UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION, SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA), INC.
`Petitioner
`
`v.
`
`IXI IP, LLC
`Patent Owner
`_________________
`
`
`U.S. Patent No. 7,552,124
`Issued: June 23, 2009
`Application No.: 10/872,289
`Filed: June 17, 2004
`
`Title: Natural Language For Programming A Specialized Computing System
`_________________
`
`DECLARATION OF JOHN D. VILLASENOR, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,552,124
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`1 of 165
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION, SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., AND ZTE (USA), INC.
`Petitioner
`
`v.
`
`IXI IP, LLC
`Patent Owner
`_________________
`
`
`U.S. Patent No. 7,552,124
`Issued: June 23, 2009
`Application No.: 10/872,289
`Filed: June 17, 2004
`
`Title: Natural Language For Programming A Specialized Computing System
`_________________
`
`DECLARATION OF JOHN D. VILLASENOR, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 7,552,124
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`1 of 165
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by Klarquist Sparkman, LLP, which represents
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`Microsoft Corporation, Samsung Electronics Co. Ltd., Samsung Electronics
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`America, Inc., and ZTE (USA), Inc. (“Petitioners”), in relation to an inter partes
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`review (“IPR”) of U.S. Pat. No. 7,552,124 (the “’124 patent”). I have been asked to
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`render an opinion regarding the validity of certain claims of the ’124 patent in light
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`of certain prior art, including U.S. Pat. No. 7,027,975 to Pazandak et al. (“Pazandak”
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`or the “Pazandak patent”) and U.S. Pat. No. 7,003,463 to Maes et al. (“Maes” or the
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`“Maes patent”), as well as other art listed and discussed below.
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`2.
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`Under my retention in this matter, I am being compensated at my
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`normal hourly rate of $800 / hour for my work on this matter and my compensation
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`is not contingent on the outcome.
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`II. QUALIFICATIONS AND EXPERIENCE
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`3.
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`I received a B.S. in electrical engineering from the University of
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`Virginia in 1985, an M.S. in electrical engineering from Stanford University in 1986,
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`and a Ph.D. in electrical engineering from Stanford University in 1989. During my
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`graduate study at Stanford (September 1985-January 1989), I performed research on
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`communications and signal processing.
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`4.
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`From approximately fall 1990 and until approximately June 1992, I
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`worked for the Jet Propulsion Laboratory in Pasadena, CA, where I worked to
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`develop techniques for imaging and mapping the earth from space. Since 1992, I
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`have been on the faculty of the Electrical Engineering Department of the University
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`of California, Los Angeles (UCLA). Between 1992 and 1996, I was an Assistant
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`Professor; between 1996 and 1998, an Associate Professor; and since 1998, I have
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`been a full Professor. For several years starting in the late 1990s, I served as the Vice
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`Chair of the Electrical Engineering Department at UCLA. I also hold faculty
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`appointments in the UCLA Anderson School of Management and in the Department
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`of Public Policy within the UCLA Luskin School of Public Affairs. I am also a
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`visiting professor at the UCLA School of Law.
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`5.
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`In the engineering school at UCLA, I have taught courses on
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`information processing,
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`image processing, and communications,
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`including
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`consideration of systems, algorithms, and devices. Among other courses, I have
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`often taught a course in the UCLA Electrical Engineering Department on speech and
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`image processing. This course includes consideration of various issues raised by the
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`’124 patent and related art, including systems and algorithms for processing natural
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`language.
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`6.
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`At the Anderson School of Management, I created and have taught a
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`course on intellectual property for technology entrepreneurs, and also advise second-
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`year MBA students on technology-related team projects. At the Luskin School of
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`Public Affairs, I teach science and technology policy and also advise graduate
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`student project teams. At the UCLA School of Law, I created and teach a course
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`called “Digital Technologies and the Constitution.”
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`7.
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`Over the past several decades I have performed extensive research on
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`various aspects of systems, devices, and networks that acquire, store, process and
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`transmit information. My research has addressed software, algorithms, hardware,
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`networking, protocols and other aspects of these systems and devices, and has
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`included work on wireless mobile devices and systems, signal processing and
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`communications, hardware design methodologies, and cybersecurity.
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`8.
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`I am an inventor on approximately 20 U.S. patents in areas including
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`signal processing, data compression, communications, and cybersecurity. I have
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`published over 150 technical articles in peer-reviewed engineering journals and
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`conference proceedings. I have also been asked on multiple occasions to provide
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`congressional testimony in relation to technology topics. In addition, I have
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`published articles in the legal academic press, including law review articles.
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`9.
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`In addition to my work at UCLA, I am a nonresident senior fellow at
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`the Brookings Institution in Washington, D.C. Through Brookings I have examined
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`a wide range of topics at the technology/policy intersection including cybersecurity,
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`wireless mobile devices and systems, digital privacy, financial inclusion for
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`“unbanked” populations, driverless cars, and digital currencies. In addition to
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`publishing in traditional academic venues such as engineering journals, engineering
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`conference proceedings, and law reviews, I have published papers and reports
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`through the Brookings Institution. I have also published articles and commentary in
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`broader-interest venues including Billboard, the Chronicle of Higher Education,
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`Fast Company, Forbes, the Huffington Post, the Los Angeles Times, Scientific
`
`American, Slate, and the Washington Post.
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`10.
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`I am an affiliate of the Center for International Security and
`
`Cooperation (CISAC) at Stanford, and from 2014 to 2016, I was a National Fellow
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`at the Hoover Institution at Stanford. Since 2016, I have been a Visiting Fellow at
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`the Hoover Institution. At Stanford, I direct a research project funded by the U.S.
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`Department of Homeland Security aimed at improving cybersecurity in U.S. critical
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`infrastructure.
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`11.
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`I am also a member of the Council on Foreign Relations. Previously I
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`was a member and then vice chair of the World Economic Forum’s Global Agenda
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`Council on the Intellectual Property System as well as the World Economic Forum’s
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`Global Agenda Council on Cybersecurity.
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`12. Since the late 1990s, I have had significant engagement in early stage
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`technology venture capital in the San Francisco Bay Area. In that capacity, I have
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`met with a large number of startup companies seeking venture financing spanning a
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`wide range of technology areas, including communications and networking. Among
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`other things, I have helped to evaluate the proposed technology, the competitive
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`landscape, the market opportunities and risks, the strength of the team, and the
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`company’s IP strategy and position.
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`13. My curriculum vitae is attached to this declaration as Appendix 1.
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`Attached as Appendix 2 is a list of recent testimony.
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`III. DOCUMENTS REVIEWED
`
`14.
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`In forming the opinions expressed herein, I reviewed each document
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`cited herein, including at least the following documents:
`
`No.
`1001
`1003
`1004
`
`1005
`1006
`
`1007
`1008
`1009
`1010
`1011
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`1012
`
`Description
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`U.S. Patent No. 7,552,124
`
`Prosecution History of U.S. Patent No. 7,552,124 (excerpted)
`
`Office Action dated July 27, 2010 in European Application No.
`05 752 631.1 – 1243
`
`U.S. Patent No. 7,003,463 (“Maes”)
`
`U.S. Patent Application Publication No. 2003/0046061 (“Preston”)
`
`U.S. Patent No. 7,027,975 (“Pazandak”)
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`U.S. Pat. Application No. 2002/0072918 (“White”)
`
`U.S. Patent No. 7,085,708 (“Manson”)
`U.S. Patent No. 5,937,383 (“Maes II”)
`Petition in Google Inc. v. IXI Mobile, Case No. IPR2016-01669, filed
`August 25, 2016 (Paper 2)
`Patent Owner Preliminary Response in Google Inc. v. IXI Mobile,
`Case No. IPR2016-01669, filed December 9, 2016 (Paper 7)
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`6 of 165
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`No.
`1013
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`1014
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`1015
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`1016
`1017
`
`1018
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`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`Description
`Appendix A to Patent Owner IXI’s September 8, 2016 “Disclosure
`of Asserted Claims and Infringement Contentions as to Microsoft”
`in IXI Mobile (R&D) Ltd., et al. v. Blackberry Limited, et al. (Case
`No. 2:15-cv-01883-JRG-RSP) (LEAD CASE)
`PCT Application Publication No. WO 02/12982 to Applicant Object
`Services and Consulting, Inc. (“Object”)
`
`U.S. Patent Application Publication No. 2003/0182132
`(“Niemoeller”)
`
`U.S. Patent No. 7,693,720 to Kennewick (“Kennewick”)
`
`Withdrawal dated January 12, 2011 in European Application No. 05
`752 631.1 - 1243
`
`Ex. A to Joint Claim Construction And Prehearing Statement in IXI
`Mobile (R&D) Ltd., et al. v. Blackberry Limited, et al. (Case No. 2:15-
`cv-01883-JRG-RSP) (LEAD CASE)
`
`Declaration of Lin Chase, Ph.D., in Support of Patent Owner's
`Preliminary Response in IPR2016-01669 (Exhibit 2001)
`
`Linda Himelstein, “Point Cast: The Rise And Fall Of An Internet
`Star,” Bloomberg, April 25, 1999
`
`Daniel Siewiorek, Asim Smailagic, Junichi Furukawa, Neema
`Moraveji, Kathryn Reiger, and Jeremy Shaffer, “SenSay: A Context-
`Aware Mobile Phone,” Proceedings of the 16th IEEE Symposium on
`Computer-Based Medical Systems, June 2003
`
`A.R. Ali-Ali, M. Al-Rousan, and M. Al-Shaikh, “Embedded System-
`based Mobile Patient Monitoring Device,” Proceedings of the 16th
`IEEE Symposium on Computer-Based Medical Systems, 2003
`Microsoft Computing Dictionary (5th Edition 2002) (excerpts)
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`IV. LEGAL UNDERSTANDINGS
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`15.
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` In expressing my opinions and considering the subject matter of the
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`claims of the ’124 Patent, I am relying upon certain basic legal principles that have
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`been explained to me. I have been informed that these legal principles reflect patent
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`law as applicable to the ’124 patent, which issued from an application filed in 2004.
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`16. First, I understand that for an invention claimed in a patent to be found
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`patentable, it must be, among other things, new and not obvious from what was
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`known before the invention was made.
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`17.
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`I have been informed that the information that is used to evaluate
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`whether an invention is new and not obvious is generally referred to as “prior art”
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`and generally includes patents and printed publications (e.g., books, journal
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`publications, articles on websites, product manuals, etc.).
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`18.
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`I have been informed that in this proceeding, Petitioners have the
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`burden of proving that the claims of the ’124 Patent are anticipated by or obvious
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`from the prior art by a preponderance of the evidence. I understand that “a
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`preponderance of the evidence” is evidence sufficient to show that a fact is more
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`likely than not to be true.
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`19. As I discuss further in the claim construction section below, I have been
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`informed that the ’124 Patent is not expired, so its claims must be given the broadest
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`reasonable construction consistent with the specification. The claims after being
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`construed are then to be compared to the information in the prior art.
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`20.
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`I have been informed that, under U.S. patent law as applicable to the
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`’124 patent, a claimed invention is not patentable if it would have been obvious to a
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`person of ordinary skill in the field of the invention at the time the invention was
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`made.
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`21.
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`I have been informed that the obviousness standard is defined in the
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`patent statute (35 U.S.C. §103(a)) (in the form of that statute applicable to the ’124
`
`patent) as follows:
`
`A patent may not be obtained though the invention is not
`identically disclosed or described as set forth in section
`102 of this title, if the differences between the subject
`matter sought to be patented and the prior art are such that
`the subject matter as a whole would have been obvious at
`the time the invention was made to a person having
`ordinary skill in the art to which said subject matter
`pertains. Patentability shall not be negated by the manner
`in which the invention was made.
`
`22.
`
`I have been informed that the following standards govern the
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`determination of whether a claim in a patent is obvious. I have been instructed to
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`apply these standards in my evaluation of whether the asserted claims of the ’124
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`Patent would have been considered obvious on June 17, 2004.
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`23.
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`I have been informed that to find a claim in a patent obvious, one must
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`make certain findings regarding the claimed invention and the prior art. Specifically,
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`I have been informed that the obviousness question requires consideration of four
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`factors (although not necessarily in the following order):
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`• The scope and content of the prior art;
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`• The differences between the prior art and the claims at issue;
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`• The knowledge of a person of ordinary skill in the pertinent art;
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`and
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`• Whatever objective factors indicating obviousness or non-
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`obviousness may be present in any particular case.
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`24.
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`In addition, I have been informed that the obviousness inquiry should
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`not be done in hindsight, but must be done using the perspective of a person of
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`ordinary skill in the relevant art at the time of the alleged invention.
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`25.
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`I have been informed that the objective factors indicating obviousness
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`or non-obviousness may include: commercial success of products covered by the
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`patent claims; a long-felt need for the invention; failed attempts by others to make
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`the invention; copying of the invention by others in the field; unexpected results
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`achieved by the invention; praise of the invention by those in the field; the taking of
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`licenses under the patent by others; expressions of surprise by experts and those
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`skilled in the art at the making of the invention; and the patentee proceeded contrary
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`to the accepted wisdom of the prior art. I also understand that any of this evidence
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`must be specifically connected to the invention rather than being associated with the
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`prior art or with marketing or other efforts to promote an invention. I have seen no
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`evidence of, and am not aware of any evidence of “objective factors” suggesting the
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`claimed apparatus or methods are not obvious, and reserve my right to address any
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`such evidence if it is identified in the future.
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`26.
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`I have been informed the combination of familiar elements according
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`to known methods is likely to be obvious when it does no more than yield predictable
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`results. I also understand that an example of a solution in one field of endeavor may
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`make that solution obvious in another related field. I also understand that market
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`demands or design considerations may prompt variations of a prior art system or
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`process, either in the same field or a different one, and that these variations will
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`ordinarily be considered obvious variations of what has been described in the prior
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`art.
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`27.
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`I also have been informed that if a person of ordinary skill can
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`implement a predictable variation, that variation would have been considered
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`obvious. I understand that for similar reasons, if a technique has been used to
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`improve one device, and a person of ordinary skill in the art would recognize that it
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`would improve similar devices in the same way, using that technique to improve the
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`other device would have been obvious unless its actual application yields unexpected
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`results or challenges in implementation.
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`28.
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`I have been informed that the obviousness analysis need not seek out
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`precise teachings directed to the specific subject matter of the challenged claim, but
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`instead can take account of the “ordinary innovation” and experimentation that does
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`no more than yield predictable results, which are inferences and creative steps that a
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`person of ordinary skill in the art would employ.
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`29.
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`I have been informed that sometimes it will be necessary to look to
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`interrelated teachings of multiple patents; the effects of demands known to the
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`design community or present in the marketplace; and the background knowledge
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`possessed by a person having ordinary skill in the art. I understand that all these
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`issues may be considered to determine whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.
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`30.
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`I have been informed that the obviousness analysis cannot be confined
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`by a formalistic conception of the words “teaching, suggestion, and motivation.” I
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`understand that in 2007, the Supreme Court issued its decision in KSR Int'l Co. v.
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`Teleflex, Inc., 550 U.S. 398 (2007), where the Court rejected the previous
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`requirement of an explicit “teaching, suggestion, or motivation to combine” known
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`elements of prior art for purposes of an obviousness analysis as a precondition for
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`finding obviousness. I have been informed that KSR confirms that any motivation
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`that would have been known to a person of skill in the art, including common sense,
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`or derived from the nature of the problem to be solved, is sufficient to explain why
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`references would have been combined.
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`31.
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`I have been informed that a person of ordinary skill attempting to solve
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`a problem will not be led only to those elements of prior art designed to solve the
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`same problem. I understand that under the KSR standard, steps suggested by
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`common sense are important and should be considered. Common sense teaches that
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`familiar items may have obvious uses beyond the particular application being
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`described in a reference, that if something can be done once it is obvious to do it
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`multiple times, and in many cases a person of ordinary skill will be able to fit the
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`teachings of multiple patents together like pieces of a puzzle. As such, the prior art
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`considered can be directed to any need or problem known in the field of endeavor as
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`of the effective filing date and can provide a reason for combining the elements of
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`the prior art in the manner claimed. In other words, the prior art does not need to be
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`directed towards solving the same problem that is addressed in the patent. Further,
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`the individual prior art references themselves need not all be directed towards
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`solving the same problem.
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`32.
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`I have been informed that an invention that might be considered an
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`obvious variation or modification of the prior art may be considered non-obvious if
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`one or more prior art references discourages or leads away from the line of inquiry
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`disclosed in the reference(s). A reference does not “teach away” from an invention
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`simply because the reference suggests that another embodiment of the invention is
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`better or preferred. My understanding of the doctrine of teaching away requires a
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`clear indication that the combination should not be attempted (e.g., because it would
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`not work or explicit statements saying the combination should not be made).
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`33.
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`I understand that a person of ordinary skill is also a person of ordinary
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`creativity.
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`34.
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`I further have been informed that in many fields, it may be that there is
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`little discussion of obvious techniques or combinations, and it often may be the case
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`that market demand, rather than scientific literature or knowledge, will drive design
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`trends. When there is such a design need or market pressure to solve a problem and
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`there are a finite number of identified, predictable solutions, a person of ordinary
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`skill has good reason to pursue the known options within their technical grasp. If
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`this leads to the anticipated success, it is likely the product not of innovation but of
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`ordinary skill and common sense. In that instance, the fact that a combination was
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`obvious to try might show that it was obvious. The fact that a particular combination
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`of prior art elements was “obvious to try” may indicate that the combination was
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`obvious even if no one attempted the combination. If the combination was obvious
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`to try (regardless of whether it was actually tried) or leads to anticipated success,
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`then it is likely the result of ordinary skill and common sense rather than innovation.
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`35.
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`I further have been informed that an element in a claim for a
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`combination may be expressed as a means or step for performing a specified function
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`without the recital of structure, material, or acts in support thereof, and such claim
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`shall be construed to cover the corresponding structure, material, or acts described
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`in the specification and equivalents thereof, pursuant to 35 U.S.C. § 112, ¶ 6.
`
`V. THE ’124 PATENT
`
`A. Overview Of The ’124 Patent
`36. The application leading to the ’124 patent was filed on June 17, 2004,
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`and does not claim priority to any earlier-filed application(s). I have been informed
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`that, absent evidence of earlier conception of the invention claimed in the ’124 patent
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`and reasonably continuous diligence in reduction to practice, the earliest effective
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`priority date is presumed to be the date of filing (in this case, June 17, 2004).
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`37. The ’124 patent is titled “Natural language for programming a
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`specialized computing system,” and purports to describe a “method for
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`programming a mobile communication device based on a high-level code
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`comprising operative language.” (’124 patent, Abstract.) The ’124 patent is “directed
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`to a system and corresponding methods that facilitate programming a mobile
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`communication device or other specialized computing device using a natural
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`language.” (’124 patent, 1:55-58.) Figure 1 of the ’124 patent is shown below:
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`38. The environment depicted in Figure 1 includes “a network server 100,
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`a communication network 110, and a mobile device 120. The network server 100
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`and mobile device 120 are connected by way of the communication network 110.”
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`(’124 patent, 3:36-39.)
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`39. The ’124 patent states:
`
`in a preferred embodiment,
`High-level code 150,
`comprises text formatted in the context of a natural
`language (e.g., English, French, Spanish, Japanese, etc.).
`High-level code 150 may comprise one or more sentences,
`wherein each sentence comprises at least one operative
`language (i.e. keyword) defining an instruction for a
`function or an operation to be performed. In one
`embodiment, the sentences also comprise keywords
`defining conditions or relationships based on which an
`operation is performed.
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`To illustrate, an exemplary script written by a user in a
`natural language may include a sentence such as “Transfer
`call to voice mail if call is from Bob”. The operative
`language (i.e., keyword or instruction) in the sentence is
`“transfer”. The condition is “if call is from Bob”.
`Keywords such as “if” or the like are used to indicate a
`condition or relationship. Application software 1122 can
`process sentences written in natural language to recognize
`the included keywords.
`
`(’124 patent, 4:15-31.)
`
`40. The ’124 patent further states that “if high-level code 150 comprises a
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`complex set of instructions, then high-level code 150 is transmitted to network server
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`100, so that a more powerful system is utilized to process and compile high-level
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`code 150.” (’124 patent, 4:49-52.) And that “if high-level code 150 comprises a less
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`complex structure, then application software 1122 or a portion thereof is installed
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`and executed on mobile device 120 to process high-level code 150 to produce
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`executable code 160, without the need for transferring high-level code 150 to a more
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`powerful processing environment implemented on network server 100.” (’124
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`patent, 4:58-64.)
`
`The File History Of The ’124 Patent
`B.
`41. As noted above, the application leading to the ’124 patent was filed on
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`June 17, 2004. On September 22, 2006, the PTO issued an office action rejecting all
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`pending claims as anticipated by Pazandak. On March 16, 2007, the applicant
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`submitted a response and amended the claims, adding several elements to pending
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`claim 1 and to pending claim 11. Specifically, the applicant amended pending claims
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`1 and 11 (which after further prosecution issued as claims 1 and 6) to require “[means
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`for] receiving a high-level code comprising one or more keywords, wherein the high-
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`level code is provided by a user of a mobile communication device to control the
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`operation of the mobile communication device without having to select from menu
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`items provided by an operating system running on the mobile communication
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`device.”
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`42. On June 4, 2007, the PTO again rejected all pending claims as
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`anticipated by Pazandak. In particular, the PTO found that Pazandak discloses
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`“[means for] receiving a high-level code comprising one or more keywords, wherein
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`the high-level code is provided by a user of a mobile communication device to
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`control the operation of the mobile communication device without having to select
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`from menu items provided by an operating system running on the mobile
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`communication device.” In response, on December 4, 2007, the applicant again
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`amended pending claim 1 and pending claim 11, removing some of the elements that
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`had been added in the March 16, 2007 response, and adding elements to both of
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`these pending claims. The added elements included “determining level of
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`complexity and implementation of the high-level code” and “designating an
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`application software to process the high level code” to pending claim 1, and the
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`corresponding “means for designating an application software to process the high
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`level code” and “means for designating an application software to process the high
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`level code” to pending claim 11, as well as the three final wherein clauses in pending
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`claim 1 (which eventually issued as claim 1), and pending claim 11 (which
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`eventually issued as claim 6). The representative amendments made to claim 1 in the
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`December 4, 2007 response are as follows:
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`19 of 165
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`43. On February 20, 2009, the PTO issued a Notice of Allowability with
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`respect to all pending claims.
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`20 of 165
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`44.
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`I also understand that on August 25, 2016, Google, Inc. filed a Petition
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`for Inter Partes Review (“IPR”). On December 9, 2016, Patent Owner IXI filed a
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`preliminary response accompanied by a declaration by Dr. Lin Chase. I have
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`reviewed the foregoing documents and discuss them as appropriate below.
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`VI. CLAIM CONSTRUCTION
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`45.
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`I understand that in an IPR, terms are to be given their broadest
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`reasonable interpretation, which may be broader than the interpretation in district
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`court litigation. Accordingly, my opinions in this declaration utilize the broadest
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`reasonable interpretation to the extent specifically noted herein and do not generally
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`address how various terms may be construed in district court litigation. In some
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`instances my declaration also addresses constructions proposed or implied (e.g., by
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`statements made by the Patent Owner regarding claim scope) in association with
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`Case No. IPR2016-01669 (“the Google IPR”). In addition, I address certain
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`constructions provided or implied by the Patent Owner through its infringement
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`contentions in the underlying district court litigation, as well as constructions
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`explicitly proposed by the Patent Owner and by the Petitioners in the underlying
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`district court litigation, though I understand that constructions in district court
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`litigation may be, although are not necessarily, narrower than those used in an IPR.
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`46. For purposes of my analysis, I have been instructed to assume the
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`following constructions. I have not been asked to opine on whether they are proper
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`21 of 165
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`
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`constructions either under the Board’s standard or the litigation standard for claim
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`construction, or if they meet any of the requirements of 35 U.S.C. § 112 (pre-AIA):
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`Terms
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`Constructions
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`operative language
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`encompasses at least language
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`associated with one or more
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`operations to be performed
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`implementation of the high-level
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`“Implementation . . . would have
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`code
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`been understood to refer to the
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`impact of the location, functionality,
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`and execution procedures of the
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`application software that would be
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`processing and compiling the high-
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`level code into an executable code.”
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`(Patent Owner’s Preliminary
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`Response, p. 21.)
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`OR
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`how the code itself is implemented,
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`e.g., whether it’s in a natural
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`language or something less natural
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`22 of 165
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`
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`high-level code
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`encompasses at least spoken or
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`written words input by a user
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`natural language compiler
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`encompasses at least software that
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`processes high-level code
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`the parsing and determining steps
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`“parsing … steps” refers to “parsing
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`(in the context of the larger
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`the high-level code …”
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`phrases “wherein application
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`
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`software is executed on a
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`“determining steps” refers to
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`distributed environment …” and
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`• “determining at least one
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`“wherein when the high-level
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`operation …” and
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`code comprises [a/an] complex
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`• “determining whether high-level
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`structure …”
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`code comprises …”
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`Claim 6 Means Plus Function
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`Corresponding Structure
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`Terms and Identified Functions
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`b. means for receiving a high-level
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`The identified function is
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`code comprising one or more
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`“receiving a high-level code
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`keywords
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`comprising one or more keywords.”
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`The structure is “a user interface,
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`including a keypad, pointing device,
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`23 of 165
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`touchscreen, keyboard, microphone,
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`or equivalents thereof.”
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`
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`In the column at left, the function is
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`in bold text.
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`The structure for each of these
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`functions is application software
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`executing on one or more
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`processors to perform the identified
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`functions or equivalents thereof.
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`c. means for parsing the high-level
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`code for the keywords to
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`recognize the operative language
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`associated with controlling one or
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`more operations of the mobile
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`communication device
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`d. means for determining at least
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`one operation associated with the
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`operative language
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`e. means for determining whether
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`high-level code comprises
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`keywords defining one or more
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`relationships and conditions
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`corresponding to the operative
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`language
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`f. means for producing an
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`executable code
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`24 of 165
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`g. means for determining level of
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`complexity and implementation of
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`the high-level code
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`h. means for designation an
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`application software to process
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`the high-level code
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`VII. RELEVANT FIELD AND TIME FRAME
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`47. As stated in the “Legal Understandings” section of this declaration, I
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`understand that a patent is to be interpreted through the eyes of one of ordinary skill
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`in the art at the time of the alleged invention. I have been informed that the June 17,
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`2004 filing date is the date of the alleged invention claimed in the ’124 patent.
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`Accordingly, my understanding is that this identifies the relevant time frame in terms
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`of the knowledge of one of ordinary skill in the art.
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`48. Based on my review of the ’124 patent, in my opinion the relevant field
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`is network-connected mobile communications devices, including processing of
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`natural language inputs to such devices. The speech processing course that I teach at
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`UCLA considers various aspects of this field, including systems and algorithms for
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`processing natural language. The communications course that I teach at UCLA also
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`considers various aspects of this field, including network-connected mobile
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`communications devices.
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`25 of 165
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`VIII. LEVEL OF ORDINARY SKILL IN THE ART
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`49.
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`In my opinion, a person of ordinary skill in the art at the time of the
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`alleged invention of the ’124 patent would have had at least an undergraduate degree
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`in electrical engineering, computer science, or a related field, and two years of
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`experience in networked communications devices and systems, including experience
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`in natural language processing technologies, including voice processing. In the
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`discussion below I will sometimes use the acronym “POSITA” to refer to such a
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`person of ordinary skill in the art. I was at least a POSITA in the relevant timeframe,
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`and my opinions herein are from the standpoint of a POSITA in the 2003-2004 time
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`frame.
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`IX. OVERVIEW OF THE MAES PATENT
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`50. The Maes patent was issued in 2006 from a national stage application
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`filed in accordance with 35 U.S.C. § 371 on June 25, 2001. The corresponding PCT
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`filing date is October 1, 1999. In addition, Maes claims priority to two U.S.
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`provisional applications filed respectively on October 2, 1998 and January 27, 1999.
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`Maes was not considered during prosecution of the ’124 patent.
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`26 of 165
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`51.
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`I have been informed that Maes qualifies as prior art to the ’124 patent
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`under at least 35 U.S.C. § 102(e)1.
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`52. Maes is titled “System and method for providing network coordinated
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`conversational services” and
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