Paper No. ___
`
`
`
`Filed on behalf of: AT&T Mobility LLC and AT&T Services, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
` Naveen Modi (naveenmodi@paulhastings.com)
` Timothy P. Cremen (timothycremen@paulhastings.com)
` Paul Hastings LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AT&T MOBILITY LLC and AT&T SERVICES, INC.
`Petitioners
`
`v.
`
`NOVO TRANSFORMA TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`U.S. Patent No. 5,826,034
`
`
`
`
`
`DECLARATION OF DR. NATHANIEL BORENSTEIN
`
`
`
`
`
`
`
`
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`
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`Page 1 of 18
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`AT&T EXHIBIT 1014
`
`
`
`
`
`Filed on behalf of: AT&T Mobility LLC and AT&T Services, Inc.
`
`By: Christopher W. Kennerly (chriskennerly@paulhastings.com)
` Naveen Modi (naveenmodi@paulhastings.com)
` Timothy P. Cremen (timothycremen@paulhastings.com)
` Paul Hastings LLP
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`AT&T MOBILITY LLC and AT&T SERVICES, INC.
`Petitioners
`
`v.
`
`NOVO TRANSFORMA TECHNOLOGIES LLC
`Patent Owner
`
`
`
`
`
`U.S. Patent No. 5,826,034
`
`
`
`
`
`DECLARATION OF DR. NATHANIEL BORENSTEIN
`
`
`
`
`
`
`
`
`
`
`
`Page 1 of 18
`
`AT&T EXHIBIT 1014
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`I.
`
`II. QUALIFICATIONS ........................................................................................ 1
`
`III. THE IETF STANDARDIZATION AND PUBLICATION PROCESS ......... 3
`
`IV. THE MULTI-PURPOSE INTERNET MAIL EXTENSIONS PROTOCOL
`(“MIME”) ................................................................................................................... 8
`
`V.
`
`PUBLIC AVAILABILITY OF MIME RFCS ................................................. 9
`
`A.
`
`B.
`
`C.
`
`D.
`
`RFC 1344 ............................................................................................ 10
`
`RFC 1521 ............................................................................................ 11
`
`RFC 1820 ............................................................................................ 14
`
`RFC 1894 ............................................................................................ 14
`
`VI. CONCLUSION .............................................................................................. 16
`
`
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`Page 2 of 18
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`
`
`I.
`
`I, Nathaniel Borenstein, declare as follows:
`
`INTRODUCTION
`1.
`
`I have been retained by AT&T Mobility LLC and AT&T Services,
`
`Inc. (“Petitioners”) as an independent fact witness in this proceeding, which I
`
`understand to be a review of the patentability of certain claims of U.S. Patent No.
`
`5,826,034 (“the ’034 Patent”) before the United States Patent and Trademark
`
`Office. I have been asked to express an opinion on the authenticity, dates of
`
`publication and public availability of certain RFCs submitted in connection with
`
`this proceeding.
`
`2.
`
`I am being compensated at my normal consulting rate for the time I
`
`spend on this matter. No part of my compensation is dependent on the outcome of
`
`this proceeding or any other proceeding involving the ’034 Patent. I have no other
`
`interest in this proceeding.
`
`II. QUALIFICATIONS
`3.
`I have over 32 years of experience working on Internet technology,
`
`standards, and businesses, and almost 40 years of experience working with
`
`computers.
`
`4.
`
`I have a B.A. in Mathematics and Religious Studies from Grinnell
`
`College, and an M.S. and a Ph.D. in Computer Science from Carnegie Mellon
`
`University.
`
`
`
`1
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`Page 3 of 18
`
`
`
`5.
`
`I am best known as the co-creator of the Multipurpose Internet Mail
`
`Extensions (MIME) standard.
`
`6.
`
`I’m also known as a developer of the Andrew Mail System, the
`
`metamail software, and the ATOMICMAIL and Safe-Tcl programming languages.
`
`7.
`
`I am the author of two books, three patents, and numerous technical
`
`articles, a past President and Board Member of Computer Professionals for Social
`
`Responsibility, and a former member of the Board of Directors of the Institute for
`
`Global Communications and of Peace Action.
`
`8.
`
`Since 2010, I have been Chief Scientist at Mimecast, Ltd., a provider
`
`of various cloud-based email services. At Mimecast, my duties focus on the
`
`evolution of Mimecast's long term strategy and the development of our intellectual
`
`property strategy and assets.
`
`9.
`
`Before joining Mimecast, I worked for eight years as an IBM
`
`Distinguished Engineer, where my duties included managing the research program
`
`for the Lotus brand, with a budget of around $10M.
`
`10.
`
`I also served as a faculty member at the University of Michigan,
`
`Carnegie-Mellon University, and Grinnell College, where I was the first Robert
`
`Noyce Visiting Professor.
`
`11. A copy of my curriculum vitae is attached as Exhibit 1015.
`
`
`
`
`
`2
`
`Page 4 of 18
`
`
`
`III. THE IETF STANDARDIZATION AND PUBLICATION PROCESS
`12. There are a number of publications that I discuss in this Declaration
`
`that are called “Request for Comment” documents, or popularly, “RFCs.”
`
`13. RFCs are publications prepared and distributed under a formalized
`
`publication process overseen by the Internet Engineering Task Force (IETF), and
`
`contain standards or other technical or organizational notes about the Internet, and
`
`may cover many different aspects of computer networking, including protocols,
`
`procedures, programs, and concepts, as well as meeting notes, opinions, and
`
`sometimes humor.
`
`14. Most Internet standards are defined by RFCs.
`
`15. The IETF (Internet Engineering Task Force) is an open organization
`
`that develops and promotes Internet standards.
`
`16. The IETF is generally organized into Working Groups directed to
`
`specific topics, which are the primary mechanism for the development of Internet
`
`standards.
`
`17.
`
`IETF activities are loosely managed by the Internet Engineering
`
`Steering Group (IESG), which administers the rules and procedures by which
`
`specifications enter the standardization process, including final approval of
`
`specifications as Internet Standards.
`
`
`
`3
`
`Page 5 of 18
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`
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`18.
`
`I have participated in the IETF and published multiple documents via
`
`the process used in the IETF to disseminate technical information contributing to
`
`the formulation of Internet standards.
`
`19.
`
`In particular, I am the author/co-author of many RFCs directed to the
`
`MIME standard, including at least the following:
`
`
`
`RFC 1341: “MIME (Multipurpose Internet Mail Extensions):
`
`Mechanisms for Specifying and Describing the Format of Internet
`
`Message Bodies” (June 1992). (Ex. 1021.)1
`
`
`
`
`
`
`
`
`
`RFC 1343: “A User Agent Configuration Mechanism For Multimedia
`
`Mail Format Information” (June 1992). (Ex. 1022.)
`
`RFC 1344: “Implications of MIME for Internet Mail Gateways”
`
`(June 1992). (Ex. 1017.)
`
`RFC 1437: “The Extension of MIME Content-Types to a New
`
`Medium” (April 1993).2 (Ex. 1023.)
`
`RFC 1521: “MIME (Multipurpose Internet Mail Extensions) Part
`
`One: Mechanisms for Specifying and Describing the Format of
`
`Internet Message Bodies” (September 1993). (Ex. 1018.)
`
`1 References to “Exhibits” in this Declaration are to what I understand to be
`
`Exhibits filed in the underlying proceeding.
`
`2 This RFC is intended as humor.
`
`
`
`4
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`Page 6 of 18
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`
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`
`
`
`
`
`
`
`
`
`
`
`
`RFC 1523: “The Text/Enriched MIME Content-Type” (September
`
`1993). (Ex. 1024.)
`
`RFC 1524: “A User Agent Configuration Mechanism For Multimedia
`
`Mail Format Information” (September 1993). (Ex. 1025.)
`
`RFC 1563: “The text/enriched MIME Content-type” (January 1994).
`
`(Ex. 1026.)
`
`RFC 2045: “Multipurpose Internet Mail Extensions (MIME) Part
`
`One: Format of Internet Message Bodies” (November 1996). (Ex.
`
`1027.)
`
`RFC 2046: “Multipurpose Internet Mail Extensions (MIME) Part
`
`Two: Media Types” (November 1996). (Ex. 1028.)
`
`RFC 2049: “Multipurpose Internet Mail Extensions (MIME) Part
`
`Five: Conformance Criteria and Examples” (November 1996). (Ex.
`
`1029.)
`
`20. Based on this experience, I am intimately and personally familiar with
`
`the IETF’s process for writing, developing, revising, and publishing RFCs and
`
`related Internet-Drafts, along with their subsequent review.
`
`21. My personal experience with the IETF and its document creation and
`
`publication processes is consistent with the processes outlined by the IETF in RFC
`
`1602 titled “The Internet Standards Process -- Revision 2.” (Ex. 1016.)
`
`
`
`5
`
`Page 7 of 18
`
`
`
`22. As set forth in RFC 1602, a specification advances in the Standards
`
`Track first from a Proposed Standard, to a Draft Standard, and finally to an
`
`approved standard published as an RFC. (Ex. 1016 at 20-21.)
`
`23. A specification remains in each level for a certain minimum amount
`
`of time in order to ensure adequate opportunity for implementation, interoperation
`
`and review. (Ex. 1016 at 19-20.)
`
`24. A standards action is initiated by recommendation to the appropriate
`
`IETF Director by the individual or group responsible for the specification. (Ex.
`
`1016 at 19.) Specifications generally originate from: (i) an IETF Working Group;
`
`(ii) individual independent activities or; (iii) an external organization. (Ex. 1016 at
`
`20.)
`
`25. An initial form of a standard is first published as an “internet draft”
`
`for “informal review and comment by placing [it] in the IETF’s ‘Internet Drafts’
`
`directory, which is replicated on a number of Internet hosts. This makes an
`
`evolving working document readily available to a wide audience, facilitating the
`
`process of review and revision.” (Ex. 1016 at 10.)
`
`26.
`
`If the draft specification is ultimately approved by the IESG (often
`
`after several “draft” versions), the standard is numbered and published as an RFC
`
`after any necessary editorial work. (Ex. 1016 at 19-20.)
`
`
`
`6
`
`Page 8 of 18
`
`
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`27. Published RFCs are available from a number of Internet hosts. Id. at
`
`8. The main hosts are at www.ietf.org and www.rfc-editor.org, each of which
`
`provide full indexing and searching tools for RFCs. If there is any discrepancy
`
`between the sites, www.rfc-editor.org is considered the authoritative search page.
`
`28. When a new version of an established Internet Standard (e.g., an
`
`existing RFC) is proposed, it progresses through the full standardization process as
`
`if it was a completely new standard, is assigned a different number, and is
`
`republished. (Ex. 1016 at 21-22.) The new RFC will indicate what effect it has on
`
`the previous RFC, e.g., that it makes the previous RFC “obsolete” or that the
`
`previous RFC is “updated.”
`
`29. The formalized process of preparing, publishing and widely
`
`distributing RFC documents is a very important part of the Internet culture, which
`
`works to develop standards in an open and transparent process. It is also important
`
`to the adoption of these standards, and the stability and functionality of the Internet
`
`for developers to adhere to standards and evolving “best practices.”
`
`30.
`
`In my opinion, one of ordinary skill in the art of electronic messaging
`
`in 1995-1996 would have been well aware of the import and availability of RFCs,
`
`the necessity of understanding RFCs to work in the messaging arts, the RFC
`
`publication process implemented by the IETF, and that RFCs are intended by their
`
`nature to be interrelated and cross-referenced.
`
`
`
`7
`
`Page 9 of 18
`
`
`
`IV. THE MULTI-PURPOSE INTERNET MAIL EXTENSIONS
`PROTOCOL (“MIME”)
`31. My co-designer, Ned Freed and I, led the effort to propose and
`
`develop the MIME specification while I was a researcher for Bell Communications
`
`Research (Bellcore).
`
`32. The Multi-Purpose Internet Mail Extensions Protocol (“MIME”) is a
`
`protocol defining a standardized format for permitting electronic mail messages to
`
`include non-ASCII text, images, and audio.
`
`33. Prior to the development of the MIME protocol, electronic mail
`
`messages were generally sent in accordance with the Simple Mail Transfer
`
`Protocol (“SMTP”), whereby messages were composed of ASCII-text. Some
`
`proprietary extensions permitted additional functionality, but not in an
`
`interoperable or multi-vendor manner.
`
`34. The MIME specification defines the way multimedia objects are
`
`labelled, compounded, and encoded for transport over the Internet.
`
`35. Mr. Freed and I put together a preliminary proposal for MIME and
`
`flew to St. Louis for an IETF meeting in March 1991, where we presented our
`
`ideas.
`
`36. On March 11, 1992, I sent out what is often called the first MIME
`
`message with an image attachment, a picture of my barbershop quartet at the time.
`
`
`
`8
`
`Page 10 of 18
`
`
`
`37. After a revision process, MIME became an IETF proposed standard in
`
`June 1992.
`
`38.
`
`In addition to the RFCs identified above, I am also the author of
`
`several other publications directed to MIME, including:
`
`
`
`MIME: A Portable and Robust Multimedia Format for Internet Mail,
`
`N. Borenstein, Multimedia Systems, Vol. 1, Issue 1, pp. 29-36 (April
`
`10, 1993) (Ex. 1035).
`
`
`
`Internet Multimedia Mail: Emerging Standards for Interoperability,
`
`N. Borenstein, ULPAA, pp. 183-192 (1992) (Ex. 1036).
`
`39.
`
`In addition, many other publications have been directed to MIME in
`
`the 1992-1993 time-frame, including:
`
`
`
`MIME Overview, Mark Grand (October 26, 1993) (Ex. 1037).
`
`V.
`
`PUBLIC AVAILABILITY OF MIME RFCS
`40.
`
`I have been asked to express an opinion on the authenticity, dates of
`
`publication and public availability of RFCs 1344, 1521, 1820, 1894 and 1894
`
`(draft v.06) (Exs. 1017, 1018, 1020, 1019, 1031) submitted in connection with this
`
`proceeding.
`
`41. As I mentioned above, all RFCs are available from www.ietf.org and
`
`www.rfc-editor.org, each of which provide full indexing and searching tools for
`
`
`
`9
`
`Page 11 of 18
`
`
`
`RFCs. See, e.g., http://www.ietf.org/rfc.html; http://www.rfc-
`
`editor.org/search/rfc search.php; and http://www.rfc-editor.org/rfc-index.html).
`
`42. The date of the last update and publication of the particular RFC is
`
`indicated on the documents first page, normally in the upper right corner.
`
`43. Copies of RFCs as well as of the different (numbered) versions of
`
`Internet-Drafts (both active and expired) are also available through an archive site
`
`maintained by the IETF (accessible from https://datatracker.ietf.org/).
`
`44. As part of my work in both industry and academia and my research, I
`
`have consulted RFCs and reviewed Internet-Drafts many times, and have posted
`
`links to copies of RFCs and Internet-Drafts I have authored that are maintained on
`
`the IETF web site.
`
`45. When I personally seek a copy of an RFC or Internet-Draft, I will
`
`retrieve the document from one of the search pages of www.ietf.org or www.rfc-
`
`editor.org, or the IETF archive site, as each offers an easy to use search interface
`
`that directly accesses the official repository used for publishing and maintaining
`
`these documents.
`
`A. RFC 1344
`46. RFC 1344 is titled “Implications of MIME for Internet Mail
`
`Gateways.”
`
`
`
`10
`
`Page 12 of 18
`
`
`
`47.
`
`I am the author of RFC 1344 and was personally involved with its
`
`creation and publication.
`
`48. RFC 1344’s June 1992 publication date is provided on its title page.
`
`(Ex. 1017 at 1.)
`
`49.
`
`I have compared the copy of RFC 1344 submitted with this Petition
`
`with a copy of the same RFC that I personally retrieved from the IETF website
`
`using the methods described above and they are identical.
`
`50.
`
`I also compared these copies to my own copies of record, and found
`
`them to be identical.
`
`51. Moreover, the date on the document’s cover page accurately reflects
`
`my recollection of the date by which this document was publicly available and my
`
`personal experience with the IETF’s standardization and publication processes.
`
`52.
`
`I believe the copy of RFC 1344 submitted in connection with this
`
`Petition (Ex. 1017) to be a true and accurate copy of the document published and
`
`made publicly available by the IETF no later than June 1992.
`
`B. RFC 1521
`53. RFC 1521 is titled “MIME (Multipurpose Internet Mail Extensions)
`
`Part One: Mechanisms for Specifying and Describing the Format of Internet
`
`Message Bodies.”
`
`
`
`11
`
`Page 13 of 18
`
`
`
`54.
`
`I am the co-author of RFC 1521 and was personally involved with its
`
`creation and publication.
`
`55. RFC 1521’s September 1993 publication date is provided on its title
`
`page. (Ex. 1018 at 1.)
`
`56.
`
`I have compared the copy of RFC 1521 submitted with this Petition
`
`with a copy of the same RFC that I personally retrieved from the IETF website
`
`using the methods described above and they are identical.
`
`57.
`
`I also compared these copies to my own copies of record, and found
`
`them to be identical.
`
`58. Moreover, the date on the document’s cover page accurately reflects
`
`my recollection of the date by which this document was publicly available and my
`
`personal experience with the IETF’s standardization and publication processes.
`
`59.
`
`I believe the copy of RFC 1521 submitted in connection with this
`
`Petition (Ex. 1018) to be a true and accurate copy of the document published and
`
`made publicly available by the IETF no later than September 1993.
`
`60. Additionally, RFC 1521 is an update of the RFC 1341.
`
`61.
`
`I am the co-author of RFC 1341 and was personally involved with its
`
`creation and publication.
`
`62. RFC 1341’s June 1992 publication date is provided on its title page.
`
`(Ex. 1021 at 1.)
`
`
`
`12
`
`Page 14 of 18
`
`
`
`63.
`
`I have compared the copy of RFC 1341 submitted with this Petition
`
`with a copy of the same RFC that I personally retrieved from the IETF website
`
`using the methods described above and they are identical.
`
`64.
`
`I also compared these copies to my own copies of record, and found
`
`them to be identical.
`
`65.
`
`I believe the copy of RFC 1341 submitted in connection with this
`
`Petition (Ex. 1021) to be a true and accurate copy of the document published and
`
`made publicly available by the IETF no later than September 1993.
`
`66. Moreover, the date on the document’s cover page accurately reflects
`
`my recollection of the date by which this document was publicly available and my
`
`personal experience with the IETF’s standardization and publication processes.
`
`67. RFC 1521 was in turn updated in March 1994 by RFC 1590.
`
`68. RFC 1590’s March 1994 publication date is provided on its title page.
`
`(Ex. 1030 at 1.)
`
`69. Although I was not personally involved with the creation of RFC
`
`1590 (Ex. 1030), I have compared the copy of RFC 1820 submitted with this
`
`Petition with a copy of the same RFC that I personally retrieved from the IETF
`
`website using the methods described above and they are identical.
`
`70. Based on this comparison and my personal familiarity with the IETF’s
`
`standardization and publication process, I believe the copy of RFC 1590 submitted
`
`
`
`13
`
`Page 15 of 18
`
`
`
`with this Petition (Ex. 1030) to be a true and accurate copy of the document
`
`published and made publicly available by the IETF no later than August 1995.
`
`C. RFC 1820
`71. RFC 1820 is titled “Multimedia E-mail (MIME) User Agent
`
`Checklist.”
`
`72. RFC 1820’s August 1995 publication date is provided on its title page.
`
`Ex. 1020 at 1.
`
`73. Although I was not personally involved with the creation of RFC
`
`1820 (Ex. 1020), I have compared the copy of RFC 1820 submitted with this
`
`Petition with a copy of the same RFC that I personally retrieved from the IETF
`
`website using the methods described above and they are identical.
`
`74. Based on this comparison and my personal familiarity with the IETF’s
`
`standardization and publication process, I believe the copy of RFC 1820 submitted
`
`with this Petition (Ex. 1020) to be a true and accurate copy of the document
`
`published and made publicly available by the IETF no later than August 1995.
`
`D. RFC 1894
`75. RFC 1894 is titled “An Extensible Message Format for Delivery
`
`Status Notifications.”
`
`76. RFC 1894’s January 1996 publication date is provided on its title
`
`page. (Ex. 1019 at 1.)
`
`
`
`14
`
`Page 16 of 18
`
`
`
`77.
`
`I was personally involved with the creation of RFC 1894 and
`
`reviewed and made minor comments (Ex. 1019). I have compared the copy of
`
`RFC 1894 submitted with this Petition with a copy of the same RFC that I
`
`personally retrieved from the IETF website using the methods described above and
`
`they are identical.
`
`78. Moreover, the date on the document’s cover page accurately reflects
`
`my recollection of the dates by which this document was publicly available.
`
`79. Based on this comparison and my personal familiarity with the IETF’s
`
`standardization and publication process, I believe the copy of RFC 1894 submitted
`
`in this Petition (Ex. 1019) to be a true and accurate copy of the document
`
`published made publicly available by the IETF no later than January 1996.
`
`80. An earlier Internet-Draft version of RFC 1894, “draft-ietf-notary-
`
`mime-delivery-06.txt,” was published and widely distributed by the IETF no later
`
`than June 1995. (Ex. 1031 at 1.)
`
`81.
`
`I was personally involved with the creation of this Internet-Draft and
`
`reviewed and made minor comments.
`
`82.
`
`I have compared the copy of the Internet-Draft submitted in this
`
`Petition (Ex. 1031) with a copy of the same Internet-Draft that I personally
`
`retrieved from the IETF archive site using the methods described above and they
`
`are identical.
`
`
`
`15
`
`Page 17 of 18
`
`
`
`83.
`
` Moreover, the date on the document’s cover page accurately reflects
`
`my recollection of the dates by which this document was publicly available.
`
`84. Based on this comparison and my personal familiarity with the IETF’s
`
`standardization and publication process, I beelieve the copy of the Internet Draft
`
`submitted in this Petition to be a true and accurate copy of the document published
`
`and made publicly available by the IETF no later than June 1995.
`
`VI. CONCLUSION
`85.
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code.
`
`
`
`
`
`
`
`
`
`
`16
`
`Page 18 of 18
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`
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