UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`U.S. Patent No. 7,969,925
`Filing Date: July 8, 2010
`Issue Date: June 28, 2011
`Title: Peer-to-Peer Mobile Data Transfer Method and Device
`
`Inter Partes Review No.: IPR2019-00702
`
`DECLARATION OF DR. HENRY H. HOUH
`UNDER 35 U.S.C. § 1.68
`
`Apple Inc.
`Ex. 1002 - Page 1
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`Introduction ..................................................................................................... 1
`I.
`Background and Qualifications ...................................................................... 2
`II.
`III. Materials Considered for this Declaration ....................................................10
`IV. Understanding of the Law ............................................................................10
`V.
`Summary of Opinions ...................................................................................12
`VI. Overview of the 925 Patent ..........................................................................13
`A.
`Summary of the 925 Patent ................................................................13
`B.
`Claims of the 925 Patent ....................................................................14
`C.
`Person of Ordinary Skill in the Art ....................................................16
`D.
`Claim Construction Under 37 C.F.R. § 42.104(b)(3) ........................25
`E.
`Prior Art Publications .........................................................................28
`VII. Ground 1: The Combination of Alos and RFC793 Renders Obvious
`Claims 1, 3-8, 10-15 and 17-20 ....................................................................32
`A.
`Alos Overview ....................................................................................32
`B.
`RFC793 Overview ..............................................................................35
`C.
`Rationale for Combining Alos and RFC793 ......................................35
`D.
`Detailed Claim Analysis .....................................................................39
`VIII. Ground 2: The Combination of Alos, RFC793, WMA and the SMS
`Specification Renders Claims 2, 9 and 16 Obvious .....................................45
`A.
`SMS Specification Overview .............................................................45
`B. WMA Overview .................................................................................46
`C.
`Rationale for Combining Alos, RFC793, the SMS Specification
`and WMA ...........................................................................................46
`D.
`Detailed Claim Analysis .....................................................................48
`IX. Ground 3: The Combination of Cordenier and RFC793 Renders
`Obvious Claims 1, 3-8, 10-15 and 17-20 .....................................................51
`A.
`Cordenier Overview ...........................................................................51
`B.
`Rationale for Combining Cordenier and RFC793 .............................53
`
`i
`
`Apple Inc.
`Ex. 1002 - Page 2
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`

`

`TABLE OF CONTENTS
`(continued)
`
`Page
`
`X.
`
`C.
`Detailed Claim Analysis .....................................................................55
`Ground 4: The Combination of Cordenier, RFC793 and Dorenbosch
`Renders Claims 2, 9 and 16 Obvious ...........................................................62
`A.
`Overview of Dorenbosch ...................................................................62
`B.
`Rationale for Combining Cordenier, RFC793 and Dorenbosch ........62
`C.
`Detailed Claim Analysis .....................................................................63
`XI. Ground 5: The Combination of Lee, RFC793, and the SMS
`Specification Renders Obvious Claims 1, 3-8, 10-15 and 17-20 .................66
`A.
`Lee Overview .....................................................................................66
`B.
`Rationale for Combining Lee, RFC793, and the SMS
`Specification .......................................................................................68
`C.
`Detailed Claim Analysis .....................................................................70
`XII. Ground 6: The Combination of Lee, RFC793, the SMS Specification
`and WMA Renders Claims 2, 9 and 16 Obvious .........................................76
`A.
`Rationale for Combining Lee, RFC793, the SMS Specification
`and WMA ...........................................................................................76
`B.
`Detailed Claim Analysis .....................................................................77
`XIII. Secondary Considerations ............................................................................80
`XIV. Conclusion ....................................................................................................80
`
`ii
`
`Apple Inc.
`Ex. 1002 - Page 3
`
`

`

`Exhibit No.
`1001
`1002
`1003
`1004
`1005
`
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`1012
`1013
`
`1014
`
`EXHIBIT LIST
`
`Description
`U.S. Patent No. 7,969,925 to Lin (“925 patent”)
`Declaration of Dr. Henry Houh (this declaration)
`File History of U.S. Pat. No. 7,969,925 to Lin
`File History of U.S. Pat. No. 7,961,663 to Lin
`Certified Translation and Original of European Pat. App. Pub. EP
`1 009 153 A1 (“Alos”)
`U.S. Pat. No. 6,847,632 (“Lee”)
`European Pat. App. Pub. EP 1 385 323 A1 (“Cordenier”)
`Complaint for Patent Infringement (“Uniloc Complaint”)
`Declaration of Sandy Ginoza for IETF RFC 1122: Requirements
`for Internet Hosts - Communication Layers with the exhibit
`RFC 1122, “Requirements for Internet Hosts - Communication
`Layers” (“RFC1122”)
`Declaration of Sandy Ginoza for IETF RFC 793: Transmission
`Control Protocol with the exhibit, RFC 793, “Transmission
`Control Protocol” (“RFC793”)
`U.S. Pat. App. Pub. No. 2003/0217174 (“Dorenbosch”)
`U.S. Patent No. 5,163,131 (“Row”)
`W. Richard Stevens, “Unix Network Programming,” Chapters 1,
`“Introduction”; 4, “A Network Primer”; 5, “Communication
`Protocols”; and, 6, “Berkeley Sockets”
`Information Disclose Statement Under 37 C.F.R. §§ 1.97 and 1.98
`that includes “Universal Mobile Telecommunications System
`(UMTS); Technical realization of the Short Message Service
`(SMS) (3G TS 23.040 version 3.5.0 Release 1999)” and was
`submitted August 15, 2002, concurrently with U.S. Pat. App.
`10/218,580, which application was published on February 27,
`2003, as U.S. Pat. App. Pub. 2003/0040300 A1 (“SMS
`Specification”)
`
`i
`
`Apple Inc.
`Ex. 1002 - Page 4
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`

`

`Exhibit No.
`1015
`
`1016
`1017
`1018
`
`1019
`1020
`1021
`
`1022
`
`1023
`1024
`
`1025
`1026
`
`1027
`
`Description
`W. Richard Stevens, TCP/IP ILLUSTRATED, VOLUME 2: THE
`PROTOCOLS (1994)
`U.S. Pat. No. 8,018,877 to Lin
`U.S. Pat. Pub. No. 2005/0278448 to Mazor (“Mazor”)
`Declaration of Harold Ogle Regarding JSR-000120, “Wireless
`Messaging API (WMA) for JavaTM 2 Micro Edition Version
`1.0” with the exhibit JSR 120, “Wireless Messaging API
`(WMA) for Java™ 2 Micro Edition Version 1.0” (“WMA”)
`IBM Dictionary of Computing, 10th Ed. (1993)
`Newton’s Telecom Dictionary, 11th Ed. (1996)
`Declaration of Sandy Ginoza for IETF RFC 2543: SIP: Session
`Initiation Protocol with the exhibit RFC 2543, “SIP: Session
`Initiation Protocol” (“RFC2543”)
`Declaration of Sandy Ginoza for IETF RFC 791: Internet
`Protocol with the exhibit RFC 791, “Internet Protocol”
`U.S. Pat. Pub. No. 2003/0040300
`Declaration of Sandy Ginoza for IETF RFC 2026: The Internet
`Standards Process – Revision 3 with the exhibit, RFC 2026:
`“The Internet Standards Process – Revision 3” (“Internet
`Standards Process”)
`U.S. Pat. No. 7,181,231
`Declaration of Mr. Craig Bishop regarding ETSI TS 123 040
`V3.5.0, “Universal Mobile Telecommunications System
`(UMTS); Technical Realization of the Short Message Service
`(SMS) (3GPP TS 23.040 version 3.50 Release 1999) with
`appendices A-D
`Declaration of Sandy Ginoza for IETF RFC 768: User Datagram
`Protocol with the exhibit, RFC768: User Datagram Protocol
`
`ii
`
`Apple Inc.
`Ex. 1002 - Page 5
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`

`

`I, Dr. Henry H. Houh, do hereby declare:
`
`I.
`
`INTRODUCTION
`1.
`I have been retained as an expert witness on behalf of petitioner Apple
`
`Inc. (“Apple”) for the above-captioned Petition for Inter Partes Review (“IPR”) of
`
`U.S. Patent No. 7,969,925 (“925 patent”). I am being compensated for my time in
`
`connection with this IPR at my standard consulting rate of $620 per hour. My
`
`compensation is in no way dependent on the outcome of this matter.
`
`2.
`
`I have been asked to provide my opinions regarding whether claims
`
`1 20 (“the challenged claims”) of the 925 patent are invalid as anticipated or
`
`obvious. In preparing this declaration, I have reviewed the 925 patent, the file
`
`history of the 925 patent, and numerous prior art references from the time of the
`
`alleged invention.
`
`3.
`
`I have been advised and it is my understanding that patent claims in
`
`an IPR are interpreted using the same claim construction standard that is used to
`
`construe the claim in a civil action in federal district court.
`
`4.
`
`In forming the opinions expressed in this declaration, I relied upon my
`
`education and experience in the relevant field of the art, and have considered the
`
`viewpoint of a person having ordinary skill in the relevant art, as of 2004.
`
`1
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`Apple Inc.
`Ex. 1002 - Page 6
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`

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`II.
`
`BACKGROUND AND QUALIFICATIONS
`5.
`My background and expertise that qualify me as an expert in the
`
`technical issues in this case are as follows.
`
`6.
`
`As indicated on my Curriculum Vitae attached as Exhibit A, I
`
`received a Ph.D. in Electrical Engineering and Computer Science from the
`
`Massachusetts Institute of Technology (“MIT”) in 1998. I also received a Master
`
`of Science degree in Electrical Engineering and Computer Science in 1991, a
`
`Bachelor of Science Degree in Electrical Engineering and Computer Science in
`
`1989, and a Bachelor of Science Degree in Physics in 1990, all from MIT.
`
`7.
`
`During my college studies, I focused on communications and data
`
`networking. I took specialized courses including graduate courses in
`
`telecommunications networks, optical communications, and data networking. I,
`
`along with other graduate students in a networking research group, maintained
`
`both the computer workstations and the networking devices in the research group.
`
`8.
`
`I have worked in data networking and distributed multimedia systems
`
`on several occasions. As part of my doctoral research at MIT from 1991-1998, I
`
`worked as a research assistant in the Telemedia Network Systems (“TNS”) group
`
`at the Laboratory for Computer Science. The TNS group built a high-speed gigabit
`
`ATM network and applications which ran over the network, such as remote video
`
`capture (including audio), processing and display on computer terminals. In
`
`2
`
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`Ex. 1002 - Page 7
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`addition to helping design the core network components (such as the ATM switch),
`
`designing and building the high-speed ATM links, and designing and writing the
`
`device drivers for the interface cards, I also set up the group’s web server, which at
`
`the time was one of the first several hundred web servers in existence. Our high-
`
`speed data network carried multimedia data including video and audio data within
`
`ATM cells.
`
`9.
`
`Like all ATM networks, interconnection of various endpoints in our
`
`ATM system required the setup of end-to-end virtual circuits which required, for
`
`each ATM switch in the connection path, the switch’s header remapping tables to
`
`be configured for each virtual circuit required. I developed and implemented our
`
`system’s protocol of controlling the content of these tables and the overall circuit
`
`setup.
`
`10.
`
`The TNS group was the first group to initiate a remote video display
`
`over the World Wide Web. Vice President Al Gore visited our group in 1996 and
`
`received a demonstration of—and remotely drove—a radio-controlled toy car with
`
`a wireless video camera mounted on it; the video was encoded by TNS-designed
`
`hardware, streamed over the TNS-designed network and displayed using TNS-
`
`designed software.
`
`11.
`
`I authored or co-authored twelve papers and conference presentations
`
`on our group’s research. I also co-edited the final report of the gigabit networking
`3
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`research effort with Professor David Tennenhouse and Senior Research Scientist
`
`David Clark. David Clark is generally considered to be one of the fathers of the
`
`Internet Protocol and served as Chief Protocol Architect for the Internet. With its
`
`focus on networking, the group, including myself, set up and maintained the
`
`network and computer systems. These systems included the networking on the
`
`workstations and desktops, the distributed file system, desktops and workstations,
`
`setting up and maintaining the distributed file system (Network File System) and
`
`the authentication system (Network Information Service, formerly known as
`
`Yellow Pages). Our system allowed users to log into any of the group’s
`
`workstations using their username/password, which allowed that all of the user’s
`
`files would be virtually mounted on that workstation as a networked home
`
`directory.
`
`12.
`
`I defended and submitted my Ph.D. thesis, titled “Designing Networks
`
`for Tomorrow’s Traffic,” in January 1998. As part of my thesis research, I
`
`analyzed local-area and wide-area flows to show a more efficient method for
`
`routing packets in a network, based on traffic patterns at the time. My thesis also
`
`addressed real-time streamed audio and video. The network traffic that I analyzed
`
`was IP protocol traffic, including UDP and TCP.
`
`4
`
`Apple Inc.
`Ex. 1002 - Page 9
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`

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`13.
`
`I have been involved in Voice over Internet Protocol (“VoIP”)
`
`technologies since 1997 and have specific experience in designing and testing
`
`VoIP networks.
`
`14.
`
`From 1997 to 1999, I worked at NBX Corporation, which was
`
`acquired by 3Com Corporation in 1999. During this time, I was a Senior Scientist
`
`and Engineer working in IP Telephony. NBX delivered the world’s first fully
`
`featured business telephone system to run over a data network, the NBX100. NBX
`
`was one of the first business phone systems to be configurable via a web interface.
`
`Users and administrators had access to varying levels of configuration for the
`
`phone system.
`
`15. As part of my work at NBX, I designed the core audio reconstruction
`
`algorithms for the telephones which de-packetized the voice data and reconstructed
`
`the audio. In addition, I designed the voice data packet transmission algorithms. I
`
`created a system to capture and analyze network packets sent by devices in the
`
`NBX system for aid in testing and debugging. I also designed and validated the
`
`core packet transport protocol used by the phone system. In addition, I designed
`
`and oversaw the development of the underlying transport protocol used by the
`
`NBX100 phone system for reliable packet transport. That transport protocol is still
`
`used by the NBX100 system and its successors and is estimated to be used
`
`hundreds of millions of times daily. I wrote NBX’s first demonstration IP software
`5
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`stack, which added the capability for utilizing the NBX100 phone system on an IP
`
`network. NBX first demonstrated a phone in the NBX100 system working over
`
`the Internet in 1998 at a trade show in Las Vegas. I was later the lead architect in
`
`designing NBX’s next-generation highly scalable system, and, after NBX was
`
`acquired by 3Com, I did some work with 3Com’s cable equipment division,
`
`including demonstrating a working NBX IP phone system over 3Com’s cable
`
`equipment infrastructure using an early version of DOCSIS at a trade show in
`
`1999. The NBX100 was the market’s leading business phone system to run on a
`
`data network for several years following its introduction. During that time, I
`
`became more familiar with the various standards relevant to Internet telephony as
`
`well as the problems which designers of commercial telephony operations were
`
`faced with in implementing VoIP.
`
`16.
`
`I, along with two of NBX’s founders, was awarded U.S. Patent No.
`
`6,697,963 titled “Telecommunication method for ensuring on-time delivery of
`
`packets containing time-sensitive data,” for some of the work we did while at
`
`NBX.
`
`17. After NBX, I worked at Teradyne, a test tool company primarily
`
`focused on semiconductors. Teradyne had recently acquired Hammer, a company
`
`that specialized in load and functional testing for telecommunications systems.
`
`The Hammer product is well known as a telecom test tool. Teradyne spun out
`6
`
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`Hammer and several other internal divisions into an independent company called
`
`Empirix. I became Chief Technologist of the Hammer division of Empirix.
`
`Empirix was a leader in VoIP network testing and monitoring.
`
`18. At Empirix, I laid out a new multi-year product vision for data
`
`network testing, secured internal funding for the effort, and led a team to deliver a
`
`new technology platform to the market in February 2001. This new product,
`
`PacketSphere, initially emulated network behavior so that wide-area VoIP
`
`connections could be tested in a lab. A later release allowed PacketSphere to
`
`generate high volumes of VoIP calls, including media streams, and to monitor the
`
`quality of VoIP voice streams. Later, the core technology was added to other
`
`Empirix products such as Empirix’s Hammer XMS to monitor thousands of VoIP
`
`media streams in real time to determine their quality. PacketSphere was Empirix’s
`
`most successful new platform introduction. Companies purchased the
`
`PacketSphere product to emulate an Internet Protocol network to see the effects of
`
`deploying their product on the Internet prior to launch. PacketSphere received
`
`several industry awards.
`
`19. During my time at Empirix, I presented lectures on VoIP and data
`
`network testing to companies including Lucent Labs (formerly AT&T Bell Labs).
`
`I was also invited to present several guest lectures in a software engineering course
`
`at MIT. Since then, I have also participated twice as a unit lecturer (two weeks) in
`7
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`an experimental course that was taught by an Institute Professor (the highest award
`
`that a MIT Professor can achieve) and sponsored by the Chairman of the MIT
`
`Corporation (MIT’s board of trustees).
`
`20.
`
`From 2004 to 2008, I was employed by BBN Technologies Corp., a
`
`technology research and development company located in Cambridge,
`
`Massachusetts. BBN Technologies is a world-renowned company with expertise
`
`in acoustics, speech recognition, and communications technology. BBN
`
`Technologies staff have pioneered many internetworking technologies and Internet
`
`applications, and built some of the world’s largest government and commercial
`
`data networks.
`
`21. My duties and responsibilities at BBN Technologies generally
`
`included commercialization of the technologies developed by BBN Technologies,
`
`which included spinning off companies and growing commercial businesses in-
`
`house. More particularly, I was involved in utilizing the award-winning AVOKE
`
`STX speech recognition technology to create the public audio/video search engine
`
`EveryZing (formerly known as PodZinger) which was spun out into a stand-alone
`
`company now known as RAMP, Inc. PodZinger won the 2006 MITX Technology
`
`Award for best Web 2.0 Application and was also named the 2006 Forbes Favorite
`
`Video & Audio Search Engine, beating out Google, Yahoo, and other companies.
`
`After managing the creation of the initial prototype system, PodZinger built out a
`8
`
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`full streaming audio and video search solution when I was the Vice President of
`
`Operations and Technology there. I was also involved in the Boomerang Mobile
`
`Shooter Detection project as the Vice President of Engineering for the program.
`
`The Boomerang system was deployed to Iraq and Afghanistan, and was credited
`
`with saving many lives.
`
`22.
`
`From 1989 to 1990, I worked at AT&T Bell Laboratories on optical
`
`computers. This work generated six peer-reviewed papers, and multiple U.S. and
`
`European patent applications in which I was named as a co-author or inventor. I
`
`also interned at AT&T Bell Laboratories in 1987 and 1988. Additional relevant
`
`experience in the field of optical computers is listed in my Curriculum Vitae.
`
`23.
`
`I am a named inventor on several patents and published patent
`
`applications that are related to the VoIP technology including: U.S. Patent No.
`
`6,967,963, entitled “Telecommunication Method for Ensuring On-time Delivery of
`
`Packets Containing Time- Sensitive Data”; U.S. Patent Application Publication
`
`No. 20020015387, entitled “Voice Traffic Packet Capture and Analysis Tool for a
`
`Data Network”; U.S. Patent Application Publication No. 20020016708, entitled
`
`“Method and Apparatus for Utilizing a Network Processor as Part of a Test
`
`System”; U.S. Patent Application Publication No. 20020016937, entitled “Method
`
`and Apparatus for Utilizing a Network Processor as Part of a Test System”; and
`
`9
`
`Apple Inc.
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`U.S. Patent No. 7,590,542, entitled “Method of Generating Test Scripts Using a
`
`Voice-Capable Markup Language.”
`
`III. MATERIALS CONSIDERED FOR THIS DECLARATION
`24.
`In addition to my general knowledge, education, and experience, and
`
`the prior art publications I listed above, I considered the materials listed in the
`
`Exhibit List above in forming my opinions.
`
`IV. UNDERSTANDING OF THE LAW
`25.
`In expressing my opinions and considering the subject matter of the
`
`claims of the 925 patent, I am relying upon certain basic legal principles that Apple
`
`counsel has explained to me.
`
`26.
`
`I understand from Apple counsel that a patent claim is invalid as
`
`anticipated under 35 U.S.C. § 102 if each element of that claim is present either
`
`expressly or inherently in a single prior art reference. I understand from Apple
`
`counsel, to be an inherent disclosure, the prior art reference must necessarily
`
`disclose the limitation, and the fact that the reference might possibly practice or
`
`contain a claimed limitation is insufficient to establish that the reference inherently
`
`teaches the limitation.
`
`27.
`
`I understand from Apple counsel that a claimed invention is
`
`unpatentable under 35 U.S.C. § 103, if the differences between the invention and
`
`the prior art are such that the subject matter as a whole would have been obvious at
`
`10
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`Apple Inc.
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`

`the time the invention was made to a person having ordinary skill in the art to
`
`which the subject matter pertains. I understand from Apple counsel that the
`
`obviousness analysis takes into account factual inquiries including the level of
`
`ordinary skill in the art, the scope and content of the prior art, and the differences
`
`between the prior art and the claimed subject matter.
`
`28.
`
`I understand from Apple counsel that the Supreme Court has
`
`recognized several rationales for combining references or modifying a reference to
`
`show obviousness of claimed subject matter. These rationales include the
`
`following: (a) combining prior art elements according to known methods to yield
`
`predictable results; (b) simple substitution of one known element for another to
`
`obtain predictable results; (c) use of a known technique to improve a similar device
`
`(method, or product) in the same way; (d) applying a known technique to a known
`
`device (method, or product) ready for improvement to yield predictable results; (e)
`
`choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success; and, (f) some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`29.
`
`Finally, I understand from Apple counsel that secondary factors may
`
`be considered in an obviousness inquiry. I understand from Apple counsel that
`11
`
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`

`these are also referred to as secondary considerations and may include evidence of
`
`long-felt need, failure of others, skepticism of those of skill in the art, licensing,
`
`commercial success, recognition in the industry, acquiescence, evidence of
`
`copying, and unexpected results.
`
`30. Moreover, I understand from Apple counsel that for objective
`
`evidence of nonobviousness to be accorded substantial weight, the proponent of
`
`such evidence must establish a “nexus” between the evidence and the merits of the
`
`patent at issue. Specifically, I understand from Apple counsel that the secondary
`
`consideration must be tied to the merits of the claimed invention of the patent at
`
`issue. I understand from Apple counsel that where the alleged secondary
`
`consideration results from something other than what is both claimed and novel,
`
`there is no nexus to the merits of the claimed invention and the secondary
`
`considerations are thus not indicative of nonobviousness. I understand from Apple
`
`counsel that it is the patentee’s burden to come forward with evidence that a nexus
`
`exists.
`
`V.
`
`SUMMARY OF OPINIONS
`31. Based on my review of the 925 patent and its prosecution history, the
`
`other materials I have considered, and my knowledge and experience, my opinions
`
`are as follows:
`
`12
`
`Apple Inc.
`Ex. 1002 - Page 17
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`

`

` Claims 1, 3-8, 10-15, 17-20 are obvious over the combination of Alos
`
`and RFC793;
`
` Claims 2, 9 and 16 are obvious over the combination of Alos,
`
`RFC793, SMS Specification and WMA;
`
` Claims 1, 3-8, 10-15, 17-20 are obvious over the combination of
`
`Cordenier and RFC 793;
`
` Claims 2, 9 and 16 are obvious over the combination of Cordenier,
`
`RFC793 and Dorenbosch;
`
` Claims 1, 3-8, 10-15, 17-20 are obvious over the combination of Lee,
`
`RFC793 and SMS Specification; and,
`
` Ground 6: Claims 2, 9 and 16 are obvious over the combination of
`
`Lee, RFC793, SMS Specification and WMA.
`
`VI. OVERVIEW OF THE 925 PATENT
`A.
`Summary of the 925 Patent
`32.
`The 925 patent describes a technique for transferring data between
`
`mobile devices that does not require a server. Ex. 1001 at 1:61-67. With this
`
`technique, a first mobile device sends an SMS invitation message that includes its
`
`IP address to a second mobile device, and the second mobile device responds by
`
`initiating a TCP/IP connection to the first mobile device’s IP address. Fig. 2, Ex.
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`1001 at 4:23-35.
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`Claims of the 925 Patent
`B.
`33. Claim 1 tracks the disclosed technique by claiming (1.pre) a method
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`of establishing a data connection comprising (1.a) opening a listening software
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`port, (1.b) transmitting an invitation via page-mode messaging (e.g., SMS), (1.c)
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`receiving a response at the software port, and (1.d) establishing a peer-to-peer data
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`transfer session. These steps are highlighted in annotated Figure 2 below.
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`34. Challenged claim 2 recites that the initiating mobile device receives
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`similar invitations from “another” mobile device through the page-mode
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`messaging service and transmits a response thereto. Challenged claim 3 specifies
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`the type of address (IP), claims 4-5 specify the type of page-mode messaging
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`service (SMS and PIN-to-PIN, respectively), claim 6 specifies the type of unique
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`ID used by the service (telephone number), and claim 7 specifies the type of data
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`session (TCP). Each of the groups of challenged claims 8-14 and claims 15-20
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`parallel claims 1-7.
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`Person of Ordinary Skill in the Art
`C.
`35. A person of ordinary skill in the art at the time of the alleged
`
`invention of the 925 patent (a “POSITA”) would have had a Bachelor’s degree in
`
`computer science or a comparable field of study, plus approximately two to three
`
`years of professional experience with cellular phone and IP networks, or other
`
`relevant industry experience. Additional graduate education could substitute for
`
`professional experience and significant experience in the field could substitute for
`
`formal education. The knowledge of a POSITA would have included the
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`following subject matter.
`
`Networking and the Internet
`1.
`36. A lowercase-I “internet” or “internetwork” is a network of networks
`
`that all use the same protocol suite to communicate. Ex. 1015 at 7; see also Ex.
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`1013 at 13, 12-14. “The goal of internetworking is to hide the details of what
`
`might be different physical networks, so that the internet functions as a coordinated
`
`unit.” Ex. 1013 at 13; Ex. 1015 at 8.
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`37.
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`The uppercase-I “Internet” is an internet or internetwork that uses the
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`TCP/IP protocol suite. Ex. 1009 at 10-12; see also Ex. 1013 at 40; Ex. 1015 at 4.
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`The TCP/IP protocol suite includes the “Transmission Control Protocol” (TCP),
`
`“User Datagram Protocol” (UDP), and “Internet Protocol” (IP). Ex. 1009 at 12-14,
`
`31-42 (introducing the network layer protocols and describing the IP), 81
`
`(describing UDP), 86 (describing TCP).
`
`TCP/IP Ports
`2.
`The 925 patent discusses the use of TCP ports. See, e.g., Fig. 2 (step
`
`38.
`
`210 “Open TCP Port”). During prosecution of the first application to which the
`
`925 patent claims priority, applicant admitted that opening a TCP Port was well-
`
`known in the prior art. See, e.g., Ex. 1004 at 415 (“It is well-known in the art that
`
`any general computer system may open different types of default or well-known
`
`listening software ports for specific purposes.”), id (“well-known TCP ports … are
`
`opened as a default to service any and all devices for specific purposes (e.g., FTP,
`
`telnet, HTTP, etc.) … .”), 416 (“mobile devices may generally have the capability
`
`(and indeed must have such a capability for Applicant’s claimed invention) to
`
`open a listening software port … .”) (emphasis original), 416 (footnote 4,
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`discussing “well-known TCP ports” for FTP and other services), 422 (Annex D
`
`disclosing well-known TCP/UDP ports). These admissions are consistent with the
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`level of disclosure in the 925 patent, which simply states that ports may be opened
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`and used without any further explanation.
`
`39. Applicant’s admissions as to the prior art are correct. A POSITA
`
`would have known that the Transport Layer of the Internet Protocol suite, most
`
`notably the Transmission Control Protocol (“TCP”) and the User Datagram
`
`Protocol (“UDP”) used ports. Ex. 1009 at 12-13 (explaining the two most
`
`prominent transport layers TCP and UDP); Ex. 1004 at 416, 422 (Annex D reciting
`
`same and listing the admittedly well-known ports for both TCP and UDP).
`
`Because certain dependent claims recite that the transport layer is TCP, I will focus
`
`on the use of TCP ports.
`
`40.
`
`Ports were extensively described in the Transmission Control Protocol
`
`(TCP) specification, RFC793, published in 1981. Ex. 1010 at 16, 19-21, 24-28, 30
`
`(“LISTEN - represents waiting for a connection request from any remote TCP and
`
`port.”), 54-55, 90 (“port: The portion of a socket that specifies which logical input
`
`or output channel of a process is associated with the data”). TCP itself was also
`
`notoriously well-known in the art at the time of the 925 patent as a large portion of
`
`Internet messages, both then and now, are conducted using TCP/IP. RFC793
`
`explains that TCP is “intended to provide a reliable process-to-process
`
`communication service in a multinetwork environment.” Ex. 1010 at 11, 10, 12,
`
`14, 16-17, 18-19, 93. TCP interfaces on one side to a user or application process,
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`and on the other side to a lower level protocol, typically Internet Protocol, which
`
`does not itself provide reliable communication service. Ex. 1010 at 12; Ex. 1022 at
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`10-12.
`
`41.
`
`To allow for many processes within a single host to utilize the TCP
`
`software communications facilities, TCP provides a set of addresses, referred to as
`
`port identifiers or simply ports, within each host. Ex. 1010 at 14 and 19. Thus, a
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`port is the address for a particular process at the host level in the same way that the
`
`IP address is the address for a particular host at the network level. Ex. 1015 at 14
`
`(referring to demultiplexing to identify particular process/application at host based
`
`on TCP port number). The ports are independently defined by a particular host,
`
`but are not necessarily unique as between hosts. Ex. 1