Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 1 of 33
`Case 1:19-cv-11278—RGS Document 42-2 Filed 02/19/20 Page 1 of 33
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`EXHIBIT A
`EXHIBIT A
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 2 of 33
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`UNITED STATES DISTRICT COURT
`DISTRICT OF MASSACHUSETTS
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`Civil Action No. 1:19-cv-11272-RGS
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`Civil Action No. 1:19-cv-11278-RGS
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`UNILOC 2017, LLC,
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`
`Plaintiff,
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`v.
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`PAYCHEX, INC.,
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` Defendant.
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`
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`UNILOC 2017, LLC,
`
`
`Plaintiff,
`
`v.
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`ATHENAHEALTH, INC.,
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` Defendant.
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`CORRECTED DECLARATION OF DR. MICHAEL SHAMOS
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`I, Michael Ian Shamos, Ph.D., do hereby declare as follows under penalty of perjury
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`under the laws of Massachusetts, Pennsylvania and the United States that the following is
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`true and correct:
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by counsel for Plaintiff in this case to offer opinions as
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`to the scope and meaning that would have been given to certain terms and phrases
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`appearing in the claims of Cox et al. U.S. Patents 6,324,578 (“the ’578 Patent”) and
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`7,069,293 (“the ’293 Patent”) by one of ordinary skill in the art at the time of the inventions.
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`The statements of fact made in this declaration are based on my own personal knowledge
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 3 of 33
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`and analysis.
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`2.
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`In rendering my opinions, I reviewed intrinsic evidence, including the text
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`of the Patents, their prosecution history, extrinsic evidence, Plaintiff’s Disclosure of Claim
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`Terms & Proposed Constructions and Defendants’ Local Rule 16.6(E)(1) Disclosures. My
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`opinions are based on my years of education, training, research, knowledge, and personal
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`and professional experience in the relevant art. Attached as Exhibit B is my current
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`curriculum vita.
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`3.
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`I am being compensated at my usual consulting rate of $600 per hour for
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`my work related to this matter. My compensation is in no way dependent on the outcome
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`of this dispute or the testimony or opinions that I may provide. I have no financial
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`interest, beneficial or otherwise, in the Patent or any of the parties.
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`4.
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`I reserve the right to supplement and/or amend my opinions in this
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`declaration based on future positions taken by the parties, their experts, additional
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`documents, testimony, or other information provided by the parties or their witnesses,
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`any orders from the Court, or as otherwise necessary.
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`II.
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`BACKGROUND AND EXPERIENCE
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`5.
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`I hold the title of Distinguished Career Professor in the School of
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`Computer Science at Carnegie Mellon University in Pittsburgh, Pennsylvania. I am a
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`member of two departments in that School, the Institute for Software Research and the
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`Language Technologies Institute. I was a founder and Co-Director of the Institute for
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`eCommerce at Carnegie Mellon from 1998-2004 and from 2004-2018 I was Director of
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`the eBusiness Technology graduate program in the Carnegie Mellon University School of
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`Computer Science. I am now Director of the M.S. in Artificial Intelligence and
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`Innovation degree program at Carnegie Mellon.
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`6.
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`I received an A.B. (1968) from Princeton University in Physics; an M.A.
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`(1970) from Vassar College in Physics; an M.S. (1972) from American University in
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`Technology of Management, a field that covers quantitative tools used in managing
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`organizations, such as statistics, operations research and cost-benefit analysis; an M.S.
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`(1973), and M.Phil. (1974) and a Ph.D. from Yale University in Computer Science; and a
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`J.D. (1981) from Duquesne University.
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`7.
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`I have taught graduate courses at Carnegie Mellon in Electronic
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`Commerce, including eCommerce Technology, Electronic Payment Systems, Electronic
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`Voting and eCommerce Law and Regulation, as well as Analysis of Algorithms. Since
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`2007 I have taught an annual course in Law of Computer Technology. I currently also
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`teach Artificial Intelligence and Future Markets.
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`8.
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`Since 2001 I have been a Visiting Professor at the University of Hong Kong,
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`where I teach an annual course on Electronic Payment Systems.
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`9.
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`From 1979-1987 I was the founder and president of two computer
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`software development companies in Pittsburgh, Pennsylvania, Unilogic, Ltd. and Lexeme
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`Corporation.
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`10.
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`I am an attorney admitted to practice in Pennsylvania and have been
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`admitted to the Bar of the U.S. Patent and Trademark Office since 1981. I have not been
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`asked to offer any opinions on patent law in this case.
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`11.
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`I am a named co-inventor on the following five issued patents relating to
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`electronic commerce: U.S. Patent Nos. 7,330,839, 7,421,278, 7,747,465, 8,195,197 and
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`8,280,773.
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`12.
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`I have previously served as an expert in over 270 cases concerning computer
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`technology. In particular, I have been involved in multiple cases involving computer
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`technology and wireless devices. In particular, I have been involved in multiple cases
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`involving electronic payment systems. A current copy of my curriculum vitae setting forth
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`details of my background and relevant experience, including a full list of my publications
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`and a listing of cases for which I have provided expert testimony is in my C.V. in Exhibit
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`B.
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`13. Materials I considered in preparing this declaration are listed in Exhibit A.
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`III. LEGAL PRINCIPLES
`I have been informed by counsel for Plaintiff that the following principles
`14.
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`of law are applicable to claim construction, and I have applied these principles in my
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`analysis.
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`15.
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`The claims of a patent define the limits of the patentees’ exclusive rights.
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`In order to determine the scope of the claimed invention, courts typically construe (or
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`define) claim terms when the meanings are disputed by the parties. Claim terms should
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`generally be given their ordinary and customary meaning as understood by one of
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`ordinary skill in the art at the time of the invention after reading the patent and its
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`prosecution history.
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`16.
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`Claims must be construed, however, in light of, and consistent with, the
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`patent’s intrinsic evidence. Intrinsic evidence includes the claims themselves, the written
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`disclosure in the patent’s specification, and the patent’s prosecution history, including the
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`prior art that was considered by the United States Patent and Trademark Office (“PTO”).
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`17.
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`The language of the claims helps guide the construction of claim terms.
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`The context in which a term is used in the claims can be highly instructive.
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`18.
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`The specification of the patent is the best guide to the meaning of a
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`disputed claim term, beyond the wording of the claims themselves. Embodiments
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`disclosed in the specification help teach and enable those of skill in the art to make and
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`use the invention, and are helpful to understanding the meaning of claim terms.
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`Nevertheless, in most cases, the limitations of preferred embodiments and examples
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`appearing in the specification should not be read into the claims.
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`19.
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`In the specification, a patentee may also define his own terms, give a
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`claim term a different meaning than it would otherwise possess, or disclaim or disavow
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`claim scope. A court may generally presume that a claim term possesses its ordinary
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`meaning. This presumption, however, does not arise when the patentee acts as his own
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`lexicographer by explicitly defining or re-defining a claim term. This presumption of
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`ordinary meaning can also be overcome by statements, in the specification or prosecution
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`history of the patent, of clear disclaimer or disavowal of a particular claim scope.
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`20.
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`It is generally incorrect to import limitations from a preferred embodiment
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`into a claim term.
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`21.
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`The specification may also resolve any ambiguity if the ordinary and
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`customary meaning of a claim term lacks sufficient clarity to permit the scope of the
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`claim to be ascertained from the words of the claim alone.
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`22.
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`The prosecution history is another important source of evidence in the
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`claim construction analysis. The prosecution history is the record of the proceedings
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`before the PTO, including communications between the patentee and the PTO. The
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`prosecution history can inform the meaning of the claim language by demonstrating how
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`the patentee and the PTO understood the invention and whether the patentee limited the
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`invention in the course of prosecution, making the claim scope narrower than it would
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`otherwise be. A patentee may also define a term during the prosecution of the patent.
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`The patentee is precluded from recapturing through claim construction specific meanings
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`or claim scope clearly and unambiguously disclaimed or disavowed during prosecution.
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`23.
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`Courts can also consider extrinsic evidence when construing claims.
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`Extrinsic evidence is any evidence that is extrinsic to the patent itself and its prosecution
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`history. Examples of extrinsic evidence include technical dictionaries, treatises, and
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`expert testimony. I understand that extrinsic evidence is less significant than the intrinsic
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`record in determining the meaning of claim language.
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`24.
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`A claim is indefinite if its language, when read in light of the specification
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`and prosecution history, fails to inform persons having ordinary skill in the art about the
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`scope of the claimed invention with reasonable certainty.
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`IV.
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`BACKGROUND OF THE TECHNOLOGY
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`25.
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`The specification of the ’578 Patent deals generally with distributed
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`computing, a domain in which software can be executed at one location for the benefit of
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`the user at the same or at a different location. The patent identifies the following problem
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`in distributed computing:
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`In the modern distributed processing computer environment, control
`over software, such as application programs, is more difficult than
`where a mainframe operated by an administrator is used, particularly
`for large organizations with numerous client stations and servers
`distributed widely geographically and utilized by a large number of
`users. Furthermore, individual users may move from location to location
`and need to access the network from different client stations at different
`times. The networked environment increases the challenges for a
`network administrator in maintaining proper licenses for existing
`software and deploying new or updated applications programs across
`the network. ’578 Patent, 1:45-57.
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`26.
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`Simply in the context of this quotation, because individual users may
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`move from location to location and need to access the network from different client
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`stations, a network administrator would prefer to maintain a protected storage area on the
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`network server rather than to risk breaching a license agreement by distributing multiple
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`copies of the same software to individual users.
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`27.
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`Nevertheless, the patent goes on to describe a situation in which
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`centralized distribution of software from a Systems Management Server would result in
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`customized installations at different client stations:
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`In addition, the Systems Management Server (SMS) program from
`Microsoft Corporation provides an ability to transmit an application
`program from a server to a number of clients. The SMS system typically
`allows installation of programs and associated icons at client stations
`for SMS-enabled applications. A customized install generally must be
`created by a system administrator for each different version to be
`installed. Furthermore, once installed at a client, a user must typically
`use that specific client station. The application generally cannot be
`automatically deleted from the client station's desktop or automatically
`upgraded the next time the user starts the application. Similarly, the
`Tivoli Management Environment (TME) 10™ system from Tivoli
`Systems, Inc. provides a software distribution feature which may be used
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`to transmit a file package to client and server stations on a network from
`a central Tivoli.™ server. ’578 Patent, 1:62-2:10.
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`28.
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`The specification continues
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`An additional user based application management capability not fully
`supported by these various approaches is license use management.
`License use management typically involves controlling how many users
`can use an application. A distributed network environment with a
`plurality of client stations and a plurality of different users accessing the
`applications from different clients increases the challenge associated
`with managing license use to insure compliance with limitations
`established by software designers. These environments also typically
`require various steps in the installation process to occur at different
`locations rather than allowing the entire process to be controlled from a
`single point for an entire managed network environment. ’578 Patent,
`3:24-37.
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`29.
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`The phrase “accessing the applications from different clients” implies that
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`the applications will be executed on the server, but inputs and outputs will come from, or
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`be sent to, a client. This enables the server to enforce compliance with licensing
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`restrictions on how many users can use the application. It is through central management
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`of the application that license restrictions can be enforced.
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`30.
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`One of ordinary skill would have understood the ’578 Patent to disclose
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`embodiments in which execution of an application can take place on a server and
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`embodiments in which execution is at a client. For example, the following passage
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`indicates that an “application launcher” can be distributed to a client, but the application
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`itself remains on a server:
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`In another embodiment of the present invention, additional application
`programs are managed according to the teachings of the present
`invention along with user preferences obtained from a plurality of users.
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`Furthermore, for each application program, associated application
`launcher programs may be distributed to a plurality of client stations
`and obtain user preferences from a plurality of users. ’578 Patent, 5:1-7.
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`31.
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`The applicants for both patents filed similar applications on the same day,
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`December 14, 1998, numbered 09/211,528 and 09/211,529. The ’529 application became
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`the ’578 Patent. Both applications incorporate by reference the entirety of application
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`09/092,597, which became U.S. Patent 6,339,826. The ’293 Patent issued from
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`application 09/870,608, which was a division of application 09/211,528, which itself
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`matured into U.S. Patent 6,510,466.
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`32.
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`The ‘293 Patent at 7:44-50 incorporates application 09/211,529 (that is,
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`the ’578 Patent) by reference in its entirety. The ’578 Patent at 7:16-21 incorporates
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`application 09/211,528 (of which the ’293 Patent was a division) by reference in its
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`entirety.
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`33.
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`It is my understanding that my analysis of the interpretation of a claim
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`term must be undertaken from the perspective of what would have been known or
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`understood by a person having ordinary skill in the art (POSITA) at the time of the
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`invention. I have been asked to assume that the appropriate date for both patents is their
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`effective filing date of December 14, 1998.
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`34.
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`The ’578 patent defines its field of invention as follows at 1:22-24:
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`The present invention relates to network management in general and in
`particular to application program management on a computer network.
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`35.
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`The specification describes how to distribute and manage application
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`programs in a networked environment such that authorized users are able to access those
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`program at various client computers. The objects of the invention are achieved by
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`providing an on-demand server to host the application programs and an application
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`program launcher program though which a user at a client computer may execute the
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`application program.
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`36.
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`The claims of the Patents are drawn generally to methods, systems and
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`computer program products for distributing configurable application programs over
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`networks, obtaining user configuration preferences and administrator configuration
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`preferences, distributing an application launcher program and executing the distributed
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`programs using the sets of preferences.
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`37.
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`I believe that, in order to understand the specification and be able to make
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`and use the invention without undue experimentation, a POSITA would have had at least
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`a bachelor’s degree in computer science or electrical engineering, or an equivalent field, or
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`equivalent work experience, and, in addition, at one year of work experience with
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`management and distribution of application programs in a networked client/server
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`environment.
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`38.
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`The same characterization of a POSITA applies to the ’293 Patent.
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`VI. CLAIM TERMS
`I understand that agreement has not been reached by the parties on the
`39.
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`meaning of the following terms.
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`40.
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`Defendants’ proposed constructions are not consistent with
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`the
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`specifications of the Patents.
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 12 of 33
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`A.
`41.
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`“application launcher program”
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`Claim 1 of the ’578 patent is directed to an invention in which an application
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`launcher is distributed to a client, an associated application program having configurable
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`preferences and authorized users is installed on a server, user and administrator sets of
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`preferences are obtained, and, in response to a user request, the application program is
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`executed, using those preferences.
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`Claim Phrase
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`application launcher
`program
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`(’578 Patent, all
`claims)
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`Plaintiff’s Proposed
`Construction
`computer program that
`launches, i.e., starts another
`program
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`Defendants’ Proposed
`Construction
`program distributed to a
`client to initially populate a
`user desktop and to request
`an instance of the application
`for execution at the client
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`42.
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`The term “application launcher” was in common use before 1998. In 1998,
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`a POSITA would have understood an “application launcher” as no more or less than “a
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`computer program that launches, i.e., starts, another computer program.”
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`43.
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`Defendants take the position that the term “application launcher program”
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`only means a “program distributed to a client to initially populate a user desktop and to
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`request an instance of the application for execution at the client.” But the usage in 1998
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`included systems that launch applications at the server. For example, Domenikos et al.
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`U.S. Patent 5,838,916 (17:12-21), filed March 17, 1997 (Ex. C) states (emphasis added):
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`The launcher program 226 can execute either a remote or a cached
`application. To this end, the depicted launcher 226 interfaces to the
`file system connection process 228 that allows the launcher to
`interface to the client file system and to mount a remote file system
`to the file system of the client. Such a process for mounting a file
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 13 of 33
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`system is described above. Similarly, the launcher program 226 can
`interface with the remote access process 230 that allows the
`launcher to access the remote application being executed by client
`212.
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`44.
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`Further, at 18:35-46 (emphasis added):
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`In one embodiment, the launcher can present a hierarchy of all
`“known” web servers running a server process according to the
`invention. The launcher can list the "known" application links on
`each of these servers. The launcher will obtain a list of “known”
`servers and/or their application links when the launcher starts
`execution. The list of servers can be obtained by sending a query
`request to a proxy server which is setup to be aware of other server
`processes according to the invention. The list of application links
`can then be obtained by sending a query request to a specific
`server. All application links returned from the query request can
`then be displayed in a window of the launcher.
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`45. While the ’578 specification indicates that an “application launcher
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`program” may be delivered to a client, there is no language suggesting that such a program
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`must be delivered to a client. The claims through separate limitations specify that the
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`application launcher program is to be delivered to a client, but that it is not an inherent
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`aspect of an “application launcher program” and is not properly included in its
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`construction.
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`46.
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` Further, there is no requirement for the application launcher program to
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`“populate a desktop” or “request an instance of the application for execution at the client.”
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`This is clearly spelled out in the specification at 12:22-26:
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`Further it is to be understood that, as used herein, the term
`“application launcher program” may refer to the entire program
`provided by a software vendor or to merely a portion thereof
`distributed to a client to perform particular operations.
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`47.
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`If the application launcher program contains the “entire program,” then
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`clearly there is no need “to request an instance of the application for execution at the
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`client.” Further, no “desktop” is even recited in any claim. Thus Defendants’ construction
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`introduces spurious concepts into the claim and contradicts the specification.
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`48.
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`In addition, there is no requirement for the application program to execute
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`at the client. Systems using application launchers at the time also included those designed
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`to execute applications on the server. For example, the attached Novell article, “Overview
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`of Novell Application Launcher 2.0,” from September 1997, describes a product named
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`“Novell Application Launcher.” (Ex. D.) The article explains that the Novell product can
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`launch applications on either the client or the server (emphasis added):
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`The first method, automated software distribution, gives you the
`option of “pulling” or “pushing” software updates to desktops. Pull
`distribution let you “surface” an application icon on the user’s
`desktop. Clicking the icon either launches a network application,
`which resides on the server, or runs an install program, placing (or
`updating) the application on the user’s hard drive before launching
`it.
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`49.
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`It is apparent from the foregoing quotation that an application launcher
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`could launch an application residing on a server. In fact, there is nothing about the term
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`“application launcher” or its usage at the time, which would preclude launching a server
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`application. The plain and ordinary meaning of “application launcher” does not limit the
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`location of the launched application.
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`50.
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`Thus, as of December 1998, “application launcher program” was a term of
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`art that meant “a computer program that launches, i.e., starts another computer program.”
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`Because, as illustrated above, the term was used in the art to describe programs that
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`launched applications to be executed at a server (as well as to describe programs that
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`launched applications to be executed at a client), a POSITA would have understood the
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`ordinary and usual meaning of that term to embrace both client and server initiation.
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`51.
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`It is important to consider the actual use of the term “application launcher
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`program” in the claims. Claim 1 reads (emphasis added):
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`1. A method for management of configurable application programs
`on a network comprising the steps of:
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`installing an application program having a plurality of configurable
`preferences and a plurality of authorized users on a server coupled
`to the network;
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`distributing an application launcher program associated with the
`application program to a client coupled to the network;
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`obtaining a user set of the plurality of configurable preferences
`associated with one of the plurality of authorized users executing
`the application launcher program;
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`obtaining an administrator set of the plurality of configurable
`preferences from an administrator; and
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`executing the application program using the obtained user set and
`the obtained administrator set of the plurality of configurable
`preferences responsive to a request from one of the plurality of
`authorized users.
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`52.
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`Claim 1 does not mention providing an instance of the application program
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`to the client, nor does it specify where application program is executed.
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`53.
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`There is nothing in the specification of the ’578 Patent that would lead a
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`POSITA to conclude that “application launcher program,” as that term is used in claim 1
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`of the ‘578 patent, would not include a program that either ran at a server or “launched”
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`applications to be executed at a server. On the contrary, there is nothing in the specification
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`to indicate that the term of art “application launcher program” is being used in any manner
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`other than its ordinary meaning.
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`54.
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`The invention of claim 1 provides the advantage that a centralized database
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`containing stored user and administrator preferences can be queried and updated. That
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`advantage does not depend on the location at which the applications were executed, i.e., at
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`the server or at the client. The advantage has to do with centralized information concerning
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`user and administrator preferences. A POSITA would thus not have expected the
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`inventors, in the specification, to limit the invention of claim 1 to an embodiment that
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`executes applications only on the client, and they did not.
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`55.
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`I reviewed the “Summary of the Invention” portion of the specification
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`(3:37-6:9), but found no limiting language. The “Summary of the Invention” describes a
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`number of embodiments that execute applications, without mentioning, in those
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`descriptions, where applications are executed or where the launcher program may reside.
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`The only such mention, which appears at 5:57-61 of the ’578 patent specification, refers to
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`a license management server (not client) and is described only as “one embodiment.”
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`56.
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`The first portion of the “Detailed Description of Preferred Embodiments”
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`(6:29-11:22) sets forth a number of embodiments in which applications are executed, but,
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`again, without limiting the location of execution of those applications. Only after listing
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`those various embodiments does the specification mention execution at the client, and then
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`only in what the specification describes as “alternative preferred embodiments.” (11:27-
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`12:11.) If these are “alternative,” then the original preferred embodiment must involve
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`execution at the server.
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`57.
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`Language appearing at 11:60-12:1 of the ’578 patent specification discloses
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`that, in an embodiment, an application launcher program requests an instance of the
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`application for execution at the client. A POSITA reading the specification and claim 1
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`would not read such a limitation into the plain and ordinary meaning of the broadest claim
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`simply because that feature is described as part of an “alternative” embodiment.
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`58.
`
`I note that Fig. 2 of the ’578 patent, reproduced below, has a block 52
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`“Distribute Application Launcher to Clients.” It has no block labeled “Distribute
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`Application to Clients.” If the application is not distributed to the client, then the
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`Application Launcher could not possibly execute the application on the client.
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`59.
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`Further, at 6:46-62.
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`
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`FIG. 1 illustrates an embodiment of a computer network including
`configurable application program management capabilities
`according to an embodiment of the present invention. Computer
`network system 10 includes a network management server such as
`a Tivoli™ server 20 and on-demand servers 22, 22'. As used herein,
`"on-demand" refers to a server delivering applications as needed
`responsive to user requests as requests are received. System 10
`further includes client stations 24, 24', 26, 26'. As illustrated, on-
`demand servers 22, 22' are connected to Tivoli™ server 20 over a
`first network segment 10'. Client stations 24, 24' are served by on-
`demand server 22 and communicate over network 10''. Similarly,
`clients 26, 26' are served by server 22' and communicate over
`network 10''. As schematically illustrated in FIG. 1, client stations
`24, 24', 26, 26' may be hardware from a variety of designers
`operating a variety of different operating systems.
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`60.
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`The fact that the client requests are coming from “a variety of different
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`operating systems” strongly suggests that the applications are executed at the server.
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`Otherwise, numerous versions of the application would have to exist, one for each different
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`type of operating system.
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`61.
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`I find the following passage dispositive of the issue whether an application
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`can run on the server:
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`At block 98, client 24 determines if user preferences have been
`requested by on-demand server 22 (or the user has requested new
`preferences). If user preferences are requested, the application
`launcher program obtains the preferences from the user and
`provides them to server 22 at block 100. The client/server
`application program is then run as illustrated at block 102 using
`the user preferences and the administrative preferences (or default
`preferences). It is to be understood that a user may update his
`preferences at blocks 96 and 98 regardless of whether preferences
`have previously been provided for the application program by the
`user. ’578 patent, 11:9-19.
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 19 of 33
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`62.
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`This passage refers to the “client/server application program,” which is a
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`clear reference to an application being run at a server for the benefit of client.
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`63.
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`There is no basis for the limitations Defendants seek to read into the
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`construction of “application program launcher.”
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`B.
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`“application program”
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`Claim Phrase
`
`application program
`
`(’578 Patent, all claims;
`’239 Patent, all claims)
`
`
`Plaintiff’s Proposed
`Construction
`ordinary meaning, which is
`software that performs tasks
`for an end-user
`
`Defendants’ Proposed
`Construction
`code associated with the
`underlying program functions
`that is a separate application
`from a browser interface and
`does not execute within the
`browser window
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`
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`64.
`
`If ever there was a computer term having a plain and ordinary meaning,
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`“application program” would be such a term. The term “application program” was used to
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`distinguish user program, with which the user interacts directly, from operating system
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`programs, which operate invisibly to the user, and it meaning has not changed over
`
`decades. This notion is supported by Barron’s Dictionary of Computer and Internet Terms
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`(Sixth Ed., 1998) Ex. E, which defines “application program” as “a computer program that
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`performs useful work not related to the computer itself.” It is also consistent with the
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`definition in the Microsoft Computer Dictionary (Third Edition, 1997) Ex. F: “A program
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`designed to assist in the performance of a specific task, such as word processing,
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`accounting or inventory management.”
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`65.
`
`There is no indication that the term “application program” in the Patents is
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`used in anything other than its plain and ordinary meaning. In fact, the entire tenor of the
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`Case 1:19-cv-11278-RGS Document 42-2 Filed 02/19/20 Page 20 of 33
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`Patents revolves around distributing and managing the execution of “application
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`programs,” without any intention of limiting that term.
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`66.
`
`The ’578 specification contains supporting language at 12:12-20:
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`Accordingly, as used herein, it is to be understood that the term
`“application program” generally refers