Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 1 of 8
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`Exhibit C
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`Exhibit C
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 2 of 8
`IPR2017-01653
`Patent No. 8,661,094
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`GOOGLE LLC,
`Petitioner
`
`v.
`
`SPRING VENTURES, LTD.,
`Patent Owner
`______________________
`
`Case IPR2017-01653
`Patent 8,661,094
`______________________
`
`DECLARATION OF MICHAEL I. SHAMOS, Ph.D.
`IN SUPPORT OF PETITIONER’S REPLY AND
`OPPOSITION TO MOTION TO AMEND
`
`Google Exhibit 1052, pg. 1
`
`
`
`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 3 of 8
`IPR2017-01653
`Patent No. 8,661,094
`I am the same Michael I. Shamos, Ph.D. I have been retained as an expert
`
`1.
`
`witness on behalf of the Petitioner, Google LLC, in this inter partes review
`
`proceeding.
`
`2.
`
`I previously submitted a “Declaration of Michael I. Shamos, Ph.D.” in this
`
`proceeding, dated June 20, 2017 (the “First Shamos Declaration,” Ex. 1002).
`
`My qualifications and the circumstances of my engagement were detailed in
`
`¶¶ 1-2 of the First Shamos Declaration, which I incorporate here by
`
`reference.
`
`3.
`
`I offer this declaration in rebuttal to the arguments raised by Patent Owner in
`
`its “Patent Owner Response Pursuant to 37 C.F.R. § 42.120” (“POR”), the
`
`three expert declarations accompanying the POR, and in its “Patent Owner
`
`Motion to Amend Pursuant to 37 C.F.R. § 42.121” (“Motion to Amend”).
`
`I.
`4.
`
`MATERIALS REVIEWED
`In connection with my study of the POR and supporting declarations and
`
`reaching the conclusions stated herein, I have reviewed a number of
`
`additional documents. In addition to those mentioned in my previous
`
`declaration, I have reviewed the following additional documents:
`
`• POR and its accompanying exhibits
`• Motion to Amend and its accompanying exhibits
`• All other documents referenced herein.
`
`Google Exhibit 1052, pg. 2
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`
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 4 of 8
`IPR2017-01653
`Patent No. 8,661,094
`search result is a matter of user preference. Accordingly, mere disclosure of
`
`returning a plurality of search results does not teach away from Belfiore’s
`
`redirect feature.
`
`IX. PATENT OWNER’S PROPOSED SUBSTITUTE CLAIMS ARE
`INVALID OVER THE PRIOR ART
`63. As explained below, it is my opinion that the proposed substitute claims
`
`would still be obvious to a POSITA over the existing prior art of Belfiore,
`
`EchoSearch, Breese, and Osaku.
`
`A. Browser Enhancements
`64. A browser is a unitary piece of code designed for web browsing. In order to
`
`add additional features to a browser, the user’s choices were limited. One
`
`possibility would be to wait for the browser provider to add a new desired
`
`feature and provide a new release of the browser. This eventuality might
`
`never occur, or the user might have to wait an unreasonably long time.
`
`Another possibility was for a third party to offer a browser enhancement.
`
`Such an enhancement could take the form of a “plug-in” or object code
`
`patch.
`
`65. As a general matter, a “plug-in” is a piece of software that adds additional
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`functionality to an existing application. It is called a “plug-in” because it
`
`can essentially be “plugged in” to the application, that is, installed easily
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`
`
`-26-
`
`Google Exhibit 1052, pg. 27
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`
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 5 of 8
`IPR2017-01653
`Patent No. 8,661,094
`without any programming being required. A “browser plug-in” is a plug-in
`
`to add capabilities to a browser.
`
`66. Browser plug-ins could be implemented in various ways, but a convenient
`
`way was for the browser itself to expose an Application Programming
`
`Interface (API) that the plug-in could invoke to communicate with the
`
`browser. This technique was described in the February 1996 issue of Dr.
`
`Dobb’s Journal (Ex. 1054).
`
`67. Another possibility was to use Microsoft’s ActiveX, a technology that
`
`allowed integration of third-party executable code into a browser,
`
`particularly Microsoft’s Internet Explorer 3.0 browser, introduced in 1996.
`
`68. An early ActiveX browser plug-in was Macromedia Shockwave, which
`
`allowed the playing of videos created with Macromedia’s Director and
`
`Freelance software tools. This capability was described in the June 3, 1996
`
`issue of InfoWorld at p. 16 (Ex. 1055).
`
`69. An early browser plug-in was the Flash player, distributed originally in 1996
`
`to allow display of video on web pages. It was then used by web developers
`
`to add various animations to their web pages. However, such pages would
`
`not display correctly on browsers that did not have the Flash plug-in.
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`70. Another early browser plug-in was the Alexa toolbar in 1997, which caused
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`a menu of functions to appear on in the browser window, allowing the user
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`
`
`-27-
`
`Google Exhibit 1052, pg. 28
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`
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 6 of 8
`IPR2017-01653
`Patent No. 8,661,094
`to obtain information about a website being visited, such as popularity of the
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`page, and suggestions of related pages (see Ex. 1056).
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`71. A third method of browser enhancement was the Java applet, code delivered
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`from a website that would be interpreted and executed by separate software
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`known as a Java Virtual Machine (JVM) that would be invoked by the
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`browser. An advantage of Java applets over ActiveX is that applets were
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`platform-independent, while ActiveX controls were specific to a particular
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`operating system.
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`72. Thus, by 1998, browser plug-ins were well-known in the browser art and
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`were one of the tools that allowed adding enhancements to a browser
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`without the need for reprogramming the browser itself. Browser plug-ins
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`existed in several forms, as discussed above (e.g., Java, ActiveX) and served
`
`multiple functions (e.g., multimedia viewing, browser enhancements, etc.).
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`73. Patent Owner’s experts support this view. See, e.g., Ex. 1042 at 129:12-
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`130:23, 147:21-148:23, 149:21-150:6 and Ex. 1043 at 66:3-15, describing
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`plugins generally as augmenting and enhancing browsers and discussing
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`memory benefits to implement an enhancement as a plug-in.
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`
`
`-28-
`
`Google Exhibit 1052, pg. 29
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`
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 7 of 8
`IPR2017-01653
`Patent No. 8,661,094
`Belfiore (Ex. 1019) in view of EchoSearch (Ex. 1022-23) and
`Osaku (Ex. 1005)
`As discussed above, in the combination of Belfiore,
`EchoSearch, and Osaku, Osaku discloses the translator entity
`sending the determined URL address (e.g., URL2) to a domain
`name server (e.g., server 106). This enables the retrieval by the
`user’s web browser of the web page responsive to the URL
`address. (See Ex. 1005, Fig. 6, showing platform 104 retrieving
`HTML page 126 responsive to URL2; and analysis of claim
`19b-2 above)
`
`Claim 20
`A method
`according to
`claim 13,
`wherein said
`translator entity
`sends the
`determined URL
`address to a
`domain name
`server and the
`domain name
`server sends the
`IP address for the
`web page
`responsive to the
`URL address to
`the user’s web
`browser.
`
`X. CONCLUSION
`84. All of the challenged claims are unpatentable in light of the prior art.
`
`85. All of the proposed claims are unpatentable in light of the prior art.
`
`XI. CONCLUDING STATEMENTS
`86.
`I reserve the right to supplement my opinions in the future to respond to any
`
`arguments that Patent Owner raises and to take into account new information
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`as it becomes available to me.
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`87.
`
`In signing this declaration. I understand that the declaration will be filed as
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`evidence in a review proceeding before the Patent Trial and Appeal Board of
`
`the U.S. Patent and Trademark Office. I acknowledge that I may be subject
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`
`
`-50-
`
`Google Exhibit 1052, pg. 51
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`
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`Case 1:19-cv-11278-RGS Document 44-3 Filed 02/20/20 Page 8 of 8
`IPR2017-01653
`Patent No. 8,661,094
`to cross-examination in the case and that cross-examination will take place
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`within the United States. If cross-examination is required of me, I will
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`appear for cross-examination within the United States during the time
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`allotted for cross-examination.
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`88.
`
`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed at Pittsburgh, Pennsylvania on September 5, 2018.
`
`____________________________________
`Michael I. Shamos, Ph.D.
`
`-51-
`
`Google Exhibit 1052, pg. 52
`
`
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