Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 1 of 21
`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 1 of 21
`
`
`
`
`EXHIBIT O
`EXHIBIT O
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 2 of 21
`
`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
`
`E-NUMERATE SOLUTIONS, INC. and
`E-NUMERATE, LLC,
`
`Plaintiffs,
`
`v.
`
`THE UNITED STATES OF AMERICA,
`
`Defendant.
`
`C.A. No. 19-859-RTH
`
`DECLARATION OF DR. MICHAEL SMITH
`
`1.
`
`I.
`
`2.
`
`I, Michael Smith, declare and state as follows.
`I am over the age of twenty-one, competent to make this declaration, and have personal
`knowledge of the matters stated herein.
`
`PERSONAL QUALIFICATIONS
`
`In the period that the applications which led to the patents-in-suit were filed, 1999-2001,
`as part of my research work as an NSF Presidential Young Investigator I was working on
`publishing (what were then) extremely large documents including whole textbooks on the
`Internet. I was one of the first to publish an entire technical work on the web in a
`collaboration with one of the leading technical publishers at the time, Addison-Wesley.
`An example, originally published in 1998, is the online work at
`https://www10.edacafe.com/book/ASIC/ASICs.php. These documents were
`automatically generated from even larger Computer-Aided Design (CAD) files and
`databases. My work would allow me, for example, to make a change in an integrated
`circuit design file and have those changes ripple through to all subsequently derived files
`(a simulation, a layout) all the way through to text, and even figures in any final
`document. Essentially every aspect of any document was "live".
`
`3. From the introduction to my textbook: I wrote the text using FrameMaker. This allowed
`me to project the text and figures using an LCD screen and an overhead projector. I used
`a succession of Apple Macintosh computers: a PowerBook 145, a 520, and lastly a 3400
`(cid:5)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 3 of 21
`
`with 144 MB of RAM, which made it possible for me to create updates to the index in
`just under one minute. Equations are "live" in FrameMaker. Thus, can be updated in a
`lecture and the new result displayed. The circuit layouts are color EPS files with
`enhanced B&W PICT previews created using L-Edit from Tanner Research. All of the
`Verilog and VHDL code examples, compiler and simulation input/output, and the layout
`CIF that were used in the final version are included as conditional (hidden) text in the
`FrameMaker document, which is approximately 200 MB and just over 6,000 pages (my
`original source material spans fourteen 560 MB optical disks). Software can operate on
`the hidden text, allowing, for example, a choice of simulators to run the HDL code live in
`class. I converted draft versions of the VHDL and Verilog LRMs and related standards to
`FrameMaker and built hypertext links to my text, but copyright problems will have to be
`solved before this type of material may be published. I drew all the figures using
`FreeHand. They are "layered" allowing complex drawings to be built-up slowly or
`animated by turning layers on or off. This is difficult to utilize in book form, but can be
`done live in the classroom.
`
`4.(cid:1) All of this work involved using complex transformations between data held in very
`different formats and schema and included extensive use of XML and XML-like
`languages before mapping, for example, to various HTML display formats.
`
`5.(cid:1) My curriculum vitae is attached hereto as Exhibit A.
`
`
`II.(cid:1)
`
`COMPENSATION
`
`6.(cid:1) I am being compensated for my time in this matter at my normal hourly rate of
`$300/hour. I have no financial interest in the outcome of this proceeding.
`
`III.(cid:1) MATERIALS CONSIDERED
`
`7.(cid:1) I have reviewed the following materials in connection with the preparation of this
`Declaration:
`
`
`a.(cid:1) The patents-in-suit;
`b.(cid:1) The prosecution history of the patents-in-suit including the inter partes reviews
`filed against some of the patents-in-suit;
`c.(cid:1) A chart showing the parties’ agreed-upon terms and definitions;
`d.(cid:1) The chart with the parties’ competing claim constructions;
`e.(cid:1) The disclosure of extrinsic evidence made by both parties and the evidence cited
`therein;
`f.(cid:1) The Declaration of Dr. David Martin In Support of Defendant’s Proposed
`Preliminary Claim Constructions;
`
`(cid:6)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 4 of 21
`
`IV.(cid:1)
`
`g.(cid:1) The Supplemental Declaration of Dr. David Martin In Support of Defendant’s
`Proposed Preliminary Claim Constructions;
`h.(cid:1) A decision denying the United States’ motion to dismiss under 35 U.S.C § 101 set
`forth in e-Numerate Solutions, Inc. v. United States, 149 Fed. Cl. 563 (C.F.C.
`2020); and
`i.(cid:1) This Court’s decisions in Cellcast Tech., LLC v. United States, 150 Fed. Cl. 353,
`362-63 (C.F.C. 2020); Thales Visionix, Inc. v. United States, 150 Fed. Cl. 486,
`493 - 94 (C.F.C. 2020); and Wanker v. United States, 152 Fed. Cl. 219, 227-29
`(C.F.C. 2021), setting forth the law of claim construction.
`
`PATENT BACKGROUND
`
`8.(cid:1) In this litigation, e-Numerate has asserted U. S. Patent Nos. 7,650,355 (the “’355
`Patent”), 8,185,816 (the “’816 Patent”), 9,262,383, (the “’383 Patent”), 9,262,384 (the
`“’384 Patent), 9,262,748 (the “’748 Patent”), 9,600,842 (the “’842 Patent”), 10,223,337
`(the “’337 Patent”), and 10,423,708 (the “’708 Patent”) (collectively, the “Asserted
`Patents” or the “Patents-in-Suit”).
`
`9.(cid:1) I understand that the ’355 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`10.(cid:1)I understand that the ’816 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`11.(cid:1)I understand that the ’383 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`12.(cid:1)I understand that the ’384 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`13.(cid:1)I understand that the ’748 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`14.(cid:1)I understand that the ’842 Patent traces its priority to provisional application No.
`60/263,518, filed on Jan. 24, 2001
`
`
`(cid:7)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 5 of 21
`
`15.(cid:1)I understand that the ’337 Patent traces its priority to provisional application No.
`60/135,525, filed on May 21, 1999 and provisional application No. 60/183,152, filed on
`Feb. 17, 2000.
`
`16.(cid:1)I understand that the ’708 Patent traces its priority to provisional application No.
`60/263,518, filed on Jan. 24, 2001.
`
`
`V.(cid:1)
`
`TECHNOLOGICAL BACKGROUND
`
`17.(cid:1)The patents-in-suit involve markup language tags and processing numerical values using
`markup language tags.
`
`18.(cid:1)As set forth in the patents-in-suit, two prior art markup languages existed prior to the
`inventions of the patents-in-suit. See ‘355 patent, col. 1, line 28 – col. 2, line 11. The
`first prior art markup language, HyperText Markup Language (“HTML”), used a limited
`number of markup language tags for display purposes only. In HTML, displayed
`numbers are only treated only as “text,” (i.e., not as numerical values). As a result, the
`meaning of the numbers is not understood by the computer using HTML. Id. at col. 1,
`lines 39 – 55.
`
`19.(cid:1)The second prior art markup language is the Extensible Markup Language (“XML”).
`XML is a free-form markup language with unspecified tags. Id. at col. 1, line 60 – col. 2,
`line 11. In essence, XML sets forth general guidelines for creating markup language tags
`without specifying their content or purpose. As a result, XML tags created by one user
`are incompatible with XML tags created by another user. Id.
`
`
`VI.(cid:1)
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`20.(cid:1)Dr. Martin sets forth a definition of whom he believes is a person of ordinary skill in the
`art of the patents-in-suit. Paragraphs 38 – 40. For purposes of this declaration, I have
`employed his definition of a person of ordinary skill in the art in my analysis. I reserve
`the right to set forth my own definition of the qualifications and background of a person
`of ordinary skill in the art.
`
`VII.(cid:1) LEGAL STANDARDS
`
`21.(cid:1)I have reviewed the law on claim construction set forth in Cellcast Tech., LLC v. United
`States, 150 Fed. Cl. 353, 362-63 (C.F.C. 2020); Thales Visionix, Inc. v. United States,
`150 Fed. Cl. 486, 493 - 94 (C.F.C. 2020); and Wanker v. United States, 152 Fed. Cl. 219,
`227-29 (C.F.C. 2021). I have employed those standards in my analysis below.
`
`
`(cid:8)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 6 of 21
`
`22.(cid:1)I am informed that some of the claims are in means-plus-function format. I am informed
`that construing such a claim involves a two-step analysis. First, the Court must determine
`the claimed function. Second, the Court must identify the corresponding structure in the
`written description that performs that function.
`
`23.(cid:1)I am informed that determining a claimed function and identifying structure
`corresponding to that function involve distinct but related steps that must occur in a
`particular order. I am informed that, in terms of identifying function, a court may not
`construe a means-plus-function limitation by adopting a function different from that
`explicitly recited in the claim. At the same time, a function should not be improperly
`broadened by ignoring clear limitations in the claim language.
`
`24.(cid:1)In addition, I have been informed of the legal standards for indefiniteness and
`enablement. I am informed that a claim is invalid for indefiniteness if its language, read
`in light of the specification and prosecution history, fails to inform, with reasonable
`certainty, those skilled in the art about the scope of the invention. I understand that
`general principles of claim construction apply to indefiniteness allegations.
`
`25.(cid:1)I am informed that claim terms are typically required to have “antecedent basis” in the
`claim language. Specifically, when a claim term is introduced for the first time in a
`claim, it is preceded by an indefinite article such as “a” or “an”. In subsequent uses of a
`term in a claim, the term is preceded by “the” or “said”. When a claim term is introduced
`into a claim for the first time and does not have an indefinite article preceding it, I am
`informed that the term is said to lack “antecedent basis.”
`
`26.(cid:1)I am informed that the lack of explicit antecedent basis for a claim term does not render a
`claim per se invalid for indefiniteness. I am further informed that, despite the absence of
`explicit antecedent basis, if the scope of a claim would be reasonably ascertainable by
`those skilled in the art, then the claim is not indefinite. I am also informed that
`antecedent basis can be present by implication.
`
`27.(cid:1)I am informed that computer-implemented “means-plus-function” claims may require
`certain disclosure in the specification. Specifically, where the means are implemented
`via software, I am informed that courts generally require that the structure disclosed in
`the specification be more than simply a general-purpose computer or microprocessor. In
`particular, courts generally require that the specification disclose an algorithm for
`performing the claimed function.
`
`28.(cid:1)I am informed that an exception exists to this rule. Specifically, when the claimed
`function could be performed by any general-purpose computer without special
`programming, disclosure of an algorithm is not required.
`
`
`(cid:9)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 7 of 21
`
`29.(cid:1)I am informed that if there is an algorithm disclosed in the specification, a court will not
`adjudicate the sufficiency of the algorithm during claim construction.
`
`30.(cid:1)I am informed that when a claim does not use the term “means”, there is a rebuttable
`presumption that the claim is not in means-plus-function format.
`
`31.(cid:1)I am informed that the presumption may be overcome only if the challenger demonstrates
`that the claim term fails to recite sufficiently definite structure or else recites function
`without reciting sufficient structure for performing that function.
`
`32.(cid:1)I am informed that a claim is invalid for lack of enablement if it can be proven that a
`person of ordinary skill in the art would not be able to practice the claimed invention
`without “undue experimentation.” I am further informed that whether undue
`experimentation is needed is not a single, simple factual determination, but rather is a
`conclusion reached by weighing many factual considerations. These factual
`considerations are: (1) the quantity of experimentation necessary, (2) the amount of
`direction or guidance presented, (3) the presence or absence of working examples, (4) the
`nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the
`art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.
`
`33.(cid:1)I am informed that courts generally prohibit experts from opining on the legal definition
`of claim language.
`
`VIII.(cid:1) TERMS FROM THE ‘355 PATENT
`
`34.(cid:1)I am informed that the Government is challenging claims 15 and 42 as indefinite.
`
`35.(cid:1)I have reviewed Dr. Martin’s Declaration at pars. 41 – 46. I disagree with his conclusion
`that claims 15 and 42 are indefinite.
`
`36.(cid:1)Claim 15 of the ‘355 patent provides:
`
`15. The computer-implemented method of claim 1, wherein the step of receiving
`comprises receiving tags indicating characteristics selected from the group
`consisting of: (1) value, (2) semantics, (3) format, (4) measurement, (5) structure,
`and (6) provenance.
`‘355 Patent, Claim 15.
`
`Claim 1, from which claim 15 depends, provides:
`
`(cid:10)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 8 of 21
`
`1.(cid:1) A computer-implemented method of processing tagged numerical data, the method
`comprising: receiving a series of numerical values having tags indicating
`characteristics of the numerical values; generating at least one first title corresponding
`to the series of numerical values; receiving a macro defined to perform an operation on
`the series of numerical values; performing an operation defined by the macro on the
`series of numerical values to transform the series of numerical values into a new
`representation of the series of numerical values based on the tags; generating at least one
`second title corresponding to results of the operation; and displaying the results of the
`operation and the at least one second title, wherein: the macro makes a copy of the series
`of numerical values before the operation is performed, the macro comprises at least one
`arithmetic statement, the at least one arithmetic statement comprises a variable, the
`variable is referenced in a local or remote document other than a document that contains
`the macro, and the step of receiving the macro comprises receiving the macro including
`interpreted code, meta-data, and error handling instructions.
`‘355 Patent, claim 1(emphasis supplied).
`
`Claim 42 provides:
`
`42. The computer-readable memory of claim 28, wherein the step of receiving comprises
`receiving tags indicating characteristics selected from the group consisting of: (1) value, (2)
`semantics, (3) format, (4) measurement, (5) structure, and (6) provenance.
`‘355 Patent, claim 42.
`
`Claim 28, from which claim 42 depends, provides:
`
`28. A computer-readable memory storing instructions that are executed by a
`computer for performing steps of: receiving a series of numerical values having
`tags indicating characteristics of the numerical values; generating at least one
`first title corresponding to the series of numerical values; receiving a macro
`defined to perform an operation on the series of numerical values; performing
`an operation defined by the macro on the series of numerical values to transform
`the series of numerical values into a new representation of the series of numerical
`values based on the tags; generating at least one second title corresponding to
`results of the operation; and displaying the results of the operation and the at least
`one second title, wherein: the macro makes a copy of the series of numerical
`values before the operation is performed, the macro comprises at least one
`arithmetic statement, the at least one arithmetic statement comprises a variable,
`the variable is referenced in a local or remote document other than a document
`that contains the macro, and the step of receiving the macro comprises receiving
`the macro including interpreted code, meta-data, and error handling
`instructions.
`
`(cid:11)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 9 of 21
`
`‘355 Patent, claim 28 (emphasis supplied).
`
`37.(cid:1)I am informed that e-Numerate contends that the phrase in the dependent claim refers to
`the first receiving step: “receiving a series of numerical values having tags indicating
`characteristics of the numerical values.” That phrase explicitly refers to “tags indicating
`characteristics of the numerical values.” In my opinion, claims 15 and 42 further limit
`the characteristics recited in that phrase in the independent claims. In my opinion, a
`person of ordinary skill in this art would readily understand that.
`
`38.(cid:1)Dr. Martin’s opinion that the receiving step could refer to the macro is not logical. That
`phrase does not refer to tags and their characteristics.
`
`39.(cid:1)In light of the foregoing, it is my opinion that claims 15 and 52 are not indefinite.
`
`IX.(cid:1)
`
`TERMS FROM THE ‘816 PATENT
`
`40.(cid:1)I am informed that the Government is challenging claim 12 of the ‘816 patent as
`indefinite.
`
`41.(cid:1)I have reviewed Dr. Martin’s Declaration at pars. 47 - 52. I disagree with his conclusion
`that claim 12 is indefinite.
`
`42.(cid:1)Claim 12 of the ‘816 patent provides:
`12. The data processing system of claim 10, wherein the markup
`language is compliant with Extensible Markup Language version 1.0.
`‘816 Patent, claim 12 (emphasis supplied).
`
`Claim 10 of the ‘816 patent provides:
`
`10. A data processing system comprising: a non-volatile storage device
`storing a first markup document and a second markup document, both the first
`markup document and the second markup document containing numerical values
`and tags reflecting characteristics of the numerical values, wherein the
`characteristics indicate that the numerical values of the first markup document
`differ in format from the numerical values of the second markup document; a
`memory storing a program that receives the first markup document and the
`second markup document, that automatically transforms the numerical values
`of at least one of the first markup document and the second markup document
`so that the numerical values of the first markup document and the second markup
`document have a common format, and that combines the first markup document
`
`(cid:12)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 10 of 21
`
`and the second markup document into a single data set; and a processor that
`runs the program.
`‘816 Patent, claim 10 (emphasis supplied).
`
`43.(cid:1)I am informed that the Government contends that lack of explicit antecedent basis in
`claim 10 for the term “markup language” renders claim 12 indefinite. I disagree.
`
`44.(cid:1)In my opinion, a person of ordinary skill in the art would readily understand that a
`“markup document” is written in a markup language. This is explicitly taught in the ‘816
`patent.
`
`45.(cid:1)According to the ‘816 patent Abstract:
`
`Methods and systems provide a computer markup language, referred to as
`Reusable Data Markup Language ("RDML"), and a data viewer for retrieving,
`manipulating and viewing documents and files in the RDML format that may be
`stored locally or over a network (e.g., the Internet)
`The ‘816 patent Abstract further provides:
`
`Documents compliant with the markup language encapsulate machine-readable
`documentation with numbers and data, and permit the data viewer to act as a
`combination web browser and spreadsheet to automatically read, interpret and
`manipulate the numbers and data.
`46.(cid:1)The specification of the ‘816 patent also provides:
`
`A markup language is a way of embedding markup "tags," special
`sequences of characters, that describe the structure as well as the behavior of a
`document and instruct a web browser or other program on how to display the
`document. Typically, documents or web pages formatted in HTML are simply
`ASCII text files that mix ordinary text with these markup tags.
`Col. 1, lines 39 – 43.
`
`47.(cid:1)In my opinion, claim 12 of the ‘816 patent is not indefinite.
`
`48.(cid:1)I am further informed that the Government contends that claim 26 of the ‘816 patent is
`indefinite. That claim provides:
`
` A
`
` data processing system comprising:
`
`
`
`(cid:13)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 11 of 21
`
`means for receiving a first markup document and a second markup document, both the
`first markup document and the second markup document containing numerical values
`and tags reflecting characteristics of the numerical values, wherein the characteristics
`indicate that the numerical values of the first markup document differ in format from the
`numerical values of the second markup document;
`
`means for automatically transforming the numerical values of at least one of the first
`markup document and the second markup document, so that the numerical values of the
`first markup document and the second markup document have a common format;
`
`means for combining the first markup document and the second markup document
`into a single data; and
`
`means for displaying the single data set.
`
`49.(cid:1)I understand that this claim is in “means-plus-function” format and that the specification
`is required to disclose an algorithm unless a general-purpose computer could perform the
`claimed function without special programming.
`
`50.(cid:1)I have reviewed paragraphs 53 – 107 of Dr. Martin’s definition. I disagree with his
`conclusion that the claims are indefinite.
`
`51.(cid:1)With regard to the “means for receiving” step, Figure 7A of the ‘816 patent shows a
`reader in box 704. A person of ordinary skill in the art would understand that a reader or
`other component used to receive a document is operable using a general-purpose
`computer without any special programming. As a result, it is my opinion that no
`algorithm is necessary for this step.
`
`52.(cid:1)With regard to the “means for combining” step, Figure 7A shows a Primary Data Store in
`box 712. A person of ordinary skill in the art would understand that a data store that
`combines documents is operable using a general-purpose computer without any special
`programming. As a result, it is my opinion that no algorithm is necessary for this step.
`
`53.(cid:1)With regard to the “means for displaying step, Figure 7A shows a Graphical User
`Interface in box 734. A person of ordinary skill in the art would understand that a
`Graphical User Interface that displays documents is operable using a general-purpose
`computer without any special programming.
`
`54.(cid:1)With regard to the “means for automatically transforming step”, the specification of the
`‘816 patent explicitly teaches use of conversion factors to transform numerical values
`from, for example, one unit to another. See, e.g., Col. 25, line 45 - col. 27, line 45.
`Conversion factors used to convert a number from one unit to another are readily
`
`(cid:5)(cid:4)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 12 of 21
`
`available to a person of ordinary skill in the art. In my opinion, this disclosure is
`sufficient to permit a person of ordinary skill in the art to practice the claimed invention.
`
`
`TERMS FROM THE ‘383 PATENT
`
`X.(cid:1)
`
`
`55.(cid:1)I am further informed that the Government contends that claim 18 of the ‘383 patent is
`indefinite. That claim provides:
`
`18. An apparatus, comprising:
`
`means for identifying a first markup document including first numerical values and
`first tags reflecting first characteristics of the first numerical values associated with a
`first unit of measure, and a second markup document including second numerical
`values and second tags reflecting second characteristics of the second numerical values
`associated with a second unit of measure, wherein the first tags and the second tags each
`include computer-readable semantic tags that describe a semantic meaning of a
`corresponding one of at least one of the first numerical values or the second numerical
`values, via a computer-readable tagging association therebetween, where the first
`characteristics of the first numerical values associated with the first unit of measure are
`different from the second characteristics of the second numerical values associated with
`the second unit of measure;
`
`means for automatically transforming at least a portion of the first or second
`numerical values of at least one of the first markup document or the second markup
`document, so that at least some of the first numerical values of the first markup document
`and at least some of the second numerical values of the second markup document have a
`common unit of measure;
`
`means for processing at least a part of the first markup document and at least a part of
`the second markup document, resulting in a single markup document;
`
`means for causing a display of at least a portion of the single markup document.
`
`56.(cid:1)I understand that this claim is in “means-plus-function” format and that the specification
`is required to disclose an algorithm unless a general-purpose computer could perform the
`claimed function without special programming.
`
`57.(cid:1)I have reviewed paragraphs 108 - 162 of Dr. Martin’s declaration. I disagree with his
`conclusion that the claims are indefinite.
`
`58.(cid:1)With regard to the “means for identifying” step, Figure 7A of the ‘383 patent shows a
`reader in box 704. A person of ordinary skill in the art would understand that a reader or
`
`(cid:5)(cid:5)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 13 of 21
`
`other component used to receive a document is operable using a general-purpose
`computer without any special programming. As a result, it is my opinion that no
`algorithm is necessary for this step.
`
`59.(cid:1)With regard to the “means for processing” step, Figure 7A shows a Primary Data Store in
`box 712. A person of ordinary skill in the art would understand that a data store that
`combines documents is operable using a general-purpose computer without any special
`programming. As a result, it is my opinion that no algorithm is necessary for this step.
`
`60.(cid:1)With regard to the “means for causing a display” step, Figure 7A shows a Graphical User
`Interface in box 734. A person of ordinary skill in the art would understand that a
`Graphical User Interface that displays documents is operable using a general-purpose
`computer without any special programming. As a result, it is my opinion that no
`algorithm is necessary for this step.
`
`61.(cid:1)With regard to the “means for automatically transforming step”, the specification of the
`‘383 patent explicitly teaches use of conversion factors to transform numerical values
`from, for example, one unit to another. See, e.g., Col. 24, line 9 - col. 26, line 10.
`Conversion factors used to convert a number from one unit to another are readily
`available to a person of ordinary skill in the art. In my opinion, this disclosure is
`sufficient to permit a person of ordinary skill in the art to practice the claimed invention.
`
`TERMS FROM THE ‘748 PATENT
`
`62.(cid:1) I am informed that the Government contends that claim 11 of the ‘748 patent should be
`construed as a “means-plus-function” claim.
`
`63.(cid:1)I have reviewed Dr. Martin’s Declaration at paragraphs 163 – 214. I disagree with his
`analysis.
`
`64.(cid:1)Dr. Martin opines that each use of the term “code for” in this claim only describes “black
`box functionality”. See, e.g., Martin Dec. at pars 165, 172, 182, 189, 196, 203, and 210;
`Supplemental Martin Dec. at par 5. I disagree. Dr. Martin himself acknowledges that
`“code for” can refer to conventional programming languages that existed at the time of
`the invention. Martin Dec. at par. 22.
`
`65.(cid:1)In my opinion, a person of ordinary skill in the art reviewing the ‘748 patent would
`understand that “code for” would refer to conventional computer programming languages
`that existed at the time of the invention. For example, the ‘748 patent explicitly contains
`multiple appendices. Appendix F and Appendix G in the ‘748 patent both contain code
`written in the Microsoft Excel Visual Basic programming language. ‘748 patent col. 45,
`lines 29 – 30 (“Appendix F shows exemplary code for routines that perform those
`
`XI.(cid:1)
`
`(cid:5)(cid:6)(cid:1)
`
`(cid:1)(cid:1)
`
`

`

`Case 1:19-cv-00859-RTH Document 81-9 Filed 03/14/22 Page 14 of 21
`
`functions.”); cols. 113 – 124 (containing Appendix F); Col. 45, lines 49 – 50 (“Appendix
`G provides code used in one implementation to create an RDML document.”); cols. 125 –
`140 (containing Appendix G). This programming language was well-known in the
`1990s.
`
`66.(cid:1)As shown below, Claim 11 is essentially the same as method claim 19, but written in
`“means-plus-function” format. These claims provide:
`‘748 Patent Claim 19
`‘748 Patent Claim 11
`A method, comprising:
`A computer program product embodied on a
`non-transitory computer readable medium,
`comprising:
`code for storing a plurality of original
`documents including a plurality of original
`values, including a first document including
`first values and a second document including
`second values;
`code for processing at least a part of the first
`document and at least a part of the second
`document, resulting in at least one object
`including at least one reference to at least one
`of the plurality of original values of at least
`one of the plurality of original documents;
`code for receiving a user selection of one or
`more computer-readable semantic tags;
`code for receiving a user selection of one or
`more of the original values;
`code for mapping the one or more of the
`computer-readable semantic tags to the one or
`more of the original values;
`code for outputting a presentation that is
`based on at least a portion of the at least one
`object, the presentation capable of including
`at least a portion of the original values
`including the at least one original value,
`where the computer program product is
`configured such that, based on the at least one
`reference of the at least one object to the at
`least one original value of the at least one
`original document, a change to the at least one
`original value of the at least one original
`document results in a corresponding change
`in an instance of the presentation;
`code for outputting a report that is based on at
`least a portion of the at least one object, the
`(cid:5)(cid:7)(cid:1)
`
`storing a plurality of original documents
`including a plurality of original values,
`including a first document including first
`values and a second document including
`second values;
`processing at least a part of the first document
`and at least a part of the second document,
`resulting in at least one object including at
`least one reference to at least one of the
`plurality of original values of at least one of
`the plurality of original documents;
`receiving a user selection of one or more
`computer-readable semantic tags;
`receiving a user selection of one or more of
`the o