Page 1
`
`
`
`
`
`IN THE UNITED STATES PATENT TRIAL AND APPEAL BOARD
`
`U.S. Class: 705/9
`
`Group Art Unit: 3623
`
`Proceeding No.
`
`
`In re Post-Grant Review of:
`
`
`)
`
`
`
`
`
`
`
`U.S. Patent No. 6,675,151
`)
`
`
`
`
`
`
`Issued:
`
`Jan 6, 2004
`)
`
`
`
`
`
`
`Inventors: Michael S. BLACKSTONE
`BM2012-00005
`
`
` Roland R. THOMPSON
`)
`
`
`
`
`
`
`)
`
`Application No.: 09/419,266
`
`
`)
`
`
`
`
`
`
`)
`
`
`Filed:
`
`Oct 15, 1999
`
` ) FILED ELECTRONICALLY
`
`
`
`
`
`For: SYSTEM AND METHOD FOR )
`PER 37 C.F.R. § 42.6(b)(1)
` PERFORMING SUBSTITUTE
`
`)
` FULFILLMENT INFORMATION )
` COMPILATION AND
`
`)
` NOTIFICATION
`
`
`
`
`Mail Stop Patent Board (37 C.F.R. § 42.6(b)(2)(ii))
`Patent Trial and Appeal Board
`U.S.P.T.O.
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`)
`
`)
`
`)
`
`)
`
`)
`
`)
`
`
`
`
`
`
`
`
`
`DECLARATION OF EDWARD YOURDON IN RESPONSE TO
`PLAINTIFF’S PETITION FOR TRANSITIONAL POST-GRANT
`REVIEW UNDER SECTION 18 OF THE LEAHY-SMITH AMERICA
`INVENTS ACT AND 35 U.S.C. § 321
`
`____________________________________________
`
`Submitted on March 18, 2013
`
`
`
`FRONTLINE EXHIBIT 2003
`CRS v. Frontline, CBM2012-00005
`
`

`

`Page 2
`
`
` I, Edward Yourdon, hereby declare as follows:
`
`
`
`1.
`
`I am a software consultant in my own firm, NODRUOY Inc., as well
`
`as co-founder and Fellow of a software research/analysis firm known
`
`as the Cutter Consortium. I have worked in the computer industry
`
`since 1964, and the details of my background and experience in the
`
`computer industry are provided in my CV attached as Appendix A to
`
`this Declaration.
`
`2.
`
`I received a B.S. in Applied Mathematics from Massachusetts
`
`Institute of Technology (MIT) in 1965. I subsequently carried out
`
`graduate work in computer science and electrical engineering at MIT
`
`and at the Polytechnic Institute of New York.
`
`3.
`
`I have provided expert testimony in approximately two dozen
`
`computer-related cases in both the U.S. and the U.K. Several of these
`
`engagements have involved analyzing implementation projects.
`
`4.
`
`I have been retained by the law firm of Woodcock Washburn, LLP to
`
`act as a consultant/expert in the patent dispute concerning Frontline
`
`Technologies, Inc. (“Frontline”) and CRS, Inc. (“CRS”), and have
`
`become familiar with the ’151 patent and the records associated with
`
`its examination at the U.S. Patent Office. I am being compensated at
`
`
`
`

`

`
`
`Page 3
`the rate of $550 per hour for the work that I perform on this
`
`assignment. My compensation is not based on the outcome of this
`
`litigation.
`
`5.
`
`The ’151 patent issued from an application (U.S. application serial no.
`
`09/419,266) (“’266 application”) that claims priority to, and is a
`
`continuation-in-part of, the application (U.S. application serial no.
`
`09/217,116) (“’116 application) from which the ’133 patent issued.
`
`Similar to the ’133 patent, the ’151 patent describes a system that
`
`receives information about temporary job openings that result from
`
`absent workers, informs substitute workers of the job openings, and
`
`receives inputs from substitute workers securing particular job
`
`openings. The system stores information using an underlying
`
`database, and communicates with users via various communications
`
`links, including a Web interface (see, e.g., ’151 patent at col. 4, ln. 64
`
`– col. 5, ln. 45; col. 6, ln. 66 - col. 12, ln. 62; Fig 1-14).
`
`6.
`
`The ’151 patent describes a system of hardware and software that
`
`provides the substitute fulfillment functionality (see, e.g., ’151 patent
`
`at col. 6, ln. 64 - col. 9, ln. 22; Fig. 1). The patent also provides details
`
`regarding records that may be included in the database (see, e.g., ’151
`
`
`
`

`

`
`
`Page 4
`patent at col. 9, ln. 25 - col. 10, ln. 14; Fig. 3-11). The ’151 patent
`
`explains processes by which the various components of the system
`
`interface with users of the system. For example, the ’151 patent
`
`describes processes for receiving job opening information into the
`
`system, for reporting the job opening information, and for receiving
`
`inputs from substitutes securing particular job openings (see, e.g.,
`
`’151 patent at col. 10, ln. 17 - col. 12, ln. 62; Fig. 2, 12-14).
`
`7.
`
`In connection with the Frontline Technologies litigation, I submitted
`
`two Expert Reports (one identified as a “rebuttal” report, and the other
`
`identified as a “supplemental” report) which addressed, inter alia, the
`
`issues of (1) whether the U.S. Patent No. 6,675,151 (“the ’151
`
`patent”) was entitled to the filing date of the parent U.S. Patent No.
`
`6,334,133 (“the ’133 patent”), and (2) whether claims 3, 6, 7, 16, 24
`
`and 33 of the ’151 patent were invalid for lack of an adequate written
`
`description.
`
`8.
`
`I have now been asked to review portions of a September 16, 2012
`
`document, entitled “Petition for Transitional Post-Grant Review
`
`Under § 18 of the Leahy-Smith America Invents Act and 35 U.S.C. §
`
`
`
`

`

`
`
`Page 5
`321” (hereinafter “Petition”). In particular, I was asked to consider
`
`pages 1, 2, 3, and 20-32 of that document.
`
`9.
`
`I am not a lawyer and cannot provide opinions concerning legal
`
`issues; however, I do have opinions regarding statements that appear
`
`in the above referenced portions of the Petition document, and that
`
`bear on technology and technical issues.
`
`10. At page 3, the Petition includes the following passage:
`
`Although the patent’s specification
`contains a number of configurations
`and connections between existing
`processors, the claims simply recite
`an abstract idea for how to fill
`worker vacancies. The generic
`technological recitations do not save
`these claims.
`
`11. Again, while I am not a lawyer and cannot offer legal opinions, I
`
`disagree with the assertion that the “claims simply recite an abstract
`
`idea.” Rather, considering the assertion from a technical perspective, I
`
`understand the claims to recite specific technical implementations for
`
`performing substitute fulfillment. I do not consider the specific
`
`technical
`
`implementations
`
`to be abstract. From a
`
`technical
`
`perspective, I understand that claim 3 recites a particular set of
`
`operations that are performed by a particular combination of
`
`
`
`

`

`Page 6
`computing equipment,
`
`
`
`including “one or more computers,” a
`
`“website,” and “communication links.” Also from a technical
`
`perspective, I understand that claim 6 recites a system that comprises
`
`a particular combination of computing technology, including a
`
`database that contains particular information as recited in the claim,
`
`and one or more computers that have been specially programmed to
`
`perform the specific operations as recited in the claim.
`
`12. From a technical perspective, I disagree with the assertion that the
`
`claims recite generic technology. Rather, with respect to claim 3, I
`
`understand that the “one or more computers” must be specially
`
`programmed and configured
`
`to cooperate with a specially
`
`programmed “website,” and interface with the “communication
`
`links,” in order to provide the specific series of operations that are
`
`recited in the claim. With respect to claim 6, I understand that the
`
`“database” has been specially formatted to contain the data as recited
`
`in the claim, and the “one or more computers” must be specially
`
`programmed and configured
`
`to cooperate with a specially
`
`programmed “website” and interface with the “communication links”
`
`in order to provide the specific series of operations that are recited in
`
`the claim.
`
`
`
`

`

`
`Page 7
`13. At pages 25 and 26, the Petition includes the following passage:
`
`
`
`At best, the claim 3 describes three
`generic devices not integral to the
`claimed invention—a computer, a
`communication link, and a website.
`Claim 6 only adds a generic database …
`None of these elements performs a
`significant part in the offer and
`acceptance or is limited to any
`specific application. … Each
`“technological” element merely
`encompasses generic technology.
`
`14. A similar sentiment appears at other places in the above referenced
`
`pages of the Petition. As noted above, I disagree that the claims
`
`describe “generic devices.” Rather, from a technical perspective, I
`
`understand that the “one or more computers,” “website,” and
`
`“database” are specially programmed and configured in order to
`
`interface with the “communication links” and to provide the particular
`
`operations that are described in the claim language. The functionality
`
`recited in the claims doesn’t just happen; rather, the machines need to
`
`be specially programmed in order to make the functionality occur in
`
`the way that the claims specify.
`
`15. Moreover, I disagree with the Petition’s assertion that the “one or
`
`more computers,” “website,” “database,” and “communication links”
`
`are not “integral to the claimed invention” or do not play a
`
`
`
`

`

`
`
`Page 8
`“significant part” in the claim language. To the contrary, from a
`
`technical perspective, in both claims 3 and 6, the “one or more
`
`computer” interfaces with the “website” and the “communication
`
`links” to perform all of the recited operations.
`
`16. From a technical perspective, the computing devices are very much
`
`integral to the recited claim language and play a significant part in
`
`performing the operations recited in the claim. The computing devices
`
`are required to perform the particular operations that are recited in the
`
`claim. For example, the claims describe “halting, at the one or more
`
`computers, further processing to fulfill the posted position with any
`
`other substitute worker.” From a technical perspective, there must be
`
`“one or more computers” for it to be possible to “halt[]” “further
`
`processing” on “one or more computers.” The computing hardware
`
`that is specified in the claims is essential to the operation of the claims
`
`as they are written. The computing hardware is required in order to
`
`perform the particular operations as described in the claims.
`
`17. At page 30, the Petition includes the following sentence:
`
`They do not recite any features
`requiring special programming, the use
`of a particular computer or website,
`or anything other than the post-
`
`
`
`

`

`Page 9
`
`
`
`
`
`solution use of technological
`expedients to render a business method
`more efficient.
`
`18.
`
`I disagree. In my opinion, “special programming” of computers is
`
`required in order to provide the functionality as described in the
`
`claims. The functionality simply could not happen unless the
`
`“database” is formatted with the data as recited in the claim, and the
`
`“one or more computers” and “website” are specially programmed to
`
`provide the described functionality, and to interface with the
`
`communication links as described in the claims. In my opinion, a
`
`device that has been specially programmed to perform particular
`
`operations such as is recited in the claims of the ’151 patent is, from a
`
`technological and functional perspective, different from a computing
`
`device that has not been programmed and configured to provide that
`
`same
`
`functionality. Computer hardware without
`
`specialized
`
`programming simply will not perform the operations that are required
`
`to be performed in the language of the claims. Such computer
`
`hardware without the specialized programming is simply different
`
`from hardware that has been specially programmed.
`
`19.
`
`In signing this Declaration, I understand that the Declaration will be
`
`filed in evidence in a contested case before the Patent Trial and
`
`
`
`

`

`
`
`Page 10
`Appeal Board of the United States Patent and Trademark Office. I
`
`acknowledge that I may be subject to cross-examination in the case
`
`and that cross-examination will take place in the United States. If
`
`cross-examination is required of me, I will be appear for cross-
`
`examination within the United States during the time allotted for
`
`cross-examination.
`
`20. My opinions herein are based upon the information that I have
`
`considered, as of the date of submission of this Declaration. I reserve
`
`the right to supplement or amend my opinions in view of any
`
`additional information that may be provided to me after the date of
`
`this Declaration, including at trial.
`
`21.
`
`I declare that all statements made of my own knowledge are true and
`
`that all statements made on information and belief are believed to be
`
`true. I understand that willful false statements and the like are
`
`punishable by fine or imprisonment, or both (18 U.S.C. § 1001), and
`
`that such willful false statements could jeopardize the validity of this
`
`Declaration or the outcome in this proceeding.
`
`
`
`DATE:
`
`
`
`March 18, 2013
`
`
`
`

`

`Page 11
`Page 11
`
`
`
`
`
`SIGNATURE:
`
`SIGNATURE:
`
`
`
`E41110;W ’
`
`
`
`
`
`

`

`Page 12
`
`
`
`
`
`APPENDIX A: CURRICULUM VITAE OF EDWARD YOURDON
`
`EDWARD YOURDON is an internationally-recognized
`computer consultant, as well as the author of more
`than two dozen books, including CIO’s at Work, Byte
`Wars, Managing High-Intensity Internet Projects,
`Death March, Rise and Resurrection of the American
`Programmer, and Decline and Fall of the American
`Programmer. One of his recent books, Outsource:
`competing in the global productivity race,
`discusses both current and future trends in
`offshore outsourcing, and provides practical
`strategies for individuals, small businesses, and
`the nation to cope with this unstoppable tidal
`wave.
`
`According to the December 1999 issue of Crosstalk:
`The Journal of Defense Software Engineering, Ed
`Yourdon is one of the ten most influential men and
`women in the software field. In June 1997, he was
`inducted into the Computer Hall of Fame, along with
`such notables as Charles Babbage, Seymour Cray,
`James Martin, Grace Hopper, Gerald Weinberg, and
`Bill Gates. Ed is widely known as the lead
`developer of the structured analysis/design methods
`of the 1970s, as well as a co-developer of the
`Yourdon/Whitehead
`method
`of
`object-oriented
`analysis/design and the Coad/Yourdon OO methodology
`in the late 1980s and 1990s. He was awarded a
`Certificate of Merit by the Second International
`Workshop on Computer-Aided Software Engineering in
`1988, for his contributions to the promotion of
`Structured
`Methods
`for
`the
`improvement
`of
`Information Systems Development, leading to the
`CASE field. He was selected as an Honored Member of
`Who’s Who in the Computer Industry in 1989. And he
`was given the Productivity Award in 1992 by
`Computer Language magazine, for his book Decline
`and Fall of the American Programmer.
`
`Ed has worked in the computer industry for 45
`years, beginning when Digital Equipment Corporation
`hired him in 1964 to write the FORTRAN math library
`for the PDP-5 and the assembler for the popular
`PDP-8 minicomputer. During his career, he has
`worked on over 25 different mainframe computers and
`
`
`
`

`

`Page 13
`
`
`
`
`
`was involved in a number of pioneering computer
`technologies such as time-sharing operating systems
`and virtual memory systems.
`
`After stints with DEC and GE, a small consulting
`firm, and a few years as an independent consultant,
`Ed founded his own consulting firm, YOURDON Inc.,
`in 1974, in order to provide educational,
`publishing, and consulting services in state-of-
`the-art software engineering technology. Over the
`next 12 years, the company grew to a staff of over
`150 people, with offices throughout North America
`and Europe; as CEO of the company, he oversaw an
`operation that trained over 250,000 people around
`the world in structured programming, structured
`design, structured analysis, logical data modeling,
`and project management. YOURDON Inc. was
`eventually sold in 1986 and after several more
`mergers and acquisitions, eventually became part of
`CGI, the French software company that is now part
`of IBM. The publishing division, YOURDON Press (now
`part of Prentice Hall), has produced over 150
`technical computer books on a wide range of
`software engineering topics; many of these
`"classics" are used as standard university computer
`science textbooks.
`
`Ed is the author of over 500 technical articles; he
`has also written 27 computer books since 1967.
`Among his recent books are CIO’s at Work (2011),
`Outsource (2004, Death March (2nd edition, 2003),
`Byte Wars (2002), Managing High-Intensity Internet
`Projects (2001), Case Studies in Object-Oriented
`Analysis and Design (1996), Mainstream Objects
`(1995), and Object-Oriented Systems Development: An
`Integrated Approach (1994), as well as two earlier
`OO books co-authored with Peter Coad. Several of
`his books have been translated into Japanese,
`Russian, Spanish, Portuguese, Dutch, French,
`German, Polish, and other languages; and his
`articles have appeared in virtually all of the
`major computer journals. He is a keynote speaker
`at major computer conferences around the world, and
`he served as the conference Chairman for Digital
`Consulting's CASE WORLD and SOFTWARE WORLD
`conferences from 1990 through 1995.
`
`
`
`

`

`Page 14
`
`
`
`
`
`In addition to serving on the Board of Directors of
`iGate Corp from 1997 to 2009, Ed has also served on
`the Defense Department's Airlie Council, an
`advisory group that focused on finding "best
`practice" guidelines and techniques for large,
`complex projects throughout the 1990s. Ed is
`currently a Faculty Fellow at the Information
`Systems Research Center of the University of North
`Texas, and was an advisor to Technology Transfer's
`research project on software industry opportunities
`in the former Soviet Union, and a member of the
`expert advisory panel on I-CASE acquisition for the
`U.S. Department of Defense in the early 1990s. He
`is also the Director of the Business/IT Trends
`Service for the Cutter Consortium, of which he is a
`co-founder and chairman, and he serves as Editor
`Emeritus of the Consortium's flagship publication,
`the Cutter IT Journal.
`
`Ed Yourdon received a B.S. in Applied Mathematics
`from MIT; he also carried out graduate work at MIT
`and at the Polytechnic Institute of New York. He
`has been appointed an Honorary Professor of
`Information Technology at Universidad CAECE in
`Buenos Aires, has lectured at MIT, Harvard, UCLA,
`Berkeley, and other universities around the world.
`He has been quoted and interviewed in numerous
`newspaper and magazine articles, including the New
`York Times, Wall Street Journal, the Los Angeles
`Times, the Christian Science Monitor, the Boston
`Globe, the Times of India, Newsweek, and several
`computer trade publications. He has also been
`interviewed on numerous television news shows and
`radio programs, including Fox News, the ABC Evening
`News, CNBC and National Public Radio.
`
`Yourdon is a member of the Association of Computing
`Machinery (ACM), Institute for Electrical and
`Electronic Engineers (IEEE), Project Management
`Institute (PMI), and Computer Law Association
`(CLA).
`
`RESUME DETAILS
`
`1987-present
`
`
`
`

`

`Page 15
`
`
`
`
`
`CEO of NODRUOY Inc., a computer consulting,
`publishing, and research firm based in New York
`City. Responsible for all professional consulting
`engagements;
`research
`reports
`and
`technical
`publications; product planning and development; and
`strategic planning for future products and
`services.
`
`1986-87
`
`Vice President of DeVRY, Inc. After YOURDON Inc was
`acquired by DeVRY, I was made a Vice President of
`Research & Development, with the task of
`identifying and reporting on significant new
`technology trends in the high-technology industries
`that could provide business opportunities for DeVRY
`and its parent, Bell & Howell, Inc.
`
`1974-86
`
`Founder and CEO of YOURDON Inc., an international
`consulting, software development, publishing, and
`training
`company.
`Responsible
`for
`strategic
`planning, R&D, product development, business
`development, and oversight of the technical staff.
`
`1970-74
`
`Independent consultant, specializing in software
`development/engineering
`methodologies,
`project
`management, and technical consulting engagements
`involving real-time and online systems.
`
`1968-70
`
`Director of R&D at E.L.I. Computer Time-Sharing,
`Inc. Responsible for identifying, reporting on, and
`deploying
`new
`networking
`and
`distributed
`technologies that would be applicable to a high-
`tech startup firm that was developing ERP products
`and services for the textile and garment industries
`in the metropolitan New York area.
`
`1968
`
`Senior Consultant, Mandate Systems Corp. Assigned
`by this New York City consulting firm to assist
`
`
`
`

`

`Page 16
`
`
`
`
`
`clients in developing, extending, maintaining, and
`trouble-shooting complex time-sharing computer
`systems.
`
`1966-67
`
`Project Manager, Medinet Division of General
`Electric. Responsible for the development of an
`advanced operating system on a specially-modified
`mid-range GE computer system, to be used as the
`nucleus for an advanced hospital information system
`developed by Medinet.
`
`1964-66
`
`Senior Programmer, Digital Equipment Corp. Assigned
`to develop the FORTRAN math library on the PDP-5,
`PDP-8, and PDP-6 computers. Maintained a legacy
`assembler on the PDP-5, and then worked as the sole
`developer of the PAL-III assembler for the PDP-5
`and PDP-8 computers. Developed several middleware
`suites for the PDP-6 time-shared operating system
`environment.
`
`
`BOOKS AUTHORED, COAUTHORED, OR EDITED BY ED YOURDON
`
`1. CIO’s at Work (aPress, 2011)
`
`2. Outsource: competing in the global productivity
`race (Prentice Hall, 2004)
`
`3. Death March,2nd edition (Prentice Hall, 2003)
`
`4. Byte Wars: The Impact of September 11 on
`Information Technology (Prentice Hall, 2002)
`
`High-Intensity
`5. Managing
`(Prentice Hall, 2001)
`
`Internet
`
`Projects
`
`6. Time Bomb 2000!, with Jennifer Yourdon (2nd
`edition, Prentice Hall, 1999)
`
`7. Case Studies in Object-Oriented Analysis and
`Design, with Carl Argila (Prentice-Hall, 1996).
`
`the
`of
`Resurrection
`and
`8. Rise
`Programmer. (Prentice Hall, 1996).
`
`American
`
`
`
`

`

`Page 17
`
`
`
`
`
`9. Mainstream Objects, with Katharine Whitehead,
`Jim Thomann, Karin Oppel, and Peter Nevermann
`(Prentice-Hall, 1995)
`
`Development:
`Systems
`10. Object-Oriented
`Integrated Approach (Prentice Hall, 1994).
`
`An
`
`11. Decline and Fall of the American Programmer
`(Prentice Hall, 1992)
`
`Design,
`12. Object-Oriented
`(Prentice Hall, 1991).
`
`with
`
`Peter
`
`Coad
`
`13. Object-Oriented Analysis, 2nd ed., with Peter
`Coad, (Prentice Hall, 1991).
`
`14. Modern Structured Analysis (Prentice Hall,
`1989).
`
`15. Structured Walkthroughs, 4th ed.(Prentice Hall,
`1989).
`
`16. Managing the Structured Techniques, 4th ed.
`(Prentice Hall, 1989).
`
`System
`the
`17. Managing
`ed.(Prentice Hall, 1988).
`
`Life
`
`Cycle,
`
`2nd
`
`18. Nations at Risk, (Prentice Hall/YOURDON Press
`1986).
`
`19. The Perils of Personal Computing (YOURDON
`Press, 1986). (Out of print.)
`
`20. Silent Witness (YOURDON Press, 1982). (Out of
`print.)
`
`21. Writings of the Revolution (Prentice Hall,
`1982). (Out of print.)
`
`22. Classics in Software Engineering (Prentice
`Hall, 1979). (Out of print.)
`
`23. Structured Design, with Larry L. Constantine
`(Prentice Hall, 1979).
`
`
`
`

`

`Page 18
`
`
`
`
`
`24. Learning to Program in Structured COBOL, Part
`II, with Timothy R. Lister (Prentice Hall,
`1978)
`
`25. Learning to Program in Structured COBOL, Part I
`and II, with C. Gane and T. Sarson and T.
`Lister (Prentice Hall, 1976).
`
`26. Techniques of Program Structure and Design
`(Prentice Hall, 1975).
`
`267 Design of On-Line Computer Systems (Prentice
`Hall, 1972). (Out of print.)
`
`28. Real-Time Systems Design (Information & Systems
`Press, 1967). (Out of print.)
`
`
`
`
`