Case 2:21-cv-00072-JRG-RSP Document 259-3 Filed 12/16/21 Page 1 of 7 PageID #:
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`EXHIBIT 2
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`Case 2:21-cv-00072-JRG-RSP Document 259-3 Filed 12/16/21 Page 2 of 7 PageID #:
`11380
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff,
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`v.
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`LYFT INC.,
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Defendant.
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`Plaintiff,
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`UBER TECHNOLOGIES, INC.,
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`v.
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`Defendant.
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`Civil Action No. 21-cv-00072-JRG (E.D.
`Tex.)
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`Civil Action No. 21-cv-00026-JRG (E.D.
`Tex.)
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`EXPERT REPORT OF NEIL SIEGEL REGARDING THE INVALIDITY OF U.S.
`PATENT NOS. 7,031,728 (CLAIM 7); 7,630,724 (CLAIMS 9, 12-16); 8,213,970 (CLAIMS
`2, 10, 12-13); 10,299,100 (ALL CLAIMS); 10,341,838 (ALL CLAIMS)
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`Case 2:21-cv-00072-JRG-RSP Document 259-3 Filed 12/16/21 Page 3 of 7 PageID #:
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`involved both teaching graduate classes in systems engineering, and supervising the master’s
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`degree projects of systems engineering students.
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`23.
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`By 2004, I had more than twenty-five years of actual working experience in
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`designing and developing defense systems, and, in particular, systems that provided situational
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`awareness and command-and-control functionality. I was personally involved with the design,
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`engineering, and deployment of some of the first mobile situational awareness technologies,
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`including the Forward-Area Air Defense Command, Control, and Intelligence System, the Army
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`FBCB2 system, and its derivative, the Joint Capability Release (used by both the U.S. Army and
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`the U.S. Marine Corps).
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`24.
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`By 2004, I had more than 15 years experience as a senior engineering executive.
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`In that capacity, I wrote job descriptions, hired and supervised the hiring of hundreds of employees,
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`wrote standards of skill and performance for engineering job categories, set evaluation criteria for
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`employee norms and conducted performance evaluations of employees, defined skills sets
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`expected for employees by job category, planned and supervised in-house training and external
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`continuing educational opportunities, and performed &/or participated in many other aspects of
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`setting expectations and norms for engineers, rating and evaluating engineers, and so forth. I did
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`all of this at large scale, that is, in an organization that had thousands of engineers as employees;
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`by 2001, I was in fact the vice-president in charge of all of those thousands of engineers. I
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`continued after 2004 in these roles until my retirement at the end 2015. This experience, I believe,
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`enables me to speak with authority concerning what a person of ordinary skill in the art (POSA)
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`in the relevant fields of engineering would know and be expected to know.
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`III.
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`PRIOR EXPERT TESTIMONY AND COMPENSATION
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`25.
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`I testified as an expert by deposition once in the last four years.
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`use of the IP protocol by FBCB2 and the Tactical Internet, for example, in the last paragraph of
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`page SIEGEL000972.
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`131. Communication between participants within FBCB2
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`is established and
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`accomplished via the use of the IP protocol, together with other protocols (such as TCP; see, for
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`example, the citation for RFC 793 on page SIEGEL000963). Different servers are established and
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`used for different types of traffic (see, for example, the discussion that starts in paragraph 3.4.1.3
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`on page SIEGEL000987, and the table at SIEGEL000322). As described in those sources, the data
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`(these actually can be any mixture of data, packets of digitized voice, imagery, etc.) are forwarded
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`from the sending unit to a server, and then forwarded from the server to the appropriate (one or
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`more) receiving units. Thus, the mobile devices in FBCB2 are connected to an internet connection.
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`7.
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` exchanging IP addresses using SMS or other digital message format
`between and among each of the network participant users so that
`communications between participants is established via IP or
`transmission of a network participant's IP address to a server which
`then transmits data to other network participants using the IP
`address previously
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`132.
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` FBCB2 implemented a short-message-service format and protocol of its own
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`along with other digital messaging, as described in the ’724 Patent, as understood by a POSA.
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`133. The FBCB2 short message services (one of the digital message services within
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`FBCB2) consists, like all such services, of both a message format and a communication protocol,
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`both of which are optimized for the sending of short messages. Within FBCB2, the message format
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`is the variable-message format described at SIEGEL000904 and the following pages, and the
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`communication protocol is that disclosed in U.S. patent 6,701,375, which appears at
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`SIEGEL001233 and the pages that follow). A person of ordinary skill (POSA) in the art on
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`September 20, 2004 would have understood that that FBCB2’s short message system was
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`technically and functionally equivalent to any commercial SMS message.
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`134. A person of ordinary skill in the art at the time the Patents-in-suit were invented
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`would have recognized that a system implemented over military radios could also be implemented
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`using cellular communications, cell phones, and telephone numbers as contact information. For
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`example, FBCB2 was designed to allow for the use of many types of communications devices and
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`methods (a list was provided above, at 80). The Army’s original request for proposal (issued in
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`1994, as described above) specified that FBCB2 should be able to communicate by at least EPLRS
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`and SINCGARS military radios. In response to this requirement, TRW’s original FBCB2
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`proposal (submitted in 1994, as described above) incorporated a design that separated the
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`communications function from other functions of the FBCB2 system, and thereby allowed multiple
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`communications devices and methods to be “plugged in” to the FBCB2 system; in fact, it allowed
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`multiple such communications devices and methods to be plugged in to the FBCB2 system
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`simultaneously, and to route data traffic between and across those multiple communications
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`(exactly as in done by the commercial internet). As a result, multiple communications devices and
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`methods can be made to work readily with the FBCB2 system. It was this design that allowed
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`TRW to implement several additional communications devices and methods before 2004, the
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`NIPRNet, the SIPRNet, the MSE, including Ka-band and L-band satellites, WiFi (IEEE 802.11)
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`devices, and, in an experimental context, additional military radios, the Iridium mobile telephone
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`system, and also cellular mobile phones (these terms are all defined above).
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`135. As noted above, TRW also conducted experiments that demonstrated (by reducing
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`the technique to practice) that the Tactical Internet could work using commercial mobile phones
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`as a communication device. A cellular version of FBCB2 was not ultimately fielded due to
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`operational considerations. That is, because there are a relatively small number of cellular towers
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`in any given area, they could be easily found and destroyed, and therefore any military system that
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`depended on cellular communications would be easily defeated by the enemy. Similarly, if a
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`foreign government knew that FBCB2 required use of a cellular mobile network, the country could
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`simply turn off the network to make FBCB2 ineffective. It would be obvious to a POSA, however,
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`that cellular phone networks could be used to perform the situational awareness functions in
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`FBCB2, and TRW/Northrop Grumman later implemented civilian situational awareness systems
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`– such as the post-September 11, 2001 emergency communications system in New York City, and
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`the ambulance dispatch system in London – using cellular phone communications. Thus, to the
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`extent this limitation is not anticipated by FBCB2, using cellular technology rather than military
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`radios would have been an obvious modification to a person of ordinary skill in the art at the time
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`of the invention. A person of ordinary skill in the art would have been motivated to make this
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`modification because, outside the battlefield context, using cellular communications rather than a
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`“Tactical Internet” would generally be cheaper and easier to implement.
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`136. Also, as explained above with respect to element 6 above, communication between
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`participants within FBCB2 is established and accomplished via the use of the IP protocol, together
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`with other protocols (such as TCP; see, for example, the citation for RFC 793 on page
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`SIEGEL000963). Thus, FBCB2 anticipates this element at least under AGIS’ apparent
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`infringement read, which appears to merely require the use of IP addresses to facilitate
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`communications. A person of ordinary skill in the art would have also considered it obvious to
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`facilitate IP communications between two devices by having a first device send an SMS message
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`or other digital message including a telephone number and information usable by the recipient
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`device to send IP-based communications (i.e., an IP address).
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`137. On 20 September 2004, such SMS’s or other digital messaging was a common way
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`of sending short messages. As noted above, SMS is a communications protocol designed to make
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`Case 2:21-cv-00072-JRG-RSP Document 259-3 Filed 12/16/21 Page 7 of 7 PageID #:
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`efficient use of the communications bandwidth when sending short messages (”short” in this
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`technical sense means that the message was smaller than the size of one single IP packet). Most
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`FBCB2 messages were, similarly, such short messages (See SIEGEL000904 for the list of these
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`FBCB2 short message formats), and FBCB2 also used a communications protocol designed to
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`make efficient use of the communications bandwidth when sending such short messages (see U.S.
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`patent 6,701,375, which appears at SIEGEL001233 and the pages following). Although this
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`protocol was not the RFC 5724 protocol, it would have been obvious to a person of ordinary skill
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`in the art that the RFC 5724 protocol could be used in lieu of, or in addition to, the FBCB2-specific
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`protocol for efficiently sending short messages. Hence, if a person of ordinary skill in the art
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`wanted to facilitate IP-based communication between two cellular phone devices, it would have
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`been obvious that this could be done by employing a short message service (which inherently
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`contains an identifier such as a telephone number or an IP address). By 2004, many commercial
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`devices and systems supported such a capability.
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`138.
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`In light of the above, I have concluded that Claim 9 of the ’724 patent is invalid
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`because it is anticipated by FBCB2 or obvious in view of FBCB2 and the knowledge of a person
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`of ordinary skill in the art at the time of the invention.
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`B.
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`Claim 12 Is Anticipated by FBCB2, or, at a Minimum, is Obvious Over FBCB2
`In View of the Knowledge of a POSA at the Time of the Invention
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`139. The next claim asserted in Claim 12. Claim 12 recites:
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`12. A method for providing a cellular phone communication network as in
`claim 9 including the additional steps of: adding a new cellphone participant into a
`communication network of participating users by having the new cell phone
`participant transmit an identifier, a cell phone number and an IP address in an initial
`message to other participant users or to a server for retransmission of the data other
`network participants.
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