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`Exhibit 7A
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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 2 of 29 PageID #: 3125
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 12-1595-LPS
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`C.A. No. 12-1596-LPS
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`C.A. No. 12-1597-LPS
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`C.A. No. 12-1599-LPS
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`LG ELECTRONICS, INC.,
`LG ELECTRONICS USA, INC. and
`LG ELECTRONICS MOBILECOMM U.S.A.,
`INC.,
`
`Defendants.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`APPLE INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`BLACKBERRY LIMITED and
`BLACKBERRY CORPORATION,
`
`Defendants.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MICROSOFT MOBILE, INC.,
`
`Defendants.
`
`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 3 of 29 PageID #: 3126
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`C.A. No. 12-1601-LPS
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`C.A. No. 12-1602-LPS
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`C.A. No. 13-919-LPS
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`C.A. No. 13-920-LPS
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`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`SONY MOBILE COMMUNICATIONS (USA)
`INC., f/k/a SONY ERICSSON MOBILE
`COMMUNICATIONS (USA) INC.,
`SONY CORPORATION and
`SONY CORPORATION OF AMERICA,
`
`Defendants.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`OATH HOLDINGS INC. and
`OATH INC.,
`
`Defendants.
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 4 of 29 PageID #: 3127
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`DECLARATION OF EDWARD A. FOX, PH.D.
`
`I, Edward A. Fox, of Blacksburg, Virginia, hereby declare as follows:
`
`I.
`
`INTRODUCTION AND SCOPE OF WORK
`
`I have been retained by Paul Hastings LLC to provide consultation and expert opinions
`
`regarding technical issues raised in the above-captioned matters for Google LLC and Motorola
`
`Mobility LLC f/k/a Motorola Mobility, Inc. This Declaration reflects my personal knowledge.
`
`If I were called as a witness, I would and could competently testify to the facts and opinions set
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`forth in this declaration.
`
`II.
`
`BACKGROUND AND QUALIFICATIONS
`
`1.
`
`In formulating my opinions, I have relied upon my knowledge, training, and
`
`experience in the relevant art. My background and qualifications are stated more fully in my
`
`curriculum vitae, which has been provided as Appendix A. Here I provide a brief summary.
`
`2.
`
`My education includes a B.S. in Electrical Engineering (Computer Science
`
`Option) from the Massachusetts Institute of Technology (MIT) in 1972, followed by an M.S. in
`
`Computer Science from Cornell University in 1981. I received a Ph.D. in Computer Science
`
`from Cornell University in 1981. My undergraduate advisor was JCR Licklider, then Director of
`
`Project MAC, who, when working at DARPA, managed projects that led to the Internet. My
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`graduate advisor was Gerard Salton, often called the father of information retrieval (the field that
`
`works with search engines). My doctoral dissertation (1983) considered bibliographic records
`
`with author names, document text analysis, text matching, and database calls.
`
`3.
`
`Before college, starting in 1965, I took courses about computing, first at
`
`Columbia University on Saturdays, and then at Stevens Institute of Technology in the summer,
`
`working with parsing and analysis of text files. As an undergraduate at MIT, I worked with early
`
`editors and text processors. During one summer job, I worked to explore how to automate
`
`
`
`1
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 5 of 29 PageID #: 3128
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`newspapers, including studying the latest electronic publishing technologies. My B.S. thesis
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`concerned collecting electronic texts, document text analysis, searching over a collection, and
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`text matching such as of queries with documents. During another summer I programmed a PDP-
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`8 with display processor and light pen, exploring early human-computer interaction methods and
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`user interfaces. During the academic year I was paid to help users of early time sharing
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`computers such as CTSS. As founder of the Student Information Processing Board (SIPB, still
`
`operating at MIT), I interacted with many around campus with computing systems, helping
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`students gain access.
`
`4.
`
`I have been a Professor of Computer Science for more than 35 years, teaching
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`courses each year, including about information retrieval, digital libraries, hypertext, database
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`management, and multimedia as well as textual information. From September 1983 through
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`May 1988, I served as an Assistant Professor of Computer Science at Virginia Polytechnic
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`Institute and State University (Virginia Tech). I served Virginia Tech as an Associate Professor
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`until April 1995, when I was promoted to Professor. I have continued in that capacity since, but
`
`also became a Professor, by courtesy, in Virginia Tech’s Department of Electrical and Computer
`
`Engineering, in February 2016. Since January 1998, I have been the Director of the Digital
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`Library Research Laboratory at Virginia Tech. From June 1990 to June 2014, I was the
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`Associate Director for Research at Virginia Tech’s Computing Center, a position that evolved to
`
`Faculty Advisor to Information Technology. I have (co)advised more than 76 graduate students
`
`for their dissertation/thesis/project. I received an award on 16 October 2015 for Research Impact
`
`in Human-Computer Interaction, conferred by the VT Center for HCI, for which I served as a
`
`founding member; my relevant activities included working on information visualization, user
`
`
`
`2
`
`

`

`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 6 of 29 PageID #: 3129
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`interfaces, forms for managing information, and connections with database and information
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`retrieval systems.
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`5.
`
`Before that, from August 1982 to April 1983, I was Manager of Information
`
`Systems at the International Institute of Tropical Agriculture, in Ibadan, Nigeria, where I helped
`
`with automation of library operations. From September 1978 to August 1982, I was Instructor,
`
`Research Assistant, and Teaching Assistant at the Department of Computer Science at Cornell
`
`University. From September 1972 to August 1978, in Florence, SC, I was the Data Processing
`
`Manager in the Vulcraft Division of NUCOR Corporation. From September 1971 to June 1972,
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`I was a Data Processing Instructor at Florence Darlington Technical College.
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`6.
`
`While at Vulcraft, I led implementation of a system for payroll, and supported the
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`sales department. These activities involved working with names and addresses, pulling that
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`information from databases, inserting names and addresses into documents and forms, and
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`allowing editing and updating of those names and addresses.
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`7.
`
`During the summer of 1979, I worked at IBM FSD in Owego, NY. There I
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`served as assistant to the database administrator. I worked with System R, often regarded as the
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`first large relational database system, which was a precursor to other IBM products like DB2.
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`Also during my period at Cornell, I served as graduate teaching assistant for a course on database
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`management. By 1982 I had led implementation of a new version of the SMART system, a
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`research vehicle for study of search engines. This stored information in the INGRES database
`
`management system, allowing pulling out from the database of information like names. It
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`supported document text analysis, text matching, and database calls.
`
`8.
`
`I am a member of the Association for Computing Machinery (ACM) (since 1967)
`
`and its Special Interest Group on Information Retrieval (SIGIR), which I served from 1987-1995
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`
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`3
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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 7 of 29 PageID #: 3130
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`as vice chairman and then chairman. I served from 1988-1991 on the ACM Publications Board,
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`and now again serve on that Board as co-chair of its Digital Libraries Committee. ACM has
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`awarded me seven recognition of service awards. I am a Fellow of ACM (cited for contributions
`
`in information retrieval and digital libraries) and a Fellow of the Institute of Electrical and
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`Electronics Engineers (IEEE) (cited for leadership in digital libraries and information retrieval),
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`as well as a member of IEEE-CS. Regarding its Technical Committee on Digital Libraries, I
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`served through 2018 on its Executive Committee, and was its chairman 2004-2008. I also am a
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`member of the Association for Information Science & Technology and Sigma Xi (since 1972).
`
`9.
`
`Since 1987, I have led activities so that theses and dissertations could be prepared,
`
`archived, and made accessible in electronic forms (e.g., over the World Wide Web). Since 1996,
`
`I have served as Executive Director of the Networked Digital Library of Theses and
`
`Dissertations (NDLTD), which was incorporated in 2003. I also serve as Founder and Chairman
`
`of the Board for NDLTD, which now has over 5 million records for theses and dissertations in its
`
`Union Catalog. Since the beginning, this work has concerned electronic publishing, including
`
`use of word processors, with varied formats of textual documents, including Word and PDF, and
`
`related handling of metadata, including author names, as well as related search and archiving
`
`technologies and standards.
`
`10.
`
`Since December 2018, I have served as Chief Technology Officer for Mayfair
`
`Group, LLC. Mayfair develops World Wide Web based services that include the application of
`
`natural language processing, machine learning, and other technologies to summarizing text
`
`documents.
`
`11.
`
`I have been the recipient of a number of honors and awards relating to my work in
`
`information retrieval and other areas. One related honor, at Virginia Tech, is the XCaliber
`
`
`
`4
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 8 of 29 PageID #: 3131
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`Award 2016 “for extraordinary contributions to technology-enriched learning activities” for the
`
`project “Enhanced problem-based learning connecting big data research with classes.” I have
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`taught
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`classes
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`on
`
`information
`
`retrieval
`
`since
`
`the
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`early
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`1980s
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`and
`
`about
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`multimedia/hypertext/information access since the early 1990s.
`
`12.
`
`I have held numerous board positions in various editorial, professional, and
`
`industry organizations and groups. For example, I served from 2010-2013 as an elected member
`
`of the Computing Research Association Board, broadly representing the U.S. computing research
`
`community.
`
`13.
`
`I have a background in many of the key areas related to handling information with
`
`computers, including information retrieval, digital libraries, Web archiving, and related human-
`
`computer interaction. This work involves theory, algorithms, systems, interfaces, and user
`
`studies, specifically involving search engines, database management, big data, data analytics,
`
`machine learning, and natural language processing.
`
`14.
`
`In these areas, I have participated in, organized, and presented at numerous
`
`conferences and workshops, and have conducted 84 tutorials in over 28 countries. I have
`
`received 130 grants to fund my research and have (co)authored 19 books and edited book series
`
`for two publishers. I have (co)supervised over 77 doctoral or masters students. In addition, I
`
`have (co)authored 132 journal or magazine articles. I have 627 related keynotes, papers, book
`
`chapters, posters, demonstrations, and reports as well as over 345 other presentations. Google
`
`Scholar has reported that my works have been cited 17,400 times, with an h-index of over 58 and
`
`i10-index of over 240. Topics covered in the above-mentioned works include: computers,
`
`programs, files, memory, access, communication, networks, links, linked data, representations,
`
`tables, databases, servers, World Wide Web, HTML, proxies, hypertext, hypermedia, and
`
`
`
`5
`
`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 9 of 29 PageID #: 3132
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`queries. Since the late 1980s, my research has dealt with document text analysis, text matching,
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`hypertext creation, distributed processing including Application Programming Interfaces
`
`(“APIs”) and other communication mechanisms, building and using database systems, and
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`applications with user interfaces.
`
`15.
`
`I have been involved in numerous software and information systems projects and
`
`products over the years and have supervised hundreds of student team projects of these types. I
`
`have managed workstations since 1982, have worked with Apple Macintosh computers since
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`1985, and have employed WWW browsers since 1993.
`
`16.
`
`I am an inventor on U.S. Patent No. 7,346,621, issued March 18, 2008, titled
`
`“Method and System for Ranking Objects Based on Intra-type and Inter-type Relationships.” I
`
`have a general understanding of the U.S. patent prosecution process and of the novelty and non-
`
`obviousness requirements for patentability.
`
`17.
`
`I am not, and have never been, an employee of the Plaintiff Arendi S.A.R.L., or of
`
`any of the defendants of the cases captioned above.
`
`18.
`
`I have received no compensation for this Declaration beyond my normal hourly
`
`compensation based on my time actually spent studying the matter and working on the
`
`Declaration, and I will not receive any added compensation based on the outcome of the above-
`
`mentioned patent infringement suit.
`
`III.
`
`INDEFINITENESS
`
`19.
`
`I understand from counsel that claims may be written in means-plus-function
`
`form. The scope of such claims encompasses the structure disclosed in the specification
`
`corresponding to the function described by the means-plus-function claim language and
`
`equivalents thereof. I further understand that when the disclosed structure of a means-plus-
`
`function claim is merely a computer that is programmed to carry out an algorithm, the disclosed
`6
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 10 of 29 PageID #: 3133
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`structure is not the general purpose computer, but rather that special purpose computer
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`programmed to perform the disclosed algorithm. Thus, where a patent describes only a special
`
`purpose computer-implemented means-plus-function limitation, the specification must disclose
`
`an algorithm for performing the claimed function. In the absence of such disclosure, I
`
`understand that the claim is indefinite and invalid.
`
`20.
`
`I further understand that mere reference to a general purpose computer being
`
`appropriately programmed, but without providing an explanation of
`
`the appropriate
`
`programming, or simply reciting “software” without providing detail about the means to
`
`accomplish a specific software function, would not be an adequate disclosure of the
`
`corresponding structure to satisfy the requirements of definiteness under U.S. patent law.
`
`Further, merely referencing a specialized computer (e.g., a “bank computer”), some undefined
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`component of a computer system (e.g., “access control manager”), “logic,” “code,” or elements
`
`that are essentially a black box designed to perform the recited function, will not be sufficient
`
`because there must be some explanation of how the computer or the computer component
`
`performs the claimed function.
`
`21.
`
`I understand that a patentee may express the algorithm in any understandable
`
`terms, including as a mathematical formula, in prose, as a flow chart, or in any other manner that
`
`provides sufficient structure. I further understand that the specification must disclose an
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`algorithm sufficient to perform the entire claimed function, not merely parts of the claimed
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`function.
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`22.
`
`I understand that it is irrelevant to the indefiniteness inquiry whether a person of
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`ordinary skill in the art would find it obvious to derive the otherwise missing algorithm. The
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`algorithm must be clearly and explicitly disclosed in the specification of the patent.
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`
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`7
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 11 of 29 PageID #: 3134
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`IV. MATERIALS CONSIDERED
`In preparing this declaration I have reviewed, among other things, (1) U.S. Patent
`23.
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`No. 7,496,854 (“the ‘854 Patent”); (2) the file history of the ‘854 Patent; (3) the IPR Petition and
`
`Decision for IPR2014-00206 and IPR2014-00207, both of which concern the ‘854 Patent; and
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`(4) the parties Joint Claim Construction Chart submitted to the Court on May 29, 2019.
`
`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`
`24.
`
`In my opinion, a person of ordinary skill in the art pertaining to the ‘854 Patent in
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`1998 (the date from which I understand the ‘854 Patent claims priority) would have at least a
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`Bachelor’s degree in Computer Science or Electrical Engineering or related discipline, and
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`approximately two years experience designing applications using databases. I consider myself to
`
`be a person of ordinary skill in the art under this definition.
`
`VI.
`
`THE ‘854 PATENT
`
`25.
`
`In its submissions to the PTAB as part of an IPR proceedings relating to U.S.
`
`Patent No. 7,496,854 (“the ‘854 Patent”), Arendi generally described the ‘854 Patent as being
`
`“directed, among other things, to computer-implemented processes for automating a user’s
`
`interaction between a first application, such as a word processing application or spreadsheet
`
`application, on the one hand, and a second application, such as contact management application
`
`having a database, on the other hand.” IPR2014-00206, Preliminary Response, p. 2. For
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`purposes of my analysis, I will accept this description.
`
`26.
`
`The only structure disclosed by the ‘854 Patent for implementing the claimed
`
`system and methods is a general purpose computer system. The patent illustrates the computer
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`system as follows:
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`
`
`8
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 12 of 29 PageID #: 3135
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`With respect to Figure 16, the specification states:
`
`
`
`FIG.16 is a schematic illustration of a computer system for
`implementing the single button addressing according to the present
`invention. A computer 200 implements the method of the present
`invention, wherein the computer includes, for example, a display
`device 202, such as a conventional display device or a touch screen
`monitor with a touch screen interface, etc., a keyboard 204, a
`pointing device 206, a mouse pad or digitizing pad 208, a hard disk
`210, or other fixed, high density media drives, connected using an
`appropriate device bus (e.g., a SCSI bus, an Ultra DMA bus, a PCI
`bus, etc.), a floppy drive 212, a tape or CD ROM drive 214 with
`tape or CD media 216, or other removable media devices, such as
`magneto-optical media, etc., and a mother board 218. The mother
`board 218 includes, for example, a processor 220, a RAM 222, and
`ROM 224 (e.g., DRAM, ROM, EPROM, EEPROM, SRAM,
`SDRAM, and Flash RAM, etc.), I/O ports 226 which may be used
`to couple to external devices, networks, etc., (not shown), and
`optional special purpose
`logic devices
`(e.g., ASICs) or
`configurable logic devices (e.g., GAL and re-programmable
`FPGA) 228
`for performing specialized hardware/software
`functions, such as sound processing, image processing, signal
`processing, neural network processing, object character recognition
`(OCR) processing, etc., a microphone 230, and a speaker or
`speakers 232.
`
`
`
`9
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 13 of 29 PageID #: 3136
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`‘854 Patent, 9:3-26. Because the specification describes only a general purpose computer
`
`system, I understand that the corresponding structure for any means-plus-function term in the
`
`‘854 Patent reciting software functionality must be in the form of an algorithm described in the
`
`specification. A person of ordinary skill in the art would understand that naming a function, or
`
`stating that a function is carried out, or describing a user interface that shows the result of a
`
`function, in nowise is giving the algorithm for that function.
`
`VII. ANALYSIS OF THE DISPUTED CLAIM TERMS
`
`A.
`
`“[means for marking /means for identifying] without user intervention”
`“[means/computer-readable medium . . . including program instructions] . .
`to analyze the document, without direction from the operator, to identify text
`in the document . . . ”
`
`27.
`
`Claims 13, 31, 50, 79 98, and 101 include means-plus-function claim language
`
`that purports to cover the function of marking, identifying, or analyzing to identify information
`
`provided by a user for the purpose of using that marked, identified, or analyzed information with
`
`a second application program. Such marking or identification happens without any intervention
`
`or direction from the user.
`
`The specific claim language at issue is as follows:
`
`1.
`
`2.
`
`3.
`
`“means for marking without user intervention the first information to alert
`the user that the first information can be utilized in a second application
`program” Claims 13, 31.
`
`“means for identifying without user intervention or designation the first
`information” Claim 50, 79.
`
`“[means/computer-readable medium including program instructions] for
`using a first computer program to analyze the document, without direction
`from the operator, to identify text in the document that can be used to
`search for related information” Claims 98, 101
`
`28.
`
`I have carefully studied the ‘854 Patent, including the specification, figures, and
`
`claims. It is my opinion as a person of ordinary skill in the art that the ‘854 Patent fails to
`
`
`
`10
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`

`

`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 14 of 29 PageID #: 3137
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`disclose, in its passages, alone or collectively, any algorithm that describes how the general
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`purpose computer system of Figure 16 performs the claimed marking, identifying, or analyzing
`
`to identify functions of claims 13, 31, 50, 79, 98, and 101.
`
`29. With respect to the particular claim term “means for marking without user
`
`intervention the first information to alert the user that the first information can be utilized in the
`
`second application program” found in both claims 13 and 31, I understand that Arendi cites to
`
`the following passages in the specification as disclosing the necessary algorithm: Col. 2 ll. 35-39;
`
`Col. 3 ll. 48-49; Col. 4 ll. 25-39, 46-49, 54-57, 62-65; Col. 5 ll. 9-22, 37-39; Col. 6 ll. 14-24, 36-
`
`39, 48-57; Col. 7 ll. 4-14, 20-24, 34-47, 52-60; Col. 8, ll. 5-7, 18-24, 37-39, 48-51, 64-67; Col. 9
`
`ll. 1-52; Figs. 1, 2, 6, 9, 10, 11, 16 and accompanying text. I have carefully reviewed each of
`
`these citations, and I do not believe that they disclose, alone or collectively, to a person of
`
`ordinary skill in the art, an algorithm for the function of “marking without user intervention the
`
`first information to alert the user that the first information can be utilized in the second
`
`application.”
`
`30.
`
`For example, Arendi points to a passage in the specification that uses the word
`
`“marked”: “[t]he user commands the button 42, for example, marked ‘OneButton,’ . . .” (‘854
`
`Patent, 6:47-48, and see 6:14, 7:34), but that use of the term concerns a button that already
`
`contains a label “OneButton.” It has no relevance to the act of a program marking a word
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`without user intervention in conformance with the claims’ recited functionality.
`
`31.
`
`Other cited passages are devoid of any discussion of marking at all, and only
`
`vaguely describe a high level black-box process that occurs during and/or after any marking
`
`would happen. They point out that marking occurs, but do not explain how. For example,
`
`Arendi cites to the passage at 3:48-49, which states: “[a] program then executes and retrieves the
`
`
`
`11
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`

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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 15 of 29 PageID #: 3138
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`typed information from the document.” Nothing here informs a person of ordinary skill in the art
`
`of an algorithm for marking text without user intervention. The passage provides only that some
`
`undefined “typed information” is retrieved from the document. It is unknown from this passage
`
`if such typed information was “marked” without user intervention, let alone what algorithm
`
`would have been used to implement the marking. A person of ordinary skill in the art is left to
`
`wonder how what is retrieved is identified; no algorithm for that is provided. Other cited
`
`passages similarly describe actions that happen after marking occurs, but do not describe the
`
`marking process or the algorithm for implementing it, e.g., “[i]f the program finds more than one
`
`possible contact/address match, at step 20 the program displays menu choices to the user to let
`
`him choose an appropriate answer.” ‘854 Patent, 4:46-49. There is no algorithm given for the
`
`finding, matching, or identification of what is found.
`
`32.
`
`As a further example, Arendi points to Figure 1 and accompanying text as
`
`disclosing an algorithm for marking without user intervention:
`
`
`
`12
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`

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`33.
`
`A study of the figure readily shows that not a single box concerns marking
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`information without user intervention. For example, the figure omits reference to marking
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`between step 2, where the user presses the button to start the process of document analysis for
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`finding relevant text, and step 6, where the process determines what was found in the document.
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`Step 4 (the only step shown between step 2 and step 6) refers only to analysis, but no explanation
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`is given of how analysis is to be carried out. Having worked for over thirty years on document
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`analysis (which sometimes involves information extraction), and knowing how complex and
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`varied are each of the numerous approaches to this function (e.g., parsing, tokenizing, string
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`matching, table lookup, named entity recognition), I am left to wonder which of many possibly
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`applicable algorithms might be adapted and customized in step 4 to help solve the difficult
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`problem of how to “analyze what the user has typed in the document”. At best, marking might
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`happen after step 4, but Figure 1 has no box between those of steps 4 and 6, and provides no
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`information or detail about such marking. Arendi’s citation to Figure 2 and the other figures is
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`similarly lacking.
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`34.
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`Further, the act of marking without user intervention is itself non-trivial and the
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`specification does not explain if the marking of the identified or retrieved text is done with some
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`internal data structure (such as indicating starting and ending points) or in a visible way to alert
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`the user such as by highlighting, change of font, change or color, italicization or underlining of
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`the text, or some combination of these or other actions. Further, the specification does not show
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`how marking can be performed without user intervention, such as, for example, using an API of
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`the word processor or spreadsheet.
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`35.
`
`I note that the PTAB found that the specification of the ‘854 Patent provided no
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`corresponding algorithm for the claim term “means for marking without user intervention the
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`13
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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 17 of 29 PageID #: 3140
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`first information to alert the user that the first information can be utilized in the second
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`application program” in claims 13 and 31. See IPR2104-00206, Petition, p. 10; Decision, p. 9-
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`10; IPR2014-00207 Petition, p. 9; Decision, p. 8-9.
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`36. With respect to the claim terms “means for identifying without user intervention
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`or designation the first information” found in both claims 50 and 79, I understand that Arendi
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`cites to the following passages in the specification as disclosing the necessary algorithm: Col. 2
`
`ll. 35-39; Col. 3 ll. 48-49; Col. 4 ll. 25-39. Col. 5 ll. 9-22, 66-67; Col. 6 ll. 4-5, 14-24, 36-39, 48-
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`59; Col. 7 ll. 3-4, 19-23, 34-35; Col. 8 ll. 5-7, 18-19, 48-51, 60-62, 64-67; Col. 9 ll. 1-52; Col. 10
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`ll. 23-27; Figs. 1, 2, 16 and accompanying text. I have carefully reviewed each of these citations,
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`and I do not believe that they disclose, alone or collectively, to a person of ordinary skill in the
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`art, an algorithm for the claimed function of “identifying without user intervention or designation
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`the first information.”
`
`37.
`
`None of the citations to the specification of the ‘854 Patent identified by Arendi
`
`actually use the word “identifying”. Indeed, other than in the claims, I find no occurrence in the
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`specification of any string starting with “identif”. In fact, the term is used only in the claims.
`
`38.
`
`Further, Arendi’s citations to the specification merely state that information is
`
`identified by the program without user intervention. Nowhere does the specification (cited by
`
`Arendi or otherwise) explain how the information is identified or how the identification
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`algorithm operates. For example, Arendi cites to the ‘854 Patent’s statement that “the program
`
`according to the present invention retrieves the existing contact 44 from the document.” ‘854
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`Patent, 7:3-4. In the case that a person of ordinary skill in the art interprets the act of retrieving
`
`to be analogous to identifying, they would understand that this statement posits nothing more
`
`than the fact that the program engages in the act of identifying information. It reveals no
`
`
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`14
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`algorithm defining the identifying process itself. In the alternate case that a person of ordinary
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`skill in the art interprets the act of retrieving as requiring a prior step of identifying the existing
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`contact from the document, it is even more clear that no algorithm is given for this implied prior
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`step. Similarly, in another example, Arendi cites to the statement that “the present invention
`
`retrieves the existing contact 44 from the document,” ‘854 Patent, 8:18-19. Again, assuming
`
`retrieving information is analogous to identifying information, this passage does not provide any
`
`algorithm explaining the actual process of identifying information without user intervention or
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`designation. Also, assuming the act of retrieving requires a prior step of identifying the existing
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`contact from the document, it is clear that no algorithm is given for this implied prior step.
`
`39.
`
`I note that the PTAB found that the specification of the ‘854 Patent provided no
`
`corresponding algorithm for the claim term “means for identifying without user intervention or
`
`designation the first information” in claims 50 and 79. See IPR2104-00206, Petition, p. 10-11;
`
`Decision, p. 9-10; IPR2014-00207 Petition, p. 12; Decision, p. 8-9.
`
`40. With respect to the claim terms “[means/computer-readable medium . . . including
`
`program instructions] for using a first computer program to analyze the document, without
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`direction from the operator, to identify text in the document that can be used to search for related
`
`information” in claims 98 and 101, I understand that Arendi cites to the following passages in the
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`specification as disclosing the necessary algorithm (the same as those identified for the “means
`
`for identifying” term of claims 50 and 79): Col. 2 ll. 35-39; Col. 3 ll. 48-49; Col. 4 ll. 25-39. Col.
`
`5 ll. 9-22, 66-67; Col. 6 ll. 4-5, 14-24, 36-39, 48-59; Col. 7 ll. 3-4, 19-23, 34-35; Col. 8 ll. 5-7,
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`18-19, 48-51, 60-62, 64-67; Col. 9 ll. 1-52; Col. 10 ll. 23-27; Figs. 1, 2, 16 and accompanying
`
`text. These are the same passages cited by Arendi in support of “means for identifying without
`
`user intervention or designation the first information.” I have carefully reviewed each of these
`
`
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`15
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`Case 1:13-cv-00919-LPS Document 117-1 Filed 06/19/19 Page 19 of 29 PageID #: 3142
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`citations, and I do not believe that they disclose, alone or collectively, to a person of ordinary
`
`skill in the art, an algorithm for the function of analyzing the document, without direction from
`
`the operator, to identify text in the document that can be used to search for related information.
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`See above for discussion that the specification includes no such algorithm, as is explained when
`
`discussing the lack of an algorithm to “analyze” or to “identify”.
`
`41.
`
`Arendi cites to the sole portion of the ‘854 declaration that uses the word
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`“analyzing” or its variations as disclosing an algorithm that describes the “analyzing” function:
`
`In FIG.1, after the user has inserted the address in the word
`processor, the user commands the button at Step 2 and the program
`analyzes what the user has ty