UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`FACEBOOK, INC., INSTAGRAM, LLC, and WHATSAPP INC.,
`Petitioners,
`
`v.
`
`BLACKBERRY LIMITED,
`Patent Owner
`________________
`
`IPR2019-00941
`U.S. Patent No. 8,296,351
`________________
`
`DECLARATION OF DR. MATTHEW B. SHOEMAKE
`IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`INTRODUCTION ........................................................................................ 1
`
`II.
`
`BASIS FOR OPINION ................................................................................. 1
`
`A. Qualifications...................................................................................... 1
`
`B. Materials Considered .......................................................................... 8
`
`III. LEVEL OF ORDINARY SKILL IN THE ART ........................................... 9
`
`IV. LEGAL STANDARDS FOR PATENTABILITY....................................... 10
`
`V.
`
`CHALLENGED CLAIMS .......................................................................... 11
`
`VI. CLAIM CONSTRUCTION ........................................................................ 13
`
`A.
`
`“Proxy Content Server” .................................................................... 13
`
`B.
`
`C.
`
`“Content Information” ...................................................................... 15
`
`“Dynamic Advertising Information” and “Static Advertising
`Information” ..................................................................................... 15
`
`D. Other Claim Terms ........................................................................... 16
`
`E.
`
`The “Combination” Limitation Is Limiting ....................................... 16
`
`VII. OVERVIEW OF THE ’351 PATENT ........................................................ 18
`
`VIII. OVERVIEW OF THE PRIOR ART ........................................................... 23
`
`A. Noble ................................................................................................ 23
`
`B.
`
`C.
`
`Hassett .............................................................................................. 25
`
`Johnson ............................................................................................. 26
`
`D. Mann ................................................................................................ 26
`
`E.
`
`De Boor ............................................................................................ 27
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`
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`i
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`IX. PETITIONERS HAVE FAILED TO PROVE UNPATENTABILITY ....... 28
`
`A. Grounds 1-4: Petitioners Failed to Identify Any Prior Art
`Disclosure of a “Proxy Content Server” ............................................ 28
`
`B.
`
`C.
`
`Grounds 1-4: Petitioners’ Combinations Fail to Render Obvious
`“Stor[ing] the Information to One of the Plurality of Channels
`Based on Pre-Defined Information Categories” ................................ 30
`
`Grounds 1 and 3: Petitioners Failed to Identify Any Prior Art
`Disclosure of “Dynamic Advertising Information” ........................... 43
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`
`TABLE OF EXHIBITS
`
`1007
`
`DESCRIPTION
`
`EX.
`NO.
`1001 U.S. Patent No. 8,296,351 B2 to Mihal Lazaridis et al. (filed Mar. 18,
`2010, issued Oct. 23, 2012) (“’351” or “’351 patent”)
`1002 Declaration of Sandeep Chatterjee, Ph.D. (“Chatterjee”)
`1003
`International Patent App. Pub. No. WO 01/61559 A1 to David Noble et
`al. (filed Feb. 16, 2001, published Aug. 23, 2001) (“Noble”)
`1004 U.S. Patent No. 6,807,558 B1 to Gregory P. Hassett et al. (filed June 2,
`1998, issuing October 19, 2004) (“Hassett”)
`1005 Excerpts from Anthony T. Mann, Microsoft SQL Server 7 for Dummies
`(1998) (“Mann”)
`1006 U.S. Patent No. 6,456,234 B1 to William J. Johnson (filed Jun. 7, 2000,
`issued Sep. 24, 2002) (“Johnson”)
`International Patent App. Pub. No. WO 99/59283 to Adam De Boor et al.
`(filed May 7, 1999, published November 18, 1999) (“De Boor”)
`1008 Reserved
`1009 Todd Spangler, The Intranet Channel, PC Magazine, pp.156-180 (June
`10, 1997)
`1010 Kevin Kelly, Push!, Wired Magazine, March 1997
`https://web.archive.org/web/19991013012158/http://www.wired.com/
`wired/archive/5.03/ff_push_pr.html
`1011 Castedo Ellerman, Microsoft Corporation, Channel Definition Format
`(CDF), March 10, 1997
`https://web.archive.org/web/19970731002642/https://www.w3.org/TR
`/NOTE-CDFsubmit.html
`1012 U.S. Patent No. 6,449,638 B1 to Dave Wecker et al. (filed June 30,
`1998, issuing September 10, 2002) (“Wecker”)
`1013 U.S. Patent No. 6,879,838 B2 to Paul John Rankin et al. (filed April
`20, 2001, issuing April 12, 2005)
`1014 Excerpts from Microsoft Computer Dictionary (4th ed. 1999)
`1015 Excerpts from Dictionary of Computer and Internet Words (2001)
`1016 Excerpts from Webster’s II New College Dictionary (1995)
`1017 Excerpts from Robert Cowart et al., Special Edition Using Microsoft
`Windows XP Professional (3rd ed.) (2005) (“Cowart”)
`1018 Excerpts from Rafe Colburn, Special Edition Using SQL (2000)
`(“Colburn”)
`
`
`
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`
`DESCRIPTION
`
`EX.
`NO.
`1019 U.S. Patent App. No. 09/507,774 (filed Feb. 18, 2000), the parent
`patent application to Ex. 1003 (“Noble Priority App.”)
`1020 Redline comparison showing differences between International Patent
`App. Pub. No. WO 01/61559 A1 to David Noble (Ex. 1003) against
`U.S. Patent App. No. 09/507,774 (Ex. 1019)
`1021 Certificates of Service from BlackBerry Limited v. Facebook, Inc. et
`al., No. 2:18-cv-01844-GW-KS (C.D. Cal.), ECF Nos. 20-23, showing
`that service on Petitioners was effected on April 6, 2018
`1022 First Amended Complaint for Patent Infringement from BlackBerry
`Limited v. Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D.
`Cal.), ECF No. 15, filed on April 4, 2018
`1023 Declaration of Sylvia Hall-Ellis, Ph.D. (“Hall-Ellis”)
`1024 Final Ruling on Claim Construction in BlackBerry Limited v.
`Facebook, Inc. et al., No. 2:18-cv-01844-GW-KS (C.D. Cal.), filed
`April 5, 2019
`1025 Elizabeth Cowley, Primacy Effects: When First Learned is Best
`Recalled, 4 Eur. Advances in Consumer R. 155, 155 (1999)
`2001 File History of U.S. Patent No. 8,296,351
`U.S. Department of Interior, “Map Layer Information” (last modified
`Feb. 6, 2017), available at
`https://nationalmap.gov/small_scale/mld/1cities.html
`Final Election of Asserted Prior Art, BlackBerry Limited v. Facebook,
`Inc. et al. (Case No. 2:18-cv-01844-GW) (C.D. Cal. April 22, 2019)
`Order Modifying Scheduling Order Between Plaintiff BlackBerry
`Limited and Defendants Facebook, Inc., Whatapp Inc., and Instagram,
`LLC in BlackBerry Limited v. Facebook, Inc. et al. (Case No. 2:18-cv-
`01844-GW) (C.D. Cal. Oct. 3, 2019)
`Minutes of Status Conference, Initial Thoughts re Joint Report,
`BlackBerry Limited v. Facebook, Inc. et al. (Case Nos. 2:18-cv-01844-
`GW & 2:18-cv-02693-GW) (C.D. Cal. April 22, 2019)
`BlackBerry’s Statutory Disclaimer for Dependent Claims 9 and 15 of
`’351 Patent (filed December 18, 2019)
`2007 Transcript of March 4, 2020 Deposition of Sandeep Chatterjee, Ph.D.
`2008 Declaration of Dr. Matthew Shoemake
`2009 Curriculum vitae of Dr. Matthew Shoemake
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
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`
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`I, Matthew Shoemake, declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is Matthew B. Shoemake, Ph.D. I have been retained to serve
`
`as an expert on behalf of Patent Owner BlackBerry Limited (“BlackBerry” or
`
`“Patent Owner”) in connection with the above-captioned inter partes review (“IPR”)
`
`proceeding, to provide my analyses and opinions in certain technical aspects of this
`
`proceeding. I understand that this Declaration is used to support BlackBerry’s Patent
`
`Owner Response regarding challenged claims of U.S. Patent No. 8,296,351 (“the
`
`’351 Patent”) (Ex. 1001).
`
`2.
`
`I am being compensated for my work on this case at my standard
`
`consulting rate of $525 per hour. I am also being reimbursed for all incurred
`
`expenses. No part of my compensation is contingent upon the outcome of this
`
`proceeding. I have no other interests in this proceeding or with any of the parties.
`
`3.
`
`I am competent to testify to the matters stated in this Declaration, have
`
`personal knowledge of the facts and statements herein, and each of the statements is
`
`true and correct.
`
`II. BASIS FOR OPINION
`
`A. Qualifications
`
`4. My findings, as explained below, are based on my study, experience,
`
`and background discussed below, informed by my extensive experience in the fields
`
`
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`1
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`of mobile systems, computer software, networking, and user experience design at
`
`the pertinent timeframe. My findings are also based on my education as a computer
`
`scientist and electrical engineer, in addition to the subsequent decades of work in
`
`research and development in these fields. As described in more detail below, based
`
`on my experiences, I understand and know of the capabilities of persons of ordinary
`
`skill in the fields of computer software, networking, and user experience design in
`
`2010 when the ’351 Patent was filed. Indeed, I have relevant personal knowledge
`
`and experience, in addition to working directly with many such persons in these
`
`fields during that time frame. I have also relied on my review and analysis of the
`
`prior art cited in the Petition, information provided to me in connection with this
`
`case, and information I have independently reviewed.
`
`5.
`
`Attached as Ex. 2009 is my curriculum vitae, which includes a more
`
`detailed statement of my professional qualifications,
`
`including education,
`
`publications, honors and awards, professional activities, consulting engagements,
`
`and other relevant experience. While I incorporate Ex. 2009 by reference, below is
`
`a brief summary of my background, including my background and experience
`
`relevant to this case.
`
`
`
`2
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`
`1.
`
`Educational Background
`
`6.
`
`I graduated magna cum laude from Texas A&M University with a
`
`Bachelor’s Degree in Electrical Engineering and Computer Science. I also have a
`
`Master’s Degree and a Ph.D. in Electrical Engineering from Cornell University.
`
`2.
`
`Employment Background
`
`7. While I was completing my undergraduate degree, and for one year
`
`thereafter, I worked as an intern and engineer in the digital signal processing group
`
`at Texas Instruments, Inc. in Stafford, Texas. Digital signal processing is the use of
`
`digital processing, such as by computers or by more specialized digital signal
`
`processors, to perform a wide variety of signal processing operations. Digital signal
`
`processing is used in telecommunications and navigation applications (among other
`
`applications). Processors that I worked on at Texas Instruments during this time
`
`period were used in, for example, voice processing, image processing, fax machines,
`
`voiceband modems, wireless communications, digital radio receivers, display
`
`systems and anti-lock brakes on cars and aircraft. I left Texas Instruments in 1995
`
`to continue my graduate studies at Cornell.
`
`8.
`
`Shortly after I received my M.S. in Electrical Engineering, in 1997, I
`
`joined the founding team of Alantro Communications, Inc., a manufacturer of
`
`semiconductor products. While employed by Alantro, I served as an engineer and
`
`engineering manager in the development of HDSL2 modems, cable modems, 2.4
`
`
`
`3
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`GHz cordless phones and Wi-Fi technologies. More specifically, I managed the
`
`baseband systems team where I developed 802.11b-compliant physical layer
`
`technology. Today, this technology is referred to as Wi-Fi 1, i.e., the first generation
`
`of Wi-Fi. I also led the first development of 802.11a OFDM technology at Alantro.
`
`IEEE 802.11a technology is now referred to as Wi-Fi 2. Among other things, I was
`
`responsible for building and designing physical layer communication systems at
`
`Alantro. These physical layers were responsible for transmitting and receiving
`
`messages both across wires and wirelessly.
`
`9.
`
`Texas Instruments acquired Alantro in 2000 for $300M. I had by that
`
`time completed my Ph.D. and became the manager of Texas Instruments’ Wireless
`
`Networking Branch in the Texas Instruments DSP Solutions R&D Center from 2000
`
`to 2003. While manager of this group, I developed technologies for quality of
`
`service in Wi-Fi networks as well as Bluetooth and Wi-Fi coexistence technology.
`
`Also, during this period, I worked on the first smartphone with Wi-Fi, i.e., the Nokia
`
`9100 Communicator.
`
`10. The 802.11 solutions that I built at Alantro and Texas Instruments
`
`shipped in numerous products, including Intel’s Centrino brand of Wi-Fi products
`
`and in Dell, D-Link, Linksys, Nokia and many other products. The descendants of
`
`those products are still sold by Texas Instruments today.
`
`
`
`4
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`11. While at Texas Instruments, I also led an effort to lower the power
`
`consumption of Wi-Fi specifically so Wi-Fi could be added to mobile phones and
`
`smartphones. That activity involved engineers from Texas Instruments in California,
`
`North Carolina, Texas and Israel.
`
`12.
`
`In 2003, I founded WiQuest Communications, Inc. and was the
`
`President and CEO of WiQuest from 2003 to 2008. At WiQuest, I developed and
`
`sold the world’s first wireless docking system for notebook computers and the
`
`world’s first 1 Gbps ultrawideband chipset. I also developed the world’s first
`
`wireless VGA/DVI system for notebook computers. This technology was
`
`incorporated into products developed by several major computer and electronics
`
`manufacturers such as Dell, Toshiba, Lenovo, Belkin, D-Link, and Kensington. I
`
`built the company from inception to 120 employees. I managed a diverse group of
`
`employees that were located in Texas, India, California, Taiwan, and Japan.
`
`13.
`
`In 2008, I founded Biscotti Inc., a designer and manufacturer of high-
`
`definition, Wi-Fi based video calling systems for the home. Biscotti products
`
`operated using wireless networks. The products were small and mobile. The
`
`products used cloud-based servers for video calling, directory services, software
`
`updates, and device configuration. Biscotti designed web, HDTV and smartphone
`
`user interfaces. Minimizing server utilization and power consumption were
`
`
`
`5
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`important design goals of Biscotti’s products. I served as the CEO of Biscotti Inc.
`
`through 2018.
`
`3.
`
`Expert Consulting Background
`
`14.
`
`In about 2008, large companies began calling on me to serve as an
`
`expert and to testify in wireless patent litigation cases due to my background and
`
`experience, initially for Wi-Fi-related matters. Starting in 2008 and continuing
`
`thereafter, I have served in an expert capacity in trials where my expertise in
`
`communication systems and standards were needed by judges and juries. Clients
`
`that have used my services include Cisco, Intel, Broadcom, Apple, Texas
`
`Instruments, Samsung, BlackBerry, NXP, FujiFilm, Sharp, Sprint, AT&T, Dell,
`
`Realtek, HTC, Canon, Honda, Verizon, Mercedes-Benz, Wistron, Mitsubishi,
`
`Google, Harmon, T-Mobile, HP, Mitsubishi, and Caltech.
`
`15. After working in this expert capacity as a sole proprietor for many
`
`years, I incorporated Peritum LLC in 2016. Today, I continue providing expert
`
`engineering, consulting and technical services via Peritum.
`
`16.
`
`I have testified as an expert in many cases involving wireless
`
`communications, transmission of messages, power efficiency, and/or wireless
`
`location technology.
`
`
`
`6
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`4.
`
`Patents and Publications
`
`17.
`
`I am a named inventor on over thirty patents, including patents related
`
`to wireless communications systems and various aspects of data communications
`
`systems, including encoding, decoding, and transmission of information. A list of
`
`those patents appears in Appendix A.
`
`18.
`
`I have authored, co-authored, and contributed to many academic papers
`
`and publications, most in the area of data communications. A list of those
`
`publications appears in Exhibit A.
`
`5. Other Relevant Qualifications
`
`19.
`
`I have been a member of the Institute of Electrical and Electronic
`
`Engineers (“IEEE”) since 1991. In 1999, I was the Chairperson of the IEEE 802.11g
`
`Study Group where I led a committee of twenty engineers to set project requirements
`
`for IEEE 802.11g. Subsequently, from 2000 to 2003, I was the Chairperson of the
`
`IEEE 802.11g Task Group (now Wi-Fi 3) where I led a committee of over 200
`
`engineers to set standards for 54 Mbps data rates in the 2.4 GHz band in a way that
`
`was backward compatible with the IEEE 802.11b standard. From 2003 to 2004, I
`
`was the Chairperson of the IEEE 802.11n Task Group (Wi-Fi 4) where I led a
`
`committee of over 300 engineers through the initial stages of standardization of data
`
`rate enhancements in excess of 100 Mbps.
`
`
`
`7
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`20. My experience with computer servers, clients and user interfaces goes
`
`back to 1989 while at Texas A&M. My study of protocols such as HTTP, FTP, TCP
`
`and UDP dates back to the early 1990s. I began programming computers myself at
`
`the age of 10 using a TI-99/4A computer. I have experience with user interface
`
`design for products such as DSP evaluation kits, Wi-Fi access points, Wi-Fi cameras,
`
`Wireless USB products, and web portals.
`
`21. Since 2006, I have served on the External Advisory Committee for the
`
`Texas A&M University Department of Electrical and Computer Engineering.
`
`B. Materials Considered
`
`22. As part of my preparation for writing this Declaration, I reviewed the
`
`following materials: the ’351 Patent and its prosecution history; International
`
`Published Patent Application WO 01/61559 A1 to Noble et al. (“Noble”), U.S.
`
`Patent No. 6,807,558 (“Hassett”), Excerpts from Anthony T. Mann, Microsoft SQL
`
`Server 7 for Dummies (1998) (“Mann”), U.S. Patent No. 6,456,234 (“Johnson”),
`
`International Published Patent Application WO 01/59283 A1 to De Boor et al. (“De
`
`Boor”) and Petitioner’s Petition for inter partes review and all cited exhibits,
`
`including the Declaration of Dr. Sandeep Chatterjee and any exhibits cited therein.
`
`23. Additionally, I reviewed the transcript of Dr. Chatterjee’s deposition.
`
`24.
`
`I also reviewed Patent Owner’s Response and all exhibits thereto.
`
`
`
`8
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`
`25. My opinions are based on my years of education, research, and industry
`
`experience, as well as my investigation and study of relevant materials.
`
`26.
`
`I may rely upon these materials and/or additional materials to respond
`
`to arguments raised by Petitioner. I may also consider additional documents and
`
`information informing any necessary opinions, including documents that may not
`
`yet have been provided to me.
`
`27. My analysis of the materials produced in this investigation is ongoing
`
`and I will continue to review any new material as it is provided. This report
`
`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information and
`
`on my continuing analysis of the materials already provided.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`28. Petitioner suggests that a person of ordinary skill in the art (“POSITA”)
`
`would have possessed at least a bachelor’s degree in software engineering, computer
`
`science, computer engineering, or electrical engineering with at least two years of
`
`experience in developing software and systems for storing, retrieving, and
`
`transmitting displayable information (such as text and images) over a computer
`
`network to another device (or equivalent degree or experience). I understand that
`
`BlackBerry does not dispute this standard for the purpose of this Response.
`
`Accordingly, I have relied upon this level of ordinary skill in my analysis.
`
`
`
`9
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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
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`29. As of July 2002, I held a B.S. in computer science as well B.S., M.S.
`
`and Ph.D. degrees in electrical engineering and over two years of experience in
`
`developing software and systems for storing, retrieving, and transmitting displayable
`
`information over computer networks. I meet these criteria and consider myself a
`
`person with at least ordinary skill in the art pertaining to the ’351 Patent. I was such
`
`a person at the time of the filing of the application for the ’351 Patent.
`
`IV. LEGAL STANDARDS FOR PATENTABILITY
`
`30.
`
`I understand that “prior art” includes patents and printed publications
`
`that existed before the earliest applicable filing date of the ’351 Patent.
`
`31.
`
`I understand that in order for a claim to be anticipated, each and every
`
`requirement of the claim must be found, expressly or inherently, in a single prior art
`
`reference as recited in the claim.
`
`32.
`
`I understand that a claimed invention is not patentable if the claimed
`
`invention would have been obvious to a person of ordinary skill in the field of the
`
`invention at the time the invention was made.
`
`33.
`
`I understand that in order to show obviousness based on a combination
`
`of references, a particular motivation to combine the teachings in the references must
`
`be shown.
`
`34.
`
`I understand that claim terms are generally given their ordinary and
`
`customary meaning, which is the meaning that the term would have to a person of
`
`
`
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`ordinary skill in the art at the time of the invention. I further understand that a person
`
`of ordinary skill in the art must read the claim term not only in the context of the
`
`particular claim in which the term appears but in the context of the entire patent,
`
`including the specification.
`
`35.
`
`I understand that the obviousness inquiry should not be done in
`
`hindsight, and depends on the scope and content of the prior art, the differences
`
`between the prior art and the claims at issue, the knowledge of a person of ordinary
`
`skill in the pertinent art at the time of invention, and any other objective factors
`
`indicating obviousness or non-obviousness.
`
`36.
`
`I understand that in order to rely on a reference for obviousness, the
`
`reference must be analogous art. I also understand that to be analogous art, the
`
`reference must be either (1) from the same field of endeavor as the claimed subject
`
`matter, regardless of the problem addressed, or (2) if not in the same field of
`
`endeavor, reasonably pertinent to the particular problem with which the inventor is
`
`involved. I am also familiar with the premise that for a reference to be reasonably
`
`pertinent, it must have logically commended itself to an inventor’s attention at the
`
`time of invention.
`
`V. CHALLENGED CLAIMS
`
`37.
`
`I understand that Petitioners challenge claims 1, 2, 9, 14, 15 and 21 of
`
`the ’351 Patent. These claims are reproduced in full below.
`
`
`
`11
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`BlackBerry's Exhibit No. 2008
` Page 16 of 55
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`

`

`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
`
`
`U.S. Patent No. 8,296,351
`
`
`Claim 1
`A system for pushing information to a mobile device, comprising:
`
`a proxy content server that receives information over a computer network from
`an information Source and stores the information to one of a plurality of
`channels based on pre-defined information categories, wherein the plurality of
`channels comprise memory locations included in at least one of the proxy
`content server or a proxy content server database;
`
`the proxy content server to receive a feedback signal over a wireless network that
`indicates a position of the mobile device, and to use the feedback signal to select
`a channel for transmission of the information from the selected channel over the
`wireless network to the mobile device, wherein the information comprises at
`least one of static advertising information, dynamic advertising information,
`default advertising information, or content information, and wherein a
`combination of the static advertising information with one of the dynamic or
`default advertising information comprises an advertisement or an information
`bulletin.
`
`
`
`
`
`
`
`
`
`Claim 2
`The system of claim 1, wherein the feedback signal is generated by the mobile
`device.
`
`Claim 9
`The system of claim 1, further comprising:
`
`the proxy content server database coupled to the proxy content server that stores
`data relating to the mobile device, wherein the data is also used by the proxy
`content server to select the channel for transmission over the wireless network to
`the mobile device.
`
`Claim 14
`A system for pushing information to a mobile device, comprising:
`
`a proxy content server that receives information over a computer network from
`an information source and stores the information to one of a plurality of channels
`based on pre-defined information categories, wherein the plurality of channels
`
`12
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`BlackBerry's Exhibit No. 2008
` Page 17 of 55
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`

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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
`
`
`U.S. Patent No. 8,296,351
`
`
`comprise memory locations included in at least one of the proxy content server
`or a proxy content server database;
`
`the proxy content server to select a channel in response to a triggering event for
`transmission of the information from the selected channel over the wireless
`network to the mobile device, wherein the information comprises at least one of
`static advertising information, dynamic advertising information, default
`advertising information, or content information, and wherein a combination of
`the static advertising information with one of the dynamic or default advertising
`information comprises an advertisement or an information bulletin.
`
`Claim 15
`The system of claim 14, wherein the triggering event is a time.
`
`
`
`
`
`Claim 21
`The system of claim 14, further comprising:
`
`the proxy content server database coupled to the proxy content server that stores
`data relating to the mobile device, wherein the data is also used by the proxy
`content server to select the channel for transmission over the wireless network to
`the mobile device.
`
`
`
`VI. CLAIM CONSTRUCTION
`
`A.
`
`“Proxy Content Server”
`
`38.
`
`In my opinion, the term “proxy content server” should be construed to
`
`mean “a server that aggregates at least content information from an information
`
`source for distribution to a device.”
`
`39. This construction of “proxy content server” is based on the plain
`
`meaning of the term. The proposed construction reflects that a “proxy content
`
`server” is a “server” that acts as a “proxy” for “content.” The modifier “proxy”
`
`
`
`13
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`BlackBerry's Exhibit No. 2008
` Page 18 of 55
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`

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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
`
`
`U.S. Patent No. 8,296,351
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`indicates that the server aggregates information and then distributes that information.
`
`The modifier “content” indicates that the information being aggregated and
`
`distributed is content information.” Thus, the combined term “proxy content server”
`
`is “a server that aggregates at least content information from an information source
`
`for distribution to a device.”
`
`40. The proposed construction is also consistent with the intrinsic evidence.
`
`The ’351 Patent’s specification teaches that the proxy content server “aggregates
`
`existing information 12, such as Internet or Intranet content, from one or more
`
`Information Sources 10, and pushes the information 12 to a mobile device 24.” Ex.
`
`1001 (’351 Patent) at 2:59-63. The ’351 Patent also consistently teaches that the
`
`proxy content server aggregates and distributes at least “content information.” See,
`
`e.g., id. at 2:63-66 (“The Proxy Content Server 18 also provides a method of
`
`combining the information so that the mobile device user has a consistent and
`
`transparent experience of receiving both information content and advertising
`
`content.”); id. at 4:16-18 (“the Proxy Content Server 18 has advertising channels 21a,
`
`content channels 21b and general advertising channels 210.”).
`
`41.
`
`I have reviewed the Petition submitted by Petitioners and their expert’s
`
`declaration. While Petitioners and their expert do not ask the Board to adopt an
`
`express construction for “proxy content server,” they argue that this term is met by
`
`a server in Noble that receives, stores, and transmits only “promotional information.”
`
`
`
`14
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`BlackBerry's Exhibit No. 2008
` Page 19 of 55
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`

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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
`
`
`U.S. Patent No. 8,296,351
`
`In my opinion, Petitioners’ interpretation reads the word “content” out of the claimed
`
`“proxy content server.” Under Petitioners’ interpretation, any proxy server would
`
`automatically qualify as a “proxy content server.” I understand that this is
`
`inconsistent with how claim terms should be construed.
`
`B.
`
`“Content Information”
`
`42.
`
`I understand a district court in parallel litigation construed “content
`
`information” as “information, other than advertising information and meta tags,
`
`which is capable of being displayed for viewing.” See Ex. 1024 at 16. I used this
`
`construction for purposes of my declaration.
`
`C.
`
`“Dynamic Advertising Information” and “Static Advertising
`Information”
`
`43.
`
`I understand
`
`that
`
`the Board construed “dynamic advertising
`
`information” as “advertising information that may change or vary at any given time,
`
`including advertising information that regularly changes.” Institution Decision at
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`11-12. I used this construction for purposes of my declaration.
`
`44.
`
`I also understand that the Board adopted the parties’ agreed
`
`construction of “static advertising information” as “advertising information that
`
`relates to the identity of an advertiser or that does not often change.” Institution
`
`Decision at 11. I used this construction for purposes of my declaration.
`
`
`
`15
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`BlackBerry's Exhibit No. 2008
` Page 20 of 55
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`

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`DECLARATION OF DR. MATTHEW SHOEMAKE Case No. IPR2019-00941
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`U.S. Patent No. 8,296,351
`
`
`D. Other Claim Terms
`
`45.
`
`I understand that the Board determined that it “need not construe any
`
`additional terms.” Institution Decision at 12.
`
`E.
`
`The “Combination” Limitation Is Limiting
`
`46. The Challenged Claims require that the “proxy content server”:
`
`[a] use the feedback signal to select a channel for transmission of the
`
`information . . . to the mobile device,
`
`[b] wherein the information comprises at least one of static advertising
`
`information, dynamic advertising information, default advertising
`
`information, or content information, and
`
`[c] wherein a combination of the static advertising information with one
`
`of the dynamic or default advertising information comprises an
`
`advertisement or