Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 1 of 72 PageID #: 38966
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-453 (RGA)
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`REDACTED
`PUBLIC VERSION
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`C.A. No. 16-454 (RGA)
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`REDACTED
`PUBLIC VERSION
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`C.A. No. 16-455 (RGA)
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`REDACTED
`PUBLIC VERSION
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`)))))))))
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`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ACTIVISION BLIZZARD, INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`ELECTRONIC ARTS INC.,
`
`Defendant.
`ACCELERATION BAY LLC,
`
`Plaintiff,
`
`v.
`
`TAKE-TWO INTERACTIVE SOFTWARE,
`INC., ROCKSTAR GAMES, INC. and
`2K SPORTS, INC.,
`
`Defendants.
`
`DECLARATION OF DAVID R. KARGER, Ph.D IN SUPPORT OF DEFENDANTS’
`MOTION FOR PARTIAL SUMMARY JUDGMENT OF INVALIDITY FOR LACK OF
`WRITTEN DESCRIPTION
`
`Original Filing Date: February 2, 2018
`Redacted Filing Date: February 13, 2018
`
`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 2 of 72 PageID #: 38967
`
`I.
`
`1.
`
`INTRODUCTION
`
`I have been retained on behalf of Defendants Activision Blizzard, Inc., Electronic Arts Inc.,
`
`Take-Two Interactive Software, Inc., 2K Sports, Inc., and Rockstar Games, Inc. to provide my
`
`opinions about the validity of certain patent claims found in U.S. Patent Nos. 6,701,344; 6,829,634;
`
`6,714,966; 6,732,147; and 6,910,069. Specifically, I have been asked to provide opinions about
`
`whether the specifications of each of these patents supports the following two aspects of the claims:
`
`(1) a value of “m” that changes after formation of the broadcast channel (’344 patent claims 12-
`
`15, ’966 patent claims 12-13, ’634 patent claims 19 and 22, ’069 patent claims 1 and 11, and ’147
`
`patent claims 1 and 11; and (2) “non-routing table based” methods or computer-readable media
`
`(’634 patent claims 19 and 22, and ’069 patent claims 1 and 11). As I explained in my expert
`
`reports, paragraphs 28, 62-92, 121-129, 137-156, 163-175, 187-207 of my Opening Report (Ex.
`
`B-1), paragraphs 32-43, 47-59, 78-80, 84, 90-112 of my Reply Report (Ex. B-3), and paragraphs
`
`8-13 of my Supplemental Report (Ex. B-4), it is my opinion that the specifications, as understood
`
`by those of skill in the art, do not describe either feature. Therefore, it is my opinion that the
`
`Asserted Claims from the ’344, ’966, ’634, ’069, and ’147 patents are invalid for lack of written
`
`description.
`
`2.
`
`I am being compensated at my standard rate of
`
` per hour for my services. I have no
`
`financial interest in the outcome of these litigations between Defendants and Acceleration Bay
`
`LLC.
`
`3.
`
`Appendix B lists the testimony that I have provided in the last four years and my
`
`compensation. The opinions provided in this declaration are my own and my compensation does
`
`not depend in any way on the substance of my opinions.
`
`II.
`
`4.
`
`QUALIFICATIONS
`
`My Curriculum Vitae and my Faculty Personnel Record are attached to this report as
`
`1
`
`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 3 of 72 PageID #: 38968
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`Appendix A. I provide a summary of certain experience that I have relevant to the technical field
`
`of the Asserted Patents.
`
`A.
`
`Formal Education
`
`5.
`
`I earned a bachelor’s degree in Computer Science and Physics from Harvard University in
`
`1989, a certificate of advanced study in mathematics from Churchill College, Cambridge, England,
`
`in 1990, and a Ph.D. degree in Computer Science from Stanford University in 1994.
`
`B.
`
`Employment
`
`6.
`
`I am currently a professor at the Massachusetts Institute of Technology (“M.I.T.”) where I
`
`am a member of the Computer Science and Artificial Intelligence Laboratory and the Electrical
`
`Engineering and Computer Science Department.
`
`7.
`
`I was a research scientist with Akamai Technologies from 1998 to 2001. I was also a
`
`postdoctoral fellow at AT&T Bell Laboratories from 1994 to 1995. I was an intern at Xerox PARC
`
`from 1991 to 1995. I have acted as a consultant for Google, Microsoft, and Vanu, among others.
`
`During the course of my work, I have gained substantial experience in computer software,
`
`computer networking, and network architectures. I have also worked with numerous other
`
`scientists and engineers to develop networking and Internet-based technologies that are germane
`
`to the concepts described in the various Asserted Patents.
`
`C.
`
`Other Qualifications, Awards, and Research Interests
`
`8.
`
`My research interests include, inter alia, graph algorithms and their applications in
`
`communications, networking, and natural language processing. I have authored over 200
`
`publications in these and other areas.
`
`9.
`
`My Ph.D. thesis on graph theory and graph algorithms received the 1994 ACM doctoral
`
`dissertation award and the Mathematical Programming Society’s 1997 Tucker Prize. I also
`
`received the National Academy of Science’s 2003 Award for Initiative in Research. See Appendix
`
`2
`
`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 4 of 72 PageID #: 38969
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`A for a representative list of other honors.
`
`10.
`
`I am a fellow of the Association for Computing Machinery (“ACM”), and a member of the
`
`Society for Industrial and Applied Mathematics (“SIAM”). I have served as a referee for the
`
`Journal of the ACM, the ACM Transactions on Information Systems, Mathematical Programming,
`
`the Journal of Algorithms, the SIAM Journal on Computing, Information Processing Letters, and
`
`the Journal of Computer and System Sciences, and chaired the 2009 International Semantic Web
`
`Conference in Chantilly, VA. I served on program committees for the 1996 ACM-SIAM
`
`Symposium on Discrete Algorithms, the 1996 and 1998 IEEE Symposium on Foundations of
`
`Computer Science, the 2002 International Peer to Peer Systems conference (IPTPS), the 2005
`
`ACM Symposium on Theory of Computing, the 2007 and 2009 Conference on Innovative
`
`Database Systems Research (CIDR), the 2008 International Semantic Web Conference (ISWC),
`
`the 2010 Conference on Intelligent User Interfaces (IUI), the 2008 and 2010 Conference on
`
`Information Retrieval (SIGIR), the 2009 Visual Interface to the Social and Semantic Web, the
`
`Conference on Human-Computer Interaction (CHI) 2010, and the World Wide Web conference
`
`(WWW) in 2003, 2009, and 2010.
`
`11. My research interests include, inter alia, graph algorithms and their applications in
`
`communications, networking, and natural language processing. I have authored over 200
`
`publications in these and other areas.
`
`D.
`
`My Qualifications Are Pertinent to the Asserted Patents
`
`12.
`
`I have extensive experience in the technical areas of the Asserted Patents. For example,
`
`my work with colleagues at M.I.T. on distributed cache systems was the basis for the founding of
`
`Akamai Technologies, a well-known content distribution network, where I served as the first
`
`research scientist. I helped to develop network protocols for Akamai and was a named inventor
`
`on several related patents. I also, together with a number of my colleagues at M.I.T., developed
`3
`
`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 5 of 72 PageID #: 38970
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`Chord, one of the four original distributed hash tables protocols, which address a fundamental
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`problem in peer-to-peer networks (how to efficiently locate a node that stores particular data
`
`items). See Stoica, Ion, et al. Chord: A Scalable Peer-To-Peer Lookup Service For Internet
`
`Applications, ACM SIGCOMM COMPUTER COMMUNICATION REVIEW, Vol. 31, No. 4 (2001), 149–
`
`160.
`
`III.
`
`LEGAL STANDARDS
`
`A.
`
`Lack of Written Description
`
`13.
`
`I have been informed that a patent may be invalid if the full scope of the claimed subject
`
`matter is not adequately described in the patent’s specification. In order to satisfy the written
`
`description requirement, the description of the invention in the specification of the patent must be
`
`detailed and clear enough to demonstrate that the applicant actually possessed the invention as
`
`broadly as claimed in the claims of the issued patent. Whether the written description requirement
`
`is satisfied is determined from the perspective of a person of ordinary skill in the art (“POSITA”).
`
`The written description may be satisfied by any combination of the words, structures, figures,
`
`diagrams, formulas, etc., contained in the patent application. The full scope of a claim or any
`
`particular requirement in claim need not be expressly disclosed in the original patent application
`
`if a person having ordinary skill in the field of technology of the patent at the time of filing would
`
`have understood that the full scope or missing requirement is in the written description in the patent
`
`application.
`
`14.
`
`I have been further informed and understand that compliance with the written description
`
`requirement is determined based on the disclosure of the original patent application to determine
`
`whether the disclosure conveys that the inventor had possession of the invention as of the filing
`
`date of the application. Given this requirement, I understand that I need not address the summary
`
`of the invention that was added during prosecution nearly four years after the application was
`
`4
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`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 6 of 72 PageID #: 38971
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`originally filed. Second, I have been informed and understand that the phrase “non-routing table
`
`based” has been construed by the Court to mean “does not use routing table(s),” D.I. 4231
`
`(Markman Opinion) at 17, and is called a negative limitation. I have been informed that, like the
`
`general inquiry about the sufficiency of the written description, the written description must show
`
`to a POSITA that the inventor possessed what was claimed, including an indication to a POSITA
`
`that certain things should be affirmatively excluded from the claims for a negative limitation.
`
`B.
`
`The Person of Ordinary Skill in the Art
`
`15.
`
`I have been informed and understand that the question of patent validity is determined from
`
`the perspective of a person having ordinary skill in the art (“POSITA”). I have been informed and
`
`understand that the POSITA is not a real person, but rather a legal construct—a hypothetical
`
`person. This person is presumed to have known the relevant art at the time of the invention. I
`
`have been informed by counsel that relevant factors in determining the level of ordinary skill
`
`include (1) the educational level of the inventor, (2) the type of problems encountered in the art,
`
`(3) prior art solutions to those problems, (4) the rapidity with which innovations are made, (5)
`
`sophistication of the technology, and (6) the educational level of active workers in the field. I
`
`further understand that the person of “ordinary skill” is not a person of extraordinary skill in the
`
`art. In other words, this person of ordinary skill is not necessarily an expert in the field.
`
`C.
`
`Presumption of Validity and Burden of Proof
`
`16.
`
`I understand and have been informed that issued patents are presumed to be valid. This
`
`means that a party seeking to challenge the validity of a claim of an issued patent must submit
`
`proof that each claim is invalid.
`
`17.
`
`I have previously provided opinions in proceedings before the Patent Office called inter
`
`1 Citations are to Acceleration Bay LLC v. Activision Blizzard, Inc, Case No. 16-453.
`5
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`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 7 of 72 PageID #: 38972
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`partes review or “IPR.” I understand and have been informed that proving invalidity in IPR
`
`requires proof by a preponderance of the evidence. This means that if some fact is more likely
`
`than not true based on the evidence presented, then it has been proven under the preponderance of
`
`the evidence standard. I understand that the standard in federal court for patent validity is different,
`
`and more stringent.
`
`18.
`
`Rather than being a “preponderance of the evidence,” proof of invalidity in federal court
`
`must be “clear and convincing.” I understand and have been informed that this higher standard
`
`requires a showing of facts sufficient to leave the jury or court with a clear conviction that a patent
`
`claim is invalid. In other words, clear and convincing evidence requires that a fact be highly
`
`probable.
`
`IV.
`
`19.
`
`PERSON HAVING ORDINARY SKILL IN THE ART
`
`In my opinion, the field of art relevant to the Asserted Patents is a combination of computer
`
`networking and graph theory, which are related disciplines.
`
`20.
`
`In my opinion, a POSITA at the time of the alleged inventions claimed by the Asserted
`
`Patents would have a minimum of: (i) a bachelor’s degree in computer science, computer
`
`engineering, applied mathematics, or a related field of study; and (ii) four or more years of industry
`
`experience relating to networking protocols and network topologies. Additional graduate
`
`education could substitute for professional experience, or significant experience in the field could
`
`substitute for formal education.
`
`21. My opinions are based on my educational background, my commercial experience in the
`
`field of art, the technical training required to practice or reduce to practice the methods and systems
`
`described in the Asserted Patents, the relevant prior art, my reading of those patents and technical
`
`literature, and my experience consulting in matters involving related technology. My opinion is
`
`also based on the numerous classes I have taught, including undergraduate-level computer science
`6
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`
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`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 8 of 72 PageID #: 38973
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`classes as identified on my curriculum vitae (Appendix A) and my knowledge of the skills that
`
`such students possessed.
`
`22.
`
`For example, based on my experience teaching undergraduate computer science students,
`
`those students would likely have had some introduction to networking concepts and graph theory,
`
`but their education in this respect would be somewhat superficial and introductory unless the
`
`students specifically focused on taking classes on these subjects. Yet, when a student who has
`
`obtained a bachelor’s degree in these disciplines enters the workforce and learns about real-world
`
`networking problems and applications through hands-on experience, they will become familiar
`
`with the concepts needed to understand the various graph theory concepts and computer
`
`networking in practice. As a further example, the patents at issue presume that a POSITA is
`
`already familiar with communication protocols (’344 pat., 1:44-46), network architectures (’344
`
`pat., 1:63-65, 2:33-35), the operation of network elements within those architectures (’344 pat.,
`
`1:58-65, 2:20-22), networking systems (’344 pat., 1:58-60, 2:23-25), technical issues that arise in
`
`implementing networks (’344 pat., 2:9-22), and network standards (’344 pat., 2:27-36), all of
`
`which an undergraduate student may be aware of and learn at a high level, but would not be
`
`expected to cover in detail. But, a person that received a bachelors in one of the fields mentioned
`
`above would have been exposed to these concepts during on-the-job training and professional
`
`conferences.
`
`23.
`
`In July 2000, I would have been at least one of ordinary skill in the art. I was and am
`
`familiar with the level of knowledge and understanding that such a person would have had, and I
`
`can opine on the understanding of a POSITA as of that date. Unless otherwise noted, my
`
`statements and opinions below about the knowledge or understanding of a POSITA should be
`
`understood to refer to the knowledge or understanding of a POSITA as of July 31, 2000, which
`
`
`
`7
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`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 9 of 72 PageID #: 38974
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`corresponds to the earliest filing dates of each of the Asserted Patents. I have opined about the
`
`various matters set forth herein from the perspective of a POSITA or what a POSITA would have
`
`understood unless otherwise expressly stated below.
`
`24.
`
`Acceleration Bay’s expert regarding matters of validity, Dr. Goodrich, has offered his own,
`
`slightly different, opinion regarding the qualifications of a POSITA. Goodrich Rpt. (Ex. B-2),
`
`¶¶45-47. I have considered his opinion and do not believe that it is materially different than mine.
`
`Regardless of whose formulation is adopted, therefore, I would have been at least a POSITA. And,
`
`my opinions would not differ in any material respect under either formulation unless otherwise
`
`noted below. Additionally, Dr. Goodrich has opined that the skill level of a POSITA would not
`
`have been any different between November 1996 or July 31, 2000. While there were certainly
`
`advances in technology in that time period, and a number of different types of multiplayer games
`
`would have been released and sold publicly in the nearly four years that intervened, my opinions
`
`would not materially change regardless of whether a November 1996 or a July 2000 date is
`
`assumed.
`
`V.
`
`NO WRITTEN DESCRIPTION FOR VARIABLE VALUES OF “M” AFTER A
`BROADCAST CHANNEL IS ESTABLISHED
`
`A.
`
`The Claims At Issue
`
`25.
`
`As shown below, each of the Asserted Claims of the ’344, ’966, ’634, and ’147 patents
`
`recite “m” in various contexts throughout their claims.
`
`1.
`
`The ’344 Patent
`
`26.
`
`Claim 12 of the ’344 patent depends from claim 1. ’344 pat., cl.12. Claim 1 of the ’344
`
`patent says:
`
`A computer network for providing a game environment for a
`plurality of participants, each participant having connections to at
`least three neighbor participants, wherein an originating participant
`sends data to the other participants by sending the data through each
`
`8
`
`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 10 of 72 PageID #: 38975
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`of its connections to its neighbor participants and wherein each
`participant sends data that it receives from a neighbor participant to
`its other neighbor participants, further wherein the network is m-
`regular, where m is the exact number of neighbor participants of
`each participant and further wherein the number of participants is
`at least two greater than m thus resulting in a non-complete graph.
`
`’344 pat., cl.1 (emphasis added).
`
`27.
`
`Claim 13 of the ’344 patent says:
`
`A distributed game system comprising:
`
`a plurality of broadcast channels, each broadcast channel for playing
`a game, each of the broadcast channels for providing game
`information related to said game to a plurality of participants, each
`participant having connections
`to at
`least
`three neighbor
`participants, wherein an originating participant sends data to the
`other participants by sending the data through each of its
`connections to its neighbor participants and wherein each participant
`sends data that it receives from a neighbor participant to its neighbor
`participants, further wherein the network is m-regular, where m is
`the exact number of neighbor participants of each participant and
`further wherein the number of participants is at least two greater
`than m thus resulting in a non-complete graph;
`
`means for identifying a broadcast channel for a game of interest; and
`
`means for connecting to the identified broadcast channel.
`
`’344 pat., cl.13 (emphasis added). Claims 14-15 of the ’344 patent depend from claim 13.
`
`2.
`
`The ’966 Patent
`
`28.
`
`Claim 12 of the ’966 patent depends from claim 1 and says.
`
`A computer network for providing an information delivery service
`for a plurality of participants, each participant having connections
`to at least three neighbor participants, wherein an originating
`participant sends data to the other participants by sending the data
`through each of its connections to its neighbor participants and
`wherein each participant sends data that it receives from a neighbor
`participant to its other neighbor participants, further wherein the
`network is m-regular, where m is the exact number of neighbor
`participants of each participant and further wherein the number of
`participants is at least two greater than m thus resulting in a non-
`complete graph.
`
`9
`
`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 11 of 72 PageID #: 38976
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`’966 pat., cl.1 (emphasis added).
`
`29.
`
`Claim 13 of the ’966 patent says
`
`An information delivery service comprising:
`
`a plurality of broadcast channels, each broadcast channel for
`distributing information relating to a topic, each of the broadcast
`channels for providing said information related to a topic to a
`plurality of participants, each participant having connections to at
`least three neighbor participants, wherein an originating participant
`sends data to the other participants by sending the data through each
`of its connections to its neighbor participants and wherein each
`participant sends data that it receives from a neighbor participant to
`its neighbor participants, further wherein the network is m-regular,
`where m is the exact number of neighbor participants of each
`participant and further wherein the number of participants is at
`least two greater than m thus resulting in a non-complete graph;
`
`means for identifying a broadcast channel for a topic of interest; and
`
`means for connecting to the identified broadcast channel.
`
`’966 pat., cl.13 (emphasis added).
`
`3.
`
`The ’634 Patent
`
`30.
`
`Claim 19 of the ’634 patent says
`
`A non-routing table based computer-readable medium containing
`instructions for controlling communications of a participant of a
`broadcast channel within a network, by a method comprising:
`
`locating a portal computer;
`
`requesting the located portal computer to provide an indication of
`neighbor participants to which the participant can be connected;
`
`receiving the indications of the neighbor participants; and
`
`establishing a connection between the participant and each of the
`indicated neighbor participants, wherein a connection between the
`portal computer and the participant is not established, wherein a
`connection between
`the portal computer and
`the neighbor
`participants is not established, further wherein the network is m-
`regular and m-connected, where m is the number of neighbor
`participants of each participant, and further wherein the number of
`
`10
`
`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 12 of 72 PageID #: 38977
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`participants is at least two greater than m thus resulting in a non-
`complete graph.
`
`’634 pat., cl. 19. Claim 22 depends from claim 19.
`
`4.
`
`The ’069 Patent
`
`31.
`
`Claim 1 of the ’069 patent says
`
`1. A computer-based, non-routing table based, non-switch based
`method for adding a participant to a network of participants, each
`participant being connected to three or more other participants, the
`method comprising:
`
`identifying a pair of participants of the network that are connected
`wherein a seeking participant contacts a fully connected portal
`computer, which in turn sends an edge connection request to a
`number of randomly selected neighboring participants to which the
`seeking participant is to connect;
`
`disconnecting the participants of the identified pair from each other;
`and
`
`connecting each participant of the identified pair of participants to
`the seeking participant.
`
`’069 pat., cl. 1 (emphasis added). Claim 11 depends on claim 1.
`
`32.
`
`The Court construed the term “fully connected portal computer” to mean “portal computer
`
`connected to exactly m neighbor participants.” D.I. 386 at 9 (emphasis added).
`
`5.
`
`The ’147 Patent
`
`33.
`
`Claim 1 of the ’147 patent says
`
`A method of disconnecting a first computer from a second
`computer, the first computer and the second computer being
`connected to a broadcast channel, said broadcast channel forming
`an m-regular graph where m is at least 3, the method comprising:
`
`when the first computer decides to disconnect from the second
`computer, the first computer sends a disconnect message to the
`second computer, said disconnect message including a list of
`neighbors of the first computer; and
`
`when the second computer receives the disconnect message from the
`first computer, the second computer broadcasts a connection port
`
`11
`
`

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`search message on the broadcast channel to find a third computer to
`which it can connect in order to maintain an m-regular graph, said
`third computer being one of the neighbors on said list of neighbors.
`
`’147 pat., cl. 1 (emphasis added).
`
`34.
`
`Claim 11 of the ’147 patent says
`
`for
`instructions
`A computer-readable medium containing
`controlling disconnecting of a computer from another computer, the
`computer and the other computer being connected to a broadcast
`channel, said broadcast channel being an m-regular graph where m
`is at least 3, comprising:
`
`a component that, when the computer decides to disconnect from the
`other computer, the computer sends a disconnect message to the
`other computer, said disconnect message including a list of
`neighbors of the computer; and
`
`a component that, when the computer receives a disconnect message
`from another computer, the computer broadcasts a connection port
`search message on the broadcast channel to find a computer to which
`it can connect in order to maintain an m-regular graph, said
`computer to which it can connect being one of the neighbors on said
`list of neighbors.
`
`’147 pat., cl. 11 (emphasis added). Claims 15 and 16 depend from claim 11.
`
`B.
`
`Claim Construction
`
`35.
`
`I understand that the Court has construed the term “m-regular” to mean “[a] state that the
`
`network is configured to maintain, where each participant is connected to exactly m neighbor
`
`participants.” The Court further decided that “m” was to have its plain and ordinary meaning to a
`
`POSITA. I also understand that Defendants argued that the phrase “in order to maintain an m-
`
`regular graph” meant that “m” had to be “the same number before and after the disconnection.”
`
`As the Court explained in a recent opinion, “Plaintiff argues that neither the claims nor
`
`specification forbids m from changing.” See Memorandum Opinion (Dec. 20, 2017) (D.I. 386),
`
`p.18. The Court explained that “the claim language does not restrict m from changing” and thus
`
`“my construction does not require that ‘m is the same number before and after disconnection.’”
`
`12
`
`

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`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 14 of 72 PageID #: 38979
`
`Id., p.19.
`
`36.
`
`I understand that Plaintiff’s expert Dr. Medvidović told the Court through a declaration
`
`submitted during claim construction proceedings that “the number m can change as computers
`
`connect and disconnect from the network.” Medvidović Decl. (Apr. 28, 2017) (D.I. 187), ¶45;
`
`Medvidović Decl. (Aug. 16, 2017) (D.I. 322, Ex. F), ¶45 (“[T]he claims necessarily require m to
`
`change in order to maintain an m-regular graph under certain configurations as illustrated above.”);
`
`id., ¶43 (“To maintain an m-regular graph, it is possible that m may also need to change, e.g., from
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`m=3 to m=4 (or vice versa)”); ¶44 (“Because the network is highly dynamic, m may need to
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`change.”); ¶51 (“I disagree with Defendants’ proposed construction for this term because it
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`unnecessarily imports additional requirements that a participant maintain exactly m connections
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`which, as discussed above, is flawed because m can change, and under certain circumstances must
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`change.”).
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`C.
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`No Written Description For “m” That Changes After The Broadcast
`Channel Is Established
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`37.
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`It is my opinion that the asserted claims of the ’344, ’966, ’147, and ’634 patents are invalid
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`for lack of written description for “m” that changes after the broadcast channel is established.
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`Also, the Court construed the term “fully connected portal computer” to mean “portal computer
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`connected to exactly m neighbor participants” (D.I. 386 at 9), and therefore, the asserted claims of
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`the ’069 patent is invalid because it too fails to describe the full scope of the claims because it fails
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`to describe a value of “m” that changes.
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`38.
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`Throughout the discussion that follows, I focus on the text of the ’344 patent specification
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`as exemplary. For my analysis, the specifications of the ’344 patent, the ’966 patent, the ’634
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`patent, the ’069 patent, and the ’147 patents are indistinguishable but for slightly different column
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`and line citations.
`
`13
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`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 15 of 72 PageID #: 38980
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`39.
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`Because the claimed m is not limited to a fixed value of m after formation of the broadcast
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`channel or network, the claims encompass subject matter that is not described in the written
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`description so as to convey to a POSITA that the inventors possessed the invention when the
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`original application was filed. There is no indication in the shared specifications that the inventors
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`invented a network where m changes as participants come and go. Not once do the Asserted
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`Patents describe varying m or describe how m might change during the operation of a specific
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`network after formation of a broadcast channel or network. Indeed, the Asserted Patents include
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`numerous functionalities and requirements that show that m does not change on the fly for a
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`broadcast channel or network. Therefore, for the reasons I discuss in detail below, a POSITA
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`would not conclude that the ’344 patent specification clearly shows that the inventors actually
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`possessed the full scope of the claimed subject matter in which m can vary for a particular
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`broadcast channel.
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`40.
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`The ’344 patent begins by criticizing a number of technologies that existed as of July 31,
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`2000. First, it is critical of “point-to-point network protocols,” such as TCP/IP and UDP, since
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`they supposedly “do[] not scale well as a number of participants grows,” programming to manage
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`multiple connections is “complex,” and participants may have a limit on the number of direct
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`connections they can support. ’344 pat., 1:44-57. Client-server middleware systems are also
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`criticized for their polling schemes, which generate “very high overhead,” and call-back systems
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`create a “performance bottleneck” and are sensitive to server failure. Id., 1:58-2:13. The patent
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`further disparages multicasting such as “UDP multicasting” because it “would swamp the Internet
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`when trying to locate all possible participants.” Id., 2:15-20. Finally, with respect to peer-to-peer
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`middleware systems, the user must assemble the network, and the underlying network architecture
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`may be a tree structure, which is sensitive to failure at the root of the tree. Id., 2:23-37.
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`
`
`14
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`

`

`Case 1:16-cv-00453-RGA Document 469 Filed 02/13/18 Page 16 of 72 PageID #: 38981
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`41.
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`According to the ’344 patent, a broadcast technique is disclosed that overlays a graph on a
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`point-to-point communications network, and allows every computer connected to a broadcast
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`channel to receive messages sent on the channel. Id., 4:3-22. The ’344 patent then describes a
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`method of distributing messages among the participants of a broadcast channel using a flooding
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`technique. Id., 4:23-47.
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`42.
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`The overwhelming majority of the text of the ’344 patent relates to an example where the
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`graph defining the broadcast channel has an m of 4. See, ’344 pat., 4:24-47, 5:24-26, 5:42-56,
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`6:15-21, 9:3-7, 13:26-36; Figs. 1, 2, 3A, 3B, 4A, 4B, 4C, 5A, 5B, 5D. This is confirmed in the
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`’344 patent itself, which says “[i]n the embodiment described above, each fully connected
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`computer has four internal connections.” ’344 pat., 14:53-54. Despite the predominance of the
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`example where m=4, the ’344 patent tells a POSITA that “each computer could have 6, 8, or any
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`even number of internal connections.” ’344 pat., 14:56-57. Plaintiff’s expert Dr. Goodrich also
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`points to this text and additional text found at column 14, lines 52-63 of the ’344 patent. That text
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`says:
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`M-Regular
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`In the embodiment described above, each fully connected computer has four
`internal connections. The broadcast technique can be used with other numbers of
`internal connections. For example, each computer could have 6, 8, or any even
`number of internal connections. As the number of internal connections increase,
`the diameter of the broadcast channel tends to decrease, and thus propagation time
`for a message tends to decrease. The time that it takes to connect a seeking computer
`to the broadcast channel may, however, increase as the number of internal
`connections increases.
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`Goodrich Rpt. (Ex. B-2), ¶94. In his report, Dr. Goodrich highlights the text to which I have added
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`bold