Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 1 of 7 Page ID #:1058
`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 1 of 7 Page ID #:1058
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`EXHIBIT 6
`EXHIBIT 6
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 2 of 7 Page ID #:1059
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 1 of 32
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11272-RGS
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`Civil Action No. 1:19-cv-11278-RGS
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`UNILOC 2017, LLC,
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`Plaintiff,
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`v.
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`PAYCHEX, INC.,
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` Defendant.
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`UNILOC 2017, LLC,
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`Plaintiff,
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`v.
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`ATHENAHEALTH, INC.,
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` Defendant.
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`DECLARATION OF DR. MICHAEL SHAMOS
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`I, Michael Ian Shamos, Ph.D., do hereby declare as follows under penalty of perjury
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`under the laws of Massachusetts, Pennsylvania and the United States that the following is
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`true and correct:
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by counsel for Plaintiff in this case to offer opinions as
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`to the scope and meaning that would have been given to certain terms and phrases
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`appearing in the claims of Cox et al. U.S. Patents 6,324,578 (“the ’578 Patent”) and
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`7,069,293 (“the ’293 Patent”) by one of ordinary skill in the art at the time of the inventions.
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`The statements of fact made in this declaration are based on my own personal knowledge
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 3 of 7 Page ID #:1060
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 10 of 32
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`programs in a networked environment such that authorized users are able to access those
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`program at various client computers. The objects of the invention are achieved by
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`providing an on-demand server to host the application programs and an application
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`program launcher program though which a user at a client computer may execute the
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`application program.
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`36.
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`The claims of the Patents are drawn generally to methods, systems and
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`computer program products for distributing configurable application programs over
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`networks, obtaining user configuration preferences and administrator configuration
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`preferences, distributing an application launcher program and executing the distributed
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`programs using the sets of preferences.
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`37.
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`I believe that, in order to understand the specification and be able to make
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`and use the invention without undue experimentation, a POSITA would have had at least
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`a bachelor’s degree in computer science or electrical engineering, or an equivalent field, or
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`equivalent work experience, and, in addition, at one year of work experience with
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`management and distribution of application programs in a networked client/server
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`environment.
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`38.
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`The same characterization of a POSITA applies to the ’293 Patent.
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`VI. CLAIM TERMS
`I understand that agreement has not been reached by the parties on the
`39.
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`meaning of the following terms.
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`40.
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`Defendants’ proposed constructions are not consistent with
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`the
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`specifications of the Patents.
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 4 of 7 Page ID #:1061
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 18 of 32
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`62.
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`This passage refers to the “client/server application program,” which is a
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`clear reference to an application being run at a server for the benefit of client.
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`63.
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`There is no basis for the limitations Defendants seek to read into the
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`construction of “application program launcher.”
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`B.
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`“application program”
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`Claim Phrase
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`application program
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`(’578 Patent, all claims;
`’239 Patent, all claims)
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`Plaintiff’s Proposed
`Construction
`ordinary meaning, which is
`software that performs tasks
`for an end-user
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`Defendants’ Proposed
`Construction
`code associated with the
`underlying program functions
`that is a separate application
`from a browser interface and
`does not execute within the
`browser window
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`64.
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`If ever there was a computer term having a plain and ordinary meaning,
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`“application program” would be such a term. The term “application program” was used to
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`distinguish user program, with which the user interacts directly, from operating system
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`programs, which operate invisibly to the user, and it meaning has not changed over
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`decades. This notion is supported by Barron’s Dictionary of Computer and Internet Terms
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`(Sixth Ed., 1998) Ex. E, which defines “application program” as “a computer program that
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`performs useful work not related to the computer itself.” It is also consistent with the
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`definition in the Microsoft Computer Dictionary (Third Edition, 1997) Ex. F: “A program
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`designed to assist in the performance of a specific task, such as word processing,
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`accounting or inventory management.”
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`65.
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`There is no indication that the term “application program” in the Patents is
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`used in anything other than its plain and ordinary meaning. In fact, the entire tenor of the
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 5 of 7 Page ID #:1062
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 19 of 32
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`Patents revolves around distributing and managing the execution of “application
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`programs,” without any intention of limiting that term.
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`66.
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`The ’578 specification contains supporting language at 12:12-20:
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`Accordingly, as used herein, it is to be understood that the term
`“application program” generally refers to the code associated with
`the underlying program functions, for example, Lotus Notes or a
`terminal emulator program. However, it is to be understood that the
`application program will preferably be included as part of the
`application launcher which will further include the code associated
`with managing usage of configurable application programs on a
`network according to the teachings of the present invention.
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`67.
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`The specification gives Lotus Notes as a non-exclusive example of an
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`application program.” In the ’466 prosecution history, Applicants stated, correctly, that
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`“Lotus Notes would not execute within the browser window.” Amendment of October 23,
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`2001, p. 2. However, the cited paragraph and that quotation from the ’466 prosecution
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`history does not preclude an application program from executing in a browser window.
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`68.
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`The same October 23, 2001 Amendment states, “In other words, the
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`application launcher program interacts with the desktop, such as a user browser interface,
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`while an instance of the application program is requested through the desktop but executes
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`locally at the client as a separate application from the browser interface.” That may be true
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`of certain application programs (such as Lotus Notes), but the statement should not be read
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`as applying to all applications programs.
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`69.
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`The term “application program” has been construed by several courts as
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`“software that performs tasks for an end user. See, e.g., Seven Networks Inc. v. Visto Corp.,
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`2006 U.S. Dist. LEXIS 93870 (E.D. Tex., Dec. 29, 2006) and Rembrandt Technologies,
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`L.P. v. Comcast Corp., et al., 512 F. Supp. 2d 749 (E.D. Tex. 2007).
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 6 of 7 Page ID #:1063
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 20 of 32
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`70.
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`Once again, Defendants’ construction appears to be based on isolated
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`phrases from the specification. For example, the specification says that “application
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`program” “generally refers to the code associated with the underlying program functions.”
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`12:14-15. All that means is that “application program” refers to code associated with the
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`program.
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`71.
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`Further, there is no support in the specification for the limitation “separate
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`application from a browser interface and does not execute within the browser window.”
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`The term “browser window” does not appear anywhere in the intrinsic evidence, and
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`“browser interface” is used only once in the specification, at 10:56-63, without any
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`indication that the browser window is required to be separate from the application program.
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`Nothing, for example, prevents the application program from itself being a browser.
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`72.
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`I do not find any portion of the ’578 patent containing, or otherwise
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`supporting, the notion that an application program cannot execute within a browser
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`window. 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
`Hyper-Text Transfer Protocol (HTTP) communications or other
`suitable protocols.
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`73.
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`The above passage describes an exemplary situation in which the
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`Case 8:19-cv-01150-DOC-KES Document 62-7 Filed 11/06/20 Page 7 of 7 Page ID #:1064
`Case 1:19-cv-11272-RGS Document 26-1 Filed 01/23/20 Page 21 of 32
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`application is literally executed within the browser window. A Java applet is a hardware-
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`and operating system-independent piece of code, written in a language known as Java
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`bytecode, which is downloaded to a client and executed using software known as a “Java
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`Virtual Machine” (JVM). All major browsers implemented a JVM; otherwise, they would
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`not have been able to support webpages containing Java applets. Thus, Defendants’
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`proposed construction of claim 1 would not read on this embodiment.
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`74.
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`Because the passage at 8:7-20 is exemplary only (i.e., the ’578 patent is not
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`confined to Java applets), there is no language in that passage either requiring or forbidding
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`an application to run in a browser window.
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`C.
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`“configuration manager program”
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`Plaintiff’s Proposed
`Construction
`ordinary meaning
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`Defendants’ Proposed
`Construction
`program separate from the
`application program
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`Claim Phrase
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`configuration
`manager program
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`(’293 Patent, claims 2-
`3, 18-19, 33-34
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`75.
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`This term had a plain meaning, which is a program that manages
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`configuration. It is not used in any special way in the ’293 Patent. It was a common term
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`of art, and there is no difference in the context of the ’293 Patent, between a “configuration
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`manager” and a “configuration manager program.”
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`76.
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`The term “configuration manager” was used in a large number of U.S.
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`patents filed prior to December 14, 1998. A typical example is found in Chrabascz U.S.
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`Patent 6,212,585, filed October 1, 1997 at 9:15-20 (emphasis added):
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