UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 8,018,877
`Filing Date: April 4, 2011
`Issue Date: September 13, 2011
`Title: Mobile Conferencing Method and System
`
`Inter Partes Review No.: IPR2019-00701
`
`DECLARATION OF DR. HENRY H. HOUH
`UNDER 35 U.S.C. § 1.68
`
`WEST\285358816.6
`
`Apple Inc.
`Ex. 1002 - Page 1
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`

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`TABLE OF CONTENTS
`
`Page
`Introduction ...................................................................................................... 1
`I.
`Background and Qualifications ....................................................................... 4
`II.
`III. Materials Considered for this Declaration ..................................................... 12
`IV. Understanding of the Law ............................................................................. 12
`V.
`Summary of Opinions .................................................................................... 14
`VI. Overview of the 877 Patent ........................................................................... 15
`A.
`Summary of the 877 Patent ................................................................. 15
`B.
`Claims of the 877 Patent ..................................................................... 15
`C.
`Effective Filing Date ........................................................................... 17
`D.
`Person of Ordinary Skill in the Art ..................................................... 19
`E.
`Claim Construction.............................................................................. 22
`VII. Ground 1: Kirmse in View of Chambers Renders Obvious Claims 1-20 .... 24
`A.
`Kirmse Overview ................................................................................ 24
`B.
`Chambers Overview ............................................................................ 25
`C.
`Analysis ............................................................................................... 25
`VIII. Ground 2: Chambers in View of RSIP Renders Obvious Claims 1-20 ....... 42
`A.
`Chambers Overview ............................................................................ 42
`B.
`RSIP Overview .................................................................................... 42
`C.
`Statement of Rationale for the Combination of Chambers and
`RSIP ..................................................................................................... 43
`D.
`Analysis ............................................................................................... 46
`IX. Ground 3: Cordenier in View of TURN Renders Obvious Claims 1-3, 5-
`10, 12-20 ........................................................................................................ 56
`A.
`Cordenier Overview ............................................................................ 56
`B.
`TURN Overview ................................................................................. 58
`C.
`Statement of Rationale for Combining Cordenier and TURN ............ 61
`D.
`Analysis ............................................................................................... 64
`Secondary Considerations ............................................................................. 76
`X.
`XI. Conclusion ..................................................................................................... 76
`i
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`Apple Inc.
`Ex. 1002 - Page 2
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`

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`EXHIBIT LIST
`
`1009
`
`1010
`
`1011
`1012
`1013
`
`Exhibit No. Description
`1001
`U.S. Patent No. 8,018,877 to Lin
`1002
`Declaration of Dr. Henry Houh (this declaration)
`1003
`File History of U.S. Pat. No. 8,018,877 to Lin
`1004
`File History of U.S. Pat. No. 7,961,663 to Lin
`U.S. Pat. No. 6,699,125 (“Kirmse”)
`1005
`U.S. Pat. App. Pub. No. US 2003/0142654 (“Chambers”)
`1006
`European Pat. App. Pub. EP 1 385 323 A1 (“Cordenier”)
`1007
`1008
`Complaint for Patent Infringement dated February 22, 2018
`(“Uniloc Complaint”)
`Declaration by Alexa Morris with the exhibit “draft-rosenberg-
`midcom-turn-00.txt”, Traversal Using Relay NAT (TURN)
`Declaration of Sandy Ginoza for IETF RFC 793: Transmission
`Control Protocol with the exhibit, RFC 793, “Transmission
`Control Protocol” (“RFC793”)
`U.S. Pat. App. Pub. No. 2003/0217174 (“Dorenbosch”)
`U.S. Patent No. 7,961,663 to Lin (“663 Patent”)
`Declaration of Sandy Ginoza for IETF RFC 3103: Realm
`Specific IP: Protocol Specification with exhibit, RFC 3103,
`“Realm Specific IP: Protocol Specification” (“RSIP”)
`Certified Translation and Original of European Pat. App. Pub. EP
`1 009 153 A1 (“Alos”)
`Declaration by Alexa Morris with the exhibit “draft-rosenberg-
`sipping-ice-00.txt,” Interactive Connectivity Establishment
`(ICE): A Methodology for Network Address Translator (NAT)
`Traversal for the Session Initiation Protocol (SIP) (“ICE”)
`U.S. Patent No. 7,969,925 to Lin (“925 Patent”)
`Declaration of Sandy Ginoza for IETF RFC 1918: Address
`Allocation for Private Internets with exhibit, RFC 1918,
`“Address Allocation for Private Internets” (“NAT”)
`
`1014
`
`1015
`
`1016
`1017
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`ii
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`Apple Inc.
`Ex. 1002 - Page 3
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`

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`1018
`1019
`
`1020
`
`1021
`1022
`1023
`1024
`
`U.S. Patent No. 8,539,552 (“Grabelsky”)
`Declaration of Sandy Ginoza for IETF RFC 3489: STUN -
`Simple Traversal of User Datagram Protocol (UDP) Through
`Network Address Translators (NATs) with the exhibit, RFC
`3489, “STUN - Simple Traversal of User Datagram Protocol
`(UDP) Through Network Address Translators (NATs)”
`(“STUN”)
`January 3, 2011 Amendment and Response to Office Action
`from file history of U.S. Pat. No. 7,969,925 to Lin
`U.S. Pat. App. No. 10/817,994 to Lin
`U.S. Pat. App. No. 10/935,342 to Lin
`U.S. Pat. App. No. 11/042,620 to Lin
`Declaration of Sandy Ginoza for IETF RFC 2026: The Internet
`Standards Process – Revision 3 with the exhibit, RFC 2026:
`“The Internet Standards Process – Revision 3” (“Internet
`Standards Process”)
`
`WEST\285358816.6
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`iii
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`Apple Inc.
`Ex. 1002 - Page 4
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`

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`I, Dr. Henry H. Houh, do hereby declare:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained as an expert witness on behalf of petitioner Apple
`
`Inc. (“Apple”) for the above-captioned Petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 8,018,877 (“877 patent”). I am being compensated for my time in
`
`connection with this IPR at my standard consulting rate of $620 per hour. My
`
`compensation is in no way dependent on the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether claims 1-
`
`20 (“the challenged claims”) of the 877 patent are invalid as anticipated or
`
`obvious. In preparing this declaration, I have reviewed the 877 patent, the file
`
`history of the 877 patent, and numerous prior art references from the time of the
`
`alleged invention.
`
`3.
`
`I have been advised and it is my understanding that patent claims in
`
`an IPR are interpreted using the same claim construction standard that is used to
`
`construe the claim in a civil action in federal district court.
`
`4.
`
`In forming the opinions expressed in this declaration, I relied upon my
`
`education and experience in the relevant field of the art, and have considered the
`
`viewpoint of a person having ordinary skill in the relevant art, as of 2004. My
`
`opinions directed to the invalidity of claims 1-20 of the 877 patent are based, at
`
`least in part, on the following prior art publications:
`
`WEST\285358816.6
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`1
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`Apple Inc.
`Ex. 1002 - Page 5
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`

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`
`
`
`
`
`
`
`
`
`
`“Kirmse” (Ex. 1005), which is U.S. Pat. No. 6,699,125, issued March
`
`2, 2004, published July 4, 2002 (as 2002/0086732), and filed on July
`
`2, 2001 (as 09/898,746);
`
`“Chambers” (Ex. 1006), which is U.S. Pat. App. Pub. No.
`
`2003/0142654, published July 31, 2003, filed January 21, 2003 (as
`
`10/348,244);
`
`“Cordenier” (Ex. 1007), which is European Pat. App. Pub. No.
`
`EP 1 385 323 A1, published January 28, 2004;
`
`“TURN” (Ex. 1009), which is a draft Request for Comment (“RFC”)
`
`published by IETF no later than November 14, 2001; and,
`
`“RSIP” (Ex. 1013), which is RFC 3103 and was published by IETF
`
`no later than October 2001.
`
`5.
`
`As explained in the declaration of Alexa Morris, TURN was indexed
`
`and published on a publicly available website and repository making it available
`
`and accessible to any interested person no later than November 14, 2001. Ex. 1009
`
`at 1-2. As explained in a first declaration by Sandy Ginoza (The Internet Standards
`
`Process), the IETF published draft versions of RFCs in the IETF’s “Internet-
`
`Drafts” directory, which was replicated on a number of Internet hosts, for the
`
`purpose of making a “working document readily available to a wide audience,
`
`facilitating the process of review and revision.” Ex. 1024 at 12-13. Publishing
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`such drafts was used to publicly solicit input from POSITAs for the standard-
`
`setting processes, and anyone, including a POSITA, would have had access to, and
`
`would have been able to locate TURN no later than that date. Id. I am familiar
`
`with such drafts of RFCs based on my experience in the field.
`
`6.
`
`Similarly, and as explained in a second declaration of Sandy Ginoza,
`
`RSIP was indexed and published on a publicly available website and repository
`
`making it available and accessible to any interested person no later than October
`
`2001. Ex. 1013 at 1-3. As explained in the Internet Standards Process,
`
`Each distinct version of an Internet standards-related
`specification is published as part of the "Request for
`Comments" (RFC) document series. This archival series
`is the official publication channel for Internet standards
`documents and other publications of the IESG, IAB,
`and Internet community. RFCs can be obtained from a
`number of Internet hosts using anonymous FTP, gopher,
`World Wide Web, and other Internet document-retrieval
`systems.
`
`Ex. 1024 at 10-11. The purpose of publishing RFCs was to publicly solicit input
`
`from POSITAs for the standards setting processes, and anyone, including a
`
`POSITA, would have had access to, and would have been able to locate RSIP no
`
`later than October 2001. I am familiar with RFCs based on my experience in the
`
`field.
`
`WEST\285358816.6
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`3
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`Apple Inc.
`Ex. 1002 - Page 7
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`II.
`
`BACKGROUND AND QUALIFICATIONS
`7.
`My background and expertise that qualify me as an expert in the
`
`technical issues in this case are as follows.
`
`8.
`
`As indicated on my Curriculum Vitae attached as Exhibit A, I
`
`received a Ph.D. in Electrical Engineering and Computer Science from the
`
`Massachusetts Institute of Technology (“MIT”) in 1998. I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science Degree in Electrical Engineering and Computer Science in
`
`1989, and a Bachelor of Science Degree in Physics in 1990, all from MIT.
`
`9.
`
`During my college studies, I focused on communications and data
`
`networking. I took specialized courses including graduate courses in
`
`telecommunications networks, optical communications, and data networking. I,
`
`along with other graduate students in a networking research group, maintained
`
`both the computer workstations and the networking devices in the research group.
`
`10.
`
`I have worked in data networking and distributed multimedia systems
`
`on several occasions. As part of my doctoral research at MIT from 1991-1998, I
`
`worked as a research assistant in the Telemedia Network Systems (“TNS”) group
`
`at the Laboratory for Computer Science. The TNS group built a high-speed gigabit
`
`ATM network and applications which ran over the network, such as remote video
`
`capture (including audio), processing and display on computer terminals. In
`
`WEST\285358816.6
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`Ex. 1002 - Page 8
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`addition to helping design the core network components (such as the ATM switch),
`
`designing and building the high-speed ATM links, and designing and writing the
`
`device drivers for the interface cards, I also set up the group’s web server, which at
`
`the time was one of the first several hundred web servers in existence. Our high-
`
`speed data network carried multimedia data including video and audio data within
`
`ATM cells.
`
`11.
`
`Like all ATM networks, interconnection of various endpoints in our
`
`ATM system required the setup of end-to-end virtual circuits which required, for
`
`each ATM switch in the connection path, the switch’s header remapping tables to
`
`be configured for each virtual circuit required. I developed and implemented our
`
`system’s protocol of controlling the content of these tables and the overall circuit
`
`setup.
`
`12.
`
`The TNS group was the first group to initiate a remote video display
`
`over the World Wide Web. Vice President Al Gore visited our group in 1996 and
`
`received a demonstration of—and remotely drove—a radio-controlled toy car with
`
`a wireless video camera mounted on it; the video was encoded by TNS-designed
`
`hardware, streamed over the TNS-designed network and displayed using TNS-
`
`designed software.
`
`13.
`
`I authored or co-authored twelve papers and conference presentations
`
`on our group’s research. I also co-edited the final report of the gigabit networking
`
`WEST\285358816.6
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`Ex. 1002 - Page 9
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`research effort with Professor David Tennenhouse and Senior Research Scientist
`
`David Clark. David Clark is generally considered to be one of the fathers of the
`
`Internet Protocol and served as Chief Protocol Architect for the Internet. With its
`
`focus on networking, the group, including myself, set up and maintained the
`
`network and computer systems. These systems included the networking on the
`
`workstations and desktops, the distributed file system, desktops and workstations,
`
`setting up and maintaining the distributed file system (Network File System) and
`
`the authentication system (Network Information Service, formerly known as
`
`Yellow Pages). Our system allowed users to log into any of the group’s
`
`workstations using their username/password, which allowed that all of the user’s
`
`files would be virtually mounted on that workstation as a networked home
`
`directory.
`
`14.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
`
`analyzed local-area and wide-area flows to show a more efficient method for
`
`routing packets in a network, based on traffic patterns at the time. My thesis also
`
`addressed real-time streamed audio and video. The network traffic that I analyzed
`
`was IP protocol traffic, including UDP and TCP.
`
`WEST\285358816.6
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`Ex. 1002 - Page 10
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`15.
`
`I have been involved in Voice over Internet Protocol (“VoIP”)
`
`technologies since 1997 and have specific experience in designing and testing
`
`VoIP networks.
`
`16.
`
`From 1997 to 1999, I worked at NBX Corporation, which was
`
`acquired by 3Com Corporation in 1999. During this time, I was a Senior Scientist
`
`and Engineer working in IP Telephony. NBX delivered the world’s first fully
`
`featured business telephone system to run over a data network, the NBX100. NBX
`
`was one of the first business phone systems to be configurable via a web interface.
`
`Users and administrators had access to varying levels of configuration for the
`
`phone system.
`
`17. As part of my work at NBX, I designed the core audio reconstruction
`
`algorithms for the telephones which de-packetized the voice data and reconstructed
`
`the audio. In addition, I designed the voice data packet transmission algorithms. I
`
`created a system to capture and analyze network packets sent by devices in the
`
`NBX system for aid in testing and debugging. I also designed and validated the
`
`core packet transport protocol used by the phone system. In addition, I designed
`
`and oversaw the development of the underlying transport protocol used by the
`
`NBX100 phone system for reliable packet transport. That transport protocol is still
`
`used by the NBX100 system and its successors and is estimated to be used
`
`hundreds of millions of times daily. I wrote NBX’s first demonstration IP software
`
`WEST\285358816.6
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`stack, which added the capability for utilizing the NBX100 phone system on an IP
`
`network. NBX first demonstrated a phone in the NBX100 system working over
`
`the Internet in 1998 at a trade show in Las Vegas. I was later the lead architect in
`
`designing NBX’s next-generation highly scalable system, and, after NBX was
`
`acquired by 3Com, I did some work with 3Com’s cable equipment division,
`
`including demonstrating a working NBX IP phone system over 3Com’s cable
`
`equipment infrastructure using an early version of DOCSIS at a trade show in
`
`1999. The NBX100 was the market’s leading business phone system to run on a
`
`data network for several years following its introduction. During that time, I
`
`became more familiar with the various standards relevant to Internet telephony as
`
`well as the problems which designers of commercial telephony operations were
`
`faced with in implementing VoIP.
`
`18.
`
`I, along with two of NBX’s founders, was awarded U.S. Patent No.
`
`6,697,963 titled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time-sensitive data,” for some of the work we did while at
`
`NBX.
`
`19. After NBX, I worked at Teradyne, a test tool company primarily
`
`focused on semiconductors. Teradyne had recently acquired Hammer, a company
`
`that specialized in load and functional testing for telecommunications systems.
`
`The Hammer product is well known as a telecom test tool. Teradyne spun out
`
`WEST\285358816.6
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`Hammer and several other internal divisions into an independent company called
`
`Empirix. I became Chief Technologist of the Hammer division of Empirix.
`
`Empirix was a leader in VoIP network testing and monitoring.
`
`20. At Empirix, I laid out a new multi-year product vision for data
`
`network testing, secured internal funding for the effort, and led a team to deliver a
`
`new technology platform to the market in February 2001. This new product,
`
`PacketSphere, initially emulated network behavior so that wide-area VoIP
`
`connections could be tested in a lab. A later release allowed PacketSphere to
`
`generate high volumes of VoIP calls, including media streams, and to monitor the
`
`quality of VoIP voice streams. Later, the core technology was added to other
`
`Empirix products such as Empirix’s Hammer XMS to monitor thousands of VoIP
`
`media streams in real time to determine their quality. PacketSphere was Empirix’s
`
`most successful new platform introduction. Companies purchased the
`
`PacketSphere product to emulate an Internet Protocol network to see the effects of
`
`deploying their product on the Internet prior to launch. PacketSphere received
`
`several industry awards.
`
`21. During my time at Empirix, I presented lectures on VoIP and data
`
`network testing to companies including Lucent Labs (formerly AT&T Bell Labs).
`
`I was also invited to present several guest lectures in a software engineering course
`
`at MIT. Since then, I have also participated twice as a unit lecturer (two weeks) in
`
`WEST\285358816.6
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`an experimental course that was taught by an Institute Professor (the highest award
`
`that a MIT Professor can achieve) and sponsored by the Chairman of the MIT
`
`Corporation (MIT’s board of trustees).
`
`22.
`
`From 2004 to 2008, I was employed by BBN Technologies Corp., a
`
`technology research and development company located in Cambridge,
`
`Massachusetts. BBN Technologies is a world-renowned company with expertise
`
`in acoustics, speech recognition, and communications technology. BBN
`
`Technologies staff have pioneered many internetworking technologies and Internet
`
`applications, and built some of the world’s largest government and commercial
`
`data networks.
`
`23. My duties and responsibilities at BBN Technologies generally
`
`included commercialization of the technologies developed by BBN Technologies,
`
`which included spinning off companies and growing commercial businesses in-
`
`house. More particularly, I was involved in utilizing the award-winning AVOKE
`
`STX speech recognition technology to create the public audio/video search engine
`
`EveryZing (formerly known as PodZinger) which was spun out into a stand-alone
`
`company now known as RAMP, Inc. PodZinger won the 2006 MITX Technology
`
`Award for best Web 2.0 Application and was also named the 2006 Forbes Favorite
`
`Video & Audio Search Engine, beating out Google, Yahoo, and other companies.
`
`After managing the creation of the initial prototype system, PodZinger built out a
`
`WEST\285358816.6
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`Apple Inc.
`Ex. 1002 - Page 14
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`full streaming audio and video search solution when I was the Vice President of
`
`Operations and Technology there. I was also involved in the Boomerang Mobile
`
`Shooter Detection project as the Vice President of Engineering for the program.
`
`The Boomerang system was deployed to Iraq and Afghanistan, and was credited
`
`with saving many lives.
`
`24.
`
`From 1989 to 1990, I worked at AT&T Bell Laboratories on optical
`
`computers. This work generated six peer-reviewed papers, and multiple U.S. and
`
`European patent applications in which I was named as a co-author or inventor. I
`
`also interned at AT&T Bell Laboratories in 1987 and 1988. Additional relevant
`
`experience in the field of optical computers is listed in my Curriculum Vitae.
`
`25.
`
`I am a named inventor on several patents and published patent
`
`applications that are related to the VoIP technology including: U.S. Patent No.
`
`6,967,963, entitled “Telecommunication Method for Ensuring On-time Delivery of
`
`Packets Containing Time- Sensitive Data”; U.S. Patent Application Publication
`
`No. 20020015387, entitled “Voice Traffic Packet Capture and Analysis Tool for a
`
`Data Network”; U.S. Patent Application Publication No. 20020016708, entitled
`
`“Method and Apparatus for Utilizing a Network Processor as Part of a Test
`
`System”; U.S. Patent Application Publication No. 20020016937, entitled “Method
`
`and Apparatus for Utilizing a Network Processor as Part of a Test System”; and
`
`WEST\285358816.6
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`Ex. 1002 - Page 15
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`U.S. Patent No. 7,590,542, entitled “Method of Generating Test Scripts Using a
`
`Voice-Capable Markup Language.”
`
`III. MATERIALS CONSIDERED FOR THIS DECLARATION
`26.
`In addition to my general knowledge, education, and experience, and
`
`the prior art publications I listed above, I considered the materials listed in the
`
`Exhibit List in forming my opinions.
`
`IV. UNDERSTANDING OF THE LAW
`27.
`In expressing my opinions and considering the subject matter of the
`
`claims of the 877 patent, I am relying upon certain basic legal principles that Apple
`
`counsel has explained to me.
`
`28.
`
`I understand from Apple counsel that a patent claim is invalid as
`
`anticipated under 35 U.S.C. § 102 if each element of that claim is present either
`
`expressly or inherently in a single prior art reference. I understand from Apple
`
`counsel, to be an inherent disclosure, the prior art reference must necessarily
`
`disclose the limitation, and the fact that the reference might possibly practice or
`
`contain a claimed limitation is insufficient to establish that the reference inherently
`
`teaches the limitation.
`
`29.
`
`I understand from Apple counsel that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103, if the differences between the invention and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`WEST\285358816.6
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`Apple Inc.
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`the time the invention was made to a person having ordinary skill in the art to
`
`which the subject matter pertains. I understand from Apple counsel that the
`
`obviousness analysis takes into account factual inquiries including the level of
`
`ordinary skill in the art, the scope and content of the prior art, and the differences
`
`between the prior art and the claimed subject matter.
`
`30.
`
`I understand from Apple counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. These rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and, (f) some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`31.
`
`Finally, I understand from Apple counsel that secondary factors may
`
`be considered in an obviousness inquiry. I understand from Apple counsel that
`
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`these are also referred to as secondary considerations and may include evidence of
`
`long-felt need, failure of others, skepticism of those of skill in the art, licensing,
`
`commercial success, recognition in the industry, acquiescence, evidence of
`
`copying, and unexpected results.
`
`32. Moreover, I understand from Apple counsel that for objective
`
`evidence of nonobviousness to be accorded substantial weight, the proponent of
`
`such evidence must establish a “nexus” between the evidence and the merits of the
`
`patent at issue. Specifically, I understand from Apple counsel that the secondary
`
`consideration must be tied to the merits of the claimed invention of the patent at
`
`issue. I understand from Apple counsel that where the alleged secondary
`
`consideration results from something other than what is both claimed and novel,
`
`there is no nexus to the merits of the claimed invention and the secondary
`
`considerations are thus not indicative of nonobviousness. I understand from Apple
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`counsel that it is the patentee’s burden to come forward with evidence that a nexus
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`exists.
`
`V.
`
`SUMMARY OF OPINIONS
`33. Based on my review of the 877 patent and its prosecution history, the
`
`other materials I have considered, and my knowledge and experience, my opinions
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`are as follows:
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`
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`
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`
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`Claims 1-20 are obvious over the combination of Kirmse and
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`Chambers;
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`Claims 1-20 are obvious over the combination of Chambers and RSIP;
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`and,
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`Claims 1-3, 5-10, 12-17, 19-20 are obvious over the combination of
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`Cordenier and TURN.
`
`VI. OVERVIEW OF THE 877 PATENT
`A.
`Summary of the 877 Patent
`34.
`The 877 patent describes a technique for establishing a connection and
`
`then transferring data between mobile devices through a server. Ex. 1001 at Figs.
`
`1 and 2, 5:20-30. With this technique, the initiating device (1) sends a request to a
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`server for an IP address and port, (2) receives the IP address and port from the
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`server, (3) sends the IP address and port to another mobile device via SMS, and
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`then (4) exchanges data with the other mobile device through the server. Id. at Fig.
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`2 (steps 225, 230, 240, 260) and 4:39-5:30.
`
`Claims of the 877 Patent
`B.
`35. Claim 1 tracks the disclosed technique of establishing a
`
`communication by claiming (1.pre) a method for an initiating a data transfer
`
`among mobile devices (1.a) transmitting a request to a server to allocate a network
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`address and port, (1.b) receiving the network address and port, (1.c) sending the
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`address and port via page-mode messaging service to another mobile device, and
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`(1.d) participating in a data exchange session with that mobile device through the
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`server. Ex. 1001 at 8:20-35 (claim 1). These steps are highlighted in annotated
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`Figure 2 below.
`
`36. Claim 2 specifies that the page-mode messaging service may be used
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`for other unrelated purposes. Claim 3 specifies that the page-mode message is
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`encoded to be recognized by software on the participating mobile device. Claim 4
`
`specifies that additional devices are invited to participate in the data exchange
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`session. Claim 5 specifies that the initiating device is a non-mobile device. Claim
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`6 specifies that the unique identifier is associated with a telephone number. Claim
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`7 specifies that the session identifier further comprises an IP address. Each of the
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`groups of claims 8-14 and claims 15-20 parallel claims 1-7.
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`C.
`37.
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`Effective Filing Date
`I understand from Apple counsel that the 877 patent, based on the face
`
`of the patent, claims priority to continuation and continuation-in-part applications
`
`dating back to April 5, 2004. I understand that in order to receive an earlier
`
`priority date than the date of filing of the 877 patent, the earlier specifications must
`
`disclose to a POSITA that the inventor was in possession of the claimed subject
`
`matter of the 877 patent.
`
`38. However, in my opinion, no claim of the 877 patent is sufficiently
`
`described in any of application nos. 10/817,994 (Ex. 1021), 10/935,342 (Ex.
`
`1022), or 11/042,620 (Ex. 1023) (collectively, the “P2P applications”), such that a
`
`POSITA would understand the inventor to be in possession of the claimed subject
`
`matter of the 877 patent at the respective times the P2P applications were filed.
`
`39.
`
`In fact, the 877 patent identifies the original 10/817,994 application as
`
`the “peer-to-peer” or “P2P patent application” and explains that the technology
`
`described therein will work only between peers with public IP addresses or peers
`
`on the same private network and will not work across Network Address
`
`Translation. Ex. 1001 at 1:44-2:18. This is because, in the P2P applications, the
`
`peer devices exchange their own addresses and communicate directly in a peer-to-
`
`peer fashion without an intervening server. Id. ; see also, e.g., Ex. 1016 at claim 1
`
`(“wherein the data transfer session is established in a peer-to-peer fashion without
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`a server intermediating communications”). Thus, if the devices are assigned
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`private addresses from different private networks, the device that receives that
`
`foreign-private address via SMS will not be able to use it on its own private
`
`network to reach the initiating mobile device. Id. The 877 patent admits that the
`
`specification of the P2P patent does not disclose how to address this problem. Ex.
`
`1001 at 1:44-2:18. A POSITA would understand these statements and issues apply
`
`equally to each of the P2P applications.
`
`40.
`
`In contrast, all of the claims of the 877 patent are drawn to new
`
`matter, not described in any P2P application because (1) the 877 patent claims that
`
`the devices exchange a network address and port number of a relay server, not the
`
`devices’ own addresses as disclosed in the P2P applications and (2) the 877 patent
`
`claims that the devices communicate through that relay server, not in a peer-to-peer
`
`fashion without an intermediating server as disclosed in the P2P applications. Ex.
`
`1001 at claim 1 (“a network address and port associated with the server …
`
`participating in the data exchange session with the participating mobile device
`
`through the server … .”), claim 8 (same), claim 15 (same).
`
`41.
`
`In my opinion, a POSITA would understand that the P2P applications
`
`do not demonstrate that the inventor was in possession of the subject matter
`
`claimed in the claims of the 877 patent. Indeed, the discussion of the P2P
`
`application in the specification of the 877 patent highlights that the 877 patent is
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`addressing a problem that was not even recognized, much less addressed, by the
`
`inventor at the time he filed the P2P applications. Ex. 1001 at 1:44-2:18.
`
`Person of Ordinary Skill in the Art
`D.
`42. A person of ordinary skill in the art at the time of the alleged
`
`invention of the 877 patent (a “POSITA”) would have had a Bachelors’ degree in
`
`computer science or a comparable field of study, plus approximately two to three
`
`years of professional experience with cellular phone and IP networks, or other
`
`rel