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
`
`Inter Partes Review No.: IPR2019-00701
`
`DECLARATION OF DR. HENRY H. HOUH
`IN SUPPORT OF PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 8,018,877
`
`Inter Partes Review No.: IPR2019-00701
`
`DECLARATION OF DR. HENRY H. HOUH
`IN SUPPORT OF PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO PETITION
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 1
`
`
`
`TABLE OF CONTENTS
`
`Page
`Introduction ...................................................................................................... 1
`I.
`Background and Qualification ......................................................................... 1
`II.
`III. Materials Considered for this Declaration ....................................................... 1
`IV. Understanding of the Law ............................................................................... 1
`V.
`Summary of my Opinions ................................................................................ 2
`VI. The Challenged Claims Are Unpatentable ...................................................... 2
`A. Ground 1: Claims 1-20 are Unpatentable Over the Combination
`of Kirmse (Ex. 1005) and Chambers (Ex. 1006) .................................. 2
`B. Ground 2: Claims 1-20 are Unpatentable Over the Combination
`of Chambers (Ex. 1006) and RSIP (EX. 1007) ..................................... 2
`C. Ground 3: Claims 1-3, 5-10, 12-17, and 19-20 are Unpatentable
`Over Cordenier (Ex. 1007) and TURN (Ex. 1009) ............................... 5
`VII. The Petition Establishes the Obviousness of Every Dependent Claim ........... 7
`VIII. Conclusion ....................................................................................................... 7
`
`i
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 2
`
`
`
`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`
`1014
`
`1015
`
`1016
`1017
`
`1018
`1019
`
`EXHIBITS
`
`Description
`U.S. Patent No. 8,018,877 to Lin
`Declaration of Dr. Henry Houh
`File History of U.S. Pat. No. 8,018,877 to Lin
`File History of U.S. Pat. No. 7,961,663 to Lin
`U.S. Pat. No. 6,699,125 (“Kirmse”)
`U.S. Pat. App. Pub. No. US 2003/0142654 (“Chambers”)
`European Pat. App. Pub. EP 1 385 323 A1 (“Cordenier”)
`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”)
`U.S. Patent No. 8,539,552 (“Grabelsky”)
`Declaration of Sandy Ginoza for IETF RFC 3489: STUN - Simple
`
`ii
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 3
`
`
`
`Exhibit No.
`
`1020
`
`1021
`1022
`1023
`1024
`
`1025
`
`1026
`
`EXHIBITS continued
`
`Description
`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”)
`Declaration of Dr. Henry H. Houh In Support of Petitioner’s
`Reply to Patent Owner’s Response to Petition
`Merriam-Webster’s Collegiate Dictionary, 10th Ed., (2002)
`definition of “allocate”
`
`iii
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 4
`
`
`
`I, Dr. Henry H. Houh, do hereby declare:
`
`I.
`
`INTRODUCTION
`1.
`As I discussed in my declaration dated February 22, 2019 that I
`
`provided for the Petition in this proceeding (Ex. 1002), 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.
`
`II.
`
`BACKGROUND AND QUALIFICATION
`2.
`Section II of my prior declaration (Ex. 1002, ¶¶7-25) states my
`
`background and expertise that qualify me as an expert in the technical issues in this
`
`case. There are no relevant updates to that background or expertise.
`
`III. MATERIALS CONSIDERED FOR THIS DECLARATION
`3.
`In addition to my general knowledge, education, and experience, and
`
`the prior art publications I listed in paragraphs 7 through 25 of Exhibit 1002, I
`
`considered the materials filed in this proceeding and the materials listed in the
`
`Exhibit List above in forming my opinions.
`
`IV. UNDERSTANDING OF THE LAW
`4.
`Paragraphs 27 through 32 of Exhibit 1002 state the legal principles
`
`that Apple counsel explained to me and on which I rely.
`
`1
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 5
`
`
`
`V.
`
`SUMMARY OF MY OPINIONS
`5.
`Based on my review of the materials filed in this proceeding and the
`
`materials listed in the Exhibit List above, I maintain the opinions I expressed in
`
`Exhibit 1002. Further, in this declaration I address arguments Patent Owner
`
`(“PO”) raised in Patent Owner’s Response to Petition, Paper 9 (“POR”).
`
`VI. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A.
`Ground 1: Claims 1-20 are Unpatentable Over the Combination
`of Kirmse (Ex. 1005) and Chambers (Ex. 1006)
`A request to distribute connection details to join an existing game
`
`6.
`
`satisfies the ordinary meaning of a request to “allocate,” which includes “to
`
`apportion for a specific purpose or to particular persons or things: DISTRIBUTE.”
`
`Ex. 1026 (Merriam-Webster’s Collegiate Dictionary, 5th ed.), 3. This is consistent
`
`with the 877 patent’s use of “allocate” in the specification. Ex. 1001, 4:62-66,
`
`5:15-20. Additionally, Kirmse discloses that the game server can include many
`
`active games. Ex. 1005, Fig. 1 (illustrating two games), 5:54-67 (disclosing
`
`support for many simultaneous games); Petition, 18-19. The server choosing a
`
`game and then distributing the connection details for the chosen game also satisfies
`
`the ordinary meaning of “allocate.”
`
`B.
`
`7.
`
`Ground 2: Claims 1-20 are Unpatentable Over the Combination
`of Chambers (Ex. 1006) and RSIP (EX. 1007)
`PO’s argument is fundamentally flawed because it attacks the
`
`description of the requests/responses in isolation, without considering RSIP as a
`
`2
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 6
`
`
`
`whole. PO admits that RSIP uses “local address and port” to refer to the RSIP
`
`Server’s own addresses and ports. POR, 10. PO admits there are only two
`
`addresses/port combinations in the requests and responses, and admits that the
`
`“remote” one pertains to the remote device. POR, 10-11. A POSITA would have
`
`understood that “local address and ports” in these passages of RSIP is consistent
`
`with the rest of RSIP, and refers to the RSIP Server’s public address and ports.
`
`Moreover, a POSITA would have known that, as the only other address and port
`
`discussed in the protocol, the local address and port must be the public IP address
`
`and port of the RSIP Server.
`
`8.
`
`Additionally, the example provided in RSIP conclusively establishes
`
`that the “local address and ports” referred to in description of the requests and
`
`responses are the public IP address and ports of the RSIP Server. Petition, 40-42,
`
`48 (citing Ex. 1013 at 49-51); Ex. 1002, ¶¶87-92, 105. In that example, there are
`
`two ASSIGN requests and responses. In the first request,
`
`ASSIGN_REQUEST_RSAP-IP, the host specifies “Address (local) = 0, Ports
`
`(local) = 4-0,” because the host wants four ports but does not care what public IP
`
`address is allocated. Ex. 1013, 50. The RSIP Server then allocates one of its
`
`public IP addresses, 149.112.240.156, and the four ports 1234-1237, and returns
`
`them in the response, ASSIGN_RESPONSE_RSAP-IP. Ex. 1013, 8 (defining
`
`private addresses), 50 (allocating 149.112.240.156, a public IP address). In the
`
`3
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 7
`
`
`
`second request, the host wants the RSIP Server to allocate eight more ports using
`
`the same public IP address and, therefore, specifies in the second request “Address
`
`(local) = 149.112.240.156, Ports (local) = 8-1238.” Ex. 1013, 50-51. The RSIP
`
`Server then allocates eight more ports at the same public IP address
`
`149.112.240.156 and provides them to the host in the second response. Id., 51.
`
`The public IP address 149.112.240.156 is not a private address of the host. Ex.
`
`1013, 8 (defining the private addresses in the host’s private address realm).
`
`9.
`
`Contrary to PO’s assertion in the POR at 12-13, the remote flow
`
`policies disclosed in RSIP confirm that the allocated address and port are
`
`associated with the RSIP Server. As explained by RSIP, the RSIP Server can
`
`require that the host explicitly specify either the IP address (macro-flow) or both
`
`the IP address and port(s) (micro-flow) of the remote device, so that the RSIP
`
`Server can restrict subsequent communications. Ex. 1013, 12-13. The ability of
`
`the RSIP Server to control subsequent communications confirms to a POSITA that
`
`the allocated IP address and port are associated with the RSIP Server. Ex. 1013,
`
`13. Of course, the RSIP Server can also chose to allow the host to not explicitly
`
`specify the remote IP address and port(s) (no remote flow policy), in which case
`
`the RSIP Server will forward all subsequent communications, regardless of the
`
`remote IP address and port. Id.
`
`4
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 8
`
`
`
`C.
`
`10.
`
`Ground 3: Claims 1-3, 5-10, 12-17, and 19-20 are Unpatentable
`Over Cordenier (Ex. 1007) and TURN (Ex. 1009)
`PO’s argument confuses Cordenier’s IP-exchange server with a
`
`TURN relay server. POR, 13 (erroneously stating “exchange server, i.e., a relay
`
`server”). An IP-exchange server in Cordenier is a server that (1) registers users’ IP
`
`addresses and user names, (2) responds to lookup queries from other users, and (3)
`
`exchanges IP addresses between accepting users. Ex. 1007, 1:49-2:12 (“The
`
`exchange of IP-addresses between users takes place by an IP-exchange server.”),
`
`2:20-25 (“To be able to exchange IP-addresses . . . both users are registered at the
`
`same IP-exchange server.”). Once the users have each other’s IP addresses, the IP-
`
`exchange server is not involved in the subsequent IP-traffic. Ex. 1007, 2:13-19.
`
`Cordenier explains that an IP-exchange server can be eliminated by delivering the
`
`IP address directly from one user to another via SMS. Ex. 1007, 2:29-33, 6:49-57.
`
`Cordenier makes clear that, in its invention, the mobile devices can obtain their IP
`
`addresses from an IP address server, e.g., server 15. Ex. 1007, 6:36-38, 7:9-15.
`
`11. A TURN relay server is not an IP-exchange server because it does not
`
`exchange IP addresses between users or perform any of the other functions of the
`
`IP-exchange server described in Cordenier. A TURN relay server allocates one of
`
`its public IP addresses to the requesting/initiating user, but that user transmits that
`
`IP address directly to the recipient using a different application. Ex. 1009, Fig. 5
`
`(step 5), 10, 13-15; Petition, 62-63; Ex. 1002, ¶¶129-131. In the combination of
`
`5
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 9
`
`
`
`Cordenier and TURN, the TURN server allocates a public IP address to the
`
`initiating user, who then transmits that address to the recipient using SMS. Id.
`
`Contrary to PO’s assertions in the POR at 14, allocating IP addresses is entirely
`
`consistent with Cordenier, wherein server 15 allocates IP addresses. Ex. 1007,
`
`6:36-38, 7:9-15. In the combination of Cordenier and TURN, there is no need for
`
`the recipient to log into the TURN server, or even know of its existence. The
`
`recipient merely responds to the public IP address contained in the SMS message,
`
`and the TURN server will then transparently relay that response to the initiating
`
`user. Petition, 64-66; Ex. 1002, ¶¶132-35.
`
`12.
`
`In fact, combining Cordenier with a TURN relay server is entirely
`
`consistent with Cordenier’s teaching that it may be necessary to route IP-traffic
`
`through a network address translator, i.e., a server. Ex. 1007, 8:21-26 (Since data
`
`exchange may take place via telecom networks operated by different operators, it
`
`may, in the case the data network 3 is an IP-network, be necessary to route IP-
`
`traffic from the first and second terminal 1, 2 to a network address translator
`
`connected with the data network 3.) (emphasis added); Petition, 64; Ex. 1002,
`
`¶132. Thus, consistent with the express teaching in Cordenier, a POSITA would
`
`have understood that one could still realize the advantages of Cordenier
`
`(eliminating an IP exchange server by sending IP addresses via SMS) while
`
`routing IP-traffic through a TURN relay server.
`
`6
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 10
`
`
`
`VII. THE PETITION ESTABLISHES THE OBVIOUSNESS OF EVERY
`DEPENDENT CLAIM
`13.
`The POR’s only arguments for the dependent claims are based on its
`
`arguments for the independent claims. Those arguments are wrong for the reasons
`
`discussed above.
`
`VIII. CONCLUSION
`14.
`I may utilize the documents cited and/or listed herein, or portions of
`
`those documents, as exhibits at any hearing or trial in this proceeding. I may
`
`further prepare and use exhibits that summarize portions of my testimony or key
`
`terms or concepts presented therein, or other demonstrative exhibits, at any hearing
`
`or trial in this proceeding.
`
`15.
`
`I reserve the right to supplement my testimony and this report in
`
`response to any judicial determinations, in response to the arguments expressed by
`
`Uniloc or the opinions of Uniloc’s experts in this proceeding, and/or in light of
`
`additional evidence or testimony brought forth at trial or otherwise brought to my
`
`attention after the date of my signature below.
`
`16.
`
`I hereby declare under penalty of perjury under the laws of the United
`
`States of America that the foregoing is true and correct, and that all statements
`
`made of my own knowledge are true and that all statements made on information
`
`and belief are believed to be true. I understand that willful false statements are
`
`punishable by fine or imprisonment or both. See 18 U.S.C. § 1004.
`
`7
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 11
`
`
`
`14me /£1.
`
`Dr. Henry Houh
`February 11, 2020
`
`Apple Inc. - EX. 1025
`Apple Inc. v Uniloc 2017 LLC, |PR2019—00701 - Page 12
`
`Apple Inc. - Ex. 1025
`Apple Inc. v Uniloc 2017 LLC, IPR2019-00701 - Page 12
`
`
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