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`EXHIBIT 1
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`Smart Mobile Technologies LLC, Exhibit 2026
`Page 2026 - 1
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`Smart Mobile Technologies LLC, Exhibit 2026
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`SMART MOBILE TECHNOLOGIES LLC,
`
`v.
`
`APPLE INC.
`
`Plaintiff,
`
`Defendant.
`
`SMART MOBILE TECHNOLOGIES LLC,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD., and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`
`Defendants.
`
`Case No. 6:21-cv-00603-ADA
`
`Case No. 6:21-cv-00701-ADA
`
`DECLARATION OF HARRY BIMS IN SUPPORT OF
`DEFENDANTS’ OPENING CLAIM CONSTRUCTION BRIEFS
`
`I declare under penalty of perjury that the following is true and correct.
`
`Executed at ______________________ on June ____, 2022
`
`t
`~
`
` Harry Bims, Ph.D.
`
`Menlo Park, CA
`
`8
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`I, Hany Bims Ph.D., hereby declare and state as follows:
`
`I.
`
`INTRODUCTION
`
`1.
`
`I have been retained by Fish & Richardson P. C. on behalf of Defendants Samsung
`
`Electrnnics Co., Ltd. and Samsung Electronics America, Inc. ( collectively, " Samsung") as an
`
`expert in com1ection with the above captioned matter.
`
`2.
`
`I understand that Smai1 Mobile Technologies, LLC ("Sma11 Mobile") has alleged
`
`that defendants Samsung and Apple Inc. ("Apple") infringe the following U .S. Patents and claims:
`
`Asserted Patents
`
`U.S . Patent 8,442,501
`U.S . Patent 8,472,936
`U.S . Patent 8,472,937
`U.S . Patent 8,761 ,739
`U.S . Patent 8,824,434
`U.S . Patent 8,842,653
`U.S . Patent 8,982,863
`U.S . Patent 9,019,946
`U.S. Patent 9,049, 119
`U.S. Patent 9,084,291
`U.S . Patent9,l9l ,083
`U.S. Patent9,319,075
`U.S . Patent 9,614,943
`U.S. Patent 9,756,168
`
`Asserted Claims
`Aa;ainst Samsuna;
`1-3, 5-6, 13, 16-18
`1, 8-ll , 13, 15, 17, 19
`1-3, 5-6, 13, 16-18
`1-3, 5-6, 13, 16-18
`1-8
`1-21 , 23-28
`None
`1-21 , 26-30
`20
`5-16
`5-9, 12-20
`None
`1-2, 5-9, 12-17, 19-20
`2-5, 19-23, 25, 28-29, 34
`
`Asserted Claims
`Aa;ainst Apple
`1-3, 5, 6, 10, 13, 16-18
`1, 8-11 , 13, 15, 17, 19
`1-3, 5-6, 10, 13, 16- 18
`1-3, 5-6, 10, 13, 16-18
`1-8
`1-21 , 23-28, 29, 30
`1-6, 8, 9, 11 , 12, 14, 19, 24
`1-21 , 26-30
`20
`None
`l , 5-9, 12-20
`l -3, 5
`l , 2, 5-9, 12-17, 18, 19, 20
`2-5, 19-23, 25, 28, 29, 34
`
`3.
`
`I have been asked to provide my opinion on how certain te1ms appearing in claims
`
`of the asse11ed patents would be understood by a person of ordinaiy skill in the ai1 ("POSIT A") in
`
`the field of the asserted patents.
`
`4.
`
`All emphases (such as balding, underlining, or italics) in quotations herein are
`
`mine, unless othe1wise stated.
`
`A.
`
`Qualifications and Experience
`
`5.
`
`6.
`
`My cuniculum vitae is attached as Attachment A.
`
`I have worked extensively in the field of digital communications. I have studied
`
`telecommunications and systems engineering since approximately 1981. Fmiher, I have over 20
`
`1
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`years of industry experience in computer network design, including the design of hardware and
`
`software for computer communications in a wireless context. During this period, I have designed
`
`and implemented various products that involve technologies related to the subject matter of the
`
`Asserted Patent.
`
`7.
`
`I received a B.S. in Computer and Systems Engineering from Rensselaer
`
`Polytechnic Institute in 1985. In 1988, I received a M.S. in Electrical Engineering from Stanford
`
`University. In 1993, I received a Ph.D. in Electrical Engineering, also from Stanford University.
`
`As a graduate student at Stanford University, I studied the principles of digital communications
`
`theory, including data modulation and demodulation, error checking and correction algorithms,
`
`and the architecture and design of semiconductor circuits used for digital communications. My
`
`Ph.D. thesis at Stanford addressed the application of trellis coding and precoding to a digital
`
`modulation system, and was titled “Trellis Coding for Multi-Level, Partial Response Continuous
`
`Phase Modulation with Precoding.”
`
`8.
`
`After receiving my Ph.D. in 1993, I worked for Glenayre Technologies - Wireless
`
`Access Group, where I focused on hardware and software architecture and design, including
`
`inventing, designing, and building a patented computer system for real-time testing of two-way
`
`pagers and co-developing a wireless application protocol that included a CRC error checking
`
`algorithm. From 1999 to 2001, I was responsible for the software architecture for core SGSN and
`
`GGSN products for the GPRS market. I also held management responsibility for the Firmware,
`
`Hardware, Performance, and Systems Engineering Groups. In 2001, I developed a business plan
`
`for building network infrastructure for 802.11 enterprise networks, and then later that year founded
`
`AirFlow Networks, Inc. where I invented and received over eleven patents on its core technology,
`
`which was based on the 802.11 wireless local area network specification.
`
`2
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`9.
`
`I am currently the President of Protocomm Systems, LLC and Bims Laboratories,
`
`LLC, both of which I founded. As the President of Bims Laboratories, Inc., I perform technical
`
`research in wireless technology standards, such as LTE, 5G, IEEE 802.11 (“Wi-Fi”), Bluetooth,
`
`and other network communication protocols.
`
`10.
`
`I am also named as an inventor on twenty-three telecommunications-related United
`
`States patents:
`
`• U.S. Pat. No. 6,259,911, entitled “Network Operations Center Hardware and Software
`Design”;
`• U.S. Pat. No. 6,557,134, entitled “ARQ Method for Wireless Communication”;
`• U.S. Pat. No. 6,760,318, entitled “Receiver Diversity in a Communication System”;
`• U.S. Pat. No. 6,788,658, entitled “Wireless Communication System Architecture Having
`Split MAC Layer”;
`• U.S. Pat. No. 6,862,448, entitled “Token-Based Receiver Diversity”;
`• U.S. Pat. No. 6,965,769, entitled “Testing Center”;
`• U.S. Pat. No. 7,149,196, entitled “Location Tracking in a Wireless Communication
`System Using Power Levels of Packets Received by Repeaters”;
`• U.S. Pat. No. 7,236,470, entitled “Tracking Multiple Interface Connections by Mobile
`Stations”;
`• U.S. Pat. No. 7,515,557, entitled “Reconfiguration of a Communication System”;
`• U.S. Pat. No. 7,668,542, entitled “Token-Based Receiver Diversity”;
`• U.S. Pat. No. 7,672,274, entitled “Mobility Support Via Routing”;
`• U.S. Pat. No. 7,689,210, entitled Plug-in-Playable Wireless Communication System”;
`• U.S. Pat. No. 7,876,704, entitled “Tunneling Protocols for Wireless Communications”;
`• U.S. Pat. No. 7,957,741, entitled “Token-Based Receiver Diversity”;
`• U.S. Pat. No. 8,027,637, entitled “Single Frequency Wireless Communication System”;
`• U.S. Pat. No. 8,064,380, entitled “Reconfiguration of a Communication System”;
`• U.S. Pat. No. 8,144,640, entitled “Location Tracking in a Wireless Communication
`System Using Power Levels of Packets Received by Repeaters”;
`• U.S. Pat. No. 8,189,538, entitled “Reconfiguration of a Communication System”;
`• U.S. Pat. No. 8,468,426, entitled “Multimedia-Aware Quality-of-Service and Error
`Correction Provisioning”;
`
`3
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`• U.S. Pat. No. 8,935,580, entitled “Multimedia-Aware Quality-of-Service and Error
`Correction Provisioning”;
`• U.S. Pat. No. 8,995,996, entitled “Methods and Apparatus for Performance Optimization
`of Heterogenous Wireless System Communities”;
`• U.S. Pat. No. 9,978,037, entitled “Personal Inventory and Product Support System”; and
`• U.S. Pat. No. 10,332,121, entitled “Light-Based Data Entry for Personal Inventory and
`Product Support System”.
`
`11.
`
`In addition, I am a Technical Expert and former Vice-Chair and Secretary of the
`
`Institute of Electrical and Electronics Engineers (hereinafter “IEEE”) 802.16 Working Group,
`
`which develops standards for long range, metropolitan-area wireless networks that incorporate
`
`many wireless protocol functions, procedures, and messages, such as random access procedures,
`
`adaptive modulation and coding, and base station handover procedures.
`
`B.
`
`12.
`
`Compensation
`
`I am being compensated for my time at my usual consulting rate of $700 per hour,
`
`plus actual expenses. No part of my compensation depends on the outcome of this case or on the
`
`opinions that I render.
`
`C. Materials Considered
`
`13.
`
`In preparing this declaration, I have relied upon my education, knowledge, and
`
`experience. I reviewed, among other things, the following materials:
`
`• Any materials cited herein;
`
`• The asserted patents and their file histories;
`
`• Smart Mobile’s infringement contentions
`
`II.
`
`UNDERSTANDING OF THE LAW
`
`A.
`
`14.
`
`Standard for Determining Person Having Ordinary Skill in the Art
`
`I understand that patents are to be interpreted from the person having ordinary skill
`
`in the art at the time of the invention (“POSITA”).
`
`4
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`15.
`
`I have been informed that a POSITA is a hypothetical person who has full
`
`knowledge of all the pertinent prior art, and that courts may consider the following factors in
`
`determining the level of skill in the art: (1) type of problems encountered in the art; (2) prior art
`
`solutions to those problems; (3) rapidity with which innovations are made; (4) sophistication of
`
`the technology; (5) educational level of active workers in the field.
`
`B.
`
`16.
`
`Indefiniteness
`
`I have been advised by counsel that the “definiteness requirement” of the patent
`
`laws of the United States requires that patent claims particularly point out and distinctly claim the
`
`subject matter which an inventor regards as the invention.
`
`17.
`
`Counsel has advised me that whether any claim terms or phrases are indefinite,
`
`should be determined from the perspective of a POSITA.
`
`18.
`
`Counsel has also advised me that a patent is valid and its claims definite if they,
`
`when read in light of the specification and the prosecution history, inform, with reasonable
`
`certainty, a POSITA about the scope of the invention.
`
`19.
`
`Counsel has also advised me that a patent is invalid for indefiniteness if its claims,
`
`read in light of the patent’s specification and prosecution history, fail to inform, with reasonable
`
`certainty, those skilled in the art about the scope of the invention.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`20.
`
`I understand that defendants contend that a person of ordinary skill (“POSITA”) in
`
`the field of the ’501 family patents would have had a bachelor’s degree in electrical engineering,
`
`or equivalent training, and approximately two years of experience working in the field of
`
`networking and wireless devices. Lack of work experience can be remedied by additional
`
`education, and vice versa.
`
`5
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`21.
`
`I understand that defendants contend that a POSIT A in the field of the '434 family
`
`patents would have had a bachelor's degree in electrical engineering, computer engineering,
`
`computer science, or a related field, and at least two years of experience related to the design or
`
`development of wireless communication systems, or the equivalent. Additional graduate
`
`education could substitute for professional experience, or significant experience in the field could
`
`substitute for formal education.
`
`22.
`
`I agree with defendants that these proposed definitions aTe appropriate for the
`
`asserted patents, and I have applied them for pwposes of my below opinions. However, it is also
`
`my opinion that these definitions are not significantly different from one another and either would
`
`be appropriate for any of the asse1ied patents. It is also my opinion that these definitions are
`
`approximate in the sense that my opinions would below would still apply if the definitions were
`
`modified slightly.
`
`IV.
`
`TABLE OF EXHIBITS ATTACHED TO TIDS DECLARATION
`
`23.
`
`Tme and correct copies of the documents noted below are attached as exhibits to
`
`this declaration.
`
`Number Title
`
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`
`U.S. Patent 8,442,501
`U.S. Patent 8,472,936
`U.S. Patent 8,472,937
`U.S. Patent 8,761 ,739
`U.S. Patent 8,824,434
`U.S. Patent 8,842,653
`U.S. Patent 8,982,863
`U.S. Patent 9,019,946
`U.S. Patent 9,049,119
`U.S. Patent 9,084,291
`U.S. Patent 9,191 ,083
`U.S. Patent 9,319,075
`U.S. Patent 9,614,943
`U.S. Patent 9,756,168
`
`Asserted Patents
`
`6
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`Number Title
`
`16
`17-18
`19
`20
`21
`22
`23
`24
`25
`26
`
`27
`
`28
`
`29
`
`30
`
`31
`
`32
`
`33
`
`34
`
`35
`
`36
`37
`
`38
`
`39
`
`40
`
`41
`
`42
`
`Applications and File Histories
`Excerpts of the File History of 08/764,903
`Excerpts of the File Hist01y of09/281 ,739, issued as U.S. Patent 6, 169,789
`Excerpts of the File History of09/617,608
`Excerpts of the File Histmy of09/591 ,381
`Excerpts of the File Histo1y of 13/615 ,274
`File Histmy of 13/615 ,478
`Excerpts of the File Hist01y of U.S. Patent 8,442,501
`Excerpts of the File Histmy of U .S. Patent 8,472,937
`Excerpts of the File Histo1y of U.S. Patent 9,191 ,083
`Excerpts of the File Histmy of U .S. Patent 9,756, 168
`Extrinsic Evidence
`EWTON'S TELECOM DICT., 11th Ed. [DEFS-CC-000000277-DEFS-CC-
`000000291]
`THE CONCISE OXFORD DICTIONARY OF CURRENT ENGLISH [DEFS-CC-000000040-
`DEFS-CC-00000005 51
`THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (3d ed. 1996)
`rDEFS-CC-000000001-DEFS-CC-0000000161
`EWTON 's TELECOM DICTIONARY (16th ed. 2000) [DEFS-CC-000000296-DEFS-
`CC-0000003121
`IEEE 100 THE AUTHORITATIVE DICTIONARY OF IEEE STANDARDS TERMS (2000),
`Seventh Edition rDEFS-CC-000000427-DEFS-CC-0000004291
`RANDOM HousE WEBSTER'S COMPUTER & INTERNET DICTIONARY ( 1999), Third
`Edition rDEFS-CC-000000430-DEFS-CC-0000004321
`BARRON' S DICTIONARY OF COMPUTER AND INTERNET TERMS ( 1998), Sixth Edition
`rDEFS-CC-000000424-DEFS-CC-0000004261
`FREEDMAN' S THE COMPUTER DESKTOP ENCYCLOPEDIA [DEFS-CC-000000035 -
`DEFS-CC-0000000391
`FREEDMAN'S THE COMPUTER GLOSSARY [DEFS-CC-000000386-DEFS-CC-
`0000003891
`DICTIONARY OF COMPUTER WORDS [DEFS-CC-000000056-DEFS-CC-000000059]
`WEBSTER'S NEW WORLD DICTIONARY OF MEDIA [DEFS-CC-000000418-DEFS-
`CC-000000420]
`EWTON 'S TELECOM DICTIONARY, 11th Ed. [DEFS-CC-000000317-DEFS-CC-
`0000003291
`IEEE STANDARD FOR SOFTWARE MAINTENANCE, IEEE Std. 1219-1993 [DEFS-CC-
`000000209-DEFS-CC-0000002531
`IEEE STANDARD GLOSSARY OF SOFTWARE ENGINEERING TERMINOLOGY, IEEE Std.
`610 .12-1990 rDEFS-CC-000000 106-DEFS-CC-0000001891
`CHAMBERS DICTIONARY OF SCIENCE AND TECHNOLOGY (1999) [DEFS-CC-
`000000017-DEFS-CC-0000000251
`MICROSOFT COMPUTER DICTIONARY ( 4th Ed. 1999) [DEFS-CC-000000260-DEFS -
`CC-0000002 72 l
`
`7
`
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`45
`
`46
`
`47
`
`48
`
`49
`
`50
`
`51
`
`52
`
`53
`
`44
`
`Number Title
`CHAMBERS 21 ST CENTURY DICTIONARY (1999) [DEFS-CC-000000029-DEFS-CC-
`43
`000000031 l
`MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY (10th Ed. , 1997) [DEFS-CC-
`000000254-DEFS-CC-000000256]
`MERRIAM-WEBSTER 's COLLEGIATE DICTIONARY (2000) [DEFS-CC-000000096-
`DEFS-CC-0000001051
`WEBSTER'S NEW WORLD DICTIONARY OF COMPUTER TERMS (8th Ed. , 2000)
`fDEFS -CC-00000041 0-DEFS-CC-0000004171
`THE ELECTRICAL ENGINEERING HANDBOOK (Richard C. Dorf, ed. , 2d ed. 1997)
`fDEFS -CC-000000060-DEFS-CC-000000071 l
`THE Co:MMUNICATIONS HANDBOOK (Jeny D . Gibson, ed., 1996) [DEFS-CC-
`000000032-DEFS-CC-000000034 l
`THE AUTHORITATIVE DICTIONARY OP IEEE STANDARDS TERMS (7th Ed., 2000)
`rDEFS-CC-000000093-DEFS-CC-0000000951
`HARGRAVE ' s COMMUNICATIONS DICTIONARY (IEEE Press, 2001) [DEFS-CC-
`000000086-DEFS-CC-0000000881
`WEBSTER' S NEW WORLD DICTIONARY OF COMPUTER TERMS (8th Ed., 2000)
`fDEFS-CC-000000406-DEFS -CC-0000004091
`EWTON's TELECOM DICTIONARY (16th ed. 2000) [DEFS-CC-000000292-DEFS-
`CC-00000029 5 l
`MICROSOFT COMPUTER DICTIONARY ( 4th Ed. 1999) [DEFS-CC-000000257-DEFS-
`CC-0000002591
`SMT's '943 Patent Prel. Infr. Cont. Against Apple, Ex. L
`
`54
`
`8
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`V.
`
`OPINIONS REGARDING TERMS SPECIFIC TO THE '501 PATENT FAMILY
`
`A.
`
`"server" (653 (4, 15, 27, 28); 946 (1, 4, 15, 17, 27, 28, 29, 30); 075 (1); 168 (2, 4
`19, 20, 28, 29, 34); 501 (1, 13, 16); 936 (1, 9, 11, 19); 937 (1, 13, 16); 739 (1, 13,
`16); 863 (1, 4, 5, 6, 11, 14, 19, 24); 119 (20); 083 (6, 8); 943 (6))
`
`Defendants' Proposed Construction
`
`Plain and ordina1y meaning
`
`SMT's Proposed Construction
`A computing device or program or collection of
`computing devices or programs that provides
`resources, data, services, or programs to other
`computing devices or programs over a network, or
`that enables access to a network or network
`resources.
`
`24.
`
`In this field, the word "server" generally refers to a computer that "serves" client
`
`devices through a network. 1 It generally connotes to persons of skill in the a1t a paiiicularly
`
`powerful computer capable of storing lots of data and providing that data to many client devices.
`
`Both now and at the time of the asse1ied patents, servers form the backbone of the Internet, in that
`
`servers store websites, enabling client devices to access those websites from anywhere in the
`
`world.
`
`25.
`
`I do not find SMT's proposed constmction to be consistent with how a POSITA
`
`would understand the plain and ordina1y meaning of the word "se1ver" as that term is used in the
`
`patent. Storing and providing data, such as website pages, exemplifies the soit of "se1vice" that a
`
`server provides.
`
`ot just any sort of interaction between two computing devices, however,
`
`connotes that one of them is server. For example, two peer-to-peer devices merely exchanging
`
`data with each other would not be considered a se1ver. Likewise, a client device that sends an
`
`email to a se1ver (that is routed to another client device) would not be a se1ver itself In these
`
`1 Unless I specifically state othe1wise, my opinions about the meaning of the claim te1ms
`addressed herein are from the perspective of the 1996-2000 timeframe when the Asse1ted Patents
`and the applications they claim priority to were filed.
`
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`examples, a client or peer-to-peer device is providing data to another device, but a POSIT A would
`
`not consider either device to be a se1ver, in the sense that it is not "se1ving" the other device.
`
`Likewise, a network access point (such as a Wi-Fi access point) or router can enable a client device
`
`to access the Internet or another network, but a POSIT A would not consider a device merely
`
`providing routing ftmctions alone to be se1ver.
`
`B.
`
`"functional instruction" (501 (1); 936 (1, 13, 20); 937 (1); 739 (1); 119 (20)))
`
`Defendants' Proposed Construction
`
`Indefinite
`
`SMT's Proposed Construction
`Software that, when executed by a processor,
`provides a ftmction.
`
`26.
`
`In my opinion, a POSIT A would not be reasonably certain of the scope of claims
`
`containing this limitation. Various asse1ted claims recite the phrase "ftmctional instmctions."
`
`Claim 1 of the '501 patent, for example, illustrates how this phrase is used: ''wherein the memory
`
`stores functional instmctions including instrnctions for use in providing a plurality of functions to
`
`the wireless device, at least one of the ftmctional instructions provided for switching between one
`
`or more networks including at least one public network."
`
`27.
`
`The te1m "functional instrnctions," however, is generally not a term of ait in the
`
`field of the Asse1ted Patents, and in my opinion, the patents do not provide guidance that makes it
`
`reasonably ce1tain what this tenn means. For example, the patents describe at column 5 that
`
`ftmctional instmction "sets" ai·e capable of doing various things, but the patents do not explain
`
`what "ftmctional instrnction sets" are. It is uncleai· whether ftmctional instrnctions ai·e a fom1 of
`
`software, and even if they ai·e, what they ai·e or how they would be created. The patents appeai· to
`
`describe ftmctional instrnctions and software as distinct concepts, since the patents refer to both
`
`"functional instrnction sets" and separately to "software" that are stored on a se1ver for use by a
`
`mobile device. For an example, see the '501 patent at column 3, lines 58-59. The patents also
`
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`Case 6:21-cv-00603-ADA-DTG Document 48-1 Filed 06/08/22 Page 13 of 84
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`refer to "functional instruction software." For an example, see the '501 patent at column 5, lines
`
`3-4. However, I do not see anything in the specification that clarifies what the difference in
`
`functional instructions and software is supposed to be in the context of these patents, or how a
`
`POSIT A would know whether any paiticular type of softwai·e includes functional instrnctions or
`
`not.
`
`28.
`
`In sh01t, the te1m is not a te1m of aii in this field, and in my opinion a POSITA
`
`would not be reasonably certain of what would qualify as a "functional instrnction" as that te1m is
`
`recited in the claims.
`
`C.
`
`"switching between one or more networks ... " (501,936,937,739,119)
`
`Defendants' Proposed Construction
`
`SMT's Proposed Construction
`
`Indefinite
`
`Plain meaning
`
`29.
`
`In my opinion, a POSIT A would not be reasonably certain of the scope of claims
`
`containing this limitation. V ai·ious asse1ied claims recite the phrase "switching between one or
`
`more networks including at least one public network." Claim 1 of the ' 501 patent, for example,
`
`illustrates how this phrase is used: "wherein the memmy stores functional instructions including
`
`instmctions for use in providing a plurality of functions to the wireless device, at least one of the
`
`functional instructions provided for switching between one or more networks including at least
`
`one public network."
`
`30. Mobile devices existed before 1996 (which I understand to be the earliest alleged
`
`effective filing date for some of the Asse1ied Patents) that were capable of connecting to one
`
`network and then "switching" to connect to a second network. Some common networks at the
`
`time included 2G cellular networks, such as GSM, D-AMPS, and IS-95, and local area networks
`
`for use in the home or office, two-way paging networks, and satellite networks.
`
`11
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`31.
`
`It was known that mobile devices, such as multi-mode devices, could access
`
`different types of networks and switch between them to provide multiple access fimctionalities in
`
`a single device.
`
`32.
`
`A POSITA could be reasonably ce1tain about what it means to switch between
`
`"two" networks. For example, a device can communicate on a first network and then "switch" to
`
`comrrnmicating on a second network (refeITed to by a POSIT A, for example, as a "handoff
`
`procedure"), and in that sense the device is switching between" two" networks. The patents,
`
`however, do not explain what switching between only "one" network means, and in my opinion a
`
`POSIT A would not be reasonably cetiain of what it means. As I have explained above, a device
`
`can switch "from" communicating on one network to communicating on another network, in which
`
`case the device is switching "between" two networks. But, it is unclear what it means for a device
`
`to switch "between" just one network.
`
`D.
`
`"dynamic/ dynamically" (434 (1); 501 (1, 2); 936 (1); 937 (2); 739 (1, 2); 863
`(4); 168 (2, 4))
`
`Defendants' Proposed Construction
`
`Indefinite.
`
`SMT's Proposed Construction
`When and as needed, responsive to variable
`conditions and without the need for user
`intervention.
`
`33.
`
`In my opinion, a POSIT A would not be reasonably ce1tain of the scope of claims
`
`containing the identified limitation. Various claims recite the te1m "dynamic" or "dynamically,"
`
`and in the claims, the tenns are used to describe various activities. For example, ' 501 patent claim
`
`1 recites "wherein the seiver enables dynamic conversion of the wireless device from a first
`
`fimction to a second fimction to provide a plurality of fimctions at the wireless device" and '501
`
`patent claim 2 recites "The system of claim 1, wherein the wireless device is adapted to switch
`
`dynamically between local networks and public caITier networks."
`
`12
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`34.
`
`The terms “dynamic” or “dynamically” are sometimes used in the field of the
`
`Asserted Patents, but not with a usage that would make sense in the context of the claim language
`
`at issue. For example, devices on Layer 3 computer networks are commonly assigned unique
`
`numerical addresses called IP addresses. Depending on the configuration of the network, a device
`
`could be assigned a “static” IP address that is fixed and does not change. Or, the device could
`
`receive a “dynamic” IP address that is not fixed but can generally change each time the device
`
`connects to the network. In this sense, “dynamic” means that the IP address is not fixed but is
`
`subject to change.
`
`35.
`
`However, that is not the sense in which the claims at issue use the term. As noted
`
`above, the claims already require some sort of change – whether it is conversion of the wireless
`
`device or switching from one network to another. The claims describe these changes themselves
`
`as being “dynamic.” Unlike the IP address example, the patents are not using “dynamic” to
`
`distinguish something static from something that changes, but to describe a particular type of
`
`change – that is, “dynamic” conversion or “dynamic” switching. However, it is unclear in the
`
`context of the patents what “dynamic” change means compared to change that is not “dynamic.”
`
`In my opinion, the specification does not provide guidance that would make a POSITA reasonably
`
`certain of what “dynamic” means in the context of the claims that recite that term.
`
`36.
`
`I have also reviewed dictionary definitions from the general timeframe of the
`
`Asserted Patents. Ex. 27 (NEWTON’S TELECOM DICT., 11th Ed. 207 (“Events are constantly
`
`changing.”)); Ex. 28 (THE CONCISE OXFORD DICT. OF CURRENT ENGLISH 424 (“energetic; active;
`
`potent.”)); Ex. 29 (THE AM. HERITAGE DICT. OF THE ENGLISH LANGUAGE 574 (“Marked by
`
`intensity and vigor; forceful.”)). However, those definitions do not fit with how “dynamic” is used
`
`in the context of the patents and claims.
`
`13
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`Smart Mobile Technologies LLC, Exhibit 2026
`Page 2026 - 15
`IPR2022-01248, Samsung Electronics Co., Ltd. et al. v. Smart Mobile Technologies LLC
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`3 7.
`
`From its constmction, SMT appears to believe that the te1m means events occur
`
`"without the need for user intervention" (among other requirements). However, the patent
`
`specifications do not specifically mention whether "user intervention" is or is not required for the
`
`events it describes as "dynamic." In my opinion, a POSITA would not understand from the
`
`specification' s description of "dynamic" events that those events are required to occur "without
`
`user intervention."
`
`E.
`
`"wherein a private network includes a wireless local area network (WLAN)
`for use in a home or office" (501 (18); 739 (18))
`
`Defendants' Proposed Construction
`
`SMT's Proposed Construction
`
`Indefinite
`
`Plain meaning.
`
`38.
`
`In my opinion, a POSITA would not be reasonably ce11ain of the scope of claims
`
`containing the identified limitation. Claim 18 of the '501 and '739 patents recites "The system of
`
`claim 1, wherein the public network includes a GSM network and wherein a private network
`
`includes a wireless local area network (WLAN) for use in a home or office."
`
`39.
`
`The phrase "private network" refers to a type of computer network that is distinct
`
`from a "public network." Thus, the phrase "private network" does not refer back to anything in
`
`the independent claim, so it is unclear what relationship that phrase has to anything being recited
`
`in the independent claim. It is difficult to envision what soli of system would practice the patents.
`
`For example, does the "private network" meet this claim requirement as long as it exists anywhere,
`
`even if it has no relationship whatsoever to the elements of the system recited in the independent
`
`claim whatsoever? In my opinion, it would not be reasonably ce11ain to a POSIT A what "private
`
`network" is being claimed in these claims or what one must show of a "private network" for
`
`purposes of infringement or validity.
`
`14
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`F.
`
`"the prioritization includes data based on GPS or wireless local area network
`(WLAN)" (937 (18))
`
`Defendants' Proposed Construction
`
`SMT's Proposed Construction
`
`Indefinite
`
`Plain meaning.
`
`40.
`
`In my opinion, a POSIT A would not be reasonably ce1tain of the scope of claims
`
`containing the identified limitation. Claim 1 of the '937 patent recites a mem01y that "stores
`
`prioritization data" related to connecting to a plurality of wireless networks. Claim 18 of the '937
`
`patent then recites "The system of claim 1, wherein the p1ioritization includes data based on GPS
`
`or wireless local area network (WLAN)."
`
`41.
`
`It is unclear in my opinion what "the pri01itization includes data based on GPS or
`
`wireless local area network (WLAN)" recited by claim 18 of the '937 patent means. The patent
`
`does not use the word "p1iority" or "prioritization," and I do not otherwise see any guidance in the
`
`specification for what it means for a prioritization to be "based on" GPS or ''based on" a WLAN.
`
`SMT proposes a plain meaning for this term, so it is unclear where SMT believes that this concept
`
`is described in the specification. I reserve the right to provide opinions in response to SMT's
`
`position, to the extent SMT fmther clmifies what it believes to be the desc1iption in the
`
`specification of this concept, or what it believes to be the plain meaning of this te1m.
`
`G.
`
`"A mobile device communication system ... " (119 (20))
`
`Defendants' Proposed
`Construction
`
`SMT's Proposed Construction
`
`Plain meaning, with the exception of "mobile device" and
`"se1ver," which should be constrned as proposed by Smmi
`The preamble is limiting. The Mobile, and "the se1ver enables conversion of the mobile
`server is pa1t of the claimed
`device from a first function to a second function by providing
`mobile device communication
`a plurality of functions to the mobile device," which should
`be construed as "the se1ver enables conversion of the mobile
`system.
`device from a first capability to a second capability / plurality
`of wirele