Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 1 of 46
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`VOIP-PAL.COM, INC.,
`
`
`
`CASE NO. 6:20-cv-00267-ADA
`
`JURY TRIAL DEMANDED
`
`Plaintiff,
`
`v.
`
`META PLATFORMS, INC. and
`WHATSAPP LLC,
`
`Defendants.
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`
`
`
`DECLARATION OF DR. VIJAY MADISETTI
`
`

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`Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 2 of 46
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`TABLE OF CONTENTS
`Background ....................................................................................................................... 1
`Qualifications..................................................................................................................... 1
`Legal Standards ................................................................................................................ 6
`Level of Ordinary Skill in the Art ................................................................................... 7
`“Network Element” .......................................................................................................... 8
`
`I.
`II.
`III.
`IV.
`V.
`
`
`
`i
`
`

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`Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 3 of 46
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`I.
`
`BACKGROUND
`I have been retained as an expert in this case by defendants Meta Platforms, Inc.
`1.
`
`and WhatsApp LLC (“Defendants”) to provide certain opinions in connection with U.S. Patent
`
`No. 10,218,606 (the “‘606 Patent”). Ex. 1. I understand this patent has been asserted by Plaintiff
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`VoIP-Pal.com, Inc. (“VoIP-Pal”) against Defendants and others. In my declaration, I may refer to
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`the ’606 Patent as the “Asserted Patent” and to its claims that I understand VoIP-Pal has asserted
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`(1, 3–6, 8, 9, 11, 14, 15, 18–24, 26, 27, 29, 32, 42 and 44) as the “Asserted Claims.”
`
`2.
`
`I have been asked to provide an opinion regarding whether or not the term “network
`
`element” in the Asserted Patent is indefinite.
`
`3.
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`After reviewing the Asserted Patent, its prosecution history, and other pieces of
`
`evidence cited herein, and also considering my expertise and experience, I believe that a person of
`
`ordinary skill in the art (or a “POSITA”) around the time of the earliest claimed priority date
`
`(November 2, 2006 1) would not have understood the scope of “network element” as used in the
`
`Asserted Claims with reasonable certainty.
`
`4.
`
`I am being compensated for my time at my standard hourly consulting rate of $600
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`per hour. My compensation does not depend on the outcome of this litigation or the opinions I
`
`form.
`
`II.
`
`QUALIFICATIONS
`My qualifications and publications can be found in my Curriculum Vitae, which is
`5.
`
`attached hereto as Appendix A. My background and experience qualify me to offer the opinions
`
`offered in this Declaration and are described below.
`
`
`1
`I understand that VoIP-Pal has alleged an earlier date of conception and reduction to practice of June, 6 2005.
`My opinion would not change if this earlier date were applied.
`
`1
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`

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`6.
`
`In 1984, I received my Bachelor of Technology (Honors) in Electronics and
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`Electrical Communication Engineering at the Indian Institute of Technology (IIT) in Kharagpur,
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`India. In 1989, I obtained my Ph.D. in Electrical Engineering and Computer Science at the
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`University of California, Berkeley. That year, I also received the Demetri Angelakos Outstanding
`
`Graduate Student Award from the University of California, Berkeley, and the IEEE/ACM2 Ira M.
`
`Kay Memorial Paper Prize. I authored several papers and proposals during this time, including
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`“Multilevel Range/NEXT Performance in Digital Subscriber Loops”, IEEE Proceedings on
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`Communications, Speech and Vision, Vol 136, Issue 2, April 1989, and “Comparison of Line
`
`Codes and Proposal for Modified Duobinary”, Contribution T1D1.3-85- 237, American National
`
`Standards Institute, November 1985.
`
`7.
`
`In 1989, I joined the faculty at Georgia Tech. My first position was an assistant
`
`professor position. I became an associate professor in 1995. In 1997, I was awarded the VHSIC
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`Hardware Description Language (or VHDL) International Best Ph.D. Dissertation Advisor for my
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`contributions in the area of rapid prototyping. I became a full professor in 1998 and have
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`maintained that title ever since. As a faculty member at Georgia Tech, I have been an active
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`contributor in several disciplines, including wireless networks, cellular communications, computer
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`engineering, embedded systems, chip design, software systems, and image and video processing.
`
`8.
`
`Since 1995, I have authored, co-authored, or edited several books in the areas of
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`communications, signal processing, chip design, and software engineering, including VLSI
`
`DIGITAL SIGNAL PROCESSORS (1st ed. 1995), QUICK-TURNAROUND ASIC DESIGN IN VHDL (1st
`
`ed. 1996), THE DIGITAL SIGNAL PROCESSING HANDBOOK (2d. ed. 2010), CLOUD COMPUTING: A
`
`
`2
`IEEE is the Institute of Electrical and Electronics Engineers. ACM is the Association for Computing Machinery.
`
`
`
`2
`
`

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`HANDS-ON APPROACH (1st ed. 2013), INTERNET OF THINGS: A HANDS-ON APPROACH (1st ed.
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`2014), and BIG DATA SCIENCE & ANALYTICS (1st ed. 2016).
`
`9.
`
`Between 1998 and 2004, my students and I studied different codecs and published
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`IETF draft standards3 on audio and video streaming applications over the internet including:
`
`a.
`
`V. Madisetti and A. Argyriou: Voice and Video over Mobile IP Networks,
`
`IETF Draft, May 20, 2002; and
`
`b.
`
`V. Madisetti and A. Argyriou: A Transport Layer Technology for
`
`Improving QoS of Networked Multimedia Applications, IETF Draft July
`
`25, 2002.
`
`10.
`
`I have served on the paper-reviewing committees for many leading conferences in
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`my field, and I have taken on editorial roles for leading technical journals in fields pertinent to my
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`research. For example, I served as the Editor-in-Chief of the IEEE Press/CRC Press’s three-volume
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`Digital Signal Processing Handbook for Edition 1 (1998) and Edition 2 (2010). I have also
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`authored over 100 articles, reports, and other publications pertaining to electrical engineering, and
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`in the areas of communications, communications signal processing, and computer engineering.
`
`11.
`
`Throughout my time at Georgia Tech, I have designed several specialized computer
`
`and communication systems for tasks such as wireless, audio, video, and protocol processing for
`
`portable platforms (like cell phones and PDAs). I have also been actively involved in the areas of
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`wireless communication, software engineering, system design methodologies, and software
`
`systems.
`
`12.
`
`Beyond my work in academia, I have worked in industries relating to speech, audio,
`
`and image processing since the early 1980s. I developed efficient algorithms for echo cancellers
`
`
`3
`IETF is the Internet Engineering Task Force.
`
`
`
`3
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`

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`for speech and voice applications that reduce complexity and improve performance. This work
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`resulted in a peer-reviewed publication called “Dynamically Reduced Complexity Implementation
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`of Echo Cancellers,” IEEE ICASSP 96, Tokyo.
`
`13.
`
`From 1999-2003, I consulted with a team of engineers to design an integrated Soft
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`Switch & Media Server, the SNX 850/8500, that was being sold and installed in Asia. The SNX
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`8500 was a one-box solution to VOIP, LAN switching, and iPBX/PBX solutions for enterprise
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`customers, and has been installed as part of BPL Telecom’s then offerings in Asia. The PBX
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`modules within SNX 850/8500 supported Analog Phones, Digital Feature Phones, E1/ISDN PRI
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`Trunks, E1 or PRI at the PSTN gateway, VOIP (SIP) soft phones, SS7 interfaces, and operated via
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`a browser-based console. It included a variety of features, such as Automatic Call Back, Busy
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`Override, Do Not Disturb, etc., through support for 16 ISDN BRI circuits.
`
`From 2000‐2001, I designed three Global System for Mobiles multiband mobile
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`14.
`
`phones for a leading telecom equipment manufacturer in Asia.
`
`15.
`
`From 2000-2007, I designed and provided optimized mobile speech to one of the
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`leading mobile phone and base station manufacturers in the world. This implementation has been
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`deployed on millions of 3G/4G mobile phones and numerous base stations.
`
`16.
`
`During that same time frame, I also designed and provided several VOIP codecs to
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`leading VOIP phone vendors that are now deployed in several generations of enterprise VOIP
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`phone products in the USA and abroad. I designed and provided echo cancellers for VOIP
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`applications.
`
`17.
`
`From 2002-2007, I developed wireless baseband and protocol stack software and
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`assembly code for a leading telecommunications handset vendor. The software and code focused
`
`
`
`4
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`

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`on efficient realization of speech codecs and echo‐cancellation and optimization of 3G software
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`stack. My work included creating software code and analyzing and revising existing software code.
`
`18.
`
`I have also developed speech and video codecs that comply with 3GPP standards.4
`
`I developed software to implement the associated 3GPP standards and developed tests to verify
`
`compliance with these standards. I have also developed several speech and VOIP (voice over
`
`Internet Protocol) codecs that conform with the ITU (International Telecommunications Union)
`
`standards G.723.1, G.729 and Echo Cancellers conforming with the ITU G.168 standards.
`
`19.
`
`The software and code I have developed and tested based on the ITU standards are
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`now used by one of the leading suppliers of VOIP/Internet telephones in the world. This software
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`is also part of commercially released soft switches for internet telephony used extensively in Asia.
`
`20.
`
`In addition to my academic and industrial pursuits, I am also a long-standing
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`member of several professional technical organizations. I was the Technical Program Chair for
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`both the IEEE MASCOTS in 1994 and the IEEE Workshop on Parallel and Distributed Simulation
`
`in 1990. More recently, I was elected to the Fellowship of the IEEE because of my contributions
`
`to embedded computing systems. Fellows are in the highest tier of membership in the IEEE, a
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`world professional body consisting of over 300,000 electrical and electronics engineers. Only 0.1%
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`of the IEEE membership is elected to the Fellowship each year.
`
`21.
`
` I also serve as the official representative from Georgia Tech to the 3GPP/ETSI 5
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`standards organization. As such, I am familiar with the standard processors for speech, audio and
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`video applications in the context of mobile and wireless communications.
`
`
`4
`3GPP stands for 3rd Generation Partnership Project, a collection of standards organizations that develop protocols
`for mobile telecommunications.
`
`5
`
`ETSI stands for European Telecommunications Standards Institute.
`
`
`
`5
`
`

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`22.
`
`Through the past twenty years, I have been retained to test various commercial
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`mobile and wireless products to determine if they comply with various technical standards. I have
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`participated in and contributed to activities of Standards Setting Organizations (“SSOs”) such as
`
`the IEEE, IETF, ETSI, and others, as part of my work as a teacher and researcher in advanced
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`telecom, wireless, and computer technologies.
`
`23.
`
`Over the past three decades, I have studied and designed wireless networking and
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`image and video processing circuits for numerous applications, including digital and video
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`cameras, mobile phones, and networking products for leading commercial firms.
`
`24.
`
`In light of my academic and professional backgrounds, I am qualified to provide
`
`opinions regarding the state of the art around the ’606 Patent’s earliest claimed priority date
`
`(November 2, 20066). I qualify by my education and experience as at least a person of ordinary
`
`skill in the art (POSITA), as discussed below, both now and as of the earliest claimed priority date,
`
`and I am qualified to explain how a POSITA would have interpreted and understood the ’606
`
`Patent at that time.
`
`III. LEGAL STANDARDS
`I am not an attorney, but I have been provided with an understanding of certain
`25.
`
`legal principles relevant to my analysis and opinions in this matter.
`
`26.
`
`I understand that a person of ordinary skill in the art (a “POSITA”) is a hypothetical
`
`person who is presumed to have known the relevant art at the time of the invention, and that the
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`factors that may be considered in determining the level of ordinary skill in the art may include: (a)
`
`type of problems encountered in the art; (b) prior art solutions to those problems; (c) rapidity with
`
`
`6
`I understand that VoIP-Pal has alleged an earlier date of conception and reduction to practice of June, 6 2005.
`My opinion would not change if this earlier date were applied.
`
`
`
`6
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`

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`which innovations are made; (d) sophistication of the technology; and (e) educational level of
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`active workers in the field. In a given case, every factor may not be present, and one or more
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`factors may predominate.
`
`27.
`
`I have been informed that patent claims are construed or interpreted from the
`
`perspective of a POSITA at the time of the claimed invention. I understand that the most important
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`evidence to consider in construing the claims is the “intrinsic” evidence. This includes the claim
`
`language, the patent’s specification, and the prosecution history (including references cited in the
`
`prosecution history). I understand that the POSITA must read the claim terms in the context of the
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`claim and in the context of the entire patent specification. I understand that the patentee may
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`explicitly define a claim term in a way that differs from the plain and ordinary meaning in the art.
`
`28.
`
`I further understand that a POSITA may also consider “extrinsic” evidence when
`
`interpreting the meaning of claim terms, which are documents and testimony beyond the patent to
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`ensure that a claim is construed consistently with the understanding of those of skill in the art at
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`the time of the claimed invention. I also understand that extrinsic evidence may not be relied on if
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`it deviates from the meaning of the claim provided by the intrinsic evidence.
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`29.
`
`I understand that a term is indefinite if it fails to inform a POSITA of the scope of
`
`the invention with reasonable certainty, even when the term is read in light of the specification and
`
`the prosecution history.
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`IV.
`
`LEVEL OF ORDINARY SKILL IN THE ART
`In my opinion, a POSITA at the time of the alleged invention described in the
`30.
`
`Asserted Patent would have had a Bachelor’s degree in Computer Science or Electrical
`
`Engineering, or an equivalent field, and approximately two years of experience working with
`
`networks. Additional education might compensate for less experience, and vice-versa. This type
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`of education and work experience generally aligns with the level of ordinary skill that VoIP-Pal’s
`
`
`
`7
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`

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`expert set forth in his declaration in an inter partes review of U.S. Patent No. 8,542,815, which is
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`the ultimate claimed parent of the ’606 Patent. See Ex. 18 (Exhibit 2016 to IPR2016-01201,
`
`Declaration of Dr. Mangione-Smith) at VOP_RBR0001905.
`
`31.
`
`Based on my education and experience, I am familiar with the level of knowledge
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`that one of ordinary skill would have possessed during the relevant period of time. By the of the
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`earliest claimed priority date (November 2, 20067), I was at least a person of ordinary skill in the
`
`art, and I am familiar with how persons of ordinary skill in the art would have interpreted the ’606
`
`Patent.
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`V.
`
`“NETWORK ELEMENT”
`
`Patents and Claims
`
`Term
`
`‘606 Patent, claims 1, 4, 8,
`14, 19-21, 23, 24, 27
`
`“network
`element”
`
`Defendants’
`Construction
`Indefinite
`
`Plaintiff’s
`Construction
`“Plain and ordinary
`meaning”
`
`32.
`
`I understand that the parties dispute the construction of the term “network element.”
`
`Defendants propose that the term is indefinite. Plaintiffs propose that the term should be given its
`
`“plain and ordinary meaning.”
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`33.
`
`In my opinion, a POSITA would not have understood the scope of the term
`
`“network element” as used in the Asserted Patent and Asserted Claims with reasonable certainty
`
`for at least the following reasons.
`
`34.
`
`“Network element” is not a well-defined term in the field8 of VoIP call routing. In
`
`particular, there is no customary understanding whether a “network element” is limited to a single
`
`7 Again, I understand that VoIP-Pal has alleged an earlier date of conception and reduction to practice of June, 6
`2005, but I was also at least a person of ordinary skill as of that earlier date.
`
`8
`
`The patent indicates that the relevant field relates to network communications and more particularly voice over
`IP call routing. See, e.g., ’606 Patent at Title (“Producing routing messages for voice over IP communications”)
`
`8
`
`

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`device or could comprise multiple devices, as this term can take on different meanings in different
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`contexts. Moreover, in some contexts, “network element” could also be used to instead describe
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`logical components of a network, and thus would encompass no physical devices at all. A POSITA
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`would have to rely on context to understand the meaning of “network element” as used in the
`
`context of the ’606 Patent, but there is insufficient context to understand that term as used therein.
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`35. With respect to the intrinsic record, although the term “network element” is used
`
`several times in the claims of the ’606 Patent, none of those instances clarify the issue described
`
`above. If anything, the claims only compound the confusion about the scope of the term “network
`
`element,” as described further below.
`
`36.
`
`37.
`
`The ‘606 Patent specification does not mention the term “network element” at all.
`
`The prosecution history of the ’606 Patent also does not mention the term “network
`
`element” at all (outside the claims), except in the context of WO2004/008786 (“Tuohino”), a prior
`
`art reference that the applicant identified to the patent examiner during prosecution.9 See Ex. 10
`
`(Oct. 17, 2018 IDS by applicant disclosing Tuohino to Examiner) at VOP_RBR0000185.
`
`Although Tuohino provides in passing some examples of “network elements,” it does not provide
`
`any clear definition of the term. See generally Tuohino (Ex. 11 at VOP_RBR0000490). Moreover,
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`there is no indication that the applicant considered Tuohino’s examples of “network elements” to
`
`be the same kind of “network element” as used in the ’606 Patent, especially since the examples
`
`of a “network element” in Tuohino are not discussed at all in the ’606 Patent. See id. at
`
`
`and 1:23-24 (“This invention relates to voice over IP communications and methods and apparatus for routing and
`billing.”)
`
`9 My discussion of the prosecution history is limited to the records that I understand are publicly available online
`through the USPTO’s Public Patent Application Information Retrieval system and records that VoIP-Pal has
`produced. I understand that VoIP-Pal has not produced the complete certified file history in this matter.
`
`
`
`9
`
`

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`VOP_RBR000523 (“network elements (I-CSCF 62, a plurality of MGCFs 64, etc)”). Thus, neither
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`Tuohino nor the prosecution history more generally provides sufficient context for a POSITA.
`
`38.
`
`In short, the intrinsic evidence lacks sufficient discussion or description regarding
`
`the term “network element” to provide a POSITA with reasonable certainty regarding the scope of
`
`that term. Further, nothing in the intrinsic evidence provides sufficient information for a POSITA
`
`to determine whether the term “network element” is limited to one physical device, can comprise
`
`multiple physical devices, or is logical in nature and encompasses no physical devices.
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`39. With respect to the extrinsic record, a POSITA would understand that how the term
`
`“network element” should be understood would vary based on context.
`
`40.
`
`In some technical references, the term “network element” is limited to a single
`
`device. See, e.g.:
`
`• The Federal Standard 1037C defines “network element (NE)” as “a piece of
`telecommunications equipment that provides support or services to the user.” Ex. 13 at DEFS-
`VOIP-2020-CC-00000050.
`• Cisco Systems (www.cisco.com), one of the largest and best-known networking equipment
`manufacturer, released a guide titled “Network Management Fundamentals” which states:
`“Using network management parlance, we also refer to network devices as network elements.”
`See Ex. 2 at DEFS-VOIP-2020-CC-00000112. Figure 1-8 immediately below then has a series
`of arrows from “Network Elements” to individual devices, which a POSITA would understand
`from common network diagrams are individual components such as switches and routers (the
`squares and circles, respectively).
`
`
`• Siemens, another well-known and prestigious networking equipment provider, likewise
`produced a technical paper “Network Element Auto-configuration in a Managed Network”
`
`
`
`10
`
`

`

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`which describes “network elements (NEs) such as wireless base stations or access points.” See
`Ex. 3 at DEFS-VOIP-2020-CC-00000059.
`• “An Efficient and Lightweight embedded Web server for Web-based network element
`management” by Hong-Taek Ju et al. teaches “network element management of a commercial
`internet router.” Ex. 4 at DEFS-VOIP-2020-CC-00000102.
`
`41.
`
`In other technical references, a “network element” could be comprised of multiple
`
`devices. See, e.g.:
`
`•
`
`IETF published RFC 221610 states “A ‘network elements’ (or equivalent shorter form
`‘element’), is any component of an internetwork which directly handles data packets and thus
`is potentially capable of exercising QoS control over data flowing through it. Network
`elements include routers, subnetworks, and end-node operating systems.” Ex. 5 at DEFS-
`VOIP-2020-CC-00000115. The RFC “provides information for the Internet community” (id.
`at DEFS-VOIP-2020-CC-00000113), however, and nothing in the ’606 Patent indicates that
`this definition would be appropriate to apply in the context of the Asserted Claims at least
`because the ’606 Patent relates to the Public Switched Telephone Network (PSTN).
`
`42.
`
`In other technical references, a “network element” could be logical in nature and
`
`not necessarily tied to any physical devices, instead tied to data structures or logical groupings.
`
`See, e.g.:
`
`• The Telecommunications Act of 1996 defines “network element” as “a facility or equipment
`used in the provision of a telecommunications service. Such term also includes features,
`functions, and capabilities that are provided by means of such facility or equipment, including
`subscriber number, databases, signaling systems, and information sufficient for billing and
`collection or used in the transmission, routing, or other provision of telecommunications
`service.” Ex. 6 at DEFS-VOIP-2020-CC-00000139-140. But nothing in the ’606 Patent would
`guide a POSITA to rely on this legal document to understand the technical meaning of the term
`“network element.”
`
`43.
`
`A POSITA requires context to understand whether “network element” is directed
`
`to a physical component (whether one physical component or a collection of multiple physical
`
`components) or instead is directed to purely logical components like data structures or software
`
`objects that may be addressed over a network, for example for the purposes of management and
`
`
`10 The Internet Engineering Task Force (IETF) is one of the premier Internet standards bodies comprising a
`community of designers, operators, vendors, and researchers who work on the Internet (see ietf.org). The IETF
`publishes Request for Comments (RFCs) that are authored by the IETF community. RFCs are technical proposals
`and specifications of draft standards for the Internet and published online for review, comment and approval (see
`ietf.org/standards/rfcs/).
`
`
`
`11
`
`

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`control. The literature generally provides that necessary context (in contrast with the ’606 Patent,
`
`which does not provide such context and hence fails to provide the clarity and precision necessary
`
`for a POSITA to understand the term in the context of the Asserted Patent or the Asserted Claims).
`
`For example, in “Understanding Telecommunications Networks” by Andy Valar (which I
`
`understand is relied upon by VoIP-Pal as extrinsic evidence in this matter11), the book describes
`
`“network elements (i.e. equipment)” (Ex. 7 at VOP_RBR0002426), so a POSITA would know
`
`that logical components and data structures are not “network elements” in that context. As a
`
`further example, in the book WCDMA for UMTS: Radio Access for Third Generation Mobile
`
`Communications by Harri Holma and Antti Toskala, the authors state: “The UMTS system
`
`consists of a number of logical network elements that each has a defined functionality. In the
`
`standards, network elements are defined at the logical level….” Ex. 8 at DEFS-VOIP-2020-CC-
`
`00000148. Thus, again the particular context provided in that book makes clear that the kinds of
`
`“network elements” at issue there were logical in nature, not physical. As a further example, the
`
`technical paper “A Reliable CORBA-Based Network Management System” teaches that “[t]he
`
`model layer provides TMN based logical network element and logical event model hierarchies.”
`
`Ex. 9 at DEFS-VOIP-2020-CC-00000082. Once again, the author has clarified that such “network
`
`elements” in that context are logical in nature, not physical. See also, e.g., id. (“logical network
`
`element”).
`
`
`11
`I understand that in a previous lawsuit involving this same ‘606 Patent, VoIP-Pal contended that a “network
`element” meant “a network device associated with a network address.” See Ex. 12 (Joint Disputed Claim
`Construction Chart, Case No. 5:20-cv-02995-LHK, Dkt. No. 93-2 (N.D. Cal. July 27, 2021) at DEFS-VOIP-
`2020-CC-00000026. Although this contention that a “network element” is a physical “device” would align with
`how it is used in this particular item of extrinsic evidence that I understand VoIP-Pal has identified, nothing in
`the ’606 Patent itself reflects that the meaning in this one particular item of extrinsic evidence that VoIP-Pal
`identified should necessarily control the scope and meaning of “network element” in the context of the ’606
`Patent.
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`
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`12
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`Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 15 of 46
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`44.
`
`The ’606 Patent, however, lacks context sufficient for a POSITA to determine with
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`reasonable certainty whether the claimed “network element” is physical in nature or logical in
`
`nature because, as described above, it is seldom used anywhere in the intrinsic record and not in a
`
`way that disambiguates.12
`
`45.
`
`If “network element” is understood to be physical in nature, the ’606 Patent lacks
`
`context sufficient for a POSITA to determine with reasonable certainty whether the claimed
`
`“network element” refers to a particular physical device or instead refers to groups of devices.
`
`46.
`
` As noted above, the claims of the ’606 Patent do not clarify the meaning of the
`
`term. For example, claim 4 of the `606 Patent requires that the method include: “processing the
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`communication forwarding information, using the at least one processor, to determine whether the
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`forwarding information identifies a communication device associated with a node that is
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`associated with the first network element.” A POSITA would not have understood how the term
`
`“network element” differs from the terms “node” and “communications device,” as these terms
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`can, in some contexts, be used interchangeably.
`
`47.
`
`The confusion is compounded if “network element” were understood to comprise
`
`multiple physical devices. For example, claim 32 of the ‘606 Patent states: “The method of claim
`
`1 wherein the communication system comprises a plurality of nodes including at least a first
`
`communication node and a second communication node in communication with each other, the
`
`
`12 There is some inconclusive indication that a “network element” may be physical in nature in the context of the
`’606 Patent. I understand that VoIP-Pal has, in another lawsuit, asserted U.S. Patent Nos. 8,630, 234 and
`10,880,721 (“the ’721 Patent”). These patents share one overlapping named inventor, Johan Emil Viktor Bjorsell.
`The term network element appears only in claim 50 of the ’721 patent, which refers to a “communications channel
`of [a] network element,” which a POSITA would understand to refer to something physical in nature because it
`is unclear what a “communications channel” would be in the purely logical sense in the context of the ’721 patent.
`However, there is no corresponding reference to a “communication channel” of a network element in the ’606
`Patent, so it is not clear that “network element” was intended to be understood in the exact same way in the two
`patents. In any event, the seemingly physical nature of “network element” in the context of the ’721 Patent does
`not clarify whether “network element” is one device or multiple devices in the context of the ’606 Patent.
`
`
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`13
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`Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 16 of 46
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`first and second communication nodes comprising the first and second network elements….” In
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`this claim, a “communication system” is comprised of “nodes” each of which in turn is comprised
`
`of a “network element,” but a POSITA would not be able to determine when a particular group of
`
`devices transitioned from being a “network element” to a “node.” For example, could up to three
`
`devices be a “network element,” but four or more devices be a “node”? Could the “network
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`element” comprise all of the physical devices in the broader network, and if not, where is the
`
`dividing line? A POSITA would not know what the distinction or cutoff is between “network
`
`element,” “node,” “network,” and “communication system,” nor what entity makes that
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`determination. As such, a POSITA would not be able to determine with reasonable certainty
`
`whether or not a particular implementation fell within the outer bounds of the claim’s scope.
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`Moreover, this confusion applies whether “network element” is physical in nature and comprised
`
`of multiple devices, or if a “network element” is logical in nature—where the box is drawn would
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`seem to be arbitrary in both cases.
`
`48.
`
`Another source of confusion is with respect to the claim step of “determin[ing]
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`whether the second network element is the same as the first network element.” See ’606 Patent, cl.
`
`1. If a “network element” were comprised of multiple devices, a POSITA would not be reasonably
`
`certain as to whether the test for “sameness” requires just one device in each “network element”
`
`to be the same or if all devices must be the same. Likewise, a POSITA would not be reasonably
`
`certain as to whether sameness should be determined by matching the network address for the
`
`group of devices (which is dynamic and can be changed, for example as a result of moving to a
`
`different geography or at the network administrator’s direction) or by matching the physical
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`devices, or by matching both physical devices and their network addresses.
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`Case 6:20-cv-00272-ADA Document 65-1 Filed 03/14/22 Page 17 of 46
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`49.
`
`Thus, for at least the reasons described above, in my opinion, the term “network
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`element” is indefinite in the context of the `606 Patent claims.
`
`I declare und