio and video with matching spoken words could be streamed to users through
`
`our web site. As the Vice President of Operations and Technology, I architected
`
`and helped build-out the back end of the system, which supported speech
`
`recognition, search indexing, and providing the capability for hosted audio and
`
`video streaming in search results. Today, at RAMP Inc., the project has grown to a
`
`product that is used by media outlets such as ABC, CBS, NBC, Fox, and Reuters.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 10
`
`Page 10 of 129
`
`

`

`
`
`In addition, during this time at BBN, I continued to be engaged with
`
`telecommunications related projects through the time I left BBN.
`
`17. Around 2008-2009, I was Chief Technology Officer at Eons, a
`
`venture backed company founded by Jeff Taylor, who also founded the hiring web
`
`site Monster.com. Eons built a social networking site.
`
`18.
`
`I have also continued to develop web sites for various business
`
`projects, as well as setting up web sites on a volunteer basis for various groups that
`
`I am associated with.
`
`19.
`
`I am the author of several publications devoted to a wide variety of
`
`technologies in the fields of electrical engineering and computer science. These
`
`publications are listed on my CV.
`
`20.
`
`In summary, I have extensive familiarity with systems,
`
`telecommunication architectures, telecommunication systems software,
`
`telecommunications device software, wireless communications protocols, and
`
`methods related to traditional circuit-switched telecommunications, packet-based
`
`telecommunications, and systems that merged the two technologies, and I am
`
`familiar with what the states of these technologies were at the relevant time of the
`
`‘654 patent invention and before.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 11
`
`Page 11 of 129
`
`

`

`
`
`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’654 PATENT
`In preparing this declaration, I have reviewed the following materials
`21.
`
`bearing Exhibit Nos. that I understand are being referenced in the IPR to which my
`
`declaration accompanies:
`
`No.
`
`1001
`
`1002
`
`1003
`
`1006
`
`1008
`
`1011
`
`1012
`
`1013
`
`Description
`U.S. Patent No. 6,836,654 (“the ’654 patent”)
`File History of U.S. Patent No. 6,836,654
`
`Nokia 9000i Owner’s Manual (“Nokia Manual”)
`U.S. Patent 5,940,773 (“Barvesten”)
`Communication Device Inactivity Password Lock, Charles P.
`Schultz, November 1996 (“Schultz”)
`U.S. Patent No. 5,913,175 (“Pinault”)
`U.S. Patent No. 5,987,103 (“Martino”)
`Luca Benini et al., Policy Optimization for Dynamic Power
`Management, IEEE Transactions on Computer-Aided Design of
`Integrated Circuits and Systems, Vol. 18, No. 6, June 1999
`
`22.
`
`I understand that the ’654 patent issued on December 28, 2004 from
`
`U.S. Patent Appl. No. 09/739,507 (“the ’507 application”), filed on December 18,
`
`2000. The following patent application alleges priority to the ’654 patent or its
`
`alleged priority application: French Appl. No. 9916136, priority date December 21,
`
`1999.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 12
`
`Page 12 of 129
`
`

`

`23.
`
` In forming the opinions expressed herein, I relied upon my education
`
`and experience in the relevant field of art, and have considered the viewpoint of a
`
`PHOSITA, as of late December 1999, including December 21, 1999, the foreign
`
`application filing date identified above. I have also considered:
`
`
`
`a)
`
`the documents listed above,
`
`b) any additional documents and references cited in the
`
`analysis below,
`
`c)
`
`the relevant legal standards, including the standard for
`
`obviousness, and
`
`d) my knowledge and experience based upon my work in this
`
`area as described below.
`
`IV. UNDERSTANDING OF PATENT LAW
`
`24.
`
`I am not an attorney. For the purposes of this declaration, I have been
`
`informed about certain aspects of the law that are relevant to my opinions. My
`
`understanding of the law was provided to me by Petitioner’s attorneys.
`
`25.
`
`I understand that a claim is unpatentable if it would have been
`
`obvious. Obviousness of a claim requires that the claim would have been obvious
`
`from the perspective of a PHOSITA at the time the alleged invention was made. I
`
`understand that a claim could have been obvious from a single prior art reference
`
`or from a combination of two or more prior art references.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 13
`
`Page 13 of 129
`
`

`

`
`I understand that an obviousness analysis requires an understanding of
`
`26.
`
`the scope and content of the prior art, any differences between the alleged
`
`invention and the prior art, and the level of ordinary skill in evaluating the
`
`pertinent art.
`
`27.
`
`I further understand that a claim would have been obvious if it unites
`
`old elements with no change to their respective functions, or alters prior art by
`
`mere substitution of one element for another known in the field and that
`
`combination yields predictable results. While it may be helpful to identify a reason
`
`for this combination, I understand that there is no rigid requirement of finding an
`
`express teaching, suggestion, or motivation to combine within the references.
`
`When a product is available, design incentives and other market forces can prompt
`
`variations of it, either in the same field or different one. If a PHOSITA can
`
`implement a predictable variation, obviousness likely bars its patentability. For the
`
`same reason, if a technique has been used to improve one device and a PHOSITA
`
`would recognize that it would improve similar devices in the same way, using the
`
`technique would have been obvious. I understand that a claim would have been
`
`obvious if common sense directs one to combine multiple prior art references or
`
`add missing features to reproduce the alleged invention recited in the claims.
`
`28.
`
`I further understand that certain factors may support or rebut the
`
`obviousness of a claim. I understand that such secondary considerations include,
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 14
`
`Page 14 of 129
`
`

`

`
`
`among other things, commercial success of the patented invention, skepticism of
`
`those having ordinary skill in the art at the time of invention, unexpected results of
`
`the invention, any long-felt but unsolved need in the art that was satisfied by the
`
`alleged invention, the failure of others to make the alleged invention, praise of the
`
`alleged invention by those having ordinary skill in the art, and copying of the
`
`alleged invention by others in the field. I understand that there must be a nexus—a
`
`connection—between any such secondary considerations and the alleged invention.
`
`I also understand that contemporaneous and independent invention by others is a
`
`secondary consideration tending to show obviousness.
`
`29.
`
`I am not aware of any allegations by the named inventors of the ‘654
`
`patent or any assignee of the ’654 patent that any secondary considerations tend to
`
`rebut the obviousness of any Challenged Claim of the ’654 patent.
`
`30.
`
`I understand that in considering obviousness, it is important not to
`
`determine obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`31.
`
`I understand that other challenges to the patentability of a patent,
`
`including patent ineligibility, enablement, written description, and definiteness,
`
`cannot be raised in inter partes review proceedings before the Board to challenge
`
`the patentability of the ’654 patent. Accordingly, I did not consider those other
`
`challenges.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 15
`
`Page 15 of 129
`
`

`

`32.
`
`I understand that Petitioner has the burden of proving unpatentability
`
`by a preponderance of evidence, which means that the claims are more likely than
`
`
`
`not unpatentable.
`
`33. The analysis in this declaration is in accordance with the above-stated
`
`legal principles.
`
`V. OVERVIEW OF THE ’654 PATENT
`
`34. The ’654 patent, titled “Anti-Theft Protection For A Radiotelephony
`
`Device,” issued on December 28, 2004. The ’654 patent issued from the ’507
`
`application, filed on December 18, 2000.
`
`35. The patent recites that the invention is “relate[d] to a mobile
`
`radiotelephony device intended for accommodating a user identification module,
`
`where the device has an established link to an identification module to thereby
`
`prevent a normal operation of the device when an identification module other than
`
`the linked identification module is mounted inside the device.” Ex. 1001, 1:6-11. A
`
`PHOSITA at the relevant time would have understood that a “radiotelephony
`
`device” as used in the context of the ’654 patent to be a mobile, or cellular,
`
`telephone. Ex. 1001, 1:15-16.
`
`36. The ’654 patent explains that in the relevant time frame, mobile
`
`devices were frequently lost or stolen and a lost/stolen device “can be freely used
`
`until the identification module to which it is linked is blocked via the network.”
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 16
`
`Page 16 of 129
`
`

`

`
`
`Ex. 1001, 1:18-37. Preventing such unauthorized usage is an object of the ’654
`
`patent’s purported invention. Ex. 1001, 1:40-41. The ’654 patent purports to solve
`
`this problem by preventing unauthorized usage (processing outgoing calls) either
`
`when an unlinked user identification module (which a PHOSITA would have
`
`understood to correlate to a Subscriber Identification Module, or SIM, card) is
`
`inserted into the mobile device, or after expiration of a “period of inactivity,” even
`
`if the correct linked identification module is inserted. Ex. 1001, 1:41-59. The ’654
`
`patent explains that this protects against theft because a stolen device with a linked
`
`user identification module cannot be used without a “deblocking code” after the
`
`period of inactivity has passed, and the thief cannot simply swap in an unlinked
`
`identification module. Ex. 1001, 1:60-65.
`
`37. Figures 1 and 2 of the ’654 patent respectively depict the disclosed
`
`mobile device and an electric diagram of the device (and its generic components
`
`such as “a microphone 5, a loudspeaker 6, a screen 8, a keypad 9 and an antenna
`
`11”). See Ex. 1001, 2:36-60.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 17
`
`Page 17 of 129
`
`

`

`
`
`
`
`38. Figure 3 depicts a flow chart that purportedly represents “the
`
`operation of the device of FIG. 1.” Ex. 1001, 2:30-31, 2:61-3:63.
`
`
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 18
`
`Page 18 of 129
`
`

`

`
`
`VI. LEVEL OF SKILL IN THE ART
`
`39.
`
`I understand that claim terms in a patent should be given the ordinary
`
`meaning that the terms would have to a PHOSITA on the earliest effective filing
`
`date, in view of the specification and file history.
`
`40.
`
`I understand that the level of ordinary skill may be reflected by the
`
`prior art of record, and that a PHOSITA to which the claimed subject matter
`
`pertains would have the capability of understanding the scientific and engineering
`
`principles applicable to the pertinent art.
`
`41.
`
`I understand that one of ordinary skill in the art has ordinary
`
`creativity, and is not a robot.
`
`42.
`
`I understand there are multiple factors relevant to determining the
`
`level of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems. There are likely a wide range of
`
`educational backgrounds in the technology fields pertinent to the ’654 patent.
`
`43.
`
` Based on my review of the ’654 patent, I believe that a PHOSITA
`
`would have had at least a Bachelor’s degree in computer science or electrical
`
`engineering, or an equivalent field, and at least one year of general programming
`
`experience. Additional experience may substitute for education, and vice versa.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 19
`
`Page 19 of 129
`
`

`

`
`
`44. For purposes of this Declaration, in general, and unless otherwise
`
`noted, my testimony below refers to the knowledge of a PHOSITA as of late 1999,
`
`and I would have been a person with at least ordinary skill in the art at that time.
`
`VII. DETAILED ANALYSIS AND OPINION
`
`45. As noted above, I have been asked to provide my opinion as to
`
`whether the Challenged Claims would have been obvious to a PHOSITA in view
`
`of prior art. The discussion below provides a detailed analysis of how the prior art
`
`references I reviewed teach the limitations of the Challenged Claims.
`
`46. As part of my analysis and described below, I have considered the
`
`scope and content of the prior art and any potential differences between the
`
`claimed subject matter and the prior art. I conducted my analysis from a time
`
`frame of before December 1999. I have also considered the level of ordinary skill
`
`in the pertinent art as of that date. This analysis supports my opinion that the
`
`differences between the Challenged Claims and the prior art discussed herein are
`
`such that the subject matter as a whole would have been obvious to a PHOSITA.
`
`47.
`
`I describe in detail below the scope and content of the prior art, as
`
`well as any differences between the claimed subject matter and the prior art, on an
`
`element-by-element basis for each Challenged Claim of the ’654 patent. This
`
`analysis supports my finding that the differences between the claims of the ’654
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 20
`
`Page 20 of 129
`
`

`

`
`
`patent and the prior art discussed herein are such that the subject matter as a whole
`
`would have been obvious at the time of the filing of the ’654 patent to a PHOSITA.
`
`48. As described in detail below, the claimed subject matter of the
`
`Challenged Claims would have been obvious in view of the teachings of the
`
`identified prior art references as well as the knowledge of a PHOSITA.
`
`49.
`
`I will now describe, in the grounds below, on an element-by-element
`
`basis how the prior art teaches the limitations of the Challenged Claims.
`
`A. Claims 1-20 Are Unpatentable Over The Nokia Combinations
`
`50. As discussed below, claims 1-20 are unpatentable as obvious to a
`
`PHOSITA over the Nokia Manual (Ex. 1003) combined with U.S. Patent No.
`
`5,940,773 (“Barvesten,” Ex. 1006). I also discuss included a third reference, U.S.
`
`Patent No. 5,987,103 (“Martino,” Ex. 1012), as part of the combination for claims
`
`5 and 6 in view of the claimed “connecting/connection means.
`
`1.
`
`The Nokia Owner’s Manual
`
`51. Below I compare the Challenged Claims to Ex. 1003, which is a copy
`
`of the Owner’s Manual for the Nokia 9000i Communicator mobile device (“the
`
`Nokia Manual”). The Nokia Manual describes the operation and capabilities of the
`
`Nokia 9000i Communicator, which as of 1997, was “a versatile communications
`
`tool … a mobile phone, messaging device, Internet access terminal and a palmtop
`
`organizer in one compact unit.” Ex. 1003, 7/131.
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 21
`
`Page 21 of 129
`
`

`

`
`
`2.
`
`Barvesten
`
`52. U.S. Patent No. 5,940,773 is titled “Access Controlled Terminal And
`
`Method For Rendering Communication Services,” and names Mats Olof Barvesten
`
`as inventor. (“Barvesten”). Barvesten issued on August 17, 1999, and was
`
`originally assigned to Ericsson, Inc. Ericsson is a multinational company that has
`
`been manufacturing and selling telephones and related equipment for over 100
`
`years.
`
`53. The subject matter discussed in Barvesten relates generally to mobile
`
`telephone services, and more specifically, directed at improving security for
`
`mobile telephone subscribers. For example, Barvesten recognizes that unsecure
`
`mobile telephones are at risk of being stolen, including those that are not locked
`
`such that anybody can use the device other than just the particular subscriber for
`
`the device. Ex. 1006, 1:10-24. Barvesten noted that one way to protect the device
`
`is to lock the device, and to also lock the access unit card that is inserted into the
`
`device, such that a user has to enter a code to unlock the device, and to enter a
`
`different code to unlike the access unit card that is inserted into the device. Ex.
`
`1006, 1:25-28.
`
`54. Barvesten provides a solution such that a user does not have to enter
`
`two different codes upon every activation of the device. Ex. 1006, 1:44-48. For
`
`example, Barvesten provides an arrangement wherein upon activating a device
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 22
`
`Page 22 of 129
`
`

`

`
`
`(mobile phone), the device and SIM-card (Subscriber Identity Module)
`
`communicate with each other. The IMSI-code (International Mobile Subscriber
`
`Identity) is stored in the device’s memory. Then, when the device is used, the
`
`device can verify whether whatever SIM-card is present in the device is authorized
`
`by comparing the IMSI-code with the code in memory. Ex. 1006, 4:7-61.
`
`3.
`
`Combining Nokia and Barvesten
`
`55. As discussed below, a PHOSITA in December 2000 would have been
`
`motivated to combine the teachings of Nokia with Barvesten, and would have had
`
`a reasonable expectation of success in making the combination. The teachings of
`
`each are entirely compatible with each other, and combining them would have
`
`been a natural thing to do and would have required only ordinary skill to do so.
`
`Additionally, a PHOSITA would have had no issues integrating the Barvesten and
`
`Nokia device security technologies into the same mobile device, and doing so
`
`would have predictably resulted in a mobile device with both the device inactivity
`
`locking of Nokia and the single-code verification of Barvesten.
`
`56. Each of Nokia and Barvesten is expressly aimed at improving security
`
`for mobile telephone devices; thus, the teachings in these references complement
`
`one another. As discussed further below, the Nokia Manual describes a “lock
`
`system” for the security feature for Nokia’s 9000i Communicator device. Ex. 1003,
`
`81-83/131. Barvesten describes particular methods of locking mobile devices as
`
`DECLARATION OF HENRY HOUH
`
`
`
`Page 23
`
`Page 23 of 129
`
`

`

`well for its improved security measures. See, e.g., Ex. 1006, 2:6-3:51 (“Summary
`
`
`
`of the Invention”).
`
`57. Since the goal in Nokia, as well as in Barvesten, is to improve
`
`security, a PHOSITA reading Barvesten would understand that adding an
`
`additional security measure, namely Nokia’s inactivity lock, would have made the
`
`devices contemplated by Barvesten that much more secure. Additionally, Nokia
`
`discloses the ability to detect SIM card changes, locking the phone if the SIM is
`
`not recognized as one of five of the owner’s SIM cards without providing detail
`
`about how the SIM cards are so linked, where Barvesten provides additional detail
`
`regarding how devices might ensure that installed SIM cards are indeed authorized
`
`and appropriately link the device and the user. Thus, incorporating Barvesten’s
`
`teachings into th