UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOOGLE, INC.,
`Petitioner,
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`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners.
`
`
`
`
`
`
`Case IPR2017-01685
`Patent 7,805,948
`
`DECLARATION OF WILLIAM C EASTTOM II
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION ....................................................................................... 1
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`II.
`
`BACKGROUND AND QUALIFICATIONS .............................................. 2
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`III. LEGAL STANARDS USED IN MY ANALYSIS ....................................... 2
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`A. Obviousness ............................................................................................ 2
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`B. Priority Date ........................................................................................... 4
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`C. Person of Ordinary Skill in the Art.......................................................... 4
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`D. Broadest Reasonable Interpretation ......................................................... 6
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`IV. OVERVIEW OF THE ‘948 PATENT ......................................................... 7
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`V.
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`CLAIM CONSTRUCTION ........................................................................10
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`A. “generating a conference call request responsively to a single request by
`the conference call requester” ................................................................10
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`B. The “conference call request” must identify “each of the indicated
`potential targets” ....................................................................................13
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`VI. GOOGLE’S CITED REFERENCES ..........................................................13
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`A. Tanigawa (Ex. 1014) ..............................................................................14
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`B. Liversidge (Ex. 1004) ............................................................................17
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`VII. VALIDITY ANALYSIS .............................................................................21
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`A. The Proposed Combination Fails to Disclose and Teaches Away From
`“generating a conference call request responsively to a single request by
`the conference call requester, said conference call request identifying
`each of the potential targets for said conference call request” ................21
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`B. The Petitioner Improperly Picks and Chooses Teaching of Reference to
`the Exclusion of the Teachings of the References as a Whole ................23
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`C. The Petitioner’s Propose Combination Renders Tanigawa Inoperable for
`its Intended Purpose ...............................................................................24
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`VIII. CONCLUSION ..........................................................................................25
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`I, Chuck Easttom, hereby declare as follows:
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`I.
`
`INTRODUCTION
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`1. My name is William Charles Easttom II (Chuck Easttom) and I
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`have been retained by Uniloc, USA, Inc., and Uniloc Luxembourg S.A.
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`(“Uniloc” or the “Patent Owner”) to provide my expert opinions regarding
`
`U.S. Patent No. 7,804,948 (the ‘948 Patent). In particular, I have been asked
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`to opine on whether a person of ordinary skill in the art (POSITA) at the time
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`the inventions described in the ‘948 patent were conceived would have found
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`Claims 1-4, 6-8, 18, 21, and 22 (“Challenged Claims”) as obvious in light of
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`the following referenced cited in IPR2017-01685:
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`• EX1014, U.S. Patent No. 7,233,589 to Tanigawa (“Tanigawa”)
`• EX1004, U.S. Patent Pub. No. 2002/0076025
`to Liversidge
`(“Liversidge”)
`
` Based on my review of the prior art then available, my
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`2.
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`understanding of the relevant of the relevant requirements of patent law, and
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`my decades of experience in the field of computer science including
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`communications systems, it is my opinion that the Challenged Claims would
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`not have been obvious in light Tanigawa and Liversidge.
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`3.
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`I am being compensated for my time at my standard consulting
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`rate of $300 per hour. I am also being reimbursed for expenses that I incur
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`during the course of this work. Apart from that, I have no financial interest in
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`Uniloc. My compensation is not contingent upon the results of my study or
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`the substance of my opinions.
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`II. BACKGROUND AND QUALIFICATIONS
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`4.
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`In my over 25 years of computer industry experience I have had
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`extensive experience in communications systems, including data networks in
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`general that have messaging capabilities. I hold 42 industry certifications,
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`which include (among others) certifications networking. I have authored 24
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`computer science books, several of which deal with networking topics. I am
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`also the sole named inventor on thirteen patents.
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`5.
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`A more detailed description of my professional qualifications,
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`including a list of publications, teaching, and professional activities, is
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`contained in my curriculum vitae, a copy of which is attached hereto as
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`Exhibit A.
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`III. LEGAL STANARDS USED IN MY ANALYSIS
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`6.
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`Although I am not an attorney and I do not offer any legal
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`opinions in this proceeding, I have been informed of and relied on certain legal
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`principles in reaching the opinions set forth in this Declaration.
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`A.
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`Obviousness
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`7.
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`I understand that a patent claim is invalid if the differences
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`between the subject matter and the prior art are such that the subject matter as
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`a whole would have been obvious to a POSITA at the time of the alleged
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`invention. I further understand that an obviousness analysis involves a review
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`of the scope and content of the asserted prior art, the differences between the
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`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
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`and objective indicia of non-obviousness such as long-felt need, industry
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`praise for the invention, and skepticism of others in the field.
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`8.
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`I have been informed that if a single limitation of a claim is
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`absent from the cited prior art, the claim cannot be considered obvious.
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`9.
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`I have further been informed that it is improper to combine
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`references where the references teach away from a proposed combination; and
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`that the following factors are among those relevant in considering whether
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`prior art teaches away:
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`• whether a POSITA, upon reading the reference would be led in a
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`direction divergent from the path that was taken by the applicant;
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`• whether the prior art criticizes, discredits, or otherwise discourages
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`investigation into the claimed invention;
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`• whether a proposed combination would produce an inoperative
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`result; and
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`• whether a proposed combination or modification would render the
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`teachings of a reference unsatisfactory for its intended purpose.
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`10.
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`In addition, I have been informed that a proposed combination
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`that changes the basic principles under which the prior art was designed to
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`operate may fail to support a conclusion of obviousness.
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`B.
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`Priority Date
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`11. The ‘948 patent issued from U.S. Patent Application No.
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`11/019,655, which has a filing date of December 22, 2003 and claims priority
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`to Provisional Application No. 60/531,722 filed on December 22, 2004. The
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`‘948 Patent issued on September 28, 2010. For purposes of this declaration, I
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`have assumed the priority date for the ‘948 patent is December 22, 2003.
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`C.
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`Person of Ordinary Skill in the Art
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`12.
`
`I understand that a POSITA is a hypothetical person who is
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`presumed to have ordinary skill in the art as of the priority date. I understand
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`that factors that may be considered in determining the level of ordinary skill
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`in the art may include: (a) the type of problems encountered in the art; (b)
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`prior art solutions to those problems; (c) the rapidity with which innovations
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`are made; (d) the sophistication of the technology; and (e) the educational
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`level of active workers in the field.
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`13.
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`I have been asked to provide my opinion as to the qualifications
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`of the person of ordinary skill in the art to which the ‘948 patent pertains as
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`of December 22, 2003. In my opinion, a POSITA is someone who would have
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`possessed on the priority date a bachelor’s degree in electrical engineering or
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`computer science (or equivalent degree/experience) with at least two years of
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`experience in computer programming and software development, including
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`the development of software for communication with other computers over a
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`network.
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`14.
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`I understand that Stuart Lipoff, Google’s Declarant, opines that
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`a person of ordinary skill in the art is someone “someone knowledgeable in
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`collaboration applications and telecommunications services. That person
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`would have held at
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`least a Bachelor’s degree
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`in Computer or
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`Electrical Engineering, Computer Science, or the equivalent training, and that
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`person would have had approximately five years of experience working on
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`computer-based collaboration or telecommunications services. (Ex. 1002 at ¶
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`30).1 While my opinion appears to largely overlap with that offered by Mr.
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`Lipoff, I disagree with Mr. Lipoff’s definition to the extent “ordinary skill” is
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`interpreted to require more than 4 years of academic of experience working
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`on computer-based collaboration or telecommunications services. Such an
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`amount seems inordinate.
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`1 I note that Stuart Lipoff’s declaration largely repeats, nearly verbatim, the
`same arguments presented in the Petition.
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`15.
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`I understand that Mr. Klausner, Facebook’s Declarant in
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`IPR2017-01756 for U.S. Patent No. 8,571,194 (a patent related by family to
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`the ‘948 Patent) defines “a person of ordinary skill in the art as of December
`
`2003 possessed at least a bachelor’s degree in electrical engineering or
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`computer science (or equivalent degree or experience) with at least two years
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`of experience in computer programming and software development, including
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`the development of software for communication with other computers over a
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`network.” I find my definition of a POSITA indistinguishable from Mr.
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`Klausner’s definition.
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`16. Although my qualifications and experience exceed those of the
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`hypothetical person having ordinary skill in the art defined above, my analysis
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`and opinions regarding the ’948 Patent have been based on the perspective of
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`a person of ordinary skill in the art as of December 2003.
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`D. Broadest Reasonable Interpretation
`
`17.
`
`I have been informed that, for purposes of this Inter Partes
`
`Review (IPR), the terms in the claims of the ‘948 patent are to be given their
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`Broadest Reasonable Interpretation (BRI) in light of the specification and
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`prosecution history of ‘948 Patent as understood by a POSITA on the priority
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`date. I have used this standard throughout my analysis.
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`IV. OVERVIEW OF THE ‘948 PATENT
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`18.
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`In general, the ‘948 Patent discloses and claims various
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`embodiments for “initiating conference calls via an instant messaging system
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`to reduce the effort required to initiate and manage the call.” EX1001 at
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`Abstract.
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`19. The art at the time of the invention typically required all users
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`who wanted to join a conference call to dial in to a central number and enter
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`a passcode, which inhibited setting up spontaneous conference calls and is
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`subject to serious security risks. (Ex. 1001 at 2:40-58).
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`20. Other systems inefficiently required someone (such as the host)
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`to separately join each participant to the call, such as by taking the time to dial
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`or otherwise separately identify each conference participant. (Ex. 1001 at
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`2:49-3:20).
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`21. Preferred embodiments disclosed in the ‘948 Patent make novel
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`use of certain instant messaging (“IM”) technology to facilitate automatic
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`initiation of a conference call between participants of an IM session. (Ex. 1001
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`at Figure 4 and accompanying description).
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`22. According to one embodiment, “IM presence” features (e.g.,
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`monitored by the IM server) may be used to create a display indicating which
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`users are presently connected to the IM session. Such a display may, in certain
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`instances, advantageously “provide the conference call requester with
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`information on which to base a decision of whether or not to request a
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`conference call at a given time, based on prospective target ability.” (Ex. 1001
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`at 9:48-67).
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`23.
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`In the embodiment described with reference to Figure 4, for
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`example, each user connects to a network with a network accessible device
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`414 (also called NAD).
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`(Ex.1001, Fig. 4).
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`
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`24. These devices comprise computers, digital cellular telephones,
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`personal digital assistants (an earlier technology whose functionality has been
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`incorporated into today’s smartphones and tablets), and similar technologies.
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`(Ex. 1001 at 5:39-45).
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`25. The NADs communicate with each other through an instant
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`messaging service and via a conference call server. As shown in Figure 4, the
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`conference call server (represented in the illustrated embodiment as block
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`402) may include multiple subcomponents (e.g., a conference request
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`processor, an IM communications processor, a database 406 etc.). The
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`network over which the NADs communicate may be an Internet protocol (IP)
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`network (e.g., the Internet). (Ex. 1001 at 9:12-25).
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`26. Certain embodiments disclosed and claimed in the ‘948 Patent
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`allow a user to start a conference call from within an IM session using a single
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`request and in a manner which automatically includes each participant in that
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`session. The instant messaging service can send a request to the conference
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`call server to start a conference call. (Ex. 1001 at 6:22-59 and 7:27-44).
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`27. Upon receiving the request, the conference call server 402 may
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`establish the conference call directly by itself or indirectly using a separate
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`component or system, which can be provided by a third party (e.g., through
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`one of the bridges 410A or 410B). (Ex. 1001 at 8:11-40).
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`28. According to one embodiment, “IM presence” features (e.g.,
`
`monitored by the IM server) may be used to create a display indicating which
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`users are presently connected to the IM session. (Ex. 1001 at 9:48-67).
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`29. The conference call server 402 or one of the conference call
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`bridges 410A and 410B may contact each of the prospective targets, possibly
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`directly dialing their phones or, if their NAD has audio and video capability,
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`connecting through it using the one or more of the various communication
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`networks 408, including publicly switched telephone networks (PSTNs),
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`voice over Internet, or cellular telephone. If the conference call server is not
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`provided with a direct number to dial, it may instead inform the prospective
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`targets (e.g., through instant messaging) by giving them instructions to join.
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`(Ex. 1001 at 8:11-24).
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`V. CLAIM CONSTRUCTION
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`30.
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`I have been asked to provide my opinions regarding the
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`construction of certain terms used in the claims of the ‘948 Patent as would
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`be understood by a POSITA using the BRI.
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`A.
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`“generating a conference call request responsively to a
`single request by the conference call requester”
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`31.
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`In my opinion, a POSITA would understand from the context of
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`the claim language as a whole, when read in light of the rest of ‘948 Patent
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`and its prosecution history that the above phrase excludes scenarios where a
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`user determines whether attendees are available for a conference call and
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`selects such attendees for invitation.
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`32. My opinion for the above phrase is partially based on the
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`prosecution history where I note that the following was argued.
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`In certain embodiments of the present invention, and as is
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`shown in FIG. 3 for example, three parties, User A 302, User B
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`304, and User C 306, are involved 308 in an IM session, such as
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`a chat session which could occur during a shared application
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`session. User A 302, the conference call requester, could request
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`a conference call through the NAD in use by User A. The IM
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`service in communication with User Ars NAD could be
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`implemented to be aware of the on-going IM session, such that
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`the software would determine the list of conference call targets
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`from the list of parties presently in the IM session. Thus, User A
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`could request a conference call with one step, such as through
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`actuation of a "call now” button or icon associated with User As
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`IM service. See,, e.g., Specification, p. 16, ll. 12-22.
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`
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`
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`Consistently Claim 1 has been amended to recite:
`
`
`initiating a conference call
`for
`A method
`comprising the steps of:
`providing a conference call requester with a
`network access device, said network access device
`communicating via an instant messaging service,
`said instant messaging service being adapted to
`communicate conference call request information
`with a conference call server;
`establishing a communications connection
`from said network access device to the conference
`call server;
`presenting said conference call requester with
`a display showing a plurality of potential targets
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`then being connected to said instant messaging
`service and participating in a given instant
`messaging session with
`the conference call
`requester and with whom a conference call may be
`initiated;
`request
`call
`conference
`a
`generating
`responsively to a single request by the conference
`call requester, said conference call
`request
`identifying each of the potential targets for said
`conference call request;
`transmitting said conference call request
`from said network access device to said conference
`call server; and
`automatically establishing a conference call
`connection to said conference call requester, said
`conference call connection
`initiated by said
`conference call server, said conference call
`connection further being connected to each of the
`potential targets.
`
`Haims neither teaches nor even suggests such a methodology.
`
`Rather, Haims proposes that a user determine whether attendees
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`are available and select ones for invitation. See, e.g., pars. [0110]
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`and [0111]. In contrast, Claim 1 calls for the system to
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`automatically establish a conference call with a plurality of users
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`who are then participating in a common IM session with the
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`requester responsively to a single requester request.
`
`
`(Ex. 1018 at 124 of 353)( emphasis in the original).
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`33. The above phrasing pointing to claim language that excludes
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`scenarios where a user determines whether attendees are available for a
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`conference call and selects such attendees for invitation.
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`B.
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`The “conference call request” must identify “each of the
`indicated potential targets”
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`34. Among other limitations, each claim expressly requires that the
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`“conference call request” must identify “each of the indicated potential
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`targets” who are “connected to said instant messaging service and
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`participating in an instant messaging session with the conference call
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`requester and with whom a conference call may be initiated.”
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`35. Among other limitations, each claim expressly requires that the
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`“conference call request” must identify “each of the indicated potential
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`targets” who are “connected to said instant messaging service and
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`participating in an instant messaging session with the conference call
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`requester and with whom a conference call may be initiated.”
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`VI. GOOGLE’S CITED REFERENCES
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`36. Google alleges that claims 1-4, 6-8, 18, 21, and 22 are obvious
`
`over two references: EX1014, U.S. Patent No. 7,233,589 to Tanigawa
`
`(“Tanigawa”) and EX1004, U.S. Patent Pub. No. 2002/0076025 to Liversidge
`
`(“Liversidge”). I provide a brief analysis of each below.
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`A.
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`Tanigawa (Ex. 1014)
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`37. Tanigawa discloses a cross-device communication platform that
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`advantageously uses presence information to create so-called “buddy lists” to
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`enable communications for instant messages and voice chats. (Ex. 1014 at
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`Col. 11, lines 42-61; and Col. 11, lines 62-Col. 12, line 6).
`
`38. Figure 10 of Tanigawa shows a process for accessing an IM
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`server using such buddy lists. (Ex. 1014 at Col. 10, lines 27 through Col. 13,
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`line 36).
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`39.
`
`In Figure 10 of Tanigawa, three users are shown highlighted in
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`yellow: taro, hanako, and yoshi. Hanako and yoshi are associated with two
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`different devices, respectively labeled clients D and E for hanako (highlighted
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`in orange) and clients F and G for yoshi (highlighted in orange).
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`40. With reference to the portion of Figure 10 below, Taro logs into
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`the IM server and requests a buddy list. (Ex. 1004 at S1004; Col. 11, lines 35-
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`42).
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`
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`41. Upon being notified of buddies (S1005), taro selects buddies and
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`conference rooms settings for an IM session. (Ex. 1014 at S1006, S1008, and
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`S1010; Ex. 1014 at Col. 11, lines 43-61; Col. 12, lines 7-21; Col. 12, lines 38-
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`55; and Col. 13, lines 26-36). See, also, specifically Ex. 1014 at Col., 12, lines
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`5-6 (“The user ‘taro’ can determine a chat party based on the data.”).
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`42. The IM server “checks whether or not each of the IM clients in
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`the specified records 440 can participate in the text chat . . .” (Ex. 1014 at Col.
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`13, lines 44-47).
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`43. Then, “for each IM client determined as being able to participate
`
`therein, a participation inviting command including the address and the
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`nickname of the conference room and the nickname “taro” of the IM client,
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`who is inviting the participation.” (Ex. 1014 at Col. 13, lines 52-57).
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`44. Figure 11 of Tanigawa shows a process for accessing a “voice
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`chat” using such buddy lists. (Ex. 1014 at Col. 15, lines 10 through Col. 16,
`
`line 11).
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`45. Figure 11 shows the same three users: taro, hanako, and yoshi –
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`again highlighted in yellow. Just like Figure 10, taro requests and receives a
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`buddy list. (Ex. 1014 at S1014 and 1015; Ex. 1014 at Col. 15, lines 10-39).
`
`46.
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`Just like Figure 10, taro then selects which clients it would like
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`to voice chat with to request a voice chat. (Ex. 1014 at S1016; Ex. 1014 at
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`Col. 15, line 40 - Col. 16., line 16). See, also, specifically, Ex. 1014 at Col 15,
`
`lines 63-65 (“[A]n instruction for requesting to voice-chat with the IM clients
`
`whose account names are “client E” and the “client G”, respectively, is input
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`to the input device 44.”). In particular, taro can choose to select client E and
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`client G of Figure 11. (Ex. 1014 at Col 15, lines 63-65).
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`B.
`
`Liversidge (Ex. 1004)
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`47. Liversidge discloses a system for enabling users to communicate
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`across packet-switched networks (PSTNs) and circuit switched networks. (Ex.
`
`1004 at Par. 0071-0072).
`
`48. FIG. 3 of Liversidge shows an example environment where a
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`user denoted by 58a, 58b, 58c has certain PSTN-based devices 54a, 54b, and
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`54c (e.g., denoted as phones) that communicate through a public switched
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`telephone network (PSTN) and packet based devices 58a, 58b, and 58c (e.g.,
`
`denoted as computers or a smart phone ) that communicate with a packet
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`network 46. (Ex. 1004 at Par. 0071).
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`49.
`
`In order to “initiate and control communications involving the
`
`PSTN-based communications devices 54, a virtual switching point
`
`(VSP) 60 of the CCS network 53 is adapted to interact with the VTE
`
`server 40 via, for example, a suitable connection to the packet network 46.”
`
`(Ex. 1004 at Par. 0071).
`
`50.
`
`In the specific context cited by petitioners, users 58a, 58b, and
`
`58c may wish “to terminate the instant messaging session and continue the
`
`conversation using an alternative type of communications, such as, for
`
`example, voice communications. Consequently, the VTE client application 44
`
`provides an appropriate icon or button (a ConvertSession button) which
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`enables the team member to launch a ConvertSession message (at 376) to the
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`collaboration services suite 2 to facilitate conversion of the communications
`
`session
`
`to
`
`the desired communications
`
`type.” (Ex. 1004 at Par.
`
`0126)(Emphasis added).
`
`51. Figures 32, 32a, and 32b (and paragraphs 0175-0181), describe
`
`such a process of terminating the IM session and starting an alternative voice
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`session. Specifically, with reference to the top portion of Figure 32 below
`
`and the terminating, after a VTE Svr receives a ConvertSession message, the
`
`Svr closes the IM Session. (Ex. 1004 at 1140; Ex. 1004 at Par. 0176).
`
`
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`52. VTE Svr also sends status event messages to the respective
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`device indicating the IM session has been closed. (Ex. 1004 at 1144, 1148,
`
`and 1150; Ex. 1004 at Par. 0176.
`
`53. With respecting to starting an alternative voice session, the
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`process continues by the VTE svr handing off control to a VSP, which contact
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`each device (e.g., 54a, 54b, and 54c) one by-one through respective enhanced
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`integrated services digital network user part (E-ISUP) voice trunks, and
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`service switching points (SSP). Each device (e.g., 54) upon answering causes
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`a respective second end of the E-ISUP to dial into the conference bridge and
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`waits for another participant to join, which follows the same process. (Ex.
`
`1004 at Par. 176-181).
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`54. The lower portion of Figure 32 describes this process with the
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`VSP.
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`55. Specifically, the VSP causes SSP (X) (through an E-ISUP (A))
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`to “ring” a first PSTN corresponding to Client A. (Ex. 1004 at 1160; Ex. 1004
`
`
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`at Par. 177).
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`56. The first PSTN corresponding to the Client A answers the ring
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`from the SSP (X), which causes a second end of the E-IUSP to reach out to
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`the VSP and ultimately the conference bridge through SSP(D). (Ex. 1004 at
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`1166, 1174; Ex. 1004 at Par. 177).
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`57. Once everything is completely set-up with the first PSTN
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`corresponding to Client A, a welcome message is played. (Ex. 1004 at 1192;
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`Ex. 1004 at Par. 178).
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`58. The process is repeated for each respective PSTN as shown in
`
`FIGURES 32B and 32C. Once a second PSTN is connected, a join as between
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`connection is performed. (Ex. 1004 at 1230; Ex. 1004 at Par. 178). When a
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`third PSTN is connect, a similar joint process is performed. (Ex. 1004 at 1230;
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`Ex. 1004 at Par. 181).
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`VII. VALIDITY ANALYSIS
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`59.
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`I have review the claims in light of both the Tanigawa and
`
`Liversidge and believe they do not disclose the claim features.
`
`A.
`
`The Proposed Combination Fails to Disclose and Teaches
`Away From “generating a conference call request
`responsively to a single request by the conference call
`requester, said conference call request identifying each of
`the potential targets for said conference call request”
`
`60. As I opined above, the broadest reasonable interpretation of this
`
`phrase when read in light of the specification and prosecution history excludes
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`21
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`scenarios where a user determines whether attendees are available for a
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`conference call and selects such attendees for invitation. Tanigawa does teach
`
`such a limitation and rather teaches the opposite. Specifically, Tanigawa
`
`discloses a selection of attendees for invitation as opposed to excluding
`
`selections. (Ex. 1014 at S1016; Ex. 1014 at Col. 15, line 40 - Col. 16., line
`
`16). See, also, specifically, Col 15, lines 63-65 (“[A]n instruction for
`
`requesting to voice-chat with the IM clients whose account names are “client
`
`E” and the “client G”, respectively, is input to the input device 44.”).
`
`61.
`
`In particular, taro can choose to select client E and client G of
`
`Figure 11. (Ex. 1014 at Col 15, lines 63-65).
`
`62.
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`In my opinion, because Tanigawa discloses the opposite of and
`
`teaches away from the claim feature.
`
`63.
`
`I note that the petitioner alternatively argues that to the extent
`
`Tanigawa fails to disclose the above claim feature, Liversidge discloses it
`
`instead. In my opinion, this is incorrect and ignores teachings of the Liversidge
`
`reference.
`
`64. The claim feature in its latter part recites “said conference call
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`request identifying each of the potential targets for said conference call
`
`request.” In a separate IPR, the Petitioner argued the following concerning
`
`Liversidge:
`
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`22
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`The ConvertSession request does not identify the at least one other
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`party. (Ex. 1002 ¶ 138.) Instead, VTE server 40 uses the session ID,
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`which is associated with the IM session, to “determine . . . the
`
`participants,” i.e., the at least one other party, information which is not
`
`included in the ConvertSession request. (Ex. 1004 ¶ [0176]; id. ¶¶
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`[0075], [0117]-[0123].)
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`IPR2017-01683 Petition at page 59. This statement confirms that the claimed
`
`“call request identifying each of the potential targets for said conference
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`call request” because Liversidge’s request “does not identify the at least
`
`one other party.”
`
`B.
`
`The Petitioner Improperly Picks and Chooses Teaching of
`Reference to the Exclusion of the Teachings of the
`References as a Whole
`
`65.
`
`I understand that it impermissible within the framework of
`
`obviousness analysis to pick and choose from any one reference only so much
`
`of it as will support a given position to the exclusion of other parts necessary
`
`to the full appreciation of what such reference fairly suggests to one skilled in
`
`the art.
`
`66. With this understanding, in my opinion Petitioners in their
`
`attempted combination disregard the respective teachings of Tanigawa and
`
`Liversidge. And, in my opinion, given this different teaching of these
`
`
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`
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`references, a person having ordinary in skill in the art would not combine
`
`Tanigawa and Liversidge.
`
`67. Tanigawa and Liversidge as a whole teach different approaches
`
`and systems that are incompatible with one another. As discussed infra,
`
`Tanigawa discloses
`
`the use of buddy
`
`lists for enabling both IM
`
`communications and chat communications. Liversidge teaches away from
`
`buddy lists (and corresponding selections) in favor of an ability to connect to
`
`traditional PSTN associated with IM clients using a lookup feature.
`
`68. Additionally, unlike Tanigawa, which includes a selection of
`
`participants desired for a call in alleged call requests, Liversidge’s alleged call
`
`requests includes no such participants – as acknowledged by Petitioner in
`
`another IPR petition. Rather, in Liversidge – as opposed to a selection and
`
`identification of participants – a lookup is conducted to determine, for
`
`example, PSTN devices that might be associated with participants to a call.
`
`C.
`
`The Petitioner’s Propose Combination Renders Tanigawa
`Inoperable for its Intended Purpose
`
`69.
`
`I understand that if a combination renders prior art inoperable for
`
`its intended purpose, such may fail to support a conclusion of obviousness.
`
`Such a scenario is applicable here.
`
`70.
`
` Here, the buddy list feature in Tanigawa is relied upon to
`
`achieve the object of Tanigawa’s invention and supply information about
`
`
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`24
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`
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`other parties from, for example, through the “presence management server,”
`
`which supplies the buddy list. (Ex. 1014 at Col. 2, lines 13-21). Stripping this
`
`supplying of information via the “buddy list” strips such a feature satisfying
`
`the object of invention.
`
`VIII. CONCLUSION
`
`71. For the reasons set forth herein, Claims 1-4, 6-8, 18, 21, and 22
`
`of the ‘948 Patent are not rendered obvious by in light of the references and
`
`testimony cited in the Petition.
`
`72.
`
`I understand that, in signing this Declaration, the Declaration will
`
`be used as evidence in an inter partes review before the Patent Trial and
`
`Appeal Board concerning the validity of the ‘948 patent. I understand that I
`
`may be subject to cross-examination in the proceeding. I will appear for such
`
`cross-examination during the time allotted for cross-examination and at a time
`
`and location convenient for myself and the parties.
`
`73.
`
`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.
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`
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`Dated: October 19, 2017
`
`
`______________________________
`
`
`William C. Easttom II (Chuck)
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`26
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`EXHIBIT A
`EXHIBIT A
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`27
`27
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