Paper No. ___
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`Filed on behalf of: AT&T Mobility LLC and AT&T Services, Inc.
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`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
` Naveen Modi (naveenmodi@paulhastings.com)
` Timothy P. Cremen (timothycremen@paulhastings.com)
` Paul Hastings LLP
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AT&T MOBILITY LLC and AT&T SERVICES, INC.
`Petitioners
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`v.
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`NOVO TRANSFORMA TECHNOLOGIES LLC
`Patent Owner
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`
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`U.S. Patent No. 5,826,034
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`DECLARATION OF RANDALL A. SNYDER
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`Page 1 of 63
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`AT&T EXHIBIT 1003
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ........................................................................................... 1
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`II. QUALIFICATIONS ........................................................................................ 2
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`III. SUMMARY OF OPINIONS and legal bases THEREFORE ......................... 4
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`A.
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`B.
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`Legal Basis for Anticipation ................................................................. 4
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`Legal Basis for Obviousness ................................................................. 6
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`C. My Opinion – A Person of Ordinary Skill in the Art ............................ 7
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`D. My Opinion – Claims 23, 24, 31, 34, 35, 36, and 37 of the ’034 Patent
`Are Not Patentable Over The Prior Art ................................................. 9
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`IV. OVERVIEW OF THE ’034 PATENT .......................................................... 10
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`A.
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`B.
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`C.
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`Field of Invention ................................................................................ 10
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`Background of the Art ......................................................................... 10
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`Summary of the Purported Invention .................................................. 11
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`D. Description of Embodiments ............................................................... 12
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`V.
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`PROSECUTION HISTORY OF THE ’034 PATENT .................................. 14
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`VI. CLAIM CONSTRUCTION .......................................................................... 17
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`A.
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`“At Different Locations” ..................................................................... 19
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`VII. CLAIMS 23, 24, 31, 34, 35, 36 AND 37 OF THE ’034 PATENT ARE NOT
`PATENTABLE OVER THE PRIOR ART ............................................................. 25
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`A.
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`The MIME RFCs ................................................................................. 25
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`i.
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`ii.
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`iii.
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`iv.
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`The IETF and IESG .................................................................. 25
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`RFCs and Internet Drafts .......................................................... 25
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`The IETF Standardization Process ........................................... 26
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`The MIME RFCs ...................................................................... 27
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`ii
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`v.
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`The MIME RFCs’ Mechanisms For Specifying and Describing
`the Format of Internet Messages ............................................... 32
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`vi. Message Generation, Delivery, Conversion, and Notification
`Defined by the MIME RFCs ..................................................... 33
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`vii. Reasons to Combine the MIME RFCs ..................................... 35
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`viii. The MIME RFCs Discloses Or Suggests All Of The Claimed
`Features ..................................................................................... 38
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`VIII. SECONDARY CONSIDERATIONS ........................................................... 59
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`IX. CONCLUSION .............................................................................................. 60
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`I.
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`I, Randall A. Snyder, declare as follows:
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`INTRODUCTION
`1.
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`I have been retained by AT&T Mobility LLC and AT&T Services,
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`Inc. (“Petitioners”) as an independent expert consultant to provide expert testimony
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`in support of Petitioner’s Petition for Inter Partes Review (the “Petition”) of
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`Claims 23, 24, 31, 34, 35, 36, and 37 of U.S. Patent No. 5,826,034 (“the ’034
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`Patent”).
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`2.
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`I have reviewed and am familiar with the ’034 Patent and its file
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`history, which have been provided to me as Exhibits 1001 and 1006. I understand
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`these to be exhibits to the Petition.
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`3.
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`I have also been provided, reviewed, and am familiar with Exhibits
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`1002-1005 and 1007-1043, which I understand to be the remaining Exhibits to the
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`Petition.
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`4.
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`I have been asked to consider, among other things, whether certain
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`references anticipate or make obvious Claims 23, 24, 31, 34, 35, 36, and 37 of the
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`’034 Patent. My opinions as to these issues are set forth below.
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`5.
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`I am being compensated at my normal consulting rate for the time I
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`spend on this matter. No part of my compensation is dependent on the outcome of
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`this proceeding or any other proceeding involving the ’034 Patent. I have no other
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`interest in this proceeding.
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`II. QUALIFICATIONS
`6.
`I have over 30 years of experience in mobile telecommunications
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`network and system architecture, engineering, design and technology.
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`7.
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`I have a Bachelor’s Degree in Mathematics from Franklin and
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`Marshall College.
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`8.
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`I have taught many classes and seminars on both telecommunication
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`network technologies and have been a panelist and speaker at numerous
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`conferences at the Institute of Electrical and Electronics Engineers (IEEE), the
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`Personal Communication Society (PCS), and the Cellular Telecommunications and
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`Internet Association (CTIA) as an expert in telecommunication networks.
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`9.
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`I spent seven years developing standards within the American
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`National Standards Institute’s subsidiary organization, the Telecommunications
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`Industry Association (TIA), providing technical contributions and authoring and
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`editing telecommunications proposed standards documents.
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`10.
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`I am the co-author of the McGraw-Hill books “Mobile
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`Telecommunications Networking with IS-41,” and “Wireless Telecommunications
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`Networking with ANSI-41, 2nd edition” published in 1997 and 2001, respectively.
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`These books have sold several thousand copies and were required reading for
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`mobile engineers at AT&T Wireless and Motorola for several years.
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`11.
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`I am a named inventor on 25 issued patents, and five additional
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`published pending applications relating to telecommunications networking
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`technology, including 10 issued patents related to SMS technology.
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`12.
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`I have authored several articles on telecommunications technology
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`and have been quoted numerous times in industry trade publications.
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`13.
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`I have been hired as a consultant by the CTIA, as well as by many
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`wireline and wireless telecommunications companies, including IBM, Bell
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`Laboratories, McCaw Cellular, AirTouch, AirTouch International, AT&T
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`Wireless, AT&T Mobility, Lucent, Nokia, Ericsson, Motorola, Samsung, Siemens,
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`Nextwave, MCI, Daewoo, Globalstar, T-Mobile, Sprint, U.S. Cellular, Teleglobe
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`Canada, Teledesic and other telecommunications technology vendors and service
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`providers.
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`14. From March 2000 to April 2001, I was Executive Director of
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`Emerging Technologies at Openwave Systems (via acquisition of Software.com
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`and @Mobile), where I designed a unified messaging system incorporating short
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`message service (“SMS”) and multimedia message service (“MMS”).
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`15. From April 2001 to February 2002, I was Vice President of Product
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`Management at Bitfone Corporation, where I designed a platform to enhance MMS
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`for the cellular network operators.
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`16. From February 2002 to November 2003, I was co-founder of m-Qube,
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`Inc., one of the first text message based mobile marketing companies in North
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`America. m-Qube founded and established the Mobile Marketing Association
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`(http://www.mmaglobal.com), the global trade organization which subsequently
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`established authoritative best practices, guidelines, requirements and codes of
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`conduct for organizations using mobile text messaging technology to communicate
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`with consumers.
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`17. A copy of my curriculum vitae is attached as Exhibit 1004.
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`III. SUMMARY OF OPINIONS AND LEGAL BASES THEREFORE
`18. My opinions expressed herein are based on: (i) my education,
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`experience, and background in the fields discussed above, along with my
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`professional judgment; (ii) the contents of the documents I cite and discuss herein,
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`including Exhibits 1001-1043, each of which I have reviewed and am familiar
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`with; and (iii) my understanding of the legal bases for finding a patent claim
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`anticipated and obvious, which I explain below.
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`A. Legal Basis for Anticipation
`19.
`It is my understanding that under 35 U.S.C. § 102, a claim may be
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`found to be “anticipated,” and therefore invalid, when a single prior art reference
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`discloses each and every limitation of the claim.
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`20.
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`It is my understanding that determining whether a prior art reference
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`discloses each and every limitation of a claim is a two-step analysis comprising:
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`(i) determining the meaning of the claim limitations; and (ii) comparing those
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`limitations (according to their determined meaning) with the prior art.
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`21.
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`I understand that the disclosure of a limitation in a prior art reference
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`may be explicit or inherent. Explicit means that the limitation or feature is
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`expressly described in the reference. Inherent means that the limitation or feature
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`is necessarily present in the disclosure (i.e., the feature is a deliberate or necessary
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`consequence of the reference’s disclosure) even if the reference does not expressly
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`describe the feature. One of ordinary skill in the art must recognize that the feature
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`is inherent to the disclosure, but inherency does not require that the person of
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`ordinary skill in the art would have necessarily recognized the inherent disclosure
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`at the time of the reference. Thus, a prior use of an invention that was accidental,
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`unrecognized, or unappreciated can still be an invalidating anticipation.
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`22.
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`I understand that to anticipate, the reference must also enable one of
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`skill in the art to make and use the claimed invention. In other words, it must
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`sufficiently describe the claimed invention to have placed the public in possession
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`of it.
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`B.
`23.
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`Legal Basis for Obviousness
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`It has been explained to me that under 35 U.S.C. § 103, a claim may
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`be found to be obvious, and therefore invalid, when the differences between the
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`claim and the prior art reference or references would have been obvious at the time
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`the invention was filed to a person having ordinary skill in the art to which the
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`patent pertains.
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`24.
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`I understand that obviousness is determined based on an analysis of
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`four factors: (i) the scope and content of the prior art; (ii) the differences between
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`the prior art and the claims at issue; (iii) the level of ordinary skill in the pertinent
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`art; and (iv) secondary considerations of nonobviousness.
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`25. With respect to the first factor, determining the differences between
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`the prior art and claims (as discussed above with regard to anticipation) is a two–
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`step analysis comprising: (i) determining the meaning of the claim elements; and
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`(ii) comparing those terms with the prior art.
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`26.
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`It has been explained to me that the level of ordinary skill in the art is
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`determined by analyzing such things as: (i) the prior art; (ii) the types of problems
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`encountered in the art; (iii) the rapidity with which innovations are made; (iv) the
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`sophistication of the technology involved; and (v) the educational background of
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`those actively working in the field, as well as the inventors.
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`27.
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`I am also aware for one of ordinary skill in the art to find it obvious to
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`combine references, there must be some motivation in the prior art for a skilled
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`person to make the combination covered by the patent claims. I am told that
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`motivation can be implicit.
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`28.
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`It is also my understanding that to determine whether it would have
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`been obvious to combine known elements in a manner claimed in a patent, one
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`may consider such things as: (i) the combination being a predictable variation; (ii)
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`the combination having been used to improve similar devices; (iii) the combination
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`being obvious to try; (iv) if the combination merely applying a known technique to
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`a known device to yield predictable results; (v) a teaching or suggestion in the
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`references themselves that the combination was possible; (vi) common sense; (vii)
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`the effects of demands known to the design community or present in the
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`marketplace; and (viii) the background knowledge of one with ordinary skill in the
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`art.
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`C. My Opinion – A Person of Ordinary Skill in the Art
`29.
`In view of the legal bases above, I have been asked to provide an
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`opinion as to the level of a person of ordinary skill in the art at the time of the
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`purported invention of the ’034 Patent, which I have been asked to initially assume
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`is August 9, 1996, the filing date of the ’034 Patent.
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`30. Also in view of the above, my opinions below have been guided by
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`my appreciation of how a person of ordinary skill in the art would have understood
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`the disclosure and claims of the ’034 Patent at the time of the alleged invention.
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`31. Based upon the considerations described above, it is my opinion that
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`one of ordinary skill in the art relevant to the technology of the ’034 Patent at its
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`filing date of August 9, 1996, is someone who has a computer science, computer
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`engineering, electrical engineering, mathematics or other related technical degree
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`at the undergraduate level, and on the order of three to five years of experience
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`working with telecommunications networks and protocols and/or e-mail and
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`internet-based messaging networks and protocols. Superior experience in one of
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`these areas (education or experience in telecommunications networks, e-mail
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`systems or internet-based messaging systems) would compensate for lesser
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`experience in the other.
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`32.
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`I base this opinion on my direct experience developing technical
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`standards for end-to-end messaging technology, developing the design and
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`architecture for networks employing end-to-end messaging technology, designing
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`e-mail, SMS and MMS technology products, as well as my knowledge and
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`understanding of the skill levels of others working in the field.
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`33. My opinion in this regard is based on my extensive personal
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`experience working in the field of the purported invention, my knowledge of
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`colleagues and others working in that same field as of and for several years prior to
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`the filing date of the ’034 Patent, my study of the ’034 Patent and its file history,
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`and my study of the prior art references and exhibits discussed herein.
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`34. My opinion is further based on my knowledge of the level of
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`education and experience of persons actively working in the field in the mid–
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`1990s, the types of problems encountered in the art at that time, and the prior art
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`solutions to those problems, including such solutions as the payload conversion
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`and notification of delivery functions recited in the claims of the ’034 Patent.
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`35. My opinion as to the level of one of ordinary skill in the art would not
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`change in a manner that would impact my ultimate conclusions herein even if the
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`date of the purported invention of the ’034 Patent was determined to be earlier in
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`1996 or 1995.
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`D. My Opinion – Claims 23, 24, 31, 34, 35, 36, and 37 of the ’034
`Patent Are Not Patentable Over The Prior Art
`36. Based on the considerations identified above, it is my opinion that a
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`combination of RFCs 1344, 1521, 1820 and 1894 (the “MIME RFCs”) makes
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`obvious Claims 23, 24, 31, 34, 35, 36, and 37 of the ’034 Patent. The bases for
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`my opinion are set forth in Section VII, below.
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`IV. OVERVIEW OF THE ’034 PATENT
`A.
`Field of Invention
`37. The ’034 Patent is purportedly directed to the field of “payload
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`delivery and, more particularly, to an end-to-end payload delivery system and
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`method that effectuates delivery in a media independent manner following the
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`parameters of the delivery that are defined by the sender.” (Ex. 1001 at Col. 1:7-
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`12.)
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`38. The specification describes the “invention” as:
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`essentially the electronic equivalent to registered mail with the
`advantages of speed, configurability, convenience, resource
`conservation, timeliness, but without the drawbacks of the manual
`system used with registered mail, e.g., paperwork, delay, time
`utilization, and geographic limitation of applicability.
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`(Ex. 1001 at Col. 2:10-11.) (emphasis added.)
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`B.
`Background of the Art
`39. The ’034 Patent first observes that “numerous media for transferring
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`information” were known, including “telephone (voice-mail), e-mail, fax, etc.”
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`(Ex. 1001 at Col. 1:18-24) and identifies as a first “problem” the “inability to
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`communicate between the different media” (Ex. 1001 at Col. 1:37-40).
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`40. The ’034 Patent concedes a solution to this problem is found in U.S.
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`Patent No. 4,837,798 to Cohen et al. (“Cohen;” Ex. 1013), which describes a
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`system that: (i) has “a single electronic mailbox for receiving messages in different
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`media;” and (ii) “converts all the received messages in the … mailbox into a single
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`native media.” (Ex. 1001 at Col. 1:41-54.)
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`41. However, the ’034 Patent criticizes Cohen as providing only “post-
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`delivery” media conversion and for failing to send an “acknowledgment or
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`notification to the sender of the success or failure of the message conversion.”
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`(Ex. 1001 at Col. 1:54-60.)
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`42.
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`I do not see any requirement in the challenged claims that the media
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`conversion is performed at any particular time.
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`C.
`Summary of the Purported Invention
`43. The ’034 Patent describes its
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`inventive method as “providing media
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`independent, guaranteed delivery of a payload in
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`accordance with delivery parameters defined by
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`the sender.” (Ex. 1001 at Col. 4:25-28.)
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`44. As illustrated in FIG. 10 (added
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`during prosecution): (i) “the sender generates a
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`payload for delivery in a first media, for
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`instance, an e-mail or fax;” (ii) “the sender
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`establishes the parameters of the delivery,
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`including the number of attempts within a given period of time, the allowable cost
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`of transmission, the types and/or frequency of notification, etc.;” (iii) “[t]he
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`payload is then passed on to the payload delivery system for delivery to the
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`recipient,” which can be located at various locations in the network and which
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`“performs the function of converting the entire payload (or, a portion thereof), if
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`necessary, from the first media to an alternate media in order to complete delivery
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`of the payload to the recipient.” (Ex. 1001 at Col. 4:28-43.)
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`45. Finally, the ’034 Patent states that notifications can be sent to the
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`sender “so that the sender is guaranteed that the payload has been received by the
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`recipient.” (Ex. 1001 at Col. 4:55-64.)
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`D. Description of Embodiments
`46.
`In its “preferred embodiment,” the ’034 Patent states that its “payload
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`delivery system” can be located anywhere in the network of FIG. 1 (Ex. 1001 at
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`Col. 6:33-42) and can be implemented on the “typical” computer architecture of
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`FIG. 2 that is “well known in the art” (Ex. 1001 at Col. 6:58-60). FIG. 3 shows
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`“payload delivery system 62” as a number of boxes. (Ex. 1001 at Col. 7:21-8:26.)
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`47.
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`I do not see anything in the ’034 Patent that indicates there is anything
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`novel about FIG. 1’s network or FIG. 2’s computer; nor do FIGS. 1 and 2 and their
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`related disclosures show anything that would not have been known to one of
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`ordinary skill in the art in 1995-6.
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`48.
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`I also see no description in the ’034 Patent of any particular hardware
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`or software for implementing the boxes of FIG. 3, or any further detail on their
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`operation.
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`49. The ’034 Patent
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`explains that a user may select
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`“delivery parameters” as shown in
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`FIG. 4. (Ex. 1001 at col. 8:28-52.).
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`“In addition to the recipient specific
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`information provided by the entry
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`102, payload delivery specific information is also provided.” (Ex. 1001 at Col.
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`8:53-55.) This includes information such as what media types the payload should
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`be, alternate media types if the first cannot be sent, the number of retries, etc. (Ex.
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`1001 at Col. 8:55-9:7.)
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`50. The ’034 Patent specifies that the “capability of having the sender set
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`the delivery parameters” is important because some media may not be suitable for
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`conversion into other media types (e.g., a spreadsheet into voice data). (Ex. 1001 at
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`Col. 9:8-28.)
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`51. Again, I see no description in the ’034 Patent of any particular
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`hardware or software for implementing FIG. 4.
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`52. Finally, the ’034 Patent provides examples of acknowledgment
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`methods in FIGS. 5-9. Again, I see no description of hardware or software for
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`implementing such methods.
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`V.
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`PROSECUTION HISTORY OF THE ’034 PATENT
`53. The Application that resulted in the ’034 Patent (the ’033 Application)
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`was filed on August 9, 1996. Originally-filed Claims 1-35 of the ’033 Application
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`correspond to issued Claims 1-35 in the ’034 Patent, although independent Claims
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`1 and 23 were changed twice by the two Amendments during prosecution, as
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`explained below. Independent Claim 36 and its dependent Claim 37 were added
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`by the first Amendment and Claim 36 was changed by the second.
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`54. Originally-filed Claim 23 read as follows:
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`(Ex. 1006 at 50.)
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`55. On August 26, 1997, the Examiner rejected Claim 23 as being
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`anticipated by U.S. Patent No. 5,381,527 to Inniss et al. (“Inniss;” Ex. 1007),
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`taking the position that it discloses that “a user[] who wishes an e-mail message to
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`be sent … can specify one or more alternative media such as a fax in the event the
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`e-mail was unable to be delivered,” citing
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`FIGS. 1 and 2 (shown here) and Cols. 1 and
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`3. (Ex. 1006 at 81.)
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`56.
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`In my opinion, Inniss’s
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`disclosure is very similar to that of the ’034
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`Patent. It relates to “automatically selecting
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`an alternate distribution media upon the
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`failure of an attempted transmission via a
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`particular distribution channel.” (Ex. 1007
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`at Col. 1:15-20.) Inniss’s FIG. 1 shows a networked system where media can be
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`changed for delivery to a recipient (Ex. 1007 at Cols. 2:45-3:32), and its FIG. 2
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`shows a screen where the sender can choose and prioritize delivery and conversion
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`methods. (Ex. 1007 at Cols. 3:33-4:21.)
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`57. Applicant did not even attempt to overcome the Examiner’s rejection
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`based on the original language of Claim 23. Rather, on October 27, 1997,
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`Applicant amended Claim 23:
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`(Ex. 1006 at 90.) Applicant also added Claims 36 and 37.
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`58. While Applicant argued that Inniss fails to teach or suggest this added
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`feature, he conceded that (similar to Cohen), Inniss “teaches the conversion of a
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`payload into different medias.” (Ex. 1006 at 93.)
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`59. On March 12, 1998, the Examiner again rejected the claims as being
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`anticipated by Inniss. In response to Applicant’s amendment, the Examiner stated
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`that Inniss does disclose conversion “at different locations,” citing elements 14, 20,
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`22, and 26 of FIG. 1. (Ex. 1006 at 120.) In other words, the Examiner took the
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`position that Inniss’s disclosure of conversion at any one of a plurality of network
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`locations met the limitation added by Applicants.
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`60. Again, Applicant did not attempt to overcome the Examiner’s
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`rejection by argument alone and, on June 15, 1998, amended Claim 23 as follows
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`(Claim 36 was similarly amended):
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`61.
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`(Ex. 1006 at 125.)
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`62.
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`In conjunction with this change, Applicant argued that the only
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`notification in Inniss “is an error report if the maximum number of transmission
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`attempts have occurred,” citing element 78 of FIG. 3. (Ex. 1006 at 127.) On June
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`23, 1998, the Examiner issued a Notice of Allowance, without comment. (Ex.
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`1006 at 130.)
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`63. Thus, in my opinion, the sole basis for patentability of Claims 23 and
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`36 in view of Inniss (Ex. 1014) and Cohen (Ex. 1013) relates to Applicant’s
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`argument that the prior art does not teach or suggest automatically notifying the
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`sender of a successful message delivery to the recipient.
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`64. But, such notification was well known by 1995 in the related art. For
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`example, such notification was described in messaging standards, such as those
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`described in this Declaration.
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`65.
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`Indeed, the underlying concept of notification was also recognized as
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`prior art by the ’034 Patent’s discussion of registered mail – which it identifies as
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`the “equivalent” of its purported invention.
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`VI. CLAIM CONSTRUCTION
`66. As discussed above, I understand that the first step of comparing a
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`claim to a prior art reference is to determine the meaning of the claim elements.
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`67.
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`I understand that in these types of proceedings before the United
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`States Patent and Trademark Office, a claim receives the “broadest reasonable
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`interpretation,” or “BRI,” in light of the specification of the patent in which it
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`appears.
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`68.
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`I also understand that such a “broadest reasonable interpretation” is
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`different from, and broader than, that applied in district court litigations.
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`69.
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`I also understand that the meaning of claims terms is viewed through
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`the lens of one of ordinary skill in the art at the time of the invention, and that
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`specific terms of the claims are generally given the ordinary and accustomed
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`meaning the one of skill would ascribe to them.
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`70.
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`I have followed these principles in my analysis below and address the
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`scope of particular claim terms as necessary when they arise. To the extent I do
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`not address a particular term or phrase, I have used what I consider the plain
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`meaning of that term.
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`71. As part of my analysis of the scope of the claims and their constituent
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`terms, I have also reviewed claim construction proposals from Patent Owner and
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`Petitioners in their current dispute (Exs. 1008 and 1011), other briefings from their
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`current dispute (Ex. 1009), and claim construction briefings from an earlier dispute
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`involving the ’034 Patent (Ex. 1012).
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`72. As a general matter, I have read each claim term to have at least the
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`scope which the Patent Owner has asserted in its Infringement Contentions against
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`Petitioner’s products (Ex. 1013).
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`73.
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`I have been asked to provide my opinion as to the scope of one phrase
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`in Claim 23 of the ’034 Patent – “at different locations.”
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`A.
`74.
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`“At Different Locations”
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`Independent Claim 23 of the ’034 Patent recites “converting said
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`payload to an alternative media at different locations as necessary for completion
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`of delivery of said payload.”
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`75.
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`I understand that the Petitioner has offered that the broadest
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`reasonable interpretation of the term “at different locations” is “at one of a plurality
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`of network locations.”
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`76.
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`I agree that “at one of a plurality of network locations” is the proper
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`broadest reasonable interpretation of “at different locations” for at least the
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`following reasons, and have used this construction in my analysis below.
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`77. First, the ’034 Patent’s Summary of the Invention states: (i) “media
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`conversions and payload copying can be performed at one or more locations where
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`the system resides in order to take advantage of tariffs, special offerings, etc., and
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`to provide guaranteed delivery in a media independent environment” (Ex. 1001 at
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`Col. 2:25-28); and (ii) “conversion is performed by the payload delivery system,
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`and therefore, can take place more than once and at one or more different locations
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`where the payload system resides” (Ex. 1001 at Col. 2:54-58).
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`78. Second, the
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`’034 Patent’s description
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`of its preferred
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`embodiments indicates
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`that the payload delivery
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`system: (i) “is a platform independent application with a versatility of being able to
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`be located in one or more locations within the communication network 12” (Ex.
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`1001 at Col. 5:54-58); (ii) “[i]n accordance with an important feature in the present
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`invention, … does not have to be located at any one particular location in the
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`communication network 12” of FIG. 1 (Ex. 1001 at Col. 6:33-38); and (iii) can
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`“reside in a variety of different locations including at least any one or more of the
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`following: the workstation 46, the computer workstations 30, 36, the LAN server
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`42, the local server 31 associated with the LAN 38, the local servers 28 associated
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`with local switches 24, 26, or the long distance servers 22 associated with long
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`distances switches 16, 18” (Ex. 1001 at Col. 6:36-43). See also FIG. 8, illustrating
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`a conversion at far-end server 28. (Ex. 1001 at Col. 10:41-51.)
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`79. Third, in the October 27, 1997 Amendment, Applicant discussed the
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`support for “at different locations” as follows:
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`(Ex. 1006 at 93.) The portions of the specification cited by Applicant overlap with
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`those identified above that explain the ’034 Patent’s instruction that conversion
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`takes place at one of a plurality of network locations.
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`80.
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`In addition to these reasons, such an interpretation is also consistent
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`with Novo’s interpretation of “at different locations” in its infringement
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`contentions against Petitioners. (Ex. 1013 at 14-15) (asserting that “converting”
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`reads on MMS “content adaptation” and that such “content adaptation takes place
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`at the sender’s device, the recipient’s device, or at MMSCs located at different
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`locations depending on the location of the sender and recipient and network
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`conditions.”).
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`81. However, I understand that Novo has asserted “at different locations”
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`has a far different meaning in its proposed claim constructions in its district court
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`dispute with Petitioners. (Exs. 1008 at 10; 1011 at 2.)
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`82. Specifically, Novo has asserted that “at different locations” means
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`“controlling the location of conversion.” (Exs. 1008 at 10; 1011 at 2.) To the
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`extent Novo asserts that such a construction of “at different locations” is also the
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`proper broadest reasonable interpretation, it is incorrect for at least three reasons.
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`83. First, the language “at different locations” is a simple statement
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`specifying where the claimed “converting …” limitation may occur. Novo’s
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`construction seems to add an entirely new active step – “controlling” – to the
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`phrase. I do not see any support for requiring this new active step in the claim
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`language.
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`84. Second, the intrinsic record does not mention that some specific
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`“control” of the conversion location is at all important. Rather, as discussed above,
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`the emphasis of the ’034 Patent (to the extent there is any emphasis at all as to this
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`element) is simply performing the conversion anywhere in the network based on
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`where the payload delivery system is provided. Any “control” of the location of
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`such conversion contemplated by the ’034 Patent is simply a byproduct of
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`wherever the “payload delivery system 62” is provided. No other “control” is
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`discussed.
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`85. Third, such a construction is inconsistent with Novo’s infringement
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`contentions, which do not identify or explain this alleged “control” of the
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`conversion process. (Ex. 1013 at 14-15.)
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`86. The only possible source of Novo’s “controlling the location of
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`conversion” proposal that I can find is the October 27, 1997 Amendment which, in
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`addition to the explanation cited above, indicated the following:
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`
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`(Ex. 1006 at 93.)
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`87.
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`It appears that Novo will take the position, at least in the related
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`actions, that this passage was definitional as to the meaning of “at different
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`locations.” In my opinion, such an argument would make this language into
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`something more than it actually is, as the passage does not provide any particular
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`definition for “at different locations,” let alone a definition sufficient to overcome
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`the clear and repeated instruction in the ’034 Patent and its prosecution history that
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`this phrase simply means “at one of a plurality of network locations.”
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`88.
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`I do not read this language as requiring a new active step. The
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`argument set forth by App