Plaintiff,
`
`v.
`
`HUAWEI DEVICE USA INC., ET AL.,
`
`
`Defendants.
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`§
`Case No. 2:17-cv-513-JRG
`§
`(LEAD CASE)
`§
`
`§
`
`§
`§
`JURY TRIAL DEMANDED
`§
`§
`§
`§
`
`
`
`
`DECLARATION OF DR. JAIME G. CARBONELL IN SUPPORT OF
`PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF
`
`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 1 of 42 PageID #: 6222
`
`
`AGIS SOFTWARE DEVELOPMENT, LLC,
`
`
`
`
`I, Jaime G. Carbonell, declare and state as follows:
`
`1. I am over the age of twenty-one, competent to make this declaration, and have
`
`personal knowledge of the matters stated herein. I make this declaration in support of Plaintiff
`
`AGIS Software Development, LLC’S’s Opening Claim Construction Brief.
`
`A. Personal Qualifications
`
`2. I received Bachelor of Science degrees in both Physics and Mathematics in 1975 from the
`
`Massachusetts Institute of Technology. I received M.S., M.Phil., and Ph.D. degrees in Computer
`
`Science from Yale University in 1976, 1977, and 1979, respectively.
`
`3. I have held the position of Allen Newell Professor of Computer Science at Carnegie
`
`Mellon University from 1995 to the present. I currently also hold the title of Director of the
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`Language Technologies Institute at Carnegie Mellon University. I first joined Carnegie Mellon
`
`as an Assistant Professor of Computer Science in 1979. In 1987, I was appointed as a Professor
`
`of Computer Science at Carnegie Mellon.
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`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 2 of 42 PageID #: 6223
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`4. Since 1979 I have taught a wide variety of graduate and undergraduate courses at
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`Carnegie Mellon that fall within the general field of Computer Science, including courses in
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`software engineering, data mining, natural language processing, electronic commerce, and
`
`artificial intelligence. I have been involved in a number of different professional organizations
`
`and activities, including memberships in the Association of Computing Machinery (“ACM”), the
`
`Association for the Advancement of Artificial Intelligence (“AAAI”), and the Cognitive Science
`
`Society. I have also held leadership positions within professional organizations. From 1983 to
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`1985, I served as Chair of the ACM’s Special Interest Group on Artificial Intelligence
`
`(“SIGART”). From 1988 to the present, I have been a Fellow of the AAAI. From 1990 to 1992, I
`
`served on the AAAI executive committee. I have also served on a number of different
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`government committees, including the Computer, Information Science & Engineering Advisory
`
`Committee of the National Science Foundation (2010 to 2014); the Human Genome Scientific
`
`Advisory Committee to the National Institute of Health, also known colloquially as the “Watson
`
`Committee” (from 1988 through 1992); and the Scientific Advisory Committee of the
`
`Information Access Division of the National Institute of Standards and Technology (from 1997
`
`through 2001).
`
`5. I am an author or co-author on more than 360 technical papers published as invited
`
`contributions and/or in peer-reviewed journals or conferences. These papers present the results of
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`my research, which is generally directed at computer implemented algorithms and methods that
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`relate to machine learning, including such applications as mapping protein sequences to three-
`
`dimensional shapes, predicting protein folds, detecting financial fraud, and also related to natural
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`language processing including performing inter-lingual machine translation, parsing natural
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`language (a.k.a. “content analysis”) and text mining and to various forms of storage and
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`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 3 of 42 PageID #: 6224
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`communication of data. I have served as an editor and peer-reviewer for a number of different
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`technical journals in my field, including the Machine Learning Journal (from 1984 through
`
`2000), the Machine Translation Journal (the 1980’s), and the Artificial Intelligence Journal (1984
`
`through 2008). I was also a co-Editor of the book series Lecture Notes in Artificial Intelligence,
`
`which was published by Springer from 1996 through 2008.
`
`6. I received a “recognition of service” award from the Association for Computing
`
`Machinery for my role as chair of the ACM’s special interest group in Artificial Intelligence
`
`(SIGART) between 1983 and 1985. In 1986, I received the Sperry Fellowship for excellence in
`
`artificial intelligence research. In 1987, I received the Carnegie Mellon University Computer
`
`Science Department’s teaching award.
`
`7. I have also worked as a technical consultant on Computer Science applications for a
`
`variety of industrial clients. This includes consulting on data mining applications for Industrial
`
`Scientific Corporation (data mining to improve workplace safety); Carnegie Group Inc. (artificial
`
`intelligence and natural language processing); Citicorp (financial data mining, natural language);
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`Wisdom Technologies (financial optimization); Dynamix Technologies (large-scale algorithms
`
`with applications to Homeland Security), and Meaningful Machines in natural language
`
`processing and machine translation. I have experience in many aspects of computing
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`technology, including communications programming and protocols, where I regularly teach two
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`classes every year, covering aspects of databases, telecommunications methods, in network-
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`based systems, such as master-slave control devices, whether for displaying or capturing
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`multimedia information, and in applications areas ranging from finance and advertisement
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`models to display-based communications and customer-contact methods and algorithms.
`
`

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`8. I am a named inventor on a number of issued U.S. Patents, including: U.S. Patent No.
`
`5,677,835 (“Integrated authoring and translation system”); U.S. Patent No. 5,995,920
`
`(“Computer-based method and system for monolingual document development”); U.S. Patent
`
`No. 6,139,201 (“Integrated authoring and translation system”); U.S. Patent No. 6,163,785
`
`(“Integrated authoring and translation system”); and U.S. Patent No. 7,406,443 (“Method and
`
`system for multi-dimensional trading”).
`
`9. I have worked with mobile devices, principally smart phones, virtually since their large-
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`scale entry into the marketplace. This work includes electronic commerce as it extends to
`
`smartphones, including location-aware search and automatic ranking, working with location-
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`aware dialog systems on smartphones and other platforms, and online communities and affinity
`
`groups. I have worked directly with GPS-based systems for location awareness, as well as IP-
`
`based and other methods. This work is reflected in the electronic commerce classes that I teach,
`
`in two spinoff companies where I participate as technical advisor (WeSpeke and Carnegie
`
`Speech), in my academic research (dialog systems, including language interpretation), and in
`
`multiple expert witness engagements relating to mobile devices, to Apple’s Siri, to Google’s
`
`Android, and so forth.
`
`10. In the early 1970’s, while at student at MIT, I also worked for BBN Technologies in
`
`Cambridge MA, which together with MIT was a pioneer in the creation of the ARPANET, which
`
`later transformed into the Internet. I was a research assistant assigned to whichever project
`
`needed help, and one was in testing the TCP/IP protocol implementation, including for the
`
`earliest email systems. At that time the protocol was implemented primarily in the IMP
`
`(interface message processing) units and in the TIP (terminal message processors) units, which
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`comprised the backbone of the early ARPANET.
`
`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 5 of 42 PageID #: 6226
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`B. Legal Standards
`
`11. I have been instructed by counsel that claim construction is for the Court to decide as a
`
`matter of law. Claim terms should be given their ordinary and customary meaning within the
`
`context of the patent in which the terms are used, i.e., the meaning that the term would have to a
`
`person of ordinary skill in the art in question at the time of the invention in light of what the
`
`patent teaches.
`
`12. I understand that this hypothetical person of ordinary skill in the art is considered to have
`
`the normal skills of a person in a certain technical field. I understand that factors that may help
`
`establish the level of skill in the art include: (1) the education level of those working in the field,
`
`including the inventor; (2) the types of problems encountered in the art; (3) the prior art solutions
`
`to those problems; (4) rapidity with which innovations in this art are made; and (5) the
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`sophistication of the technology.
`
`13. I understand that to determine how a person of ordinary skill would understand a claim
`
`term, one should look to those sources available that show what a person of skill in the art would
`
`have understood disputed claim language to mean. Such sources include the words of the claims
`
`themselves, the remainder of the patent’s specification, the prosecution history of the patent (all
`
`considered “intrinsic” evidence), and “extrinsic” evidence concerning relevant scientific
`
`principles, the meaning of technical terms, and the state of the art.
`
`14. I understand that in construing a claim term, one looks primarily to the intrinsic patent
`
`evidence. I understand that extrinsic evidence, which is evidence external to the patent and the
`
`prosecution history, may also be useful in interpreting patent claims when the intrinsic evidence
`
`itself is insufficient.
`
`

`

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`15. I understand that the usual and customary meaning of a claim term can be altered by the
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`patent applicant if he chooses to act as his own “lexicographer” and clearly sets forth in the
`
`patent a different meaning for a claim term.
`
`16. I understand that the meaning of a claim term can also be altered during the patent
`
`examination process by statements the patent applicant makes about the meaning or scope of the
`
`term, and that such statements are recorded in the prosecution history of the application.
`
`17. I understand that if a claim term is ambiguous or unclear, the term must be
`
`construed to determine how a person of ordinary skill in the art would have resolved the
`
`ambiguity in light of the rest of the patent specification, claims and application’s prosecution
`
`history. Notably, absolute precision is unattainable in patented claims. Therefore a court will not
`
`find a patented claim indefinite unless the claim interpreted in light of the specification and the
`
`prosecution history fails to inform those skilled in the art about the scope of the invention with
`
`reasonable certainty.
`
`C. Patent Background
`
`18. I have reviewed U.S. Patent Nos. 8,213,970 (the “‘970 Patent”), 9,408,055 (the “‘055
`
`Patent”), 9,445,251 (the “‘251 Patent”), 9,467,838 (the “‘838 Patent”), and 9,749, 829 (the “‘829
`
`Patent”) (collectively, the “Asserted Patents”).
`
`19. The Asserted Patents each claim priority to, and incorporate by reference, U.S.
`
`Application No. 10/711,490 (“the ’490 Application”), which was filed on September 21, 2004 and
`
`issued as U.S. Patent No. 7,031,728 (“the ’728 Patent”). The ’490 Application describes a method
`
`and apparatus for establishing a communication network for designated users (also called
`
`“participants”) of mobile devices, such as cellular telephones/PDAs. The ’490 Application
`
`describes a mobile device with a touch-display screen that depicts the location and status of other
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 7 of 42 PageID #: 6228
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`participants in the communication network on a map. See, e.g., ’728 Patent at 2:18-54. By
`
`interacting with the map display, a participant in the communication network may establish groups
`
`of participants, initiate a telephone call, send a message, data, or a picture, remotely control another
`
`device, or exchange some other form of communication with another participant on the network.
`
`Id. In certain embodiments, the mobile device of one participant may communicate with the
`
`mobile device of another participant in order to obtain information such as, for example, the
`
`second participant’s location. Id. a t 10:46–51. An exemplary embodiment of the display screen
`
`of the invention is depicted in Figure 1 below.
`
`
`
`Id. at Fig. 1a.
`
`20. The ’970 Patent issued on July 3, 2012 from Application No. 12/324,122 (the “’122
`
`Application”) filed on November 26, 2008 and claims priority to September 21, 2004. The ’970
`
`Patent claims systems and methods for utilizing forced alerts for interactive communications.
`
`The claimed forced message alerts of the ’970 Patent cause a device to render text on a screen or
`
`to play sound until the forced message is cleared. See, e.g., ’970 Patent at 8:52-57, claims 1 and
`
`6.
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 8 of 42 PageID #: 6229
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`21. The ’055 Patent issued on August 2, 2016 from Application No. 14/695,233 (the “’233
`
`Application”), which ultimately claims priority to September 21, 2004. The ’055 Patent claims
`
`aspects of the invention whereby devices communicate via SMS and IP-based communication.
`
`User interaction with an interactive display permits the identification and communication of user-
`
`specified locations. See, e.g., ’055 Patent at Claim 1.
`
`22. The ’251 Patent issued on September 13, 2016 from Application No. 14/633,804 (the
`
`“’804 Application”), which ultimately claims priority to September 21, 2004. The ’251 Patent
`
`claims aspects of the invention whereby devices participate in groups displayed on a map display.
`
`The devices interact with one or more servers that provide information to the devices. See, e.g.,
`
`’251 Patent at Claim 1.
`
`23. The ’838 Patent issued on October 11, 2016 from Application No. 14/529,978 (the “’978
`
`Application”), which ultimately claims priority to September 21, 2004. The ’838 Patent claims
`
`aspects of the invention whereby devices participate in groups displayed on a map display. The
`
`devices interact with one or more servers that provide information to the devices including
`
`additional maps. See, e.g., ’838 Patent at Claim 1.
`
`24. The ’829 Patent issued on October 11, 2016 from Application No. 14/633,764 (the “’764
`
`Application”), which ultimately claims priority to September 21, 2004. The ’829 Patent claims
`
`aspects of the invention whereby a server communicates with devices that utilize map-based
`
`communication in order to remotely control those devices. See, e.g., ’829 Patent at Claim 1.
`
`D. Personal of Ordinary Skill in the Art
`
`25. In my opinion, the technology described in the Asserted Patents draw on a combination
`
`of skills from the computer science and engineering arts. Further, a person of ordinary skill in
`
`the art (“POSITA”) would have a bachelor’s degree in computer science or computer
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 9 of 42 PageID #: 6230
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`engineering with one to two years of experience in the field of computer programming with a
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`focus on building systems such as for GPS-based localization and network transmission.
`
`Extensive experience and technical training may substitute for educational requirements, while
`
`advanced education might substitute for experience.
`
`E. “a data transmission means that facilitates the transmission of electronic files between
`said PDA/cell phones in different locations”
`
`26. I understand that Defendants have asserted that this term is governed by 35 U.S.C. §
`
`112(6) but is indefinite as it does not disclose any structure.
`
`27. In terms of the function corresponding to this term, it is my understanding that the parties
`
`agree on the function, and I have been asked to apply the function of “facilitating the
`
`transmission of electronic files between said PDA/cell phones in different locations.”
`
`28. I have analyzed the specification and I have determined that the specification sets forth
`
`and clearly links a corresponding structure to this function. For example, the specification states:
`
`…communication network server can act as a forwarder for TCP/IP communications
`between any combination of PC users or PDA/cell phone users. The server can also act
`as a forwarder of data addressed from one participant to one or more addressed
`participants, thus permitting the transmission of forced text or voice messages, other
`messages, photographs, video, E-mail and URL data from one network participant to
`other selected network participants.
`
`’970 Patent at 2:36-43
`
`29. A person of ordinary skill in the art would have been familiar with communication
`
`network servers, as disclosed in the specification. Moreover, one of ordinary skill in the art
`
`would have understood that general purpose hardware, such as the hardware included in a
`
`communication network server, can perform the function of “facilitating the transmission of
`
`electronic files between said PDA/cell phones in different locations.” For example, one of
`
`ordinary skill in the art would have understood that a communication network server would have
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 10 of 42 PageID #: 6231
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`been configured with TCP/IP communication protocols and one or more ports to receive and
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`transmit information in accordance with the TCP/IP protocol. Specifically, the TCP/IP protocol
`
`is fully specified (e.g., W. Richard Stevens, TCP/IP Illustrated, Volume 1, (1994)) and well
`
`known to all computer scientists and therefore to a POSITA. TCP/IP contains message payload
`
`and message header, the former including source, and destination. TCP/IP allows for re-
`
`transmission upon failure to receive an explicit acknowledgement from the recipient. Therefore
`
`the communication network server at the time of the invention was capable of performing
`
`function of “facilitating the transmission of electronic files between said PDA/cell phones in
`
`different locations.”
`
`F. “means for attaching a forced message alert software packet to a voice or text
`message creating a forced message alert that is transmitted by said sender
`PDA/cell phone to the recipient PDA/cell phone” (Claim 1 of the ’970 Patent)
`
`30. As a preliminary matter, I have reviewed the function set forth in this claim term, and it
`
`is my opinion that the function is “attaching a forced message alert software packet to a voice or
`
`text message creating a forced message alert that is transmitted by said sender PDA/cell phone to
`
`the recipient PDA/cell phone.” The phrase immediately following this functional language,
`
`“said forced message alert software packet containing a list of possible required responses,” is a
`
`structural and non-algorithmic requirement of the claim. In other words, this additional language
`
`relates to a known data structure in the art, i.e. a software packet. Furthermore, it is my opinion
`
`that this phrase should appropriately be construed along with the phrase “requiring the forced
`
`message alert software on said recipient PDA/cell phone to transmit an automatic
`
`acknowledgment to the sender PDA/cell phone as soon as said forced message alert is received
`
`by the recipient PDA/cell phone,” which I discuss below.
`
`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 11 of 42 PageID #: 6232
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`31. The function of “attaching a forced message alert software packet to a voice or text
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`message creating a forced message alert that is transmitted by said sender PDA/cell phone to the
`
`recipient PDA/cell phone” can be performed by the algorithm set forth in Figure 3A. Figure 3A
`
`sets forth a flowchart that describes the creation of a forced message, which one of ordinary skill
`
`in the art would have readily understood how to implement.
`
`32. Figure 3A of the patent is reprinted below:
`
`
`
`
`
`
`
`33. The specification also states:
`
`
`
`

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`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 12 of 42 PageID #: 6233
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`Referring now to FIG. 3A and FIG. 3B, the process of sending a forced message
`alert from a PC or PDA/cell phone begins with a sender selecting the forced
`message alert software application program on a sender PC or PDA/cellphone.
`The sender can then select by said sender PC or PDA/cellphone to type a text
`message or record a voice message or select the text alert or voice alert from a
`list. Once the sender types a text message or records a voice message or selects a
`voice or text message on said PC or PDA/cell phone, the sender can then use a
`soft switch or selection from a list to send the forced alert to: a.) Another network
`participant, b.) The current PC or PDA/cellphone network participants or c.) A
`user or administrator predefined list of network participants. The response list
`from which the message receiver must select can either be included in the forced
`alert message or be preloaded in each phone. The forced alert message is then
`transmitted via TCP/IP or other digital transmission means to every PC or
`PDA/cell phone designated to receive the forced message alert either directly or
`through a server whose function is to retransmit the messages to the correct users
`in the communications network
`
`’970 Patent at 7:43-63.
`
`34. A person of ordinary skill in the art would know have understood how to implement
`
`each of the boxes of the algorithm of the flow-chart as software using known software
`
`constructs, classes, environments and packages. By way of example, this flow-chart resembles
`
`the type of diagram that I would have set out for my students to routinely implement as code.
`
`35. For example, the first box of 3A implements user selection and text/sound entry. Both of
`
`these elements would have been implemented by the standard user-interface elements available
`
`with mobile operating systems of the time and known programming techniques.
`
`36. Similarly, a person of ordinary skill in the art would have known how to implement the
`
`second box of 3A which prompts the user to identify to whom the text message or voice message
`
`is to be sent to using well known programming techniques. As the specification explains, this
`
`can also be implemented using a soft switch or selection from a list to send the forced alert to: a.)
`
`Another network participant, b.) The current PC or PDA/cellphone network participants or c.) A
`
`user or administrator predefined list of network participants. Displaying input elements, such as
`
`

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`a selection from a list, would have been routinely implemented in software by one of skill in the
`
`art.
`
`37. Additionally, a person of ordinary skill in the art would have known how to implement
`
`the third box of 3A which prompts the user to either select a default response list or to create a
`
`new response list using well-known programming techniques. Again, as discussed above, one of
`
`ordinary skill in the art would have understood how to implement text and/or voice input
`
`processing and storage in code using known programming techniques.
`
`38. Next, regarding the fourth box, a person of ordinary skill in the art would have known
`
`how to implement the fourth box of 3A which prompts the user to confirm transmission of the
`
`forced message alert using well-known programming techniques. User confirmation prompts
`
`were a known software structure and one of ordinary skill in the art would have known how to
`
`implement this step using known programming techniques.
`
`39. Finally, a person of ordinary skill in the art would have known how to implement the
`
`fifth box of 3A in which the forced message alert comprising the voice message or text message
`
`entered and the response list are transmitted to the designated recipient using well known
`
`programming techniques. As the specification explains, transmission of the message can be
`
`implemented via the TCP/IP protocol and corresponding software. For example, one of ordinary
`
`skill in the art would have known how to implement data transmission using data packets in
`
`TCP/IP by supplying a destination address and data to known software interfaces. As set forth in
`
`the specification, each device has at least its own IP address (id. at 7:5-7) and the address of
`
`other participants (either directly or via a server) (id. at 4:1-6). The implementation of data
`
`transmission utilizing TCP/IP packets utilizing this information accordingly would have been
`
`routinely implemented with known programming techniques.
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`

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`40. Therefore, it is my opinion that the Fig. 3A and the specification of the ’970 Patent
`
`would enable a person of ordinary skill in the art to implement the functionality of “attaching a
`
`forced message alert software packet to a voice or text message creating a forced message alert
`
`that is transmitted by said sender PDA/cell phone to the recipient PDA/cell phone.”
`
`G. “[means for. . .][said forced message alert software packet containing a list of
`possible required responses] requiring the forced message alert software on said
`recipient PDA/cell phone to transmit an automatic acknowledgment to the
`sender PDA/cell phone as soon as said forced message alert is received by the
`recipient PDA/cell phone” (’970 Patent Claim 1)
`
`41. I have reviewed this claim element and the corresponding disclosure within the
`
`specification. As I set forth above, I agree with AGIS that the “said forced message alert
`
`software packet containing a list of possible required responses” is part of this limitation.
`
`42. The term “software packet” is used in the specification. For example,
`
`…allow an operator to create and transmit (via TCP/IP or another digital
`transmission means) a forced voice alert, wherein said forced voice alert is
`comprised of a text or voice message file and a forced alert software packet, from
`a sender PC or PDA/cellphone to one or more recipient PCs and PDA/cell
`phones within said communication network.
`
`’970 Patent at 2:9-16.
`
`43. A person of ordinary skill in the art would understand that a software packet is the name
`
`for a class or structure that uses packets for packetized communications. This includes data
`
`packets used in TCP/IP communication. As the following series of figures show, an application
`
`may generate data which is encapsulated within an application datagram that includes its own
`
`header.
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 15 of 42 PageID #: 6236
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`W. Richard Stevens, TCP/IP Illustrated, Volume 1, (1994) at 10. (excerpts attached to
`
`
`
`declaration)
`
`44. TCP/IP protocol can then be used to transmit this packet. In doing so, the TCP and IP
`
`protocols attach their own headers to this datagram:
`
`Id. at 225.
`
`
`
`
`
`
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 16 of 42 PageID #: 6237
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`Id.
`
`
`
`
`
`
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`Id. at 34.
`
`45. Additionally, as part of the TCP/IP protocol, once a packet or a range of data packets are
`
`transmitted and received by the receiver, it is the receiver’s responsibility to acknowledge the
`
`received packets. One of ordinary skill in the art would have understood that this capability is
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`

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`embedded in the TCP/IP packet protocol and is typically done by returning an acknowledgment
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`(or “ACK”) of the latest TCP/IP packet received by sequence number such that the sender can
`
`transmit the next batch, or window, of packets.
`
`
`
`H. “means for requiring a required manual response from the response list by the
`recipient in order to clear recipient's response list from recipient's cell phone
`display”
`
`46. I have reviewed this claim element and the corresponding disclosure within the
`
`specification. A person of ordinary skill in the art would be able to implement the functionality
`
`of “requiring a required manual response from the response list by the recipient in order to clear
`
`recipient's response list from recipient's cell phone display” by implementing the last three
`
`boxes of Figure 4.
`
`47. The following portion of the specification is instructive:
`
`After the acknowledgement of receipt is transmitted, the forced voice alert
`software application program effectively takes control of the recipient PC or
`PDA/cell phone. If a text message was received, the forced voice alert software
`application program causes the text message and the response list to be shown on
`the display of the recipient PC or PDA/cell phone until a manual response is
`selected from the response list. Upon selection of the desired response, the forced
`alert text data is cleared from the recipient PC or PDA/cell phone display. If a
`voice message was received, the forced voice alert software application program
`causes the voice message to be periodically repeated using the speakers of the
`recipient PC or PDA/cell phone while the response list is shown on the display.
`This voice message cannot be stopped from repeating until one of the entries on
`the response list is selected. Once a response is selected or recorded and
`transmitted to the sender PC or PDA/cell phone, the forced message alert
`software application program releases effective control of the recipient PC or
`PDA/cell phone, clears the display, and or stops repeating the voice message and
`transmits the response to the force alert sender.
`
`’970 Patent at 8:37-57.
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 18 of 42 PageID #: 6239
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`48. A person of ordinary skill in the art would know how to implement the second box of
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`Figure 4 through well-known programming techniques in order to take control of the integrated
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`PDA/cell phone or PC, by for example issuing an interrupt, after the transmission of the
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`acknowledgement message and taking control until a process, time-out or computation
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`completes. Additionally, a person of ordinary skill in the art would also know how to implement
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`displaying the text message or causing the voice message to play periodically while displaying a
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`list of responses and therefore the second box of Figure 4 would be implemented through known
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`programming techniques.
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`49. Similarly, a person of ordinary skill in the art would know how to implement the third
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`box of Figure 4 through well-known programming techniques in order to receive a response from
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`the user and transmit the response to the sender's cell phone. Such well known programming
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`techniques involve receiving and parsing packets of information received over TCP/IP
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`communication.
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`50. Similarly, a person of ordinary skill in the art would know how to implement the fourth
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`box of Figure 4 through well-known programming techniques to clear the display or stop the
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`repeating voice message and release control of the cell phone, integrated cell phone/PDA or PC.
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`This portion of the algorithm can be achieved through receiving input, such as touch-screen
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`input, and branching to clear the display before proceeding with normal operations.
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`51. Accordingly, it is my opinion that one of ordinary skill in the art would have known how
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`to implement the last three elements of the flow-chart in Fig. 4, and that these flow chart
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`elements, along with the prose in Column 8, lines 37-57 provides a sufficient algorithm.
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`I. “means for receiving and displaying a listing of which recipient PDA/cell phones
`have automatically acknowledged the forced message alert and which recipient
`PDA/cell phones have not automatically acknowledged the forced message alert”
`
`

`

`Case 2:17-cv-00513-JRG Document 165-1 Filed 07/26/18 Page 19 of 42 PageID #: 6240
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`52. I have reviewed this term and identified corresponding hardware components within the
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`specification.
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`53. As the patent explains, Fig. 1A shows a small handheld cellular phone/PDA:
`
`B
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`54. The patent explains that within the housing of the cell phone are “conventional cellular
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`phone elements including a modem, a CPU for use with a PDA and associated circuitry
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`connected to a speaker 24 and a microphone 38.” ’970 Patent at 4:30-33. Further such phones
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`“can be used for cellular telephone calls and