Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`
` Genius Sports Ltd.
`Petitioner
`
`v.
`
`SportsCastr Inc. (d/b/a Panda Interactive)
`Patent Owner
`
`U.S. Patent Nos. 10,425,697; 10,805,687; and 11,039,218
`
`Case No. 2:23-cv-00471-JRG
`
`
`DECLARATION OF DR. STEPHEN B. WICKER UNDER C.F.R. 1.68 IN
`SUPPORT OF PETITIONS FOR INTER PARTES REVIEW OF U.S.
`PATENT NOS. 10,425,697; 10,805,687; AND 11,039,218
`
`
`Genius Sports Ex. 1001
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`

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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`TABLE OF CONTENTS
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`Page
`Introduction .................................................................................................... 1
`I.
`II. Qualifications and Background .................................................................... 2
`A.
`Education Background and Career History ........................................... 2
`B.
`Publications and Patents ........................................................................ 4
`C. Other Relevant Qualifications ............................................................... 5
`D.
`Prior Testimony ..................................................................................... 6
`III. Understanding of Patent Law ....................................................................... 7
`IV. Description of the Technology ....................................................................11
`A.
`Internet Communications in General ..................................................11
`B. Network Communication Models .......................................................16
`C.
`Protocols for Real-time or Low-latency Data Transmission ..............18
`1.
`Real-Time Transport Protocol (RTP) .......................................18
`2.
`HTTP Polling ............................................................................18
`3. WebSocket ................................................................................19
`4.
`Stream Control Transmission Protocol (SCTP) .......................20
`5.
`Real-Time Messaging Protocol (RTMP) ..................................20
`6. Web Real-Time Communication (WebRTC) ...........................21
`7.
`Dynamic Adaptive Streaming Over HTTP (“DASH” or
`“MPEG-DASH”) / HTTP Live Streaming (HLS) ....................22
`Internet Live Video Streaming ............................................................23
`D.
`V. Overview of the Challenged Patents ..........................................................24
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`A. Alleged Problem in the Art .................................................................24
`B. Alleged Invention of the Challenged Patents ......................................25
`VI. Level of Ordinary Skill in the Art ..............................................................30
`VII. Claim Construction .....................................................................................31
`A.
`The ’687, ’697, and ’218 Patent ..........................................................31
`VIII. Summary of the Prior Art ...........................................................................35
`A. U.S. Patent Pub. No. 2015/0163379 (“Herzog”) ................................35
`B. U.S. Patent Pub. No. 2014/0229992 (“Ellis”) .....................................40
`C. U.S. Patent Pub. No. 2016/0036910 (“Spivey”) .................................43
`IX. A POSA’s Motivation To Combine Prior Art References with a
`Reasonable Expectation of Success ............................................................49
`A.
`Ellis in View of Spivey .......................................................................49
`1.
`Socket Server (Spivey) ..............................................................49
`Ellis in View of Spivey and Herzog ....................................................56
`1. Webserver (Herzog) ..................................................................56
`2. Multiple live streams from one sporting event (Herzog)..........59
`C. Herzog in View of Spivey ...................................................................62
`1.
`Socket server (Spivey) ...............................................................62
`D. Herzog in View of Ellis .......................................................................66
`1.
`Real-time information stream (Ellis) ........................................66
`2.
`Interactive content (Ellis) ..........................................................69
`Herzog in View of Spivey and Ellis ....................................................71
`1.
`Socket Server (Spivey) ..............................................................71
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`B.
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`E.
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`Real-time information stream (Ellis) ........................................74
`2.
`3. Multiple live events (Ellis) ........................................................77
`X. Grounds ........................................................................................................84
`A.
`The ’218...............................................................................................86
`1.
`’218 Ground 1A: Claims 12-30 Are Obvious Over Ellis
`in View of Spivey .....................................................................86
`’218 Ground 1B: Claims 1-11 Are Obvious Over Ellis in
`View of Spivey and Herzog ....................................................128
`’218 Ground 2A: Claims 21-22 and 27-28 Are
`Anticipated by Herzog ............................................................144
`’218 Ground 2B: Claims 1-9, 12-14, 16-20, 23-24, and
`29 Are Obvious Over Herzog in View of Spivey ...................154
`’218 Ground 2C: Claims 25-26 and 30 Are Obvious Over
`Herzog in View of Ellis ..........................................................190
`’218 Ground 2D: Claims 10-11 and 15 Are Obvious Over
`Herzog in View of Spivey and Ellis .......................................194
`The ’687.............................................................................................198
`1.
`’687 Ground 1A: Claims 1, 8-9, 19-25, 27-30 Are
`Obvious Over Ellis in View of Spivey ...................................198
`’687 Ground 1B: Claims 2-7 Are Obvious Over Ellis in
`View of Spivey and Herzog ....................................................255
`’687 Ground 2: Claims 1-9, 19-25, 27-30 Are Obvious
`Over Herzog in View of Spivey and Ellis ..............................271
`The ’697.............................................................................................331
`1.
`’697 Ground 1A: Claims 1, 7-9, 19-25, 27-30 Are
`Obvious Over Ellis in View of Spivey ...................................331
`’697 Ground 1B: Claims 2-6 are Obvious over Ellis in
`View of Spivey and Herzog ....................................................407
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`B.
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`C.
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`2.
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`3.
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`4.
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`5.
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`6.
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`2.
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`3.
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`2.
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`3.
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`’697 Ground 2: Claims 1-9, 19-25, 27-30 Are Obvious
`Over Herzog in View of Spivey and Ellis ..............................420
`XI. Secondary Considerations of Non-Obviousness .....................................488
`XII. Conclusion ..................................................................................................489
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`TABLE OF EXHIBITS1
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`
`
`Description
`Exhibit No.
`Exhibit 1001 Declaration of Dr. Stephen Wicker, Ph.D., (i.e., this declaration)
`
`Exhibit 1002 Curriculum Vitae of Dr. Stephen Wicker, Ph.D.
`
`Exhibit 1003 U.S. Patent No. 10,805,687
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`Exhibit 1004 Claim Listing of U.S. Patent No. 10,805,687
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`Exhibit 1005 Certified File History of U.S. Patent No. 10,805,687
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`Exhibit 1006 U.S. Patent No. 10,425,697
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`Exhibit 1007 Claim Listing of U.S. Patent No. 10,425,697
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`Exhibit 1008 Certified File History of U.S. Patent No. 10,425,697
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`Exhibit 1009 U.S. Patent No. 11,039,218
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`Exhibit 1010 Claim Listing of U.S. Patent No. 11,039,218
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`Exhibit 1011 Certified File History of U.S. Patent No. 11,039,218
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`Exhibit 1012 U.S. Patent No. 11,871,088
`
`Exhibit 1013 Director Vidal Memorandum re: Sotera Stipulations
`Exhibit 1014 SportsCastr’s Complaint for Patent Infringement against Genius
`Sports
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`Exhibit 1015 U.S. Patent Pub. No. 2015/0163379 (“Herzog”)
`
`Exhibit 1016 U.S. Patent Pub. No. 2014/0229992 (“Ellis”)
`
`
`Unless otherwise specified, citations are to the original page, column, and line
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`1
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`numbers in exhibits. Brackets ([]) are used to refer to the sequential page numbers
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`added to exhibits pursuant to 37 C.F.R. §42.63(d)(2)(i).
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`Exhibit 1017 U.S. Patent Pub. No. 2016/0036910 (“Spivey”)
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`Exhibit 1018 U.S. Patent Pub. No. 2015/0163379 (“Mitic”)
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`Exhibit 1019 SportsCastr’s Preliminary Infringement Contentions
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`Exhibit 1020 SportsCastr’s Response to Genius Sports’ First Set of Interrogatories
`
`Exhibit 1021 Genius Sports’ proposed Sotera Stipulation to SportsCastr
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`Exhibit 1022
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`James F. Kurose & Keith W. Ross, Application Layer, in Computer
`Networking A Top-Down Approach (Michael Hirsch et al. eds., 4th
`ed. 2012) (“Kurose”)
`
`Exhibit 1023
`
`John Dilley et al., Globally Distributed Content Delivery, IEEE
`Internet Computing (Sept.–Oct. 2002).
`Exhibit 1024 Mário Marques da Silva, Multimedia Communications and
`Networking (2012) (“Silva”)
`
`Exhibit 1025
`
`Exhibit 1026
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`Exhibit 1027
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`Exhibit 1028
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`A Brief History of the Internet, ONLINE LIB. LEARNING CENTER. (Feb.
`9, 2024),
`https://www.usg.edu/galileo/skills/unit07/internet07_02.phtml
`(“Online Library”)
`
`Hisayuuki Ohmata et al., Hybridcast: A new media experience by
`integration of broadcasting and broadband, 2013 ITU Kaleidoscope:
`Building Sustainable Communities, April 2013 (“Ohmata”)
`
`Henning Schulzrinne et al., RTP: A Transport Protocol for Real-
`Time-Applications, DataTracker (January 1996),
`https://datatracker.ietf.org/doc/html/rfc1889 (“Schulzrinne”)
`
`Brijesh Kumar, Making Sense of Video Streaming Protocols,
`LinkedIn. (Aug. 11, 2016), https://www.linkedin.com/pulse/making-
`sense-video-streaming-protocols-dr-brijesh-kumar/ (“Kumar”)
`
`Exhibit 1029
`
`Ian Fette & Alexey Melnikov, The WebSocket Protocol, RFC Editor.
`(Dec. 2016), https://www.rfc-editor.org/rfc/rfc6455.html.
`
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`Exhibit 1030
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`Marcin Warczygłowa, Real-time Web Application with Websockets
`and Vert.X (Nov. 10, 2015), https://blog.allegro.tech/2015/11/real-
`time-web-application-with-websockets-and-vert-x.html.
`Exhibit 1031 Randall Stewart & Chris Metz, SCTP: new transport protocol for
`TCP/IP, 5 IEEE 64, (2001) (“Stewart”)
`
`Exhibit 1032
`
`Lydon Ong, John Yoakum &, An Introduction to the Stream Control
`Transmission Protocol (SCTP), Datatracker. (May. 2002),
`https://datatracker.ietf.org/doc/rfc3286/ (“Ong”)
`Jan Newmarch, Introduction to Stream Control Transmission
`Protocol, LINUX J. (Sep. 1, 2007),
`https://www.linuxjournal.com/article/9748 (“Newmarch”)
`Exhibit 1034 Kyung-Hoe Kim et al, A transmission control SCTP for real-time
`multimedia streaming, 54 Computer Networks 1418, (2010) (“Kim”)
`
`Exhibit 1033
`
`Exhibit 1035
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`High Scalability, How Facebook Live Streams to 800,000
`Simultaneous Viewers, ByteByteGo (Jun. 27, 2016),
`https://blog.bytebytego.com/?utm_source=hs&utm_medium=ann&ut
`m_campaign=top (“ByteGo”)
`Exhibit 1036 Hardeep Singh Parmar & Michael C. Thornburgh, Adobe’s Real
`Time Messaging Protocol, Veriskope. (Dec. 21, 2002) (“Parmer”)
`
`Exhibit 1037
`
`Ilya Grigorik, WebRTC, in High Performance Browser Networking,
`(2013) (“Grigorik”)
`Exhibit 1038 Sam Dutton, Get started with WebRTC, web.dev. (Jul. 23, 2012),
`https://web.dev/articles/webrtc-basics (“Dutton”)
`Exhibit 1039 Andy Salo, MPEG DASH: A Technical Deep Dive and Look at
`What’s Next, RGB Networks, (2012) (“Salo”)
`
`Exhibit 1040
`
`Jan Ozer, Upstream, Justin.tv, Livestream, and Bambuser: Streaming
`Unplugged, Streaming Media Magazine., Jun.–Jul. 2012 (“Ozer”)
`
`Exhibit 1041
`
`Christopher Mueller, MEPG-DASH vs. Apple HLS vs. Microsoft
`Smooth Streaming vs. Adobe HDS, BITMOVIN. (Mar. 29, 2015),
`https://bitmovin.com/mpeg-dash-vs-apple-hls-vs-microsoft-smooth-
`streaming-vs-adobe-hds/ (“Mueller”)
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`Exhibit 1042
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`Stefan Saroiu et al., An analysis of Internet Content Delivery
`Systems, ACM SIGOPS Operating System Review, Vol. 36 (Dec. 31,
`2002), https://doi.org/10.1145/844128.84415 (“Saroiu”)
`
`Exhibit 1043
`
`Charles Marion & Julien Jomier, Real-time Collaborative Scientific
`WebGL Visualization with Websocket, Ass’n Computing Machinery,
`August 4-5, 2012 (“Marion”)
`Exhibit 1044 Mark Sweney, First ads appear on YouTube Clips, The Guardian,
`Aug. 22, 2007 (“Sweney”)
`Exhibit 1045 Richard Sandomir, The Innovation That Grew and Grew, N.Y.
`Times, June 12, 2014 (“Sandomir”)
`
`Exhibit 1046
`
`Victoria Pimentel & Bradford G. Nickerson, Communicating and
`Displaying Real-Time Data with WebSocket, 16 IEEE (2012)
`(“Pimentel”)
`Exhibit 1047 Lucian Popa et al., HTTP as the narrow waist of the future internet,
`2010 ACM SIGCOMM Workshop, October 2013 (“Popa”)
`
`
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`Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`I, Dr. Stephen B. Wicker, declare as follows:
`I. INTRODUCTION
`1. My name is Stephen B. Wicker, Ph.D. I am Professor Emeritus of
`
`
`
`Electrical and Computer Engineering at Cornell University in Ithaca, New York. I
`
`have been retained on behalf of Genius Sports Ltd. to provide my opinions regarding
`
`whether claims 1-9, 19-25, and 27-30 of U.S. Patent No. 10,805,687 (“the ’687
`
`patent”); claims 1-9, 19-25, 27-30 of U.S. Patent No. 10,425,697 (“the ’697 patent”);
`
`and claims 1-30 of U.S. Patent No. 11,039,218 (“the ’218 patent”) would have been
`
`invalid to one of ordinary skill in the art as of August 5, 2016 in the above-captioned
`
`Petitions for Inter Partes Review (“IPR”) of the ’687, ’697, and ’218 patents.
`
`2.
`
`For time spent in connection with this matter, I will be compensated at
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`my standard billing rate of $900 per hour. I am being separately reimbursed for any
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`out-of-pocket expenses. My compensation does not depend on the content of my
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`opinions or the outcome of this case.
`
`3.
`
`In forming the opinions expressed in this Declaration, I have also relied
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`on my academic and professional experience. I also considered the viewpoint of a
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`person having ordinary skill in the art as of the time of alleged invention of the ’687,
`
`’697, and ’218 patents. My opinions are based, at least in part, on the following:
`
`• U.S. Patent No. 10,805,687 (“the ’687 Patent”) (Ex. 1003)
`
`• U.S. Patent No. 10,425,697 (“the ’697 patent”) (Ex. 1006)
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`1
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`• U.S. Patent No. 11,039,218 (“the ’218 Patent”) (Ex. 1009)
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`
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`• U.S. Patent No. 10,805,687 Certified File History (Ex. 1005)
`
`• U.S. Patent No. 10,425,697 Certified File History (Ex. 1008)
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`• U.S. Patent No. 11,039,218 Certified File History (Ex. 1011)
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`• U.S. Patent Pub. No. 2015/0163379 (“Herzog”) (Ex. 1015)
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`• U.S. Patent Pub. No. 2014/0229992 (“Ellis”) (Ex. 1016)
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`• U.S. Patent Pub. No. 2016/0036910 (“Spivey”) (Ex. 1017)
`
`II. QUALIFICATIONS AND BACKGROUND
`A. Education Background and Career History
`4. My curriculum vitae is attached hereto as Exhibit 1002. It provides an
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`accurate identification of my background and experience.
`
`5.
`
`I earned my Bachelor of Science degree in Electrical Engineering from
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`the University of Virginia in 1982. In 1983, I earned a Master of Science degree in
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`Electrical Engineering from Purdue University, and in 1987, I earned a Ph.D. in
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`Electrical Engineering from the University of Southern California. My doctoral
`
`studies focused on the theory of sequences and error control codes for digital
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`communication systems.
`
`6.
`
`In 1982-1983, I worked for the Network Architecture Research Group
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`of Bell Laboratories, in Columbus, Ohio. While with Bell Laboratories, I worked
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`on digital switching systems for the messages that control the telephone network.
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`7.
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`From August 1983 through September 1987, I was a System Engineer
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`for the Space and Communications Group of the Hughes Aircraft Company, in El
`
`Segundo, California. During this time my primary focus was on the design and
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`development of communication payloads for commercial, military, and NASA
`
`spacecraft. My work at Hughes included acting as the Principal System Engineer
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`for new business in advanced satellite systems.
`
`8.
`
`From September 1987 through June 1996, I was a member of the
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`faculty of the School of Electrical and Computer Engineering at Georgia Tech.
`
`9.
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`From July 1, 1996, to February 29, 2024, I was a member of the faculty
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`of the School of Electrical and Computer Engineering at Cornell University, where
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`I taught and conducted research in wired and wireless information networks, digital
`
`telephony, information theory, and security. Since that time, I have continued to
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`serve Cornell as an Emeritus faculty member, conducting research, advising students
`
`and faculty, and giving occasional lectures. Over my time at Georgia Tech and
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`Cornell, I have supervised forty-four Ph.D. students.
`
`10.
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`I have consulted extensively with Motorola, MTel, Lockheed,
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`Integrated Device Technologies, Unisys, Texas Instruments, and other corporations
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`to develop advanced technologies for their products.
`
`11. My current research focuses on wireless and wired information
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`networks, with an emphasis on network security and privacy. I have been
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`particularly focused on client-facing systems such as cellular technology and content
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`
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`distribution networks. I am particularly interested in the security and privacy issues
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`that arise in streaming systems.
`
`B.
`12.
`
`Publications and Patents
`I have written and/or edited six books and roughly 250 journal and
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`conference papers, most of which focus on digital communication systems and
`
`information networks. I am the author of Cellular Convergence and the Death of
`
`Privacy (Oxford University Press, 2013). I am also the author of Error Control
`
`Systems for Digital Communications and Storage (Prentice Hall, 1995), which has
`
`been adopted as a text for courses in over sixty universities in fourteen countries. I
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`am the author of Reed-Solomon Codes and Their Applications, published in 1994 by
`
`the IEEE Press; Turbo Coding, published in November 1998 by Kluwer Academic
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`Press; and Fundamentals of Codes, Graphs, and Iterative Decoding, published in
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`2002 by Kluwer Academic Press.
`
`13. My journal publications include “Ad Blockers: Technology, Ethics, and
`
`a Serious Difference of Opinion,” Communications of the ACM, October 2017 (with
`
`K. Karlsson) and “Digital rights management: The cost to consumers,” in
`
`Proceedings of the IEEE, vol.103, no.5, pp.726-33, May 2015 (with A. S. Kubesch).
`
`14.
`
`I have also contributed chapters to several books, including “Privacy-
`
`Aware Design for the Monitoring, Control, and Protection of Critical Infrastructure,”
`
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`in Homeland Security Threats, Countermeasures, and Privacy Issues (ed. Giorgio
`
`
`
`Franceschetti), Artech House, 2010. A complete list of my publications is contained
`
`in my curriculum vitae, a copy of which is provided as Ex.1002 to the Petition.
`
`15.
`
`I am a named inventor on the following patents.
`
`• Wicker, S.B., “Private Overlay for Information Networks”, U.S. Patent
`No. 9,813,233, 7 November, 2017 - assigned to Cornell University.
`
`Ober, C.K., O'Rourke, T.D., Spencer, M.G., Turner, J.N., Wicker, S.B.,
`•
`“Flexible Substrate Sensor System For Environmental And Infrastructure
`Monitoring”, U.S. Patent No. 8,701,469, 22 April 2014 - assigned to Cornell
`University.
`
`Fontaine, F. and Wicker, S.B., “Method and Apparatus for Turbo
`•
`Decoding Block Codes”, U.S. Patent 7,243,288, 10 July 2007 - assigned to
`Motorola Inc.
`
`• Wicker, S.B. and Fine, T.L., “Sensor-Assisted ALOHA Multiple
`Access”, U.S. Patent No. 6,404,750, 11 June 2002 - assigned to Cornell
`University.
`
`• Wang, X.A. and Wicker, S. B., “Artificial Neural Network Viterbi
`Decoding System and Method,” U.S. Patent No. 5,548,684, 20 August, 1996
`- assigned to Georgia Tech Research Corporation.
`C. Other Relevant Qualifications
`I have served as an Associate Editor for the IEEE Transactions on
`16.
`
`Communications and the ACM Transactions on Sensor Networks. I was twice
`
`elected to the Board of Governors of the IEEE Information Theory Society. I have
`
`also edited several special issues for a variety of journals and technical magazines,
`
`and served a three-year term on the Information Science and Technology Panel for
`
`the Defense Advanced Research Projects Agency (DARPA). The DARPA panel is
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`responsible for technology assessment for the U.S. Department of Defense. My
`
`
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`DARPA duties included leading a one-year study on wireless sensor networks.
`
`17.
`
`In 2011, I was named a Fellow of the IEEE for contributions to wireless
`
`information systems. From 2005 to 2018, I served as the Cornell University
`
`Principal Investigator for the TRUST Science and Technology Center - a National
`
`Science Foundation center dedicated to the development of technologies for securing
`
`the nation’s critical infrastructure.
`
`18.
`
`In 2014, I briefed the staff of the National Economic Council at the
`
`White House on the subject of privacy aware designs for cellular and the smart grid.
`
`19.
`
`I have taught communication system theory and design to thousands of
`
`students at Georgia Tech and Cornell over the past thirty-seven years. I have been
`
`the recipient of four Cornell University College of Engineering faculty teaching
`
`awards.
`
`Prior Testimony
`D.
`20. The cases in which I have testified as an expert at trial or by deposition
`
`within the preceding five-plus years are as follows:
`
`• Wireless Alliance v AT&T et al. (for the defendants)
`• Touchstream v. Charter (for the plaintiff)
`• SEVEN Networks v. Motorola Mobility (for the defendant)
`• Ax Wireless v Lenovo and Dell (for the defendants)
`• Identity Security v. Apple (for the defendant)
`• Netgear v. TP-Link (for the claimant, ITC)
`• Acceleration Bay v Activision (for the defendant)
`• State Farm v. Amazon (for the plaintiff)
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`• GComm v. Samsung (for the defendant)
`• Unisys v. Atos et al. (for the plaintiff)
`• Alacritech v. Intel et al. (for the defendants)
`• University of Minnesota v. Ericsson and Nokia (for the defendants)
`• Viasat v. Adobe (for the defendant)
`• KPN v Ericsson (for the defendant)
`• TQ Delta v DISH (for the defendant)
`• AMO Development v. Alcon Vision, LLC (for the defendant)
`• Sonrai v. Samsung et al (for the defendants)
`• IPCom v AT&T et al (for the defendants)
`• Teradyne v. Astronics (for the defendant)
`• Huawei v. Verizon (for the defendant)
`• Google v. Sonos (for the defendant)
`• Barkan v. Sprint et al. (for the defendants)
`• Gigamon v. Apcon (for the defendant)
`• Impact Engine v. Google (for the plaintiff)
`• Sprint v. Altice et al. (for the plaintiff)
`• KAIFI v. AT&T (for the defendant)
`• Sprint v. Charter et al. (for the plaintiff)
`• Live Person v. 24/7 (for the plaintiff)
`• Motorola v. Hytera (for the plaintiff)
`
`III.
`21.
`
`UNDERSTANDING OF PATENT LAW
`I understand that prior art to the ’687, ’697, and ’218 patents includes
`
`patents in the relevant art that predate the priority date of the ’687, ’697, and ’218
`
`patents.
`
`22.
`
`I understand that claims in an IPR are construed under the case Phillips
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`v. AWH Corp., 415 F.3d 1303, decided by the Federal Circuit in 2005. I understand
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`that under the rule in Phillips, words of claims are given their plain and ordinary
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`meaning as understood by a person of ordinary skill in the art in view of the
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`specification and prosecution history, unless those sources show an intent to depart
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`from such meaning. No terms need to be construed for the purposes of this
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`declaration. I reserve the right to respond to any constructions offered by the Patent
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`Owner or adopted by the Board.
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`23.
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`I further understand from counsel that inventors may draft their claims
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`as a means or step for performing a specified function, but that they must also
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`disclose in the specification the structure that performs the function, or that claim is
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`indefinite. I also understand that construing a means-plus-function claim requires
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`identifying the claimed function and determining what structure, if any, disclosed in
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`the specification corresponds to the claimed function. I further understand that a term
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`with a computer-implemented function must have a clearly linked structure in the
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`form of an algorithm. I understand that if I cannot identify such an algorithm, the
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`term lacks a clearly linked structure and is therefore indefinite. I further understand
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`that a general purpose computer cannot be the structure for a computer-implemented
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`function because this amounts to purely functional claiming.
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`24.
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`I understand that in IPR a claim is unpatentable if it is anticipated or
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`obvious. Anticipation of a claim requires that every element of a claim be disclosed
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`expressly or inherently in a single prior art reference, arranged in the prior art
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`reference as arranged in the claim. An element is inherent if it is necessarily present
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`in the reference.
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` Ex. 1001 - Declaration of Stephen B. Wicker, Ph.D.
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`25.
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`It is my understanding that a patent claim is unpatentable for
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`obviousness if the claimed invention would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art (POSA).
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`26.
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`I understand that the following factors are considered: (1) the scope and
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`content of the prior art; (2) the differences between the art and the claims at issue;
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`(3) the level of ordinary skill in the art at the time the invention of the asserted patent
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`was made; and (4) objective evidence of nonobviousness. In order to determine
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`whether claim elements are found in the prior art, it is necessary to compare the
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`properly construed claim language of the patent with the teachings of the prior art.
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`27.
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`I understand
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`that certain
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`factors—often called “secondary
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`considerations”—may support or rebut an assertion of obviousness of a claim. I
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`understand that such secondary considerations include, among other things,
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`commercial success of the alleged invention, skepticism of those having ordinary
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`skill in the art at the time of the alleged invention, unexpected results of the alleged
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`invention, any long-felt but unsolved need in the art that was satisfied by the alleged
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`invention, the failure of others to make the alleged invention, praise of the alleged
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`invention by those having ordinary skill in the art, and copying of the alleged
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`invention by others in the field. I further understand that there must be a nexus—a
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`connection—between any such secondary considerations and the alleged invention.
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`28.
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`I further understand that a claim can be found obvious if it unites old
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`elements with no change to their respective functions or alters prior art by mere
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`substitution of one element for another known in the field, with that combination
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`yielding predictable results. While it may be helpful to identify a reason for this
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`combination, common sense should guide, and there is no rigid requirement for a
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`teaching, suggestion, or motivation to combine. When a product is available, design
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`incentives and other market forces can prompt variations of it, either in the same
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`field or different one. If a person having ordinary skill in the relevant art can
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`implement a predictable variation, obviousness likely bars patentability. Similarly,
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`if a technique has been used to improve one device, and a person having ordinary
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`skill in the art would recognize that the technique would improve similar devices in
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`the same way, use of the technique is obvious. I further understand that a claim may
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`be obvious if common sense directs one to combine multiple prior art references or
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`add missing features to reproduce the alleged invention recited in the claims.
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`29.
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`I also understand the following rationale may support a finding of
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`obviousness:
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`a.
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`Combining prior art elements according to known methods to
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`yield predictable results;
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`b.
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`Simple substitution of one known element for another to obtain
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`predictable results;
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`c.
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`User of known technique to improve similar devices (methods,
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`or products) in the same way;
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`d.
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`Applying a known technique to a known device (method, or
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`product) ready for improvement to yield predictable results;
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`e.
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`“Obvious to try” — choosing from a finite number of identified,
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`predictable solutions, with a reasonable expectation of success;
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`f.
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`Known work in one field of endeavor may prompt variations of
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`it for use in either the same field or a different on based on design
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`incentives or other market forces if the variations are predictable to one of
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`ordinary skill in the art;
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`g.
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`Some teaching, suggestion, or motivation in the prior art that
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`would have led one of ordinary skill to modify the prior art reference or to
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`combine prior art reference teachings to arrive at the claimed invention.
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`30.
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`I also understand that it is impermissible to use the claimed invention
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`itself as a blueprint for piecing together elements in the art. In other words, it is
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`impermissible to use hindsight reconstruction to pick and choose among disclosures
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`in the prior art to reconstruct the claimed invention.
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`IV.
`A.
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`DESCRIPTION OF THE TECHNOLOGY
`Internet Communications in General
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`31. The Internet allows devices, such as servers, smartphones, and tablets,
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`to communicate by exchanging digital information in the form of packets across a
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`global system of interconnected computer networks. To exchange information
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`reliably and effectively, each device and network must use a standard set of rules,
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`messages, and messaging formats, known as communication “protocols.” Ex.1024,
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`23, 417.
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`32. The term “Internet” is a contraction of the phrase “interconnected
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`network”. The Internet is not one network, but is instead many interconnected
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`networks. It consists of many groups of networks, including the following examples,
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`interconnected at network access points.
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`• Backbones (e.g., AT&T, Verizon, and Sprint)
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`• Regional Networks
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`• Local Networks (e.g., Cornell computer network)
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`33. The first piece of the Internet was ARPANET. It was built by DARPA
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`in the late 1960’s to interconnect research centers, military bases, and government
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`locations of various types. The Defense Communication Agency (DCA) converted
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`ARPANET into a research tool in 1975. ARPANET was split into MILNET (for
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`military bases) and ARPANET (for research centers) in 1983.
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`34. One of the primary foci of the ARPANET research was the
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`development of interconnection protocols. The first milestone in this area was the
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`Network Control Program (NCP - 1969). As a monolithic program, it exhibited
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`scalability problems as the Internet evolved. In the 1970s, NCP was broken up into
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`TCP (the Transmission Control Protocol) and IP (the Internet Protocol). This was
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`the beginning of the suite of protocols that we now referred to as TCP/IP.
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`35.
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`In 1983 DARPA insisted that all computers wanting to connect to
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`ARPANET use TCP/IP. This was a critical step, as it allowed for different computer
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`technologies to share the Internet.
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`36. ARPANET was eventually replaced by NSFNET, in part to reflect the
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`increasing prominence of academic research. In 1986, the National