`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`
`META PLATFORMS, INC.,
`Petitioner
`
`v.
`
`VOIP-PAL.COM, INC.,
`(Alleged) Patent Owner
`
`
`U.S. PATENT NO. 10,880,721
`
`Case IPR2022-01235
`
`
`DECLARATION OF DR. VIJAY MADISETTI IN SUPPORT OF PETITION
`FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §312 AND 37 C.F.R. §42.104
`
`
`
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`
`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 6
`I.
`II. QUALIFICATIONS ....................................................................................... 6
`
`III. UNDERSTANDING OF PATENT LAW .................................................... 13
`IV. OVERVIEW OF OPINION .......................................................................... 18
`V.
`THE `721 PATENT ...................................................................................... 19
`A.
`Priority Date ........................................................................................ 19
`B.
`Technology Overview......................................................................... 20
`
`Person of Ordinary Skill in the Art ..................................................... 24
`C.
`VI. CLAIM CONSTRUCTION .......................................................................... 26
`A. Agreed Constructions ......................................................................... 26
`B.
`“gateway” (Claims 51, 77, 103, 133).................................................. 27
`C.
`“means for causing a routing controller to produce an access
`code” (Claim 77) ................................................................................. 29
`D. Other Terms ........................................................................................ 29
`VII. OVERVIEW OF THE PRIOR ART ............................................................. 30
`A.
`Buckley ............................................................................................... 30
`B.
`Bates.................................................................................................... 33
`
`Ejzak ................................................................................................... 35
`C.
`VIII. SPECIFIC GROUNDS OF OBVIOUSNESS............................................... 38
`A. Ground I: Claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104,
`108-110, 124, 130, 133, and 138-139 Are Obvious Over
`Buckley. .............................................................................................. 38
`
`1.
`2.
`
`Claim 51 ................................................................................... 38
`Claim 52 ................................................................................... 54
`
`
`
`i
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`
`Claim 57 ................................................................................... 56
`3.
`Claim 60 ................................................................................... 57
`4.
`Claim 63 ................................................................................... 58
`5.
`Claim 65 ................................................................................... 61
`6.
`Claim 67 ................................................................................... 61
`7.
`Claim 73 ................................................................................... 62
`8.
`Claim 77 ................................................................................... 62
`9.
`10. Claim 103 ................................................................................. 66
`11. Claim 104 ................................................................................. 68
`12. Claim 108 ................................................................................. 68
`13. Claim 109 ................................................................................. 68
`14. Claim 110 ................................................................................. 69
`15. Claim 124 ................................................................................. 71
`16. Claim 130 ................................................................................. 72
`17. Claim 133 ................................................................................. 75
`18. Claim 138 ................................................................................. 76
`19. Claim 139 ................................................................................. 77
`B. Ground II: Claims 63, 109, 130, 133, and 138-139 Are Obvious
`Over Buckley in View of Ejzak. ......................................................... 77
`1. Motivation to Combine............................................................. 77
`2.
`Claim 63 ................................................................................... 82
`3.
`Claim 109 ................................................................................. 83
`4.
`Claim 130 ................................................................................. 84
`5.
`Claim 133 ................................................................................. 85
`6.
`Claim 138 ................................................................................. 86
`7.
`Claim 139 ................................................................................. 86
`C. Ground III: Claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104,
`108-110, 124, 130, 133, and 138-139 Are Obvious Over
`Buckley in view of Bates. ................................................................... 86
`1. Motivation to Combine............................................................. 86
`Claim 51 ................................................................................... 92
`2.
`Claim 52 ................................................................................... 99
`3.
`4.
`Claim 57 ................................................................................... 99
`5.
`Claim 60 ................................................................................... 99
`6.
`Claim 63 ................................................................................. 100
`7.
`Claim 65 ................................................................................. 100
`8.
`Claim 67 ................................................................................. 100
`
`
`
`ii
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`
`Claim 73 ................................................................................. 101
`9.
`10. Claim 77 ................................................................................. 101
`11. Claim 103 ............................................................................... 102
`12. Claim 104 ............................................................................... 103
`13. Claim 108 ............................................................................... 103
`14. Claim 109 ............................................................................... 103
`15. Claim 110 ............................................................................... 103
`16. Claim 124 ............................................................................... 104
`17. Claim 130 ............................................................................... 104
`18. Claim 133 ............................................................................... 104
`19. Claim 138 ............................................................................... 105
`20. Claim 139 ............................................................................... 105
`D. Ground IV: Claims 63, 109, 130, 133, and 138-139 Are
`Obvious Over Buckley in View Bates, in Further View of
`Ejzak. ................................................................................................ 105
`1. Motivation to Combine........................................................... 105
`2.
`Claim 63 ................................................................................. 106
`3.
`Claim 109 ............................................................................... 106
`4.
`Claim 130 ............................................................................... 107
`5.
`Claim 133 ............................................................................... 107
`6.
`Claim 138 ............................................................................... 107
`7.
`Claim 139 ............................................................................... 108
`IX. SECONDARY CONSIDERATIONS......................................................... 108
`
`X.
`
`CONCLUSION ........................................................................................... 108
`
`
`
`iii
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`LIST OF EXHIBITS
`Description
`
`Exhibit
`No.
`1001
`
`U.S. Patent No. 10,880,721 (`721 Patent)
`
`File History of U.S. Patent No. 10,880,721(without NPL’s and
`foreign references)
`Declaration of Dr. Vijay Madisetti
`
`Curriculum vitae of Dr. Vijay Madisetti
`
`U.S. Patent No. 7,668,159 (“Buckley”)
`
`U.S. Patent No. 7,995,565
`
`U.S. Patent No. 6,954,654 (“Ejzak”)
`
`U.S. Patent App. Pub. No. 2009/0047922
`
`U.S. Patent No. 8,731,163 (“Bates”)
`
`RFC 3261
`
`U.S. Patent No. 7,245,609
`
`Claim Construction Order (Dkt. No. 67) in Case No. 6:21-cv-00668-
`ADA (W.D. Tex.)
`Joint Claim Construction Statement (Dkt. No. 59) in Case No. 3:22-
`CV-03202 (N.D. Cal)
`U.S. Patent Pub. No. 2008/0167039
`
`U.S. Patent Pub. No. 2002/0102973
`
`U.S. Patent No. 8,542,815
`
`Exhibit 2016 in Apple, Inc. v. VoIP-Pal.com, Inc., IPR 2016-01201
`(P.T.A.B. Feb. 10, 2017)
`Email with attachment from Counsel for Patent Owner Regarding
`Claim Construction, dated March 2, 2022
`“Convergence Technologies for 3G Networks IP, UMTS, EGPRS
`and ATM”, by Jeffery Bannister et al., Wiley, England (2004)
`
`iv
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`Exhibit
`Description
`No.
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`1025
`
`1026
`
`IETF RFC 3986, available at
`https://datatracker.ietf.org/doc/html/rfc3986
`IETF RFC 2543, available at
`https://datatracker.ietf.org/doc/html/rfc2543
`U.S. Patent No. 7,283,507
`Excerpts from Microsoft Computer Dictionary, 5th ed. (2002)
`
`Excerpts from Wireless Encyclopedia, Althos Publishing (2007)
`
`International Patent Publication No. WO 01/89145 A2
`
`Excerpt from the File History of U.S. Patent No. 10,880,721 –
`“Roaming – Wikipedia” (submitted along with IDS on September
`24, 2013)
`
`
`
`v
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`INTRODUCTION
`I.
`1.
`I have been retained by Meta Platforms, Inc. (“Meta” or “Petitioner”) to
`
`provide my opinion regarding whether claims 51-52, 57, 60, 63, 65, 67, 73,
`
`77, 103-104, 108-110, 124, 130, 133, and 138-139 (“Challenged Claims”) of
`
`U.S. Patent No. 10,880,721 (EX1001, the “’721 Patent”) would have been
`
`obvious to one of ordinary skill in the art, as part of the above-captioned
`
`petition of inter partes review (IPR) of the ’721 Patent.
`
`2.
`
`I am being compensated for my time at my standard hourly consulting rate of
`
`$600 per hour. My compensation does not depend on the outcome of this
`
`litigation or the opinions I form.
`
`3.
`
`In forming my opinions expressed in this declaration, I have relied on my
`
`extensive knowledge, training, and experience, as well as all of the materials
`
`cited herein.
`
`II. QUALIFICATIONS
`4. My qualifications and publications can be found in my Curriculum Vitae,
`
`which is Exhibit 1004, along with a listing of the cases in which I have
`
`testified as an expert at trial or by deposition within the preceding five years.
`
`My background and experience qualify me to offer the opinions offered in this
`
`Declaration and are described below.
`
`6
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`In 1984, I received my Bachelor of Technology (Honors) in Electronics and
`5.
`
`Electrical Communication Engineering at the Indian Institute of Technology
`
`(IIT) in Kharagpur, India. In 1989, I obtained my Ph.D. in Electrical
`
`Engineering and Computer Science at the University of California, Berkeley.
`
`That year, I also received the Demetri Angelakos Outstanding Graduate
`
`Student Award from the University of California, Berkeley, and the
`
`IEEE/ACM1 Ira M. Kay Memorial Paper Prize. I authored several papers and
`
`proposals during this time, including “Multilevel Range/NEXT Performance
`
`in Digital Subscriber Loops”, IEEE Proceedings on Communications, Speech
`
`and Vision, Vol 136, Issue 2, April 1989, and “Comparison of Line Codes and
`
`Proposal for Modified Duobinary”, Contribution T1D1.3-85- 237, American
`
`National Standards Institute, November 1985.
`
`6.
`
`In 1989, I joined the faculty at Georgia Tech. My first position was an assistant
`
`professor position. I became an associate professor in 1995. In 1997, I was
`
`awarded
`
`the VHSIC Hardware Description Language
`
`(or VHDL)
`
`International Best Ph.D. Dissertation Advisor for my contributions in the area
`
`of rapid prototyping. I became a full professor in 1998 and have maintained
`
`that title ever since. As a faculty member at Georgia Tech, I have been an
`
`
`1
`IEEE is the Institute of Electrical and Electronics Engineers. ACM is the
`Association for Computing Machinery.
`
`7
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`active contributor in several disciplines, including wireless networks, cellular
`
`communications, computer engineering, embedded systems, chip design,
`
`software systems, and image and video processing.
`
`7.
`
`From 1999-2003, I consulted with a team of engineers to design an integrated
`
`Soft Switch & Media Server, the SNX 850/8500, that was being sold and
`
`installed in Asia. The SNX 8500 was a one-box solution to VOIP, LAN
`
`switching, and iPBX/PBX solutions for enterprise customers, and has been
`
`installed as part of BPL Telecom’s then offerings in Asia. The PBX modules
`
`within SNX 850/8500 supported Analog Phones, Digital Feature Phones,
`
`E1/ISDN PRI Trunks, E1 or PRI at the PSTN gateway, VOIP (SIP) soft
`
`phones, SS7 interfaces, and operated via a browser-based console. It included
`
`a variety of features, such as Automatic Call Back, Busy Override, Do Not
`
`Disturb, etc., through support for 16 ISDN BRI circuits.
`
`8.
`
`Since 1995, I have authored, co-authored, or edited several books in the areas
`
`of communications, signal processing, chip design, and software engineering,
`
`including VLSI Digital Signal Processors (1st ed. 1995), Quick-Turnaround
`
`ASIC Design in VHDL (1st ed. 1996), The Digital Signal Processing
`
`Handbook (2d. ed. 2010), Cloud Computing: A Hands-On Approach (1st ed.
`
`2013), Internet of Things: A Hands-On Approach (1st ed. 2014), and Big Data
`
`Science & Analytics (1st ed. 2016).
`
`8
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`Between 1998 and 2004, my students and I studied different codecs and
`9.
`
`published IETF draft standards2 on audio and video streaming applications
`
`over the internet including: V. Madisetti and A. Argyriou: Voice and Video
`
`over Mobile IP Networks, IETF Draft, May 20, 2002; and V. Madisetti and
`
`A. Argyriou: A Transport Layer Technology for Improving QoS of
`
`Networked Multimedia Applications, IETF Draft July 25, 2002.
`
`10.
`
`I have served on the paper-reviewing committees for many leading
`
`conferences in my field, and I have taken on editorial roles for leading
`
`technical journals in fields pertinent to my research. For example, I served as
`
`the Editor-in-Chief of the IEEE Press/CRC Press’s three-volume Digital
`
`Signal Processing Handbook for Edition 1 (1998) and Edition 2 (2010). I have
`
`also authored over 100 articles, reports, and other publications pertaining to
`
`electrical engineering, and in the areas of communications, communications
`
`signal processing, and computer engineering.
`
`11. Throughout my time at Georgia Tech, I have designed several specialized
`
`computer and communication systems for tasks such as wireless, audio, video,
`
`and protocol processing for portable platforms (like cell phones and PDAs). I
`
`
`2
`IETF is the Internet Engineering Task Force.
`
`9
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`have also been actively involved in the areas of wireless communication,
`
`software engineering, system design methodologies, and software systems.
`
`12. Beyond my work in academia, I have worked in industries relating to speech,
`
`audio, and image processing since the early 1980s. I developed efficient
`
`algorithms for echo cancellers for speech and voice applications that reduce
`
`complexity and improve performance. This work resulted in a peer-reviewed
`
`publication called “Dynamically Reduced Complexity Implementation of
`
`Echo Cancellers,” IEEE ICASSP 96, Tokyo.
`
`13. From 2000‐2001, I designed three Global System for Mobiles multiband
`
`mobile phones for a leading telecom equipment manufacturer in Asia.
`
`14. From 2000-2007, I designed and provided optimized mobile speech to one of
`
`the leading mobile phone and base station manufacturers in the world. This
`
`implementation has been deployed on millions of 3G/4G mobile phones and
`
`numerous base stations.
`
`15. During that same time frame, I also designed and provided several VOIP
`
`codecs to leading VOIP phone vendors that are now deployed in several
`
`generations of enterprise VOIP phone products in the USA and abroad. I
`
`designed and provided echo cancellers for VOIP applications.
`
`16. From 2002-2007, I developed wireless baseband and protocol stack software
`
`and assembly code for a leading telecommunications handset vendor. The
`
`10
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`software and code focused on efficient realization of speech codecs and echo‐
`
`cancellation and optimization of 3G software stack. My work included
`
`creating software code and analyzing and revising existing software code.
`
`17.
`
`I have also developed speech and video codecs that comply with 3GPP
`
`standards.3 I developed software to implement the associated 3GPP standards
`
`and developed tests to verify compliance with these standards. I have also
`
`developed several speech and VOIP (voice over Internet Protocol) codecs that
`
`conform with the ITU (International Telecommunications Union) standards
`
`G.723.1, G.729 and Echo Cancellers conforming with the ITU G.168
`
`standards.
`
`18. The software and code I have developed and tested based on the ITU standards
`
`are now used by one of the leading suppliers of VOIP/Internet telephones in
`
`the world. This software is also part of commercially released soft switches
`
`for internet telephony used extensively in Asia.
`
`19.
`
`In addition to my academic and industrial pursuits, I am also a long-standing
`
`member of several professional technical organizations. I was the Technical
`
`Program Chair for both the IEEE MASCOTS in 1994 and the IEEE Workshop
`
`on Parallel and Distributed Simulation in 1990. More recently, I was elected
`
`
`3
`3GPP stands for 3rd Generation Partnership Project, a collection of standards organizations that develop protocols
`for mobile telecommunications.
`
`11
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`to the Fellowship of the IEEE because of my contributions to embedded
`
`computing systems. Fellows are in the highest tier of membership in the IEEE,
`
`a world professional body consisting of over 300,000 electrical and
`
`electronics engineers. Only 0.1% of the IEEE membership is elected to the
`
`Fellowship each year.
`
`20.
`
` I also serve as the official representative from Georgia Tech to the
`
`3GPP/ETSI4 standards organization. As such, I am familiar with the standard
`
`processors for speech, audio and video applications in the context of mobile
`
`and wireless communications.
`
`21. Through the past twenty years, I have been retained to test various commercial
`
`mobile and wireless products to determine if they comply with various
`
`technical standards. I have participated in and contributed to activities of
`
`Standards Setting Organizations (“SSOs”) such as the IEEE, IETF, ETSI, and
`
`others, as part of my work as a teacher and researcher in advanced telecom,
`
`wireless, and computer technologies.
`
`22. Over the past three decades, I have studied and designed wireless networking
`
`and image and video processing circuits for numerous applications, including
`
`
`4
`ETSI stands for European Telecommunications Standards Institute.
`
`12
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`digital and video cameras, mobile phones, and networking products for
`
`leading commercial firms.
`
`III. UNDERSTANDING OF PATENT LAW
`I am not an attorney, but I have been provided with an understanding of certain
`23.
`
`legal principles relevant to my analysis and opinions in this matter.
`
`24.
`
`I understand that a person of ordinary skill in the art (a “POSITA”) is a
`
`hypothetical person who is presumed to have known the relevant art at the
`
`time of the invention, and that the factors that may be considered in
`
`determining the level of ordinary skill in the art may include: (a) type of
`
`problems encountered in the art; (b) prior art solutions to those problems; (c)
`
`rapidity with which innovations are made; (d) sophistication of the
`
`technology; and (e) educational level of active workers in the field. In a given
`
`case, every factor may not be present, and one or more factors may
`
`predominate.
`
`25.
`
`I have been informed that patent claims are construed or interpreted from the
`
`perspective of a POSITA at the time of the claimed invention. I understand
`
`that the most important evidence to consider in construing the claims is the
`
`“intrinsic” evidence. This includes the claim language, the patent’s
`
`specification, and the prosecution history (including references cited in the
`
`prosecution history). I understand that the POSITA must read the claim terms
`
`13
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`in the context of the claim and in the context of the entire patent specification.
`
`I understand that the patentee may explicitly define a claim term in a way that
`
`differs from the plain and ordinary meaning in the art.
`
`26.
`
`I further understand that a POSITA may also consider “extrinsic” evidence
`
`when interpreting the meaning of claim terms, which are documents and
`
`testimony beyond the patent to ensure that a claim is construed consistently
`
`with the understanding of those of skill in the art at the time of the claimed
`
`invention. I also understand that extrinsic evidence may not be relied on if it
`
`deviates from the meaning of the claim provided by the intrinsic evidence.
`
`27.
`
`I further understand that inventors may draft their claims as a means or step
`
`for performing a specified function, but that they must also disclose in the
`
`specification the structure that performs the function, or that claim is
`
`indefinite. I also understand that construing a means-plus-function claim
`
`requires identifying the claimed function and determining what structure, if
`
`any, disclosed in the specification corresponds to the claimed function. I
`
`further understand that a term with a computer-implemented function must
`
`have a clearly linked structure in the form of an algorithm. I understand that
`
`if I cannot identify such an algorithm, the term lacks a clearly linked structure
`
`and is therefore indefinite. I further understand that a general purpose
`
`14
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`computer cannot be the structure for a computer-implemented function
`
`because this amounts to purely functional claiming.
`
`28.
`
`I understand that a claim is invalid if it is anticipated or obvious. Anticipation
`
`of a claim requires that every element of a claim be disclosed expressly or
`
`inherently in a single prior art reference, arranged in the prior art reference as
`
`arranged in the claim.
`
`29.
`
`It is my understanding that a patent claim is invalid for obviousness if the
`
`claimed invention would have been obvious at the time the invention was
`
`made to a person having ordinary skill in the art (POSITA).
`
`30.
`
`I understand that the following factors are considered in an obviousness
`
`analysis: (1) the scope and content of the prior art; (2) the differences between
`
`the art and the claims at issue; (3) the level of ordinary skill in the art at the
`
`time the invention of the asserted patent was made; and (4) objective evidence
`
`of nonobviousness. In order to determine whether claim elements are found
`
`in the prior art, it is necessary to compare the properly construed claim
`
`language of the patent with the teachings of the prior art.
`
`31.
`
`I understand that certain factors-often called “secondary considerations” may
`
`support or rebut an assertion of obviousness of a claim. I understand that such
`
`secondary considerations include, among other things, commercial success of
`
`the alleged invention, skepticism of those having ordinary skill in the art at
`
`15
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`the time of the alleged invention, unexpected results of the alleged 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 further understand that there must be
`
`a nexus—i.e., a connection—between any such secondary considerations and
`
`the alleged.
`
`32.
`
`I further understand that a claim can be found 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, with that
`
`combination yielding predictable results. While it may be helpful to identify
`
`a reason for this combination, common sense should guide, and there is no
`
`rigid requirement for a teaching, suggestion, or motivation to combine. For
`
`example, design incentives and other market forces can prompt variations of
`
`a product, either in the same field or different one. If a person having ordinary
`
`skill in the relevant art can implement a predictable variation, obviousness can
`
`bar patentability. Similarly, if a technique has been used to improve one
`
`device, and a person having ordinary skill in the art would recognize that the
`
`technique would improve similar devices in the same way, use of the
`
`technique is obvious. I further understand that a claim may be obvious if
`
`16
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`common sense directs one to combine multiple prior art references or add
`
`missing features to reproduce the alleged invention recited in the claims.
`
`33.
`
`I also understand that any one or more of the following rationales may support
`
`a finding of obviousness:
`
`• Combining prior art elements according to known methods to yield
`predictable results;
`
`• Simple substitution of one known element for another to obtain predictable
`results;
`
`• User of known technique to improve similar devices (methods, or
`products) in the same way;
`
`• Applying a known technique to a known device (method, or product) ready
`for improvement to yield predictable results;
`
`• "Obvious to try" - choosing from a finite number of identified, predictable
`solutions, with a reasonable expectation of success;
`
`• Known work in one field of endeavor may prompt variations of it for use
`in either the same field or a different on based on design incentives or other
`market forces if the variations are predictable to one of ordinary skill in the
`art;
`
`• Some teaching, suggestion, or motivation in the prior art that would have
`led one of ordinary skill to modify the prior art reference or to combine
`prior art reference teachings to arrive at the claimed invention.
`I also understand that it is impermissible to use the claimed invention itself as
`
`34.
`
`a blueprint for piecing together elements in the art. In other words, it is
`
`impermissible to use hindsight reconstruction to pick and choose among
`
`disclosures in the prior art to reconstruct the claimed invention.
`
`17
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`IV. OVERVIEW OF OPINION
`I cite many documents in this declaration in support of my analysis, but my
`35.
`
`opinion regarding the obviousness of the Challenged Claims is fundamentally
`
`based on two references:
`
`• U.S. Patent No. 7,668,159 (“Buckley”) (EX1005), filed on August 3,
`2007 and granted on February 23, 2010. I understand that, based on
`Buckley’s filing date, it is prior art to the ’721 Patent.
`
`• U.S. Patent No. 6,954,654 (“Ejzak”) (EX1007), filed on July 31, 2001
`and granted on October 11, 2005. I understand that, based on Ejzak’s filing
`date, it is prior art to the ’721 Patent.
`
`• U.S. Patent No. 8,731,163 (“Bates”) (EX1009), filed on May 9, 2007 and
`granted on May 20, 2014. I understand that, based on Bates’s filing date,
`it is prior art to the ’721 Patent.
`In my opinion, claims 51-52, 57, 60, 63, 65, 67, 73, 77, 103-104, 108-110,
`
`36.
`
`124, 130, 133, and 138-139 of the ’721 Patent would have been obvious to a
`
`POSITA over prior art Buckley before February 4, 2008 (see paragraph 39).
`
`It is further my opinion that all of the Challenged Claims would have been
`
`obvious to a POSITA over prior art Buckley in view of Bates before February
`
`4, 2008. My opinion is summarized in the following table:
`
`18
`
`META 1003
`META V. VOIP-PAL
`
`

`

`Declaration of Dr. Vijay Madisetti in support of
`Petition for Inter Partes Review of U.S. Patent No. 10,880,721
`
`Ground
`
`I
`
`II
`
`III
`
`Claims
`51-52, 57, 60, 63, 65, 67, 73, 77, 103-
`104, 108-110, 124, 130, 133, and 138-
`139
`
`63, 130, 133, and 138-139
`
`51-52, 57, 60, 63, 65, 67, 73, 77, 103-
`104, 108-110, 124, 130, 133, and 138-
`139
`
`Analysis
`
`Obvious under §103 over
`Buckley
`
`Obvious under §103 over
`Buckley in view of Ejzak
`
`Obvious under §103 over
`Buckley in view of Bates
`
`IV
`
`Obvious under §103 over
`Buckley in view Bates and
`further in view of Ejzak
`37. As noted above in the Introduction section, for the present assignment, I was
`
`63, 130, 133, and 138-139
`
`only asked to analyze the obviousness of the Challenged Claims, and the
`
`scope of my analysis in this declaration is limited to those Challenged Claims.
`
`Accordingly, I do not address herein any other claims in the ’721 Patent. No
`
`inferences should be drawn from the limited scope of my analysis in this
`
`declaration. I have been asked to consider certain other claims in the ’721
`
`Patent, and claims in another related patent, and my opinions with respect to
`
`those claims are addressed in separate