Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 1 of 9 Page ID #:1025
`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 1 of 9 Page ID #:1025
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`EXHIBIT 3
`EXHIBIT 3
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 2 of 9 Page ID #:1026
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 1 of 14 PageID #: 5145
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`AVG TECHNOLOGIES USA, INC.,
`BITDEFENDER LLC,
`UBISOFT, INC.,
`KASPERSKY LAB, INC.,
`SQUARE ENIX, INC.,
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`Defendants.
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`UNILOC USA, INC., et al.,
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`Plaintiffs,
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`v.
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`ADP, LLC,
`BIG FISH GAMES, INC.,
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`Defendants.
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`§
`§
`§ Case No. 2:16-cv-00393-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00394-RWS
`§ Case No. 2:16-cv-00397-RWS
`§ Case No. 2:16-cv-00871-RWS
`§ Case No. 2:16-cv-00872-RWS
`
`§
`§
`§ Case No. 2:16-cv-00741-RWS
`§
`
`LEAD CASE
`§
`§
`§ Case No. 2:16-cv-00858-RWS
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`
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`DECLARATION OF DR. MICHAEL SHAMOS
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`I do hereby declare as follows under penalty of perjury:
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`I.
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`INTRODUCTION
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`1.
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`2.
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`My name is Michael Shamos.
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`I am a faculty member at the Institute for Software Research in the School of
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`Computer Science at Carnegie Mellon University. I have been retained by counsel for plaintiffs,
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`Uniloc USA, Inc., et al. (collectively, “Uniloc”), to provide expert opinions in the above-captioned
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`litigation. The statements of fact made in this declaration are based on my own personal
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`knowledge, analysis and belief.
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 3 of 9 Page ID #:1027
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 2 of 14 PageID #: 5146
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`3.
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`I receive $600/hour for my work preparing this declaration; that compensation is
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`not dependent on the content of my declaration or the outcome of this litigation. I have no financial
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`interest in any of the parties to this litigation..
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`4.
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`Uniloc has asked me to describe, from the position of a person of skill in the art at
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`the time (circa December 1998), the state of the art relevant to claim 1 of Cox et al., U.S. Patent
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`No. 6,324,578 (“the ’578 patent). I have also been asked to form an opinion how a person of skill
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`in the art (“POSITA”) at the time would have interpreted various portions of the ’578 patent
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`specification, as regards that claim.
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`5.
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`I am limiting my testimony to factual issues, within my field of expertise. I
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`understand that claim construction might also involve legal issues (e.g., estoppel), but I express no
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`opinion on such legal issues.
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`6.
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`In addition to the ’578 patent itself and its prosecution history, I have also reviewed
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`a Memorandum Opinion and Order (the “Opinion”) this Court issued, in these cases, on August
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`16, 2017. ’393 case, Dkt. 210. I have been asked to comment on aspects of that Opinion, as it
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`concerns claim 1 of the ‘578 patent.
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`7.
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`I have limited my review to claim 1 and the specification of the ’578 patent. I did
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`not take into account the ’578 patent prosecution history, despite having reviewed it, because the
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`patent issued on a first office action, and thus would have no relevant prosecution history.
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`8.
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`I understand the patents asserted in this case are the ‘578 patent, Cox et al. U.S.
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`Patent 7,069,293 (the “’293 patent”), Cox et al. U.S. Patent 6,510,466 (the “’466 patent”) and Cox
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`et al. U.S. Patent 6,728,766 (the “’766 patent”) (collectively, the “Asserted Patents”).
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 4 of 9 Page ID #:1028
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 3 of 14 PageID #: 5147
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`9.
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`I also did not consider the prosecution history of the ’466 patent or the ’766 patent.
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`I was asked not to consider the prosecution histories of those patents because I was told that their
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`consideration would raise legal issues.
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`II.
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`QUALIFICATIONS
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`10. My background, qualifications and professional affiliations are set forth in my
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`curriculum vitae, which is attached as Exhibit 1.
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`11.
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`I received an A.B. (1968) from Princeton University in Physics; an M.A. (1970)
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`from Vassar College in Physics; an M.S. (1972) from American University in Technology of
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`Management, a field that covers quantitative tools used in managing organizations, such as
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`statistics, operations research and cost-benefit analysis; an M.S. (1973), and M.Phil. (1974) and a
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`Ph.D. from Yale University in Computer Science; and a J.D. (1981) from Duquesne University.
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`12.
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`I hold the title of Distinguished Career Professor in the School of Computer Science
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`at Carnegie Mellon University in Pittsburgh, Pennsylvania. I was a founder and Co-Director of
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`the Institute for eCommerce at Carnegie Mellon from 1998-2004 and since 2004 I have been
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`Director of the eBusiness Technology graduate program in the Carnegie Mellon University School
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`of Computer Science.
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`13.
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`I have taught graduate courses at Carnegie Mellon in Electronic Commerce,
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`including eCommerce Technology, Electronic Payment Systems, Electronic Voting and
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`eCommerce Law and Regulation, as well as Analysis of Algorithms. Since 2007 I have taught an
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`annual course in Law of Computer Technology. I currently also teach Ubiquitous Computing and
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`Electronic Payment Systems.
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 5 of 9 Page ID #:1029
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 4 of 14 PageID #: 5148
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`14.
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`Since 2001 I have been a Visiting Professor at the University of Hong Kong, where
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`I teach an annual course on Electronic Payment Systems. It is one of only a few university courses
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`in the world on this subject.
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`15.
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`From 1979-1987, I was the founder and president of two computer software
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`development companies in Pittsburgh, Pennsylvania: Unilogic, Ltd. and Lexeme Corporation.
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`16.
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`I am a co-inventor on five U.S. patents related to e-commerce, and I have served as
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`an expert witness in over 230 cases, most of which have been patent cases involving computer
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`software.
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`17.
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`I am an attorney admitted to practice in Pennsylvania and have been admitted to
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`the Bar of the U.S. Patent and Trademark Office since 1981. I have not been asked to offer any
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`opinions on the law in this litigation.
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`18.
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`I have previously testified in numerous cases concerning computer technology. My
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`C.V. in Exhibit 1 contains a list of cases in which I have testified in the last ten years.
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`III. BACKGROUND OF THE TECHNOLOGY
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`19.
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`The specification of the ’578 patent deals generally with distributed computing, a
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`domain in which software can be executed at one location for the benefit of the user at the same
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`or at a different location. The patent identifies the following problem in distributed computing:
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`In the modern distributed processing computer environment, control over
`software, such as application programs, is more difficult than where a
`mainframe operated by an administrator is used, particularly for large
`organizations with numerous client stations and servers distributed widely
`geographically and utilized by a large number of users. Furthermore,
`individual users may move from location to location and need to access the
`network from different client stations at different times. The networked
`environment increases the challenges for a network administrator in
`maintaining proper licenses for existing software and deploying new or
`updated applications programs across the network. ’578 patent, 1:45-57.
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 6 of 9 Page ID #:1030
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 5 of 14 PageID #: 5149
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`20.
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`Simply in the context of this quotation, because individual users may move from
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`location to location and need to access the network from different client stations, a network
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`administrator would prefer to maintain a protected storage area on the network server rather than
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`to risk breaching a license agreement by distributing multiple copies of the same software to
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`individual users.
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`21.
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`Nevertheless, the patent goes on to describe a situation in which centralized
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`distribution of software from a Systems Management Server would result in customized
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`installations at different client stations:
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`In addition, the Systems Management Server (SMS) program from
`Microsoft Corporation provides an ability to transmit an application
`program from a server to a number of clients. The SMS system typically
`allows installation of programs and associated icons at client stations for
`SMS-enabled applications. A customized install generally must be created
`by a system administrator for each different version to be installed.
`Furthermore, once installed at a client, a user must typically use that
`specific client station. The application generally cannot be automatically
`deleted from the client station's desktop or automatically upgraded the next
`time the user starts the application. Similarly, the Tivoli Management
`Environment (TME) 10™ system from Tivoli Systems, Inc. provides a
`software distribution feature which may be used to transmit a file package
`to client and server stations on a network from a central Tivoli.™ server.
`’578 patent, 1:62-2:10.
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`22.
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`The specification continues
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`An additional user based application management capability not fully
`supported by these various approaches is license use management. License
`use management typically involves controlling how many users can use an
`application. A distributed network environment with a plurality of client
`stations and a plurality of different users accessing the applications from
`different clients increases the challenge associated with managing license
`use to insure compliance with limitations established by software designers.
`These environments also typically require various steps in the installation
`process to occur at different locations rather than allowing the entire
`process to be controlled from a single point for an entire managed network
`environment. ’578 patent, 3:24-37.
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 7 of 9 Page ID #:1031
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 6 of 14 PageID #: 5150
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`23.
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`The phrase “accessing the applications from different clients” implies that the
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`applications will be executed on the server, but inputs and outputs will come from, or be sent to, a
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`client to avoid licensing restrictions on how many users can use the application. It is through
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`central management of the application that license restrictions can be enforced.
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`24.
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`One of ordinary skill would understand the ’578 patent to disclose embodiments in
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`which execution of an application can take place on a server and embodiments in which execution
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`is at a client. For example, the following passage indicates that an “application launcher” can be
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`distributed to a client, but the application itself remains on a server:
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`In another embodiment of the present invention, additional application
`programs are managed according to the teachings of the present invention
`along with user preferences obtained from a plurality of users.
`Furthermore, for each application program, associated application
`launcher programs may be distributed to a plurality of client stations and
`obtain user preferences from a plurality of users. ’578 patent, 5:1-7.
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`IV. CLAIM 1 OF THE ’578 PATENT
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`25.
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`Claim 1 of the ’578 patent is directed to an invention in which an application
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`launcher is distributed to a client, an associated application program having configurable
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`preferences and authorized users is installed on a server, user and administrator sets of preferences
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`are obtained, and, in response to a user request, the application program is executed, using those
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`preferences.
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`A.
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`26.
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`The ordinary meaning of “application launcher.”
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`The Court appears to have understood an “application launcher” as a program that
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`can only launch applications at a client, and not a server. That is not what one of ordinary skill in
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`the art would have understood an “application launcher” to be.
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 8 of 9 Page ID #:1032
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 13 of 14 PageID #: 5157
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`47.
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`The fact that the client requests are coming from “a variety of different operating
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`systems” strongly suggests that the applications are executed at the server. Otherwise, numerous
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`versions of the application would have to exist, one for each different type of operating system.
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`48.
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`I find the following passage dispositive of the issue whether an application can run
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`on the server:
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`At block 98, client 24 determines if user preferences have been requested
`by on-demand server 22 (or the user has requested new preferences). If user
`preferences are requested, the application launcher program obtains the
`preferences from the user and provides them to server 22 at block 100. The
`client/server application program is then run as illustrated at block 102
`using the user preferences and the administrative preferences (or default
`preferences). It is to be understood that a user may update his preferences
`at blocks 96 and 98 regardless of whether preferences have previously been
`provided for the application program by the user. ’578 patent, 11:9-19.
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`49.
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`This passage refers to the “client/server application program,” which is a clear
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`reference to an application being run at a server for the benefit of client.
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`D.
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`50.
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`Application Program
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`The Opinion (at 19) construed “application program/application” to mean “the code
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`associated with the underlying program functions that is a separate application from a browser
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`interface and does not execute within the browser window.”
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`51.
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`I do not find any portion of the ’578 patent containing, or otherwise supporting, the
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`emphasized portion of this statement. The ’578 patent specification at 8:7-20 states:
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`It is further to be understood that, in the JAVA™ environment, currently
`available web browser applications are known to those of skill in the art
`which provide a user interface and allow hardware independent
`communication such as that currently specified by Internet protocols. Thus,
`the application launcher programs may be applets which display the icon
`which are associated with a web browser Universal Resource Locator
`(URL) which points to the location of the applet to be executed. Upon
`selection of the icon displayed by the application launcher, the selected
`application is "launched" by requesting the URL of the application from the
`on-demand server. Such requests may be made utilizing conventional
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`Case 8:19-cv-01150-DOC-KES Document 62-4 Filed 11/06/20 Page 9 of 9 Page ID #:1033
`Case 2:16-cv-00741-RWS Document 266-3 Filed 09/27/17 Page 14 of 14 PageID #: 5158
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`Hyper-Text Transfer Protocol (HTTP) communications or other suitable
`protocols.
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`52.
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`The above passage describes an exemplary situation in which the application is
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`literally executed within the browser window. A Java applet is a hardware- and operating system-
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`independent piece of code, written in a language known as Java bytecode, which is downloaded to
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`a client and executed using software known as a “Java Virtual Machine” (JVM). All major
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`browsers implemented a JVM; otherwise, they would not have been able to support webpages
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`containing Java applets. Thus, the construction of claim 1 would not read on this embodiment.
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`53.
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`Because the passage in 8:7-20 is exemplary only (i.e., the ’578 patent is not
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`confined to Java applets), I find no language in that passage either requiring or forbidding an
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`application to run in a browser window.
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` I
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` DECLARE UNDER PENALTY OF PERJURY OF THE LAWS OF THE UNITED STATES
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`THAT THE FOREGOING IS TRUE AND CORRECT.
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`Dated: September 27, 2017
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`Respectfully submitted,
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`__________________________________
`Dr. Michael Shamos
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