IPR2019-00700 (U.S. Pat. No. 8,406,116) &
`IPR2019-00701 (U.S. Pat. No. 8,018,877)
`Petitioner’s Demonstrative Exhibits
`May 21, 2020
`
`Apple Inc. v. Uniloc 2017 LLC
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`IPR2019-00701 (U.S. Pat. No. 8,018,877)
`Petitioner’s Demonstrative Exhibits
`May 21, 2020
`
`Apple Inc. v. Uniloc 2017 LLC
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Table of Contents
`
`• Overview of the patents
`
`• Ground 1 (Kirmse and Chambers)
`
`• Ground 2 (Chambers and RSIP)
`
`• Ground 3 (Cordenier and TURN)
`
`Slides 3-5
`
`Slides 6-16
`
`Slides 17-29
`
`Slides 30-42
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`2
`
`
`
`The ’116/’877 Patents
`
`• The patents are CIPs of the “P2P application,” and add new
`matter directed to NAT traversal
`
`• But NAT traversal techniques were already well known and
`had been standardized
`
`’116 patent, 2:5-15 (cited in 700 IPR Petition at 8-10)
`’877 patent, 2:4-14 (cited in 701 IPR Petition at 8-9)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`3
`
`700 IPR Petition at 12-14
`701 IPR Petition at 12-13
`
`
`
`The ’116 Patent
`
`• Claims are focused on the server
`
`[1.a]
`
`[1.b]
`
`[1.c]
`
`[1.d]
`[1.e]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`’116 patent, Fig. 2 (700 IPR Petition at 8).
`
`4
`
`
`
`The ’877 Patent
`
`• Claims are focused on the initiating mobile device
`
`[1.a]
`
`[1.b]
`[1.c]
`[1.d]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`’877 patent, Fig. 2 (701 IPR Petition at 7).
`
`5
`
`
`
`Ground 1
`700 IPR: Claims 1-20 Are Obvious
`Over Kirmse and Chambers
`701 IPR: Claims 1-20 Are Obvious
`Over Kirmse and Chambers
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`6
`
`
`
`Ground 1: Kirmse and Chambers
`“a request . . . to allocate . . . to use in a data exchange session
`with a participating mobile device”
`
`700 IPR Ex. 1001 (116 Patent) at claim 1
`
`701 IPR Ex. 1001 (877 Patent) at claim. 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`7
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`“a request . . . to allocate . . . to use in a data exchange session
`with a participating mobile device”
`
`• Kirmse discloses a request (from an inviter to a game
`server) to allocate (distribute an IP address and port of the
`server) to use in a data exchange session (to play a
`game) with a participating mobile device (an invitee)
`
`700 IPR Petition at 19-22; Reply at 1-7
`701 IPR Petition at 18-22; Reply at 1-6
`
`•
`
`“Allocate” is entitled to its ordinary meaning: “to apportion
`for a specific purpose or to particular persons or things :
`DISTRIBUTE”
`
`Ex. 1026 at 3
`700 IPR Petition at 20; 700 IPR Reply at 3
`701 IPR Petition at 19; 701 IPR Reply at 3
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`8
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`“a request . . . to allocate . . . to use in a data exchange session
`with a participating mobile device”
`
`Ex. 1005 (Kirmse) at Fig. 4, 7:32-36
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`Ex. 1005 (Kirmse) at Fig. 4, 8:6-15
`
`700 IPR Petition at 19-22; Reply at 1-7
`701 IPR Petition at 18-22; Reply at 1-6
`
`9
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`“a request . . . to allocate . . . to use in a data exchange session
`with a participating mobile device”
`
`Ex. 1005 (Kirmse) at Fig. 1, 5:57-59
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`10
`
`700 IPR Petition at 18-19; 700 Reply at 3-4
`701 IPR Petition at 17-18; 701 Reply at 3-4
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO in its Response erroneously argues that existing
`connection details cannot be allocated
`
`• But there is no claim requirement (or proposed
`construction) that excludes preexisting address/ports
`
`700 IPR PO Response at 6
`
`700 IPR Reply at 6
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`11
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO in its Response erroneously argues that connection
`details must be generated in response to the request
`
`700 IPR PO Response at 7
`
`• But there is no claim requirement (or proposed
`construction) to “generate”
`• This embodiment is not claimed because it does not use
`the claimed address/port
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`12
`
`700 IPR Reply at 6
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO in its Sur-Reply still erroneously argues existing
`connection details cannot be allocated
`
`700 IPR PO Sur-Reply at 3
`
`700 IPR PO Sur-Reply at 8
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`13
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO erroneously argues connection details cannot be used
`by multiple devices
`
`• This is disclosed and claimed in the ’116 and ’877 patents
`
`700 IPR PO Response at 6; 700 IPR PO Sur-Reply at 5-6
`701 IPR PO Response at 6-7; 701 IPR PO Sur-Reply at 3-4
`
`700 IPR Ex. 1001 (116 Patent) at claim 4 and 5;16-36 (disclosing port reuse)
`700 IPR Petition at 35-36; Reply at 4
`701 IPR Ex. 1001 (877 patent) at claim 4 and 5:15-35
`701 IPR Petition at 32-33; Reply at 4
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`14
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO notes Kirmse discloses a fallback URL could be used
`
`700 IPR PO Response at 6; PO Sur-Reply at 5-6
`
`Ex. 1005 (Kirmse) at Fig. 5, 8:6-15
`
`• But Kirmse’s additional disclosure of a fallback URL is not
`relevant
`
`700 IPR Reply at 4-5
`701 IPR Reply at 4-5
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`15
`
`
`
`Ground 1: Kirmse discloses a request to allocate
`
`• PO erroneously argues all clients already know the
`connection details
`
`700 IPR PO Response at 6; PO Sur-Reply at 5-6
`
`• Kirmse teaches that some client (e.g., the inviter) obtain
`the connection details from the server
`
`Ex. 1005 (Kirmse) at 5:62-65
`
`Ex. 1005 (Kirmse) at Fig. 4, 7:32-36
`
`700 IPR Petition at 17-22; 700 IPR Reply at 1-2, 5
`701 IPR Petition at 16-20; 701 IPR Reply at 1-2, 5
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`16
`
`
`
`Ground 2
`700 IPR: Claims 1-20 Are Obvious over
`Chambers and RSIP
`701 IPR: Claims 1-20 Are Obvious over
`Chambers and RSIP
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`17
`
`
`
`Ground 2:
`
`The address/port allocated by RSIP is “of the server” /
`“associated with the server” as claimed.
`
`700 IPR, Ex. 1001 (116 Patent) at claim 1
`
`701 IPR, Ex. 1001 (877 Patent) at claim. 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`18
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`Undisputed: RSIP Server allocates an “address/port”
`Sole Dispute: is the allocated address/port “of the RSIP
`Server,” or is it “of the RSIP Host”?
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`19
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`Ex. 1013 at 10
`
`Ex. 1013 at 8
`
`Ex. 1013 at 8
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`20
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`Ex. 1013 at 10
`
`Ex. 1013 at 8
`
`Ex. 1013 at 8
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`21
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`Ex. 1013 at 10
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`22
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
` RSIP Host RSIP Gateway Host
` Xa Na Nb Yb
` [X]------( Addr sp. A )----[N]-----( Addr sp. B )-------[Y]
` ( Network ) ( Network )
`
` Binding
` An association of some combination of a local address, one or more
` local ports, a remote address, and a remote port with an RSIP
` host.
` Resource
` A general way to refer to an item that an RSIP host leases from an
` RSIP gateway; e.g., an address or port.
`
`Ex. 1013 at 10
`
`Ex. 1013 at 9
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`23
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
` RSIP Host RSIP Gateway Host
` Xa Na Nb Yb
` [X]------( Addr sp. A )----[N]-----( Addr sp. B )-------[Y]
` ( Network ) ( Network )
`
`Ex. 1013 at 10
`
`Ex. 1013 at 10
`
`Undisputed for limitations 1.d, 8.d, 15.d
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`24
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
` RSIP Host RSIP Gateway Host
` Xa Na Nb Yb
` [X]------( Addr sp. A )----[N]-----( Addr sp. B )-------[Y]
` ( Network ) ( Network )
`
`Ex. 1013 at 10
`
`Ex. 1013 at 10
`
`*Undisputed for limitations 1.d, 8.d, 15.d
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`25
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
` RSIP Host RSIP Gateway Host
` Xa Na Nb Yb
` [X]------( Addr sp. A )----[N]-----( Addr sp. B )-------[Y]
` ( Network ) ( Network )
`
`Ex. 1013 at 10
`
`Ex. 1013 at 27
`
`Ex. 1013 at 9
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`26
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
` RSIP Host RSIP Gateway Host
` Xa Na Nb Yb
` [X]------( Addr sp. A )----[N]-----( Addr sp. B )-------[Y]
` ( Network ) ( Network )
`
`Ex. 1013 at 10
`
`Unaddressed by PO
`
`Ex. 1013 at 50
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`27
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`• PO admits in its Response that an instance of “local
`addresses and ports” refers to the RSIP Server
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`701 IPR Response at 10
`700 IPR Response at 9-10
`
`28
`
`
`
`Ground 2: RSIP allocates addresses/ports of the server
`
`• PO’s argument that the allocated address/port is “of the
`RSIP Host” is without merit:
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Unsupported attorney argument
`
`Dr. Houh’s expert testimony is uncontested; he was not even deposed
`
`Ignores the bulk of the express disclosures of RSIP, including the concrete example
`
`Ignores the undisputed showing that ensuing communications are forwarded through the
`RSIP Server’s allocated public address/port for other limitations
`
`Ignores the undisputed showing that it would have been obvious to combine Chambers
`and RSIP to perform NAT traversal
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`29
`
`700 IPR Petition at 13-14, 38-50; Reply at 7-11
`701 IPR Petition at 13, 35-45; Reply at 6-11
`
`
`
`Ground 3
`700 IPR: Claims 1-3, 5-10, 12-17, 19-20 Are Obvious over
`Cordenier and TURN
`701 IPR: Claims 1-3, 5-10, 12-17, 19-20 Are Obvious over
`Cordenier and TURN
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`30
`
`
`
`Ground 3:
`
`Undisputed: The combination of Cordenier and TURN
`disclose all limitations of all claims challenged in Ground 3
`
`700 IPR, Ex. 1001 (116 Patent) at claim 1.
`
`701 IPR, Ex. 1001 (877 Patent) at claim 1.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`31
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`Sole Dispute: whether it would have been
`obvious to combine Cordenier and TURN
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`32
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`Undisputed rationales for combining:
`• Cordenier and TURN are analogous art
`• A POSITA would have known a NAT traversal technique
`was needed to practice the NAT embodiments in Cordenier
`• TURN was a well-known NAT traversal technique
`• TURN was particularly desirable to guarantee NAT traversal
`• The combination was well within the skill of a POSITA
`• There was a reasonable expectation of success
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`33
`
`700 IPR Petition at 12-13, 53-60
`701 IPR Petition at 12-13, 49-56
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`A POSITA would have known a NAT traversal technique was
`needed to practice the NAT embodiments in Cordenier
`
`Cordenier (Ex. 1007) at [0018]
`
`Uncontested: “a POSITA would have
`understood that a private IP address from
`one side of a NAT that is sent via SMS to
`a recipient on the other side of a NAT
`would have been useless to the recipient.”
`700 Reply at 14 (citing petition and Houh Decl.)
`701 Reply at 14 (citing Petition and Houh Decl.)
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`34
`
`700 IPR Petition at 12-13, 54, 55, 59-60; 700 Reply at 13-14
`701 IPR Petition at 12-13, 49, 51, 54-56; 701 Reply at 13-14
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`A POSITA would have known a NAT traversal technique was
`needed to practice the NAT embodiments in Cordenier
`
`PO closes by arguing that there is no showing of a shortcoming in Cordenier
`
`that would result in a motivation to combine with TURN. POR, 13-15. PO
`
`ignores the extensive showing in the Petition, supported by Dr. Houh’s testimony,
`
`TURN and other references, that a POSITA would have understood that a private
`
`IP address from one side of a NAT that is sent via SMS to a recipient on the other
`
`side of a NAT would have been useless to the recipient. Petition, 12-13, 59-60;
`
`Exhibit 1002, ¶¶45-47, 124-27. PO fails to contest that testimony, for example, by
`
`offering expert testimony, or even attorney argument, explaining how that system
`
`could possibly work across NAT. A POSITA would have recognized that
`
`shortcoming and would have searched for a suitable, well-known, and standardized
`
`NAT traversal technique, leading a POSITA to TURN. Id.
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`35
`
`700 IPR Petition at 54, 55; 700 Reply at 13-14
`701 IPR Petition at 49, 51; 701 Reply at 13-14
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`PO’s sole “teaching away” argument confuses an IP-
`exchange server with a relay server
`
`But Cordenier’s IP-exchange servers are very different
`from a TURN relay server
`
`700 IPR PO Response at 12
`701 IPR PO Response at 13
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`36
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`• Cordenier’s IP-exchange servers:
`
`“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
`
`700 IPR Reply at 12
`701 IPR Reply at 12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`37
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`Cordenier teaches initially sending invitations via SMS instead
`of via a common IP-exchange server
`
`Cordenier (Ex1007) at [0005]-[0006]
`
`700 IPR Petition at 54, 62; 700 IPR Reply at 12
`701 IPR Petition at 49, 58; 701 IPR Reply at 12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`38
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`Cordenier teaches logging into address server 15 to obtain IP
`addresses
`
`Cordenier (Ex. 1007) at [0016]
`
`700 IPR Petition at 54, 62; 700 IPR Reply at 12
`701 IPR Petition at 50-51, 58; 701 IPR Reply at 12
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`39
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`Cordenier teaches routing the ensuing IP traffic through a NAT
`
`Cordenier (Ex. 1007) at [0018]
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`40
`
`700 IPR Petition at 54, 55; 700 Reply at 13
`701 IPR Petition at 49, 51; 701 Reply at 13-14
`
`
`
`Ground 3: Obvious to Combine Cordenier and TURN
`
`The combination of Cordenier and TURN is consistent with
`Cordenier’s teachings
`• Still obtain IP addresses from servers
`• Still use SMS invitation instead of a “common IP-exchange
`server”
`• Still route IP-traffic through a NAT
`•
`“Traversal Using Relay NAT (TURN)”
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`41
`
`700 IPR Petition at 54, 55; 700 Reply at 13
`701 IPR Petition at 49, 51; 701 Reply at 13-14
`
`
`
`End
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`42
`
`
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