UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`CISCO SYSTEMS, INC.,
`Petitioner
`v.
`ESTECH SYSTEMS, INC.,
`Patent Owner
`_____________________
`
`Case IPR2021-00329
`U.S. Patent No. 8,391,298
`_____________________
`
`EXPERT DECLARATION OF SHUKRI J. SOURI, PH.D.
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`I.
`1.
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`INTRODUCTION
`Exponent, Inc. (“Exponent”) has been retained by K&L Gates, LLP (“K&L Gates”) on
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`behalf of Cisco System, Inc. (“Cisco”) to provide technical services and independent opinions on
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`certain issues relating to the accompanying petition for Inter Partes Review (“IPR”) of United
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`States patent no. 8,391,298 (“the ’298 patent”). At the request of K&L Gates, Exponent
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`investigated specific issues relevant to this matter.
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`2.
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`In particular, I, Shukri Souri, was requested to review the subject material of the ’298
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`patent, along with certain of the claims therein, and opine as to whether the requirements of these
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`claims are disclosed by various prior art references. The opinions and comments formulated during
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`this assessment are based on observations and information available at the time of the
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`investigation. The findings presented herein are made to a reasonable degree of scientific certainty.
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`I have made every effort to accurately and completely investigate all areas of concern identified
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`during our investigation. I reserve the right to supplement this declaration if and when new
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`information becomes available after this declaration is signed, including, but not limited to,
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`additional discovery or documents, opinions of the court, and the opinions and testimony of other
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`experts in this case. I reserve the right to respond to any opinions offered by other experts and to
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`any testimony offered at trial. And, I reserve the right to create graphics or demonstratives to
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`support my opinions if called to testify at a hearing.
`II. EXPERIENCE
`3.
`I am a salaried employee of Exponent. Exponent charges $650 per hour for my time plus
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`expenses for work performed in connection with this project. I have received no additional
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`compensation for work in this case, and my compensation does not depend upon the contents of
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`this declaration, any testimony I may provide, or the ultimate outcome of the case.
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`4.
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`Exponent is an engineering and science consulting firm headquartered at 149
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`Commonwealth Drive, Menlo Park, California, 94025. Exponent has been retained by counsel for
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`Cisco in this matter to provide independent technical expert consulting services. I, Shukri Souri,
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`am the investigator for the subject matter in this declaration.
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`5.
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`I am a Principal and a Corporate Vice President at Exponent. I am based in, and Director
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`of, Exponent’s New York office. I am also the Director of Exponent’s Electrical Engineering and
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`Computer Science practice.
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`6.
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`I received my B.A. (Honors) and M.A. in Engineering Science from Oxford University,
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`United Kingdom; my Master’s degree in Electrical Engineering from Stanford University,
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`California; and my Ph.D. in Electrical Engineering, also from Stanford University, California.
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`7.
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`Before returning to Stanford for my Ph.D., I was a member of the staff at Raychem’s
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`Corporate Research and Development Laboratories, where I designed and built electronic systems
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`to target safe operation of commercial and industrial equipment. My work resulted in patents
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`awarded by the United States, European, Japanese, and World Intellectual Property Organization
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`patent offices.
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`8.
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`Prior to Exponent, I co-founded two software firms, arcadiaOne, Inc. (“arcadiaOne”) and
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`Merenga, Inc., where I directed development teams and contributed to architecture and design,
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`source code development, testing, and deployment of enterprise-level software. At arcadiaOne, I
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`was an Engineering Manager with responsibilities for the development of software for the
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`synchronous transfer of digital assets between enterprises, such as from content providers to
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`content portals over arcadiaOne’s real-time messaging platform. At Merenga, Inc., I was Chief
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`Executive Officer and President with responsibilities for the firm’s operations in delivering an
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`Internet platform for the optimization of asset allocation to investors.
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`9.
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`I have also worked with government institutions to advise on technological investigations
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`and challenges. In 2012, I was selected to participate in a United States National Academy of
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`Engineering Frontiers of Engineering Symposium to help address future technological challenges
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`facing society. In 2010, I advised members of the United States Congress in their Investigation
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`into Instances of Sudden Unintended Acceleration in Toyota Made Vehicles, as instituted by the
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`Committee on Energy and Commerce in the House of Representatives. I led Exponent’s computer
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`systems and software investigation of Toyota vehicles allegedly experiencing unintended
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`acceleration.
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`10. My experience with telephony, Internet communications technologies, messaging
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`platforms, and software development spans over 25 years, during which time I have worked on
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`telecommunications equipment, computer systems for real-time messaging, and software systems
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`for Internet communications, including quantitative information and rich media streaming such as
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`audio and video. My focus has been on the reliability and safety of such software systems,
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`particularly as it relates to precision, accuracy, and robustness. Often, these are complex systems
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`with integration challenges and involving fault tolerance.
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`11. My knowledge of programming languages includes C, C++, Java, Matlab, Python, Fortran,
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`APL, and HP-BASIC, among others. I am currently a Senior Member of the Institute of Electrical
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`and Electronics Engineers (“IEEE”) and a Member of the Institution of Engineering and
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`Technology in the United Kingdom.
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`12.
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`Additional details about my background and expertise, including publications, are further
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`described in my professional resume, which is attached as Appendix A to this declaration.
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`13. Materials I have considered in relation to this declaration include the ’298 patent and
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`associated prosecution history, the prior art references relied upon within this declaration, and
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`other cited documents as indicated in footnotes. In forming my opinions, I have relied upon my
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`education, knowledge of telecommunications and associated networking technology, and related
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`experience.
`III. LEGAL STANDARDS
`14.
`It is my understanding that there are two ways that prior art references can render a patent
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`claim unpatentable: anticipation and obviousness. Counsel has informed me that the petitioner has
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`the burden in an IPR, such as this matter, to show unpatentability by a preponderance of the
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`evidence. Counsel has told me that a preponderance of the evidence means more likely than not.
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`15.
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`I understand that there is a set process to determine anticipation, as follows: 1) the claims
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`of a patent are properly construed, and 2) the claim language is then compared to the prior art on
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`a limitation-by-limitation basis. If the prior art references contain all the elements of the claim
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`language (explicitly or inherently), arranged as in the claims, that is considered anticipation.
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`16.
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`I understand that an invention is obvious when the differences between the subject matter
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`sought to be patented and the prior art are such that the subject matter as a whole would have been
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`obvious at the time of the invention to a person of ordinary skill in the art (“POSITA”). For this
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`reason, I have been asked to consider the level of ordinary skill in the field that someone would
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`have had at the time of the claimed invention.
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`17.
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`Counsel instructed me that in an obviousness determination the factors to consider are: 1)
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`the scope and content of the prior art, 2) the differences between the prior art and the asserted
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`claims, 3) the level of ordinary skill in the pertinent art, and 4) the existence of secondary
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`considerations of non-obviousness. Secondary considerations include: a long-felt need;
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`commercial success; unexpected results; praise of the invention; licensing; copying; failure of
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`others; and skepticism by experts. At this point, I have not considered any evidence of secondary
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`considerations as none has been provided to me. I reserve my right to assess and respond to any
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`such evidence should it become part of the record.
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`18.
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`Counsel also instructed me that an obviousness inquiry may involve assessing the
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`motivation of a POSITA to combine references. The prior art references themselves may provide
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`a suggestion, motivation, or reason to combine, but such a basis for combination need not come
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`from the references themselves.
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`19.
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`It is also my understanding through Counsel that the combination of familiar elements
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`according to known methods is likely to be obvious when it does no more than yield predictable
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`results. It is further my understanding that a proper obviousness analysis focuses on what was
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`known or obvious to a POSITA, not just the patentee.
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`20.
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`I have been told that combinations of the prior art should be analyzed based on the mindset
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`of a POSITA at the time the invention was made. Counsel has advised me that in rendering my
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`opinions, I should cast my mind back to the time the invention was made to occupy the mind of
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`one skilled in the art who is presented only with the references, and who is normally guided by the
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`then-accepted wisdom in the art.
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`21.
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`I understand that I am to perform the task referenced in the preceding paragraph without
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`using “hindsight” reasoning. Instead, I was asked to consider the feasibility and combinability of
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`references through the eyes of a POSITA as of May 29, 2003. As I describe below, the individual
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`references contain statements and teachings that motivate those of ordinary skill in the art to look
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`to the other references in the combinations I was asked to consider.
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`22.
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`I understand that relevant considerations for combining references include at least the
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`following:
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`(A) Combining prior art elements according to known methods to yield predictable results;
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`(B) Simple substitution of one known element for another to obtain predictable results;
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`(C) Use of known techniques to improve similar devices, methods, or products in the same
`way;
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`(D) Applying a known technique to a known device, method, or product ready for
`improvement to yield predictable results;
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`(E) “Obvious to try,” which is choosing from a finite number of identified, predictable
`solutions with a reasonable expectation of success;
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`(F) Known work in one field of endeavor may prompt variations of it for use in either the
`same field or a different one based on design incentives or other market forces if the
`variations are predictable to a POSITA; and
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`(G) Some teaching, suggestion, or motivation in the prior art that would have led a POSITA
`to modify the prior art reference or to combine prior art reference teachings to arrive at the
`claimed invention.
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`23.
`
`I have kept these considerations in mind when offering the opinions below regarding
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`combinability, as well as when interpreting the scope and content of the references.
`IV. TECHNICAL BACKGROUND
`24.
`The subject matter of the ’298 patent relates to a phone directory for use with a Voice over
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`Internet Protocol (“VoIP”) telephone system. VoIP is a method for transmitting voice
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`communication, or other multimedia information that is intended to be consumed in real-time,
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`through computer networks using the Internet Protocol (“IP”). The use of computer networks—
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`which typically involves the Internet for communication beyond a single local area network
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`(“LAN”)—provides an alternative to using the public switched telephone network, which is
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`typically used by traditional telephones for transmitting standard telephone signals.
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`25.
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`Since the claims relevant to this declaration place limitations upon how a phone directory
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`for a telecommunications system is implemented throughout a network, such as placing restrictions
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`upon the network architecture associated with such a directory, it is useful to discuss some
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`technical background relevant to computer networking.
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`26.
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`In general, in the context of telecommunications, a network is comprised of a group of
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`devices that are connected via appropriate physical infrastructure and that use a set of common
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`protocols to communicate. For example, a typical computer network includes various connected
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`computers (e.g., personal computers, network telephony devices, or the like) that each have
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`suitable communication hardware for transmitting and receiving information to and from a
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`network (e.g., ethernet hardware or wireless antennas); using this communication hardware, the
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`computers connect to the network via a router, hub, or switch device that facilitates communication
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`between the various connected computers. In some small networks, such as a small office or an
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`individual dwelling, there may be a single router, hub, or switch device to which all the computers
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`within the network connect; alternatively, for networks that span a larger local area—such as
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`throughout an office building—there may be multiple routers, hubs, or switch devices, with each
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`computer connecting to the most accessible such device to access the network.
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`27.
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`Networks that are largely self-contained (i.e., that define their own set of localized network
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`addresses and span a relatively small physical region) are generally referred to as LANs. Within a
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`LAN, devices communicate with each other either using a peer-to-peer system, which is common
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`for small LANs such as a single home network, or using a client/server model, which is common
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`for medium or larger LANs such as in an office building, on a school campus, or the like. In a
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`peer-to-peer LAN, the router, hub, or switch device enables communication between connected
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`computers by directly transmitting signals between the sender and destination computers: in effect,
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`the LAN router, hub, or switch handles delivery of information sent from a computer by directing
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`it to the intended recipient. In contrast, a client/server-based LAN includes at least one server
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`within the LAN to which the other devices connect, and which hosts network resources to facilitate
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`communication between the connected devices.1 The connected computers then access network
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`functionality using the client-server model where an application running on an individual computer
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`(i.e., the client) makes requests for service to a different networked computer that provides this
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`service (i.e., the server).
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`28.
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`A LAN can also include hardware for facilitating communication with computers that are
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`connected to other networks that are not directly part of the LAN. For example, a LAN can include
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`one or more modems, or other such access gateway devices, that enable connection to another
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`LAN. Such access gateway devices, which are sometimes referred to as edge routers, are similar
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`to a router device that coordinates communication with an individual LAN, but rather than connect
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`individual computers to a LAN, an access gateway device connects to other access gateways on
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`different LANs to provide a means for inter-LAN communication.2 In general, an arrangement
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`where LANs are coupled together to form a larger network of networks is known as a wide-area
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`network (“WAN”).3 Indeed, the Internet is an example of a WAN that is publicly accessible and
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`global in scale: a computer within a LAN, such as a home network, or an office LAN, may connect
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`to the Internet via a router and then access other distant computers (which may be within their own
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`LAN) that are also connected to the Internet.
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`
`1 https://www.tomshardware.com/reviews/local-area-network-wi-fi-wireless,3020-2.html. Accessed December 16,
`2020.
`2 In small LANs, such as an individual home network comprising one or a few devices, the router that coordinates
`the LAN can also provide access to a WAN. For example, a home router device may provide both the routing
`functionality for an associated home LAN and also comprise a modem device for facilitating connection to the
`Internet.
`3 https://www.comptia.org/content/guides/what-is-a-wide-area-network. Accessed December 16, 2020.
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`29.
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`Thus, in the context of telecommunications, key networking hardware includes: 1) a means
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`for each connected device to transmit and receive signals; 2) at least one or more routers, hubs, or
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`switch devices that enable the other devices to connect to the LAN; 3) additional local servers to
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`host network resources within the LAN if applicable; and, 4) network access gateways for
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`accessing one or more WANs to enable communication with other devices that are outside of the
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`LAN.
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`30.
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`Although there are many architectures that can be used to implement a network, each of
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`which may have a specific hardware configuration and corresponding set of situation-dependent
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`advantages or disadvantages, a typical computer network with which an ordinary network engineer
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`would be familiar is likely to involve multiple LANs connected to each other by at least one WAN,
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`and potentially many WANs. Communication between computers within the same LAN is
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`generally handled locally by a router device or server that is in the LAN, wherein the router device
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`or server facilitates delivery of transmitted information from the sending computer to the intended
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`destination computer. Communication between computers that are in different LANs requires an
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`additional layer of coordination to facilitate transmission between the LANs via a WAN: the
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`sender’s communication is first transmitted to the LAN’s local access gateway device, and this
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`local access gateway transmits the information to a distant access gateway within the destination
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`LAN, which then handles transmitting the information to the intended destination computer that
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`is part of this destination LAN.
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`31.
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`In addition to a means to physically distribute information between connected devices,
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`network communication requires the use of suitable communication protocols to enable encoding
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`of information and to ensure the network infrastructure can properly handle delivery of this
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`information to its destination. Of particular relevance to the field of VoIP communication systems
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`is the IP, which is a primary communication protocol within the IP suite.4 Similar to the Open
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`Systems Interconnection model (“OSI model”),5 the IP suite is a conceptual model and a set of
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`communication protocols used for transmission of information throughout computer networks.
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`The IP is located within the Internet layer of the IP suite, which is broadly comparable to the
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`Network layer of the OSI model,6 and defines packet structures for encapsulating payload data
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`along with header information that specifies the network location of the sender and recipient with
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`source and destination IP addresses, respectively.
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`32.
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`The Internet layer of the IP suite is used in conjunction with the Transport layer, which
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`facilitates delivery of IP packets between different network locations and adds various
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`functionality for establishing connections between the source and destination and managing the
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`flow, reliability, and other such performance characteristics of communication between these
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`locations. For example, the most common Transport layer protocol for Internet communication is
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`the Transmission Control Protocol (“TCP”), which is used to divide information into a sequence
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`of many IP packets to be transmitted from the source, and to properly order packets and reconstruct
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`information from packets received at a destination. The use of IP with TCP is often referred to as
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`“TCP/IP” communication, where TCP is used to divide information into many IP packets for
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`transmission from a source, and to facilitate various error checking and data integrity functionality
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`when assembling the received information at the destination, such as correctly sequencing packets
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`that arrive out of order and re-requesting missing packets.
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`4 In addition to use for traffic on the Internet, the IP is widely used throughout other LANs and WANs that
`connect computer devices.
`5 See ISO/IEC 7498-1, “Information technology – Open Systems Interconnection – Basic Reference Model: The
`Basic Model,” Second edition, 1994.
`6 See https://www.electronicdesign.com/unused/article/21800810/whats-the-difference-between-the-osi-
`sevenlayer-network-model-and-tcpip. Accessed December 16, 2020.
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`33.
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`For VoIP applications, however, much of the error correction functionality provided by the
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`TCP may be undesirable due to the real-time nature of how the received signal may be consumed.
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`For example, if a received transmission is being converted into an audio signal in real-time, there
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`may be no benefit to re-requesting a missing packet because by the time such a re-request is
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`fulfilled, the data may no longer be required. Thus, for VoIP or other real-time multimedia
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`transmissions, the User Datagram Protocol (“UDP”), which provides some data integrity checking
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`on an individual packet-by-packet basis, but does not guard against packet loss due to unreliability
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`in the underlaying network, is often used as the Transport layer protocol for coordinating delivery
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`of IP packets across a network. Such “UDP/IP” communication was introduced in 1980 and was
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`widely known within the field of computer networking at the time of the ’298 patent.7
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`34.
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`Regardless of the Transport layer protocol used to implement VoIP, the use of IP packets
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`necessitates the use of IP addresses for routing packets between source and destination network
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`locations. In their raw format, however, IP addresses are difficult for humans to remember and use
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`effectively. Thus, applications that communicate using the IP and associated networks typically
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`include systems to translate between IP addresses and more easily remembered, human-friendly,
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`address identifiers. As a familiar example, consider the case of browsing websites: the World Wide
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`Web makes extensive use of Uniform Record Locators (“URLs”), such as www.example.com,
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`which are sometimes referred to informally as “website addresses” or similar, and which eliminate
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`the need for human users to directly enter the underlying IP address. This approach is widely
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`adopted because the Internet includes a directory service called the Domain Name System
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`(“DNS”) that translates between human-friendly URLs and the corresponding IP address. When a
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`user enters www.example.com into their browser application to navigate to this website, the
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`7 UDP/IP is discussed within the specification of the ’298 patent (e.g., at 4:13-56); see also
`https://tools.ietf.org/html/rfc768. Accessed November 8, 2020.
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`browser first sends this URL through a DNS lookup process to retrieve the corresponding IP
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`address that is then used to connect to the corresponding web page. In effect, the DNS system acts
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`as a distributed directory system to allow users to navigate to websites via a well-known URL or
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`web address, without needing to know the corresponding IP address. In addition to removing the
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`need for human users to remember IP addresses, the use of the DNS system increases flexibility
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`and adaptability of network resources, since IP addresses can be reallocated or otherwise changed
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`without the need to update every user. Instead, the URL for a resource can remain unchanged, but
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`the DNS records can be updated so that the URL is directed to a different IP address.
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`35.
`
`Similar to browser applications that enable users to navigate websites, VoIP systems
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`typically involve an Application layer element that facilitates the use of such VoIP systems by
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`providing a suitable user interface. Unlike browser applications for navigating the World Wide
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`Web, which ubiquitously utilize URLs and the DNS service, there exists a range of different
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`system-specific approaches for facilitating VoIP calls. Common to these approaches, however, is
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`some directory interface that removes the requirement for a user to manually enter the IP address
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`of an intended callee.
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`36.
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`For example, in some systems that function in a fashion similar to traditional telephone
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`systems, a user may enter a telephone number for another phone—much like they would if using
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`a traditional telephone system—which is converted to an IP address by a server that hosts a
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`directory of such telephone numbers along with their corresponding IP addresses that have been
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`configured according to the particular network. Alternately, a VoIP application may provide a user
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`interface that enables access to directory functionality with which a user can search for and select,
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`or otherwise identify, a desired callee and request that the system initiate a call, whereupon the
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`system may establish communication to the corresponding IP address for the selected callee
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`without this IP address being entered, or even known, by the user who is placing the call. Indeed,
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`as detailed below in Section VI, a variety of approaches for implementing such directory systems
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`were known before the time of the ’298 patent.
`V. OVERVIEW OF US PATENT NO. 8,391,298
`37.
`The ’298 patent is entitled “Phone Directory In A Voice Over IP Telephone System,” and
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`I have been informed by Counsel that this patent has a priority date of May 29, 2003. However,
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`the opinions I offer below regarding the prior art, the combinations set forth below, or the
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`applicability of those combinations to certain claims of the ’298 patent do not change in my mind
`
`whether the ’298 patent is entitled to this priority date or a priority date of February 1, 2001. I have
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`not been asked at this time to perform an analysis regarding the proper priority date of the ’298
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`patent.
`
`A. SUMMARY OF THE ’298 PATENT
`38.
`The ’298 patent is directed towards providing a phone directory system wherein “a user
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`can dial numbers stored in a series of lists, which are stored in the system and displayed to the user
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`of an IP telephone” (the ’298 patent, Abstract). The ’298 patent “relates in general to information
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`processing systems, and in particular, to the use of Voice over IP technology to transmit voice
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`conversations” (the ’298 patent, 1:24-26).
`
`39.
`
`The ’298 patent describes how voice capabilities may be added to a LAN via the inclusion
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`of “an IP multimedia server 101 … and an IP telephony device 105” (the ’298 patent, 2:63-3:3),
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`and states that “[a]n IP telephone, or telephony device, is any apparatus, device system, etc., that
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`can communicate multimedia traffic using IP telephone technology” (the ’298 patent, 3:7-10).
`
`40.
`
`In general, the ’298 patent considers a network comprised of multiple LANs coupled
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`together via a WAN, which a POSITA would understand to be typical of an enterprise network
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`involving multiple company buildings, sites, or campuses in different geographic regions. For
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`example, Figure 3 of the ’298 patent (reproduced below) illustrates a network configuration in
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`which two LANs, one located in Dallas (labeled 301) and the other located in Detroit (labeled
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`302), are connected to each other and a remote IP phone within a telecommuter’s home network
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`(labeled 303) via a WAN (labeled 201).
`
`
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`Reproduction of Figure 3 of the ’298 patent showing an example
`network configuration.
`The WAN that connects the multiple LANs of the ’298 patent’s claims “may implement
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`41.
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`the IP protocol, and could be a public WAN, such as the Internet, a private data network, an
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`intranet, a Virtual Private Network (‘VPN’), or any external network” (the ’298 patent, 3:26-29).
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`42.
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`The ’298 patent relates to a network phone directory in which a user of a
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`telecommunications device connected to the network is able to view and interact with lists of
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`telephone extensions, and automatically initiate a call by selecting a callee from these lists. For
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`example, the ’298 patent states:
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`[a]n embodiment of the present invention permits a user at a remote site
`to easily scroll through a phone listing of users throughout the WAN …
`a user can scroll through displayed names and phone numbers of other
`users within their own LAN (e.g., 301), or a LAN at another remote
`location across the WAN 201 (e.g., LAN 302). Once a particular name
`and phone number is found via the display (e.g., display 810), then that
`user can easily press a button key (e.g., on keyboard 807) to commence
`a telephone conversation with the user having the selected name and
`phone number (the ’298 patent, 9:53-64).
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`43. More specifically, the ’298 patent describes various “rolodex” functionality. For example,
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`these different rolodex features, include a user-specific “personal rolodex” feature which a user
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`can manage (the ’298 patent, 10:5-15) to curate their own preferred list of callees; a “station
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`rolodex” feature that is established when a LAN is configured (the ’298 patent, 10:16-25) and
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`allows any user of a workstation to search for callees; and a “site rolodex” feature that “permits a
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`user at an IP telephone extension to locate other phone systems on the WAN 201 by site name”
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`and enables the user to access the “site rolodex” for a selected LAN that contains the phone
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`directory information for telecommunications devices coupled to that LAN (the ’298 patent, 10:47-
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`64).
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`44.
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`During prosecution, the applicants appealed a rejection of the then-pending claims to the
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`Board of Patent Appeals and Interferences (“BPAI”). On April 23, 2012, the Board issued a
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`decision upholding the rejection of the then-pending claims over the combination of two references
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`I address below, US Patent No. 6,298,057 (“Guy”) and US patent no. 6,829,231 (“Wilson”) (BPAI
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`Decision, 5-8). In the same decision, the BPAI found that the Examiner had failed to show in the
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`same combination of Guy and Wilson “enabling the user to select between observing the list
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`coupled to the second and the third LAN” or “where Wilson teaches or suggests that a user may
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`select between observing two different directories” (BPAI Decision, 11). I note this because in the
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`Notice of Allowance for the ’298 patent, this subject matter of selecting between two directories
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`and viewing lists of LANs of those two directories was added to the claims and the claims were
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`ultimately issued in their current form (Notice of Allowance, 3).
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`B. PERSON OF ORDINARY SKILL IN THE ART
`45.
`Based on my consideration of the factors discussed in the Legal Standards section of this
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`declaration, a POSITA in the art related to the technology of the ’298 patent at the Priority Date
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`would have had a bachelor’s degree in Electrical Engineering, Computer Engineering, or an
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`equivalent field, and at least two years of experience working in the fields of microelectronics or
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`telecommunications, or associated network engineering or design. This POSITA would have had
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`knowledge of design considerations known in the industry and would have been familiar with
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`then-existing products and solutions and would have understood how to search available literature
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`for relevant publications.
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`C. CLAIM CONSTRUCTIONS
`46.
`I have been asked to apply the constructions in the below table for some of the terms of the
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`’298 patent. I address these constructions in detail i