Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 1 of 24 PageID #: 31279
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`ARENDI S.A.R.L.,
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
`
`Defendant.
`
`ARENDI S.A.R.L,
`
`Plaintiff,
`
` v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC..
`
`Defendant.
`
`C.A. No. 13-919-LPS
`
`Original Version Filed: March 5, 2021
`Public Version: March 11, 2021
`
`C.A. No. 12-1601-LPS
`Original Version Filed: March 5, 2021
`Public Version: March 11, 2021
`
`DECLARATION OF EUGENE LHYMN
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`I, Eugene Lhymn, declare as follows:
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`1.
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`I am over 21 years of age, and have personal knowledge of, and am competent to
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`testify, regarding the following.
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`1
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 2 of 24 PageID #: 31280
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`2. I am currently CEO and Founder of Sherman Patent Search Group (SPSG), a patent search
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`firm headquartered in Pasadena, CA, with offices in Washington, D.C. SPSG is a medium-sized
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`search firm that has technical experience that spans across all technology areas.
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`3. I graduated from Penn State University with a bachelor’s degree in mechanical engineering
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`in 2004.
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`4. Between 2000 and 2004, I held various engineering positions at Bayer Corporation,
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`Applied Research Lab (PSU), and Air Products and Chemicals.
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`5. Between 2004 and 2005, I was a patent examiner in the Art Unit 3727 (mechanical) at the
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`United States Patent and Trademark Office.
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`6. Between 2005 and 2012, I was a senior patent analyst at Cardinal IP, where I performed
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`patent searching
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`7. I have extensive patent searching experience. Throughout my career as a private and public
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`patent searcher, I have performed approximately 2,500 searches. In addition to these searches, I
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`have performed a managing role for another approximately 4,500 patent searches. I have
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`personally performed more than 250 searches in the software field.
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`8. I have been asked by counsel for Arendi S.à.r.l. whether certain references could have been
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`found by a skilled searcher’s diligent search. I have been told that one way of showing a skilled
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`searcher’s diligent search is (1) to identify the relevant search string and search source that would
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`identify the allegedly unavailable prior art and (2) present evidence, likely expert testimony, why
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`such a criterion would be part of a skilled searcher’s diligent search.
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`9. Specifically, I have been asked to provide an opinion as to whether the prior art references
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`mentioned below would have been located by a skilled searcher’s diligent search, used by the
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`defendant on December 2, 2014 or at any time during the four months preceding that date (the
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`2
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 3 of 24 PageID #: 31281
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`“timeframe”) by someone searching for patents in the technical field of the ’843 Patent. I
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`understand that Motorola Mobility LLC and Google LLC (collectively, “Defendants”) filed for
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`inter partes review (“the IPR”) in connection with the U.S. Patent No. 7,917,843 (the ’843 patent)
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`on December 2, 2014. In particular, I focused on the subject matter of Claims 1, 8, 23, 30 of the
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`’843 Patent. Claim 8 depends from Claims 1, so the subject matter of Claim 1 was necessarily a
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`part of my search regarding Claim 8. Claim 30 depends from Claim 23, so the subject matter of
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`Claim 23 was necessarily a part of my search regarding Claim 30.
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`10. A skilled searcher conducting a diligent search with regard to Claims 1, 8, 23, 30 of the
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`’843 patent in the timeframe would have conducted a search for prior art references to the ’843
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`patent in a variety of ways, including using search terms, patent classification codes, citations,
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`cross-citations among prior art references, assignee-based searching, inventor-based searching,
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`jurisdiction-based searching, and/or combinations thereof. For Claims 1, 8, 23, 30 of the ‘843
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`Patent, the relevant classifications include at least:
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`•
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`IPC class G06F (ELECTRIC DIGITAL DATA PROCESSING), subclass 17* (all
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`subclasses under 17/00 - Digital computing or data processing equipment or methods,
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`specially adapted for specific functions).
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`• CPC class Y10S (TECHNICAL SUBJECTS COVERED BY FORMER USPC CROSS-
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`REFERENCE ART COLLECTIONS [XRACs] AND DIGESTS), subclass 715* (all
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`subclasses under 715/00 - Data processing: presentation processing of document, operator
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`interface processing, and screen saver display processing)
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`• CPC class G06F (ELECTRIC DIGITAL DATA PROCESSING)
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`11. A skilled searcher would have conducted a prior art search for the ’843 patent using a
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`variety of prior art search databases, including both patent and non-patent literature databases. A
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`3
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 4 of 24 PageID #: 31282
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`skilled searcher would also have conducted a prior art search for the ’843 patent using prior art
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`search databases indexing English language references as well as foreign language references. I
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`was personally familiar with several prior art search tools available throughout the timeframe,
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`including Patbase, which is a prior art search tool that provides prior art searching functionality
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`across patent prior art databases in both English and foreign languages. Patbase includes (and did
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`include during the timeframe) search features to search across all patent fields, including titles,
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`abstracts, summaries, claims, detailed description, classification codes, citations, and full text.
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`Patbase also includes English titles and abstracts of foreign language references. A skilled searcher
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`during the timeframe would have understood this and, using Patbase as one of their search tools,
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`would have used English keywords to search for prior art references.
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`12. A skilled searcher would also have searched all prior art references cited on the face of the
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`’843 patent. A skilled searcher during the timeframe would have examined every prior art
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`reference listed on the face of the ’843 for potential relevance. Non-patent literature (NPL)
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`references cited on the face of the ‘843 patent would have been located by utilizing PAIR, ordering
`
`the File Wrapper from the USPTO, or by visiting the USPTO library and obtaining the physical
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`File Wrapper, which includes copies of cited NPL references.
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`13. A skilled searcher would have frequently searched prior art references cited on the face of
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`prior art references reviewed during the search. This process is known as citation searching. For
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`example, as a search string hits list is reviewed, it is common for a skilled searcher to also review
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`prior art references listed on the face of the reviewed prior art references in the hit list. A skilled
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`searcher during the timeframe would have performed such citation searching. Non-patent
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`literature (NPL) references cited on the face of prior art references would have been located by
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`4
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 5 of 24 PageID #: 31283
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`utilizing PAIR, ordering the File Wrapper from the USPTO, or by visiting the USPTO library and
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`obtaining the physical File Wrapper, which includes copies of cited NPL references.
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`14. A skilled searcher would have used multiple different techniques for identifying prior art
`
`references, including generating search strings using terms from the claim and specification
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`language of the patent at issue. A skilled searcher during the timeframe would have generated and
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`used multiple different search strings, and variations thereof, to identify relevant references, and
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`would have run each of these search strings in prior art searching tools, such as Patbase. These
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`search strings would have been generated in a variety of ways, including using terms from the ’843
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`patent claims and synonyms of those terms, different logical search operators (e.g., AND, OR),
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`and proximity operators to require combinations of terms together. Based on my experience and
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`review of Claims 1, 8, 23, and 30 of the ’843 patent, it is my opinion that a skilled searcher during
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`the timeframe would have generated at least the following search strings and used these search
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`strings to located prior art references related to the subject matter of Claims 1, 8, 23, and 30:
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`• SFT1=((word* w2 process*) and ((search* w8 database*) w25 address*)) and
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`STAC2=((search* w8 database*) and updat*) This string incorporates terms that appear in
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`the specification of the ’843 patent.
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`• SFT=((word w5 process*) and database and (menu)) This string incorporates terms that
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`appear in the specification of the ’843 patent.
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`• SFT=(((search* w40 database) w40 address*) w40 (word w5 process*)) This
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`string
`
`incorporates terms that appear in the specification of the ’843 patent.
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`
`
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`1 SFT is a Boolean command that searches for the keywords in the full-text in the same document
`2 STAC is a Boolean command that searches for the keywords in the title, abstract, or claims in the same document
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`5
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 6 of 24 PageID #: 31284
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`15.
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`In addition to running each of the search strings identified above, a skilled searcher
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`would have additionally combined these search strings with one or more classification codes in
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`order to further narrow the field of search to relevant prior art references that satisfy the search
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`string and that are labelled with the searched classification code. Example classification codes
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`that are relevant to the ’843 patent are identified above. Based on my experience and review of
`
`the ’843 patent (including Claims 1, 8, 23, 30), it is my opinion that a skilled searcher in the
`
`timeframe would have performed some combined prior art searching by combining one or more
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`of the classification codes identified above with the search strings identified above.
`
`16. I conducted an investigation in March 2021 to determine whether the prior art references
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`below would have been identified by a skilled searcher in the timeframe using available prior art
`
`searching resources. As part of this investigation, I ran the search strings that a skilled searcher
`
`would have generated to identify relevant prior art references for Claims 1, 8, 23, 30 of the ’843
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`patent through prior art searching tools available and widely used by prior art searchers in
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`December 2014 (Patbase). Based on my experience, Patbase works in the materially same way as
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`it did during the timeframe.
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`17. In addition, I reviewed references cited on the face of the ‘843 patent, references cited in
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`those sources, and references cited on the face of patents that the search strings returned. Based
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`on my prior art searching experience and this investigation, it is my opinion that each of these prior
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`art references (listed below) would have been readily identified by a skilled searcher conducting a
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`diligent search in the timeframe using, at least, these search strings and the prior art searching tools
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`(Patbase) and/or retrieving cited references. Details on each of these references and how I reached
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`this conclusion for reach of the references is provided below:
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`6
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 7 of 24 PageID #: 31285
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`PRIOR ART
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`A. Pandit, Milind S, and Sameer Kalbag, “The Selection Recognition Agent: Instant
`Access to Relevant Information and Operations,” Knowledge-Based Systems, Vol
`10, No. 5 (March 1998): 305-310.
`
`18. “The Selection Recognition Agent” article is cited on page 4 of the ’843 Patent. In my
`
`opinion a diligent search by a skilled searcher in the timeframe would have carefully searched all
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`prior art references cited on the face of the ‘843 patent, which includes “The Selection Recognition
`
`Agent.” A skilled searcher would then have found and retrieved this reference from the USPTO,
`
`either by visiting the USPTO library for a physical copy of the File Wrapper, online ordering the
`
`File Wrapper from the USPTO, or by downloading from PAIR.
`
`B. CyberDesk References
`
`i. Dey, Anind et al., “Context-Aware Computing: The CyberDesk Project,”
`Papers form the AAAI Spring Symposium, AAAI Technical Report, SS-98-
`02 (1998)
`
`19. “Context-Aware Computing: The CyberDesk Project” is an article cited on page 2 of the
`
`’843 Patent. In my opinion a diligent search by a skilled searcher in the timeframe would have
`
`carefully searched all prior art references cited on the face of the ’843 patent, which includes
`
`“Context-Aware Computing: The CyberDesk Project.” A skilled searcher would then have found
`
`and retrieved this reference from the USPTO, either by visiting the USPTO library for a physical
`
`copy of the File Wrapper, online ordering the File Wrapper from the USPTO, or by downloading
`
`from PAIR.
`
`20. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “Context-Aware Computing: The CyberDesk Project.” The article states, “For more information
`
`on
`
`the
`
`CyberDesk
`
`project,
`
`including . . . other
`
`publications,
`
`see
`
`
`
`
`7
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`

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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 8 of 24 PageID #: 31286
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`http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 1). In my opinion a skilled searcher would have
`
`followed that link and found the other CyberDesk references discussed below posted to that
`
`website. (Ex. 2).3 The article also directly cites: i) Dey, Anind, et al, “CyberDesk: A Framework
`
`for Providing Self-Integrating Context-Aware Services,” Proceedings of the International
`
`Conference on Intelligent User Interfaces (1998): 47-54; ii) Dey, Anind, et al, “CyberDesk: A
`
`Framework for Providing Self-Integrating Ubiquitous Software Services, GVU Technical Report
`
`(1997); Wood, Andrew et al., “CyberDesk: Automated Integration of Desktop and Network
`
`Services,” Proceedings of CHI ’97, Atlanta GA (1997); iv) Apple Data Detectors Webpage, and
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`v) “The Selection Recognition Agent.” (Ex. 1). This also supports my opinion that a diligent search
`
`by a skilled searcher would have returned the other CyberDesk references, the Apple Data
`
`Detectors Webpages reference, and “The Selection Recognition Agent” reference.
`
`ii. Abowd, Gregory, et al., “Applying Dynamic Integration as a Software
`Infrastructure for Context-Aware Computing,” GVU Technical Report,
`GIT-GVU-97-18 (1997).
`
`21. “Applying Dynamic Integration as a Software Infrastructure for Context-Aware
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`Computing” is an article cited on 4 of the ’843 Patent. In my opinion a diligent search by a skilled
`
`searcher in the timeframe would have carefully searched all prior art references cited on the face
`
`of the ’843 patent, which includes “Applying Dynamic Integration as a Software Infrastructure for
`
`Context-Aware Computing.” A skilled searcher would then have found and retrieved this
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`reference from the USPTO, either by visiting the USPTO library for a physical copy of the File
`
`Wrapper, online ordering the File Wrapper from the USPTO, or by downloading from PAIR.
`
`22. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`
`3 That website is materially the same as in 2014. (Ex. 3).
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`8
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 9 of 24 PageID #: 31287
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`in “Applying Dynamic Integration as a Software Infrastructure for Context-Aware Computing.”
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`The article cites: i) “CyberDesk: A Framework for Providing Self-Integrating Context-Aware
`
`Services,” ii) “CyberDesk: Automated Integration of Desktop and Network Services,” iii) “The
`
`Selection Recognition Agent,” iv) Apple Data Detectors Webpage, and v) “The Selection
`
`Recognition Agent.” (Ex. 4). This also supports my opinion that a diligent search by a skilled
`
`searcher would have returned the other CyberDesk references, the Apple Data Detectors Webpages
`
`reference, and “The Selection Recognition Agent” reference.
`
`iii. Dey, Anind, et al., “CyberDesk: A Framework for Providing Self-
`Integrating Context-Aware Services,” Knowledge-Based Systems, Vol. 11,
`No. 1 (Sep. 1998): 3-13,
`
`23. . “CyberDesk: A Framework for Providing Self-Integrating Context-Aware Services” is an
`
`article cited on page 2 of the ’843 Patent. In my opinion a diligent search by a skilled searcher in
`
`the timeframe would have carefully searched all prior art references cited on the face of the ‘843
`
`patent, which includes “CyberDesk: A Framework for Providing Self-Integrating Context-Aware
`
`Services.” A skilled searcher would then have found and retrieved this reference from the USPTO,
`
`either by visiting the USPTO library for a physical copy of the File Wrapper, online ordering the
`
`File Wrapper from the USPTO, or by downloading from PAIR.
`
`24. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “CyberDesk: A Framework for Providing Self-Integrating Context-Aware Services.” The article
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`directly cites: i) “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software
`
`Services,: ii) M. Pinkerton, “Ubiquitous Computing: Extending Access to Mobile Data,” iii)
`
`“Context-Awareness in Wearable and Ubiquitous Computing,” iv) “The Selection Recognition
`
`Agent,” and v) Apple Data Detectors Webpage. (Ex. 5). This also supports my opinion that a
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`diligent search by a skilled searcher would have returned the other CyberDesk references, the
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`9
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 10 of 24 PageID #: 31288
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`Apple Data Detectors Webpages reference, and “The Selection Recognition Agent” reference.
`
`iv. Dey, Anind et al., “CyberDesk: A Framework for Providing Self-
`Integrating Context-Aware Services,” Proceedings of the International
`Conference on Intelligent User Interfaces (Jan. 1998): 47-54.
`
`25. “CyberDesk: A Framework for Providing Self-Integrating Context-Aware Services” is an
`
`article available on http://www.cc.gatech.edu/fce/cyberdesk. It is my opinion that a skilled
`
`searcher in the timeframe would have consulted references in “Context-Aware Computing: The
`
`CyberDesk Project,” as discussed above. The article states, “For more information on the
`
`CyberDesk
`
`project,
`
`including . . . other
`
`publications,
`
`see
`
`http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 1). In my opinion a skilled searcher would have
`
`followed that link and would have found “CyberDesk: A Framework for Providing Self-
`
`Integrating Context-Aware Services,” posted to that website. (Ex. 2).
`
`26. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “CyberDesk: A Framework for Providing Self-Integrating Context-Aware Services.” The article
`
`directly cites: i) “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software
`
`Services,: ii) M. Pinkerton, “Ubiquitous Computing: Extending Access to Mobile Data,” iii)
`
`“Context-Awareness in Wearable and Ubiquitous Computing,” iv) “The Selection Recognition
`
`Agent,” and v) Apple Data Detectors Webpage. (Ex. 6). This also supports my opinion that a
`
`diligent search by a skilled searcher would have returned the other CyberDesk references, the
`
`Apple Data Detectors Webpages reference, and “The Selection Recognition Agent” references.
`
`v. Dey, Anind et al., “CyberDesk: A Framework for Providing Self-
`Integrating Ubiquitous Software Services,” GVU Technical Report, GIT-
`GVU-97-10 (1997)
`
`27. “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software Services”
`
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`10
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 11 of 24 PageID #: 31289
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`is an article cited on page 4 of the ’843 Patent. In my opinion a diligent search by a skilled searcher
`
`in the timeframe would have carefully searched all prior art references cited on the face of the ’843
`
`patent, which includes “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous
`
`Software Services.” A skilled searcher would then have found and retrieved this reference from
`
`the USPTO, either by visiting the USPTO library for a physical copy of the File Wrapper, online
`
`ordering the File Wrapper from the USPTO, or by downloading from PAIR.
`
`28. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software Services.” The
`
`article directly cites: i) “CyberDesk: Automated Integration of Desktop and Network Services,”
`
`ii) “The Selection Recognition Agent,” and v) Apple Data Detectors Webpage. (Ex. 7). This also
`
`supports my opinion that a diligent search by a skilled searcher would have returned the other
`
`CyberDesk references, the Apple Data Detectors Webpages reference, and “The Selection
`
`Recognition Agent” reference.
`
`vi. Dey, Anind et al., “CyberDesk: A Framework for Providing Self-
`Integrating Ubiquitous Software Services,” UIST ’97, Proceedings of the
`10th Annual ACM Symposium on User Interface Software Technology (1997)
`
`29. “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software Services”
`
`is an article available on http://www.cc.gatech.edu/fce/cyberdesk. It is my opinion that a skilled
`
`searcher in the timeframe would have consulted references in “Context-Aware Computing: The
`
`CyberDesk Project,” as discussed above. The article states, “For more information on the
`
`CyberDesk
`
`project,
`
`including . . . other
`
`publications,
`
`see
`
`http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 1). In my opinion a skilled searcher would have
`
`followed that link and would have found “CyberDesk: A Framework for Providing Self-
`
`Integrating Ubiquitous Software Services,” posted to that website. (Ex. 2).
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`
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`11
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 12 of 24 PageID #: 31290
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`30. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software Services.” The
`
`article directly cites: i) “CyberDesk: A Framework for Providing Self-Integrating Ubiquitous
`
`Software Services” (GVU Technical Report), and ii) “CyberDesk: Automated Integration of
`
`Desktop and Network Services.” (Ex. 8). This also supports my opinion that a diligent search by a
`
`skilled searcher would have returned the other CyberDesk references.
`
`vii. Wood, Andrew et al., “CyberDesk: Automated Integration of Desktop and
`Network Services,” CHI 97: Proceedings of the ACM SIGCHI Conference
`on Human Factors in Computing Systems (1997)
`
`31. As discussed above, it is my opinion that a skilled searcher would have consulted
`
`references in “Context-Aware Computing: The CyberDesk Project.” The article states, “For more
`
`information
`
`on
`
`the CyberDesk
`
`project,
`
`including . . . other
`
`publications,
`
`see
`
`http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 1). In my opinion a skilled searcher in the
`
`timeframe would have followed that link and would have found “CyberDesk: Automated
`
`Integration of Desktop and Network Services,” posted to that website.
`
`viii. Dey, Anind and Gregory Abowd, “CyberDesk: The Use of Perception
`in Context-Aware Computing,” PUI ’97: Proceedings of the Workshop on
`Perceptual User Interfaces (1997).
`
`32. “CyberDesk: The Use of Perception in Context-Aware Computing” is an article cited on
`
`page 2 of the ’843 Patent. In my opinion a diligent search by a skilled searcher in the timeframe
`
`would have carefully searched all prior art references cited on the face of the ’843 patent, which
`
`includes “CyberDesk: The Use of Perception in Context-Aware Computing.” A skilled searcher
`
`would then have found and retrieved this reference from the USPTO, either by visiting the USPTO
`
`library for a physical copy of the File Wrapper, online ordering the File Wrapper from the USPTO,
`
`
`
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`12
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 13 of 24 PageID #: 31291
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`or by downloading from PAIR.
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`33. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “CyberDesk: The Use of Perception in Context-Aware Computing.” The article cites the
`
`CyberDesk home page, http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 9). In my opinion a skilled
`
`searcher would have followed that link and found the other CyberDesk references discussed herein
`
`posted to that website. (Ex. 2). The article also directly cites i) “CyberDesk: A Framework for
`
`Providing Self-Integrating Ubiquitous Software Services.” This also supports my opinion that a
`
`diligent search by a skilled searcher would have returned this other CyberDesk reference. (Ex. 9).
`
`ix. Abowd, Gregory et al., Context-Awareness in Wearable and Ubiquitous
`Computing, GVU Technical Report, GIT-GVU-97-11
`
`34. “Context-Awareness in Wearable and Ubiquitous Computing” is an article cited on page 2
`
`of the ’843 Patent. In my opinion a diligent search by a skilled searcher in the timeframe would
`
`have carefully searched all prior art references cited on the face of the ‘843 patent, which includes
`
`“Context-Awareness in Wearable and Ubiquitous Computing.” A skilled searcher would then have
`
`found and retrieved this reference from the USPTO, either by visiting the USPTO library for a
`
`physical copy of the File Wrapper, online ordering the File Wrapper from the USPTO, or by
`
`downloading from PAIR.
`
`35. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “Context-Awareness in Wearable and Ubiquitous Computing.” The article directly cites
`
`“CyberDesk: A Framework for Providing Self-Integrating Ubiquitous Software Services,”
`
`reinforcing my opinion that a diligent search by a skilled searcher would have returned that
`
`reference. (Ex. 10)
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`13
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 14 of 24 PageID #: 31292
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`x. Abowd, Gregory et al., “Context-Awareness in Wearable and Ubiquitous
`Computing,” Virtual Reality, Vol. 3 (1998): 200-211
`
`36. “Context-Awareness in Wearable and Ubiquitous Computing” is an article is an article
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`available on http://www.cc.gatech.edu/fce/cyberdesk. It is my opinion that a skilled searcher in
`
`the timeframe would have consulted references in “Context-Aware Computing: The CyberDesk
`
`Project,” as discussed above. The article states, “For more information on the CyberDesk project,
`
`including . . . other publications, see http://www.cc.gatech.edu/fce/cyberdesk.” (Ex. 1). In my
`
`opinion a skilled searcher would have followed that link and would have found “Context-
`
`Awareness in Wearable and Ubiquitous Computing.”
`
`37. Once found, it is also my opinion that a skilled searcher would have consulted references
`
`in “Context-Awareness in Wearable and Ubiquitous Computing.” The article directly cites i)
`
`“CyberDesk: A Framework for Providing Self-Integrating Context-Aware Services,” ii)
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`“CyberDesk: Automated Integration of Desktop and Network Services,” iii) Apple Data Detectors
`
`Webpage, and iv) “The Selection Recogntion Agent.” (Ex. 11). This also supports my opinion that
`
`a diligent search by a skilled searcher would have returned the other CyberDesk references, the
`
`Apple Data Detectors Webpages reference, and “The Selection Recognition Agent” reference.
`
`xi. Pinkerton, Michael, “Ubiquitous Computing: Extending Access to Mobile
`Data,” GVU Technical Review, GIT-GVU-97-09 (1997) (Master’s Thesis)
`
`38. “Ubiquitous Computing: Extending Access to Mobile Data” is an article.
`
`39. Running the search string CPC=G06F* and PD<20141202 and SFT=(((search* w40
`
`database) w40 address*) w40 (word w5 process*)) through Patbase returned 41 results. The search
`
`string returned patents that included the terms “search” within 40 terms of “database,” within 40
`
`terms of “address,” within 40 terms of “word” within 5 terms of “process” in the full-text of the
`
`patents. The search string includes terms taken from the specification to the ’843 Patent and limits
`
`
`
`
`14
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`

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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 15 of 24 PageID #: 31293
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`the result to relevant classifications. This search, which is materially the same search tool and prior
`
`art databases as during the timeframe, returned U.S. Patent No. 7,912,828 as among the search
`
`results. “Ubiquitous Computing: Extending Access to Mobile Data” is listed on the face of the
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`’828 patent.
`
`40. In my opinion a diligent search by a skilled searcher in the timeframe would have carefully
`
`searched all prior art references cited on the face of the ’828 patent, which includes “Ubiquitous
`
`Computing: Extending Access to Mobile Data.” A skilled searcher would then have found and
`
`retrieved this reference from the USPTO, either by visiting the USPTO library for a physical copy
`
`of the File Wrapper, online ordering the File Wrapper from the USPTO, or by downloading from
`
`PAIR (Ex. 12).
`
`C. Apple Newton MessagePad References
`
`i. MessagePad 2000 User’s Manual
`
`41. Running the search string IC=G06F17* and SFT=((word* w2 process*) and ((search* w8
`
`database*) w25 address*)) and STAC=((search* w8 database*) and updat*) through Patbase
`
`returned 37 results. The search string returned patents that included the terms “word” within 2
`
`terms of permutations of “process” and “search” within 8 terms of “database” within 25 terms of
`
`“address,” in the full-text of the patents, and “search” within 8 terms of “database,” and
`
`permutations of “update” in the title, abstract, or claims of the patents. The search string includes
`
`terms taken from the specification to the ’843 Patent and limits the result to relevant classifications.
`
`This search, which is materially the same search tool and prior art databases as during the
`
`timeframe, returned U.S. Patent No. 8,498,981 as among the search results. (Ex. 13.) “MessagePad
`
`2000 User’s Manual” is listed on the face of the ’981 patent. (Ex. 14).
`
`42. Based on my investigation, in my opinion a diligent search by a skilled searcher in
`
`
`
`
`15
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 16 of 24 PageID #: 31294
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`December 2014 would have carefully searched the prior art references cited on the face of the
`
`‘981 patent, which includes “MessagePad 2000 User’s Manual.” A skilled searcher would then
`
`have found and retrieved this reference from the USPTO, either by visiting the USPTO library for
`
`a physical copy of the File Wrapper, online ordering the File Wrapper from the USPTO, or by
`
`downloading from PAIR
`
`ii. Newton Programmer’s Guide for Newton 2.0
`
`43. Running the search string IC=G06F17* and SFT=((word* w2 process*) and ((search* w8
`
`database*) w25 address*)) and STAC=((search* w8 database*) and updat*) through Patbase
`
`returned 37 results. The search string returned patents that included the terms “word” within 2
`
`terms of permutations of “process” and “search” within 8 terms of “database” within 25 terms of
`
`“address,” in the full-text of the patents, and “search” within 8 terms of “database,” and
`
`permutations of “update” in the title, abstract, or claims of the patents. The search string includes
`
`terms taken from the specification to the ’843 Patent and limits the result to relevant classifications.
`
`This search, which is materially the same search tool and the same prior art databases as during
`
`the timeframe, returned U.S. Patent No. 8,498,981 as among the search results. (Ex. 13.) “Newton
`
`Programmer’s Guide for Newton 2.0” is listed on the face of the ’981 patent. (Ex. 14).
`
`44. Based on my investigation, in my opinion a diligent search by a skilled searcher in the
`
`timeframe would have carefully searched all prior art references cited on the face of the ‘981
`
`patent, which includes “Newton Programmer’s Guide for Newton 2.0.” A skilled searcher would
`
`then have found and retrieved this reference from the USPTO, either by visiting the USPTO library
`
`for a physical copy of the File Wrapper, online ordering the File Wrapper from the USPTO, or by
`
`downloading from PAIR
`
`
`
`
`16
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`Case 1:13-cv-00919-LPS Document 316 Filed 03/11/21 Page 17 of 24 PageID #: 31295
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`iii. Newton 2.0 User Interface Guidelines
`
`45. Running the search string IC=G06F17* and SFT=((word* w2 process*) and ((search* w8
`
`database*) w25 address*)) and STAC=((search* w8 database*) and updat*) through Patbase
`
`returned 37 results. The search string returned patents that included the terms “word” within 2
`
`terms of permutations of “process” and “search” within 8 terms of “database” within 25 terms of
`
`“address,” in the full-text of the patents, and and “search” within 8 terms of “database,” a