Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 1 of 41
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`EXHIBIT 5
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`DECLARATION OF MELODY DRUMMOND HANSEN IN SUPPORT OF DEFENDANT’S
`RESPONSIVE CLAIM CONSTRUCTION BRIEF
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`Case No. 5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 2 of 41
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`GEORGE A. RILEY (S.B. #118304) griley@omm.com
`LUANN L. SIMMONS (S.B. #203526) lsimmons@omm.com
`MELODY DRUMMOND HANSEN (S.B. #278786) mdrummondhansen@omm.com
`O’MELVENY & MYERS LLP
`Two Embarcadero Center, 28th Floor
`San Francisco, California 94111-3823
`Telephone:
`(415) 984-8700
`Facsimile:
`(415) 984-8701
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`RYAN K. YAGURA (S.B. #197619) ryagura@omm.com
`XIN-YI ZHOU (S.B. #251969) vzhou@omm.com
`BRIAN M. COOK (S.B. #266181) bcook@omm.com
`KEVIN MURRAY (S.B. #275186) kmurray2@omm.com
`O’MELVENY & MYERS LLP
`400 South Hope Street
`Los Angeles, California 90071-2899
`Telephone:
`(213) 430-6000
`Facsimile:
`(213) 430-6407
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`Attorneys for Defendant
`APPLE INC.
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`SAN JOSE
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`OpenTV, Inc., Nagravision, S.A., and Nagra
`France S.A.S.,
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`v.
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`Apple Inc.,
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`Plaintiffs,
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`Defendant.
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`Case No. 5:15-cv-02008-EJD
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`DECLARATION OF SCOTT
`BRADNER IN SUPPORT OF APPLE’S
`CLAIM CONSTRUCTION BRIEF
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`DECL. OF SCOTT BRADNER
`5:15-CV-02008-EJD
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 3 of 41
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`I, Scott Bradner, hereby declare as follows:
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`I.
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`INTRODUCTION
`1. I have been retained by Apple Corporation to serve as an expert in the proceeding
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`listed above. My billing rate for this consulting is my normal hourly consulting fee of
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`$425 per hour. I am also reimbursed for my travel expenses, if any. My compensation
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`does not depend on the substance of my opinions or on the outcome of this
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`proceeding.
`2. I have prepared this declaration in support of Apple Inc.’s responsive claim
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`construction brief.
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`II.
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`QUALIFICATIONS
`3. My background and expertise that qualify me as an expert in the technical issues in
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`this proceeding are as follows:
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`A.
`Employment
`4. I have worked at Harvard University since 1966. I am currently a Senior Technology
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`Consultant in the office of the Harvard University Chief Technology Officer (CTO)
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`where I work primarily on identity management projects. Before joining the Harvard
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`CTO's office I was the Harvard University Technology Security Officer (UTSO) from
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`2008 to 2012.
`5. My jobs at Harvard have been technical. For the first half of my career I was a
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`programmer then a system manager. In the mid-1980s I became interested in data
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`networking and wound up installing and helping run Harvard's first inter-building
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`fiber Ethernet data network in early 1986. I co-founded the New England regional
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`Internet service provider (ISP) NEARnet in 1989 and chaired its technical committee
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`until it was handed off to a larger ISP in 1995. I also designed and helped install an
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`ISP serving the Longwood medical area network in Boston in 1991 and chaired the its
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`technical committee from 1991 to 1995. I also designed the expansion of the Harvard
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`data network from 13 buildings in 1990 to almost 100 buildings in 1993.
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 4 of 41
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`6. In addition to the network related tasks I also developed and deployed network-based
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`applications including a single sign-on service that was used from the mid-1990s until
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`two years ago. As a Senior Technical Consultant, first at the Office for Information
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`Technology then, starting in 1996, in the office of the Assistant Provost for
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`Information Systems, my job was to advise the Harvard information technology
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`groups on the applications of new technology at the University. Finally, from 1988 to
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`1999 I created and managed the Harvard Network Device Test Lab, the definitive
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`performance testing laboratory for evaluating the performance of network equipment
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`such as switches and routers.
`7. I currently teach courses on “Technology, Security, Privacy, and the Realities of the
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`Cyber World” at the Harvard University Extension School and have supervised
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`masters and Ph.D. theses for students in the Extension School and the University. In
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`the past I have taught classes for undergraduate and graduate students at Harvard
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`University and multi-day tutorials at the Interop trade show and at a number of
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`technology companies including IBM and Nortel.
`8. I have also served on the technical advisory boards of about two-dozen companies in
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`various technology fields and on the board of a telephony startup company.
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`B.
`Publications
`9. I have authored or co-authored 4 books and over 90 articles or other publications in
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`peer-reviewed journals, conference proceedings, popular publications, monographs
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`and standards organizations. These publications span a range of topics including
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`analyzing network hardware, Internet technology, technology policy and standards
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`processes. In addition, between 1992 and 2013, I wrote a regular column in the
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`technical journal Network World, which was read around the world.
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`C.
`The Internet Engineering Task Force (IETF)
`10. The Internet Engineering Task Force (IETF) is a primary standards creation body for
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`the Internet. The work of the IETF is conducted in Working Groups and IETF
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`Working Groups are organized into Areas. Each of the technical areas in the IETF is
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`managed by one or two Area Directors. Relevant to this case, from 1993 to 2003 I
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`served as one of the members of the Internet Engineering Steering Group (IESG), the
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`IETF's standards approval and general management committee. At various times I
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`served as the co-director of the IETF's Operational Requirements, IP Next Generation,
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`Transport and Sub-IP areas.
`11. As a member of the IESG, my responsibility included reviewing technical documents
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`produced by IETF working groups as part of the IETF's standards approval process,
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`including Internet applications such as multi-media transport over the Internet. In
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`early 1996 I was a co-director in both the IETF Operational Requirements Area and
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`the IP Next Generation areas. As an area director I was a member of the IESG. As
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`an IESG member my responsibility included reviewing documents that IETF working
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`groups requested be published as IETF standards.
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`D.
`Activities During the Relevant Time Frame
`12. As described above, in addition to my work in the IETF, in early 1996 when the
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`application that led to the '736 patent was filed, I was a Senior Technical Consultant in
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`the office of the Assistant Provost for Information Systems, Harvard University where
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`I was involved in the design and operation of the Harvard data network and advising
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`Harvard IT management on new technology. I was also teaching courses including
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`Advanced Topics in Data Networking Protocols and Network Architecture at the
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`Harvard University Extension School, and on Designing, Building and Managing
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`Switch and Router-based Data Networks for the Networld+Interop conference at
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`various locations around the world.
`13. A detailed record of my professional qualifications, including a list of publications,
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`awards, and professional activities, is set forth in my curriculum vitae attached to this
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`report as Attachment A.
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 6 of 41
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`
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`III. MATERIALS RELIED UPON
`14. To prepare this declaration I reviewed U.S. Patent No. 6,233,736 (“the '736 patent”),
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`the file history of the '736 patent, the Plaintiffs' Opening Claim Construction Brief
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`(“the Plaintiffs' Brief”) and its exhibits dated March 29, 2016, the declaration of Dr.
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`Kevin Almeroth (“the Almeroth declaration”) also dated March 29, 2016, the Joint
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`Claim Construction dated February 12, 2016 and its exhibit, and the Decision of the
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`PTAB: Institution of Inter Parties Review for U.S. Patent No. 6,233,736 dated June
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`24, 2014 (“PTAB”) and contemporary documents such as the 1995 Cisco publication
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`Interworking Terms and Acronyms.
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`IV.
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`THE ’736 PATENT
`15. U.S. Patent No. 6,233,736 was issued to Thomas R. Wolzien on May 15, 2001 from
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`an application filed on April 3, 1998. The patent claims that the specification is a
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`continuation of a patent application filed on February 8, 1996, which has been
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`published as U.S. Patent No. 5,761,606.
`16. In the present action the parties have proposed constructions for three claim terms. I
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`have been asked to opine on the Apple and OpenTV proposed constructions for the
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`following terms “means for extracting an address associated with an online
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`information source from an information signal embedded in said electronic
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`signal, and for automatically establishing, in response to a user initiated
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`command, a direct link with the online information source”, “indicating”, and
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`“automatic and direct access”/”automatically and directly electronically
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`accessing”.
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`A.
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`automatic and direct access/automatically and directly electronically
`accessing
`17. OpenTV and Apple have proposed the following constructions for the ’736 patent
`claim terms “automatic and direct access” and “automatically and directly
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`electronically accessing.” See Dkt. 74-1 (Joint Claim Construction Statement Exhibit
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`A).
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 7 of 41
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`Claim Term
`“automatic and direct access”
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`Apple’s Proposal
`Indefinite
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`Plaintiff’s Proposal
`“access without the user
`performing additional steps
`which is direct from the user’s
`perspective”
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`“electronically accessing
`without the user performing
`additional steps which is direct
`from the user’s perspective”
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`18. In my opinion a person of ordinary skill in the art cannot understand the scope of the
`purported invention with respect to “automatic and direct access” or to
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`“automatically and directly
`electronically accessing”
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`Indefinite
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`“automatically and directly accessing” using the claims of the '736 patent as they
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`exist.
`19. In my opinion, the result of the use of the modifiers “automatic” and “direct” in
`conjunction with the term “access” or the modifiers “automatically” and “directly” in
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`conjunction with the term “accessing” is not clear to a person of ordinary skill in the
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`art what scope is meant to be included.
`20. First: these terms were added to the claims as part of an amendment during
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`prosecution to distinguish the application from prior art. A person of ordinary skill in
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`the art would not understand how the addition of these terms affected the scope of the
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`claims since they do not add anything that a person of ordinary skill in the art would
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`not think was already present in at least one of the pending claims.
`21. What became the preamble of claim 8 of the original application read
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` method of providing to a user of online information services access to
`online information through a link provided in a video program
`comprising: Ex 4 at 4.
`22. The applicant added “automatic and direct” before “access”.
`23. Claim 8 already included a user initiated command. A person of ordinary skill in the
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` A
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`art would have understood that clicking on a link that included the address of an online
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`information source would have resulted in information from that information source
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 8 of 41
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`being displayed on the user’s screen without the user having to do anything more than
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`to have clicked on the link. A person of ordinary skill in the art would not have
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`understood what adding “automatic and direct” would have change in what would
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`happen when a user clicked on a link since such a person would have already
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`understood that to display the information would require a connection direct to the
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`information source and that the information would have been automatically displayed
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`since that was the purpose of a link.
`24. Second: the applicant argued during prosecution that “automatic” and “direct” meant
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`that a user does not have to “leave the screen,” access a menu, or select from items in
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`a menu. This argument is entirely unsupported by the plain English understanding of
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`the resulting claims and of these terms.
`25. Claim 1 of the ‘736 patent says “…automatically establishing, in response to a user
`initiated command, a direct communication link … so that the user has direct
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`access”
`26. The plain English of this claim has the user providing a command then the system
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`automatically establishes a direct communications link in response such that the user
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`has direct access. So, specifically, the automatic and direct connection that provides
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`the access does not have anything to do with what the user does before issuing a
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`command including receiving an indication.
`27. Similarly, claim 8 of the ‘736 patent says “automatically and directly electronically
`accessing said online information associated with said link in response to a user
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`initiated command.”
`28. As with the language in claim 1, the “automatically and directly accessing” clause in
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`claim 8 happens “in response to” a user command. So, as with claim 1, the
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`automatically and directly clause accessing does not have what the user does before
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`issuing a command including receiving an indication.
`29. The plain English of claim 9 is just as clear: automatically establishing, in response
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`Case 5:15-cv-02008-EJD Document 83-5 Filed 04/12/16 Page 9 of 41
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`to a user initiated command, a direct link with the online information source …
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`so that the user has direct access to the online information.”
`30. As with both claim 1 and claim 8, the automatically establishing a direct link so that
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`the user has direct access happens after the user issues the command.
`31. In all of these claims the term automatically refers to an action that occurs after the
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`user issues a command and not to any action before the command such as accessing a
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`menu.
`32. Both the PTAB in the NetFlix action and a patent examiner in a related application
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`rejected a similar argument that similar claims or the specification required not
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`“leaving the screen.”
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`“We are not directed to anything [that] requires the system to display the
`online information to the user without the user leaving the screen to
`access the information.” (Ex 11 at 9)
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`"[T]he claims are silent regarding the navigation of menus or leaving the
`screen." (Ex 10 at 3-4)
`33. OpenTV is now making the same rejected argument in this case and, in addition, has
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`introduced a vague notion of “direct” as being “direct from the user’s perspective.”
`34. To make these arguments OpenTV apparently confuses confused the sequence of steps
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`described in the claims.
`35. Both Dr. Almeroth’s definition and OpenTV’s definition seem to confuse what
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`happens before a user issues a command and what happens after the command is
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`issued. Dr. Almeroth says in his declaration:
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` A
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` person of ordinary skill would understand that “automatic” access in
`the ’736 patent means that the user receives access to the online
`information without having to perform additional steps. That is a
`distinction from the prior art where the user needed to, for example, turn
`to a different system and input the received online address to a different
`computer system. In the ’736 patent, the access is provided “with a video
`program” and the user can access that information simply “through a
`command to the access system, e.g., through pushbutton, user control
`keypad, voice command, mouse, touchpad, touchscreen, or other such
`input.” 4:7-10. Then, after receiving the command for access, “the access
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`system automatically establishes a digital communication link with the
`online information provider through transmission of a signal containing
`the extracted address.” 4:10-13. So, all the user has to do is provide a
`command while the user is using the video program to access online
`information. The access is presented to the user in a way that is
`“automatic and direct” because the user does not have to perform any
`other action to receive the access. (ECF 81-15 at 9-10.)
`36. Thus, the assertions by both Dr. Almeroth and OpenTV that the fact that a user did not
`have “perform additional steps, such as navigating through a directory or into a
`menu” a limitation they both read into the prior art, as descfribed above, does not
`relate to the claim limitation of “automatic and direct access” or of “automatically
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`and directly accessing” in response to a user command.
`37. Dr. Almeroth’s and OpenTV’s use of “direct from a user’s perspective” is vague and
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`conflicts with the specification. Dr. Almeroth then explains the “direct” limitation as
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`follows:
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`Regarding “direct,” the ’736 patent refers to access that is direct from the
`user’s perspective, based on my read of the specification and claims from the
`perspective of a person of ordinary skill in the art. The patent does not
`require that the “direct” access from a user to an online information system
`was direct in the sense of two systems connected by one wire. My
`understanding comes from the fact that the specification describes the
`connection of the user to the online information via the “public Internet.”
`Such access would be direct because, from the user’s perspective, the user
`performs the command to request the access and is taken “directly” to that
`information even if the user would pass through intermediate servers while
`being routed to that online information source. (ECF 81-15 at 10.)
`38. The OpenTV brief makes a similar argument:
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`The ‘736 patent describes “direct” links from the user to an online
`information source. These links are direct from the user’s perspective
`and are describe in the context of the “public Internet,” implicating
`standard Internet routing principles.” (ECF 81 at 4.)
`39. Both Dr. Almeroth and OpenTV seem to be saying that the “direct” limitation in the
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`‘736 patent is describing the behavior of the Internet and its predecessors since at least
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`1983 when the ARPANET switched to using the TCP/IP protocol. A person of
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`ordinary skill in the art would have assumed that the any system that used links in an
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`DECL. OF SCOTT BRADNER
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`Internet environment in 1996 would be using “standard Internet routing” (as the
`OpenTV brief says and that traffic “would pass through intermediate servers while
`being routed to that online information source” thus the addition of “direct” would
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`not have provided a distinction different from what they would have already
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`understood based on the functionality of a link in an Internet environment.
`40. The patent applicant explained the use of “direct” differently in the prosecution
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`history:
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`As explained to the Examiner, it is important that the user not have to
`access links which are stored in a directory or access one of a series of
`links in a menu. In Applicant's amended claims, the choice for the user
`is from the video or audio program directly to the additional content,
`without the need of intermediate steps. (Ex 4 at 6.)
`41. The prosecution history shows that the applicant claimed that direct had to do with the
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`user finding the link to click on. The applicant claimed that a user of the prior art had
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`to navigate a directory or a series of links in a menu to get to the one button to click
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`on. As discussed above, the patent applicant’s explanation conflicts with plain
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`English of the claims relates “direct” to be after the user issues a command (e.g. clicks
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`on a link) not before.
`42. Thus, the arguments made during prosecution are not consistent with the language of
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`the claims, and the prosecution history is in conflict with the definition that Dr.
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`Almeroth and OpenTV are requesting to be adopted.
`43. Both Dr. Almeroth and OpenTV also introduce the concept that a connection is “direct
`from the user’s perspective.” Thus, they are resorting to a user’s subjective view in
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`trying define this term.
`44. A person of ordinary skill in the art would not be able to determine with reasonable
`certainty the scope of the additional limitation provided by the use of “automatic and
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`direct” in the claims particularly considering the applicant’s statements in the
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`prosecution history that describe “automatic and direct” in a way that conflicts with
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`the claims.
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`45. Thus, it is my opinion that the claim terms “automatic and direct access” and
`“automatically and directly electronically accessing” are indefinite.
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`B.
`“Indicating” (Claims 1, 3, 8, 9, 11)
`46. OpenTV and Apple have proposed the following constructions for the ’736 patent
`claim term “indicating.” See Dkt. 74-1 Joint Claim Construction Statement Exhibit
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`A.
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`Claim Term
`“indicating”
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`Apple’s Proposal
`Plain and ordinary meaning.
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`In the alternative: “providing a
`visual, auditory, or tactile
`indication”
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`47. In my opinion, a person of ordinary skill in the art would have easily understood the
`term “indicating” and that the plain and ordinary meaning provides sufficient
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`Plaintiff’s Proposal
`“providing an automatic
`visual, auditory, or tactile
`indication”
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`guidance. If the court decides to construe “indicating,” it is my opinion that Apple’s
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`proposed construction—“providing a visual, auditory, or tactile indication” is
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`correct in light of the specification. See '736 Patent 9:19-27.
`48. Dr. Almeroth did not address construction for this term in his declaration.
`49. OpenTV is proposing to add a requirement that the indication be “automatic” with the
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`resulting definition being “providing an automatic visual, auditory, or tactile
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`indication.” (ECF 81 at 5.)
`50. Neither the specification nor the claims of the '736 patent limit indicating to
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`automatically indicating as OpenTV has proposed.
`51. OpenTV provides three purported justifications for adding a requirement of
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`“automatic” to “indicating”: specific text in the patent specification, text in the
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`preambles of the independent claims and references in the prosecution history. I will
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`review each of these justifications.
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`1.
`Text in the preambles of independent claims
`52. The text of the preambles does not limit “indicating” to “automatic.” The preambles
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`use the term “automatic” in relationship to “access,” not to “indicating.”
`53. OpenTV’s brief says:
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`the preamble of each independent claim in which the “indicating” term
`appears requires “automatic and direct” access to online information.
`See id. at 9:49, 10:28, 10:44. Because “indicating” is the step or vehicle
`by which a user learns that access to online information is available, only
`an automatic indication would be consistent with the preamble. (ECF 81
`at 5.)
`54. In this argument OpenTV notes unrelated facts, that the preambles contain “automatic
`and direct access” and that the claims include “indicating.” By the plain English of
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`the claims, “automatic and direct” is not related to “indicating” at all. “Automatic
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`and direct access” refers to access to online information and “indicating” refers to
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`letting the user know that a link or address is available to have such access to. When
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`the patentee wanted to use the word “automatic” as a limit in the claims, it did so--for
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`automatic “access” (in the preambles) and “automatic and directly electronically
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`accessing” (Claim 8) and “automatically establishing … a direct communication
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`link (Claims 1 and 9). “Automatic” is not a modifier for “indicating” in any of the
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`claims.
`55. As discussed above, OpenTV is confusing two different things: what happens before
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`the user issues a command to access online information once the user knows that there
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`is information that could be accessed and what happens after the user issues his or her
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`command. All of the same independent claims that OpenTV is referring to require
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`that the user issue a command to initiate access to the information. The specification
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`does not limit what happens before the user issues a command to being automatic.
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`Instead, automatic is used to limit actions after the user issues a command, for
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`example by clicking on an icon.
`56. Contrary to OpenTV’s claim, Apple’s construction does not require the user to do
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`something to trigger the indication. OpenTV says in their brief:
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`Apple’s construction—which would require the user to do something
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`11
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`to trigger the indication—is inconsistent with the plain language of the
`claim. (ECF 81 at 5.)
`57. This is incorrect. Apple’s construction, like the patent itself except in one
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`embodiment, is not limited as to how or when the indication shows up. Apple’s
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`construction, like the patent itself except in the single embodiment, supports indicating
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`using an indicator present for some or all of the duration of video presentation, or
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`using a “indicator signal generator” as claimed in other embodiments, or indicating
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`using any other method.
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`2.
`Text in the patent specification
`58. The specification does not limit “indicating” to being “automatic” in any sense. The
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`one passage OpenTV cites for support refers to a single embodiment that is directed to
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`a different type of indicating than the remaining embodiments specifically because it
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`“automatically” displays an indicator. The specification otherwise never discloses that
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`“indicating” is “automatic.”
`59. OpenTV cites a description in the patent specification of a specific embodiment of the
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`patent in an attempt to support adding the “automatic” requirement:
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`In this embodiment, the video or audio program as produced
`incorporates a visual or auditory indicator, such as a logo or message,
`which is automatically displayed or sounded by conventional
`reproducing system 22 and/or high resolution reproducing system 40
`during portions of the program when an online information provider
`address is present in the underlying electronic program signal. '736
`Patent 9:19-29
`60. In this embodiment, the indicating is “automatic” because the video (or audio)
`program “as produced” already “incorporates a visual or auditory indicator.” For
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`example a “logo or message” is made part of the video program itself. The claims
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`and specification contemplate indicating on the same system where the program is
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`displayed and also where it is not displayed:
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`In yet another embodiment of the invention, automated direct user
`access to online information providers is achieved without
`incorporating an indicator signal generator 46, 146 (FIG. 3) into the
`access controller 10. In this embodiment, the video or audio program
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`as produced incorporates a visual or auditory indicator, such as a logo
`or message, which is automatically displayed or sounded by
`conventional reproducing system 22 and/or high resolution
`reproducing system 40 during portions of the program when an online
`information provider address is present in the underlying electronic
`program signal. ‘736 Patent 9:16-27
`61. One thing that distinguishes this embodiment (where a visual or auditory indicator,
`such as a log or message, is “automatically displayed”) from the other embodiments
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`described in the ‘736 patent is that there is no need for a separate “indicator signal
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`generator” in the user’s equipment since the indicator is simply an image or sound
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`that is part of the video program itself. Since the indicator is part of the video program
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`it will be displayed along with whatever else is supposed to be on the screen at that
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`time in the video program. The display of such an indication is automatic in the sense
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`that it occurs without any external influence or control because the actual indicator is
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`part of the video program. This is part of the description of only one of a number of
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`embodiments mentioned in the specification and the only one of the embodiments that
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`the specification uses text relating to “indicator” that includes a mention of
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`“automatic.” The descriptions of the other embodiments do not mention or suggest
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`anything automatic relating to the indicator or to indicating.
`62. The other embodiments are different. In these embodiments an address or link is
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`provided with a video program and the existence of that link or address needs to be
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`indicated to the user. The indicator signal generator is used to provide that
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`indication by overlaying or encoding an indication on the video program or by
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`activating a special purpose indicator:
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`Indicator signal generator 46 then produces an indicator signal and
`overlays or encodes it onto a conventional program signal 36 to be
`displayed or transduced by conventional reproducing system 22.
`Alternatively, indicator signal generator 46 produces a signal on line
`50 which activates a special purpose indicator, e.g., illuminating a light
`24 or producing a sound on a speaker 28 of access controller 10. ‘736
`Patent 7:35-42
`63. Thus it can easily be seen that there is no special component, hardware or software, in
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`the system that is used to provide the indicator in the one embodiment where the term
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`automatic is used in conjunction with indicating since the system itself, other than the
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`display, is not involved in providing the indicator.
`64. Putting aside the ambiguous language OpenTV proposes, since the patent itself does
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`not require any type of automatic indicator in all but one of the embodiments it
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`provides, and in that embodiment there