ESN LLC v. Cisco Systems, Inc. et al

Filing 53

NOTICE by ESN LLC, Cisco Systems, Inc., Cisco-Linksys LLC of Filing PR 4-3 Joint Claim Construction and Prehearing Statement (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(Ward, Thomas)

EXHIBIT C

Cisco's Summary of Expert Testimony Pursuant to Patent Local Rule 4-3(d) Cisco may offer the testimony of Dr. Eric Burger to support its proposed claim constructions and to establish how one of ordinary skill in the art in the field of telecommunications and networking would interpret and understand certain terms and phrases used in the asserted claims of the '519 patent at the time of the filing of the initial patent application resulting in issuance of the patent. If called, Dr. Burger may offer testimony regarding: (1) his background and experience, (2) the technical background relating to the patentin-suit, (3) the prior art, and (4) the construction of the asserted claims from the viewpoint of a person of ordinary skill in the art. 1. Expert Qualifications Dr. Burger is qualified to testify in the field of telecommunications and networking based on his academic and industry background. Dr. Burger received a Bachelor of Science degree in Electrical Engineering from Massachusetts Institute of Technology in 1984, and a Ph.D. in Computer Science from Illinois Institute of Technology in 2006. He was a lecturer in Information Systems at George Washington University from 1993 to 2000, and an adjunct professor in Computer Science at George Mason University in 2000. Dr. Burger has held various engineering and senior management positions in the telecommunications and networking industry, including: consultant to MCI Telecommunications Corporation from 1990 to 1991; Manager of Software Development at Cable & Wireless Communications, Inc. from 1991 to 1993; Vice President of Engineering at The Telephone Connection, Inc. from 1993 to 1998; Chief Scientist at ADC/Centigram Communications Corp. from 1998 to 2000; Founder and Chief Technology Officer at SnowShore Networks, Inc. from 2000 to 2004; Chief Technology Officer at Brooktrout from 2004 to 2006; Chief Technology Officer at Cantata from 2006 to 2007; and Deputy Chief Technology Officer and Vice President of Engineering at BEA Systems from 2007 to 2008. Dr. Burger has been an active participant in industry standards organizations, including the Internet Engineering Task Force, SIP Forum, and IMS Forum. Dr.

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Burger has served as the Board of Directors of SIP Forum since 2003, and was elected Chairman in 2007. Dr. Burger's curriculum vitae is attached to this summary. 2. Summary of Opinions Dr. Burger will offer his opinions and testimony regarding voice-over-Internet Protocol technology at the time of the filing of the patent application. In particular, he will discuss the development of the Session Initiation Protocol (SIP) standard within the Internet Engineering Task Force (IETF). Dr. Burger has reviewed the '519 patent and its prosecution history. Dr. Burger understands that the claims are construed from the perspective of a person of ordinary skill in the art, using the specification as a guide to the meaning of the claims. Based on his understanding, Dr. Burger will offer opinions regarding constructions of claim terms related to SIP. In addition, Dr. Burger may provide rebuttal testimony to any opinion concerning claim construction issues offered by ESN. The following is a summary of the testimony Dr. Burger will provide: Voice-over-Internet Protocol (VoIP), i.e., the ability to place a telephone call over the Internet, gained popularity in the 1990s. In order to promote adoption of this new technology, vendors and carriers worked together to draft standards documents that would ensure that their equipment and networks would interoperate with each other. The first set of standards that received broad industry support was ITU-T1 Recommendation H.323, published by the International Telecommunication Union (ITU) in November 1996. Even as H.323 gained acceptance, the Internet Engineering Task Force (IETF)2 started work on an alternative standard

ITU-T coordinates standards for telecommunications on behalf of the International Telecommunication Union (ITU) based in Geneva, Switzerland. ITU is a United Nations specialized agency that has a membership of 191 countries and over 700 public and private sector companies. The Internet Engineering Task Force (IETF) is a large open international community of network designers, operators, vendors, and researchers concerned with the evolution of the Internet architecture and the smooth operation of the Internet. Its membership is open to any interested party.
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known as Session Initiation Protocol (SIP). The first version of SIP was published as IETF RFC 2543 in March 1999. As SIP gained support from carriers after the publication of RFC 2543, vendors started incorporating SIP into their VoIP products, either as an alternative or in addition to H.323. One of ordinary skill in the art tasked to design VoIP products after 1999 would have known to consult ITU-T H.323 and IETF SIP standards documents before beginning the development process. IETF RFC 2543 SIP: Session Initiation Protocol is a document that is written for developers of VoIP products. This document defines a set of logical elements in the VoIP network and protocols used by these network elements to communicate with each other to set up and tear down an Internet telephone call. Thus, to build a SIP compliant product that can interoperate with other SIP network elements in a VoIP network, one of ordinary skill in the art must design the product to operate in accordance with RFC 2543. The SIP network elements include the following: a SIP user agent, a SIP proxy server, a SIP redirect server, a SIP registrar, and a SIP location server. Section 1.3 of RFC 2543 provides a brief description of the roles each of these network elements play in the network. These definitions by themselves, however, are not sufficient for one of ordinary skill in the art to understand the functionality of each network element needed to build a SIP compliant product. To do that, a developer must consult the rest of the document to determine the expected behavior of each network element and the protocols they use. For example, the permissible behavior of a SIP user agent, described as "an application which contains both a user agent client and user agent server" in Section 1.3, is elaborated in Section 11 of the document, and the permissible behavior of a SIP proxy server, described as "an intermediary program that acts as both a server and a client for the purpose of making requests on behalf of other clients" in Section 1.3, is elaborated in Section 12.3 of the document. A SIP user agent and a SIP proxy server must operate in accordance with the specification in Section 11 and 12.3 respectively. One of ordinary skill in the art reading the '519 patent would understand "SIP" to mean "Session Initiation Protocol as set forth in IETF RFC 2543." One of ordinary skill in the art
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would also understand "SIP user agent" to mean "an application which contains both a user agent client and user agent server that operates in accordance with IETF RFC 2543," and "SIP proxy server" to mean "an intermediary program that acts as both a server and a client for the purpose of making requests on behalf of other SIP clients in accordance with IETF RFC 2543." Further, the phrase "SIP agents" is not defined in IETF RFC 2543 or in the '519 patent. Claim 9 is the only place in the patent where this phrase is used. A person of ordinary skill in the art would be unable to discern what "SIP agents" means because the phrase does not have an ordinary meaning, is not defined in the patent or RFC 2543, and is not a term of art in the pertinent field.

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