IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
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`Case No. 2:13-cv-103-JRG-RSP
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` JURY TRIAL DEMANDED
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`AL CIOFFI, et al.
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`Plaintiffs,
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`v.
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`GOOGLE INC.,
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`Defendant.
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`EXPERT REPORT OF PROFESSOR H. E. DUNSMORE
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`NOTICE:
`THIS REPORT CONTAINS CONFIDENTIAL OUTSIDE COUNSEL ONLY,
`INFORMATION SUBJECT TO THE STIPULATED PROTECTIVE ORDER IN
`THIS CASE.
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`Google - Exhibit 1016, cover
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`processors.135 Mr. Kogan admits that a POSITA would be aware of numerous techniques
`to do so “e.g. operating-system-enforced permissions, operating system management of
`processor resources that control access to specific portions of hardware, operating system
`use of page tables or segment descriptors, operating system use of rings of protection, and
`sandboxing” but the investors taught away from such methods therefore leaving a
`POSITA to unduly experiment. Id. I disagree with Mr. Kogan’s arguments and
`characterizations.
`393. Mr. Kogan admits that a POSITA would be well aware of the numerous
`techniques available to protect one process from accessing the memory space of another
`process. For example, he states in his report that those of skill in the art were “well aware
`that the term ‘process’ refers to the instantiation of a program by an operating system for
`execution and consists of the resources to execute that program, typically a separate
`process address space, processor, and other resources.”136 Mr. Kogan further states in the
`same paragraph that “[t]hose of skill in the art were also aware of the concepts of
`constructing a program such that it uses multiple processes for different portions of the
`program’s execution. Techniques in the art used the process-level separation of shared
`resources for protective and security measures found in operating systems of the day . . .
`.” Id. Mr. Kogan makes similar statements throughout this report.137
`394. The specification teaches many of these same techniques. A POSITA
`reading the specification of the Asserted Patents would recognize that M1 could be
`protected from malware running on P2 by using software techniques such as separate
`logical processes, or hardware techniques of separate physical processors, or both. As
`discussed above, the specification discloses running first and second logical processes on
`a single processor.138 M1 is protected from malware running on P2 because P2 is
`incapable of automatically accessing M1 without the appropriate “permission.” Id. The
`specification discloses a number of ways how P2 can be limited from automatically
`accessing M1. For example, the specification teaches P2 can be prevented from accessing
`M1 by requiring the “strict permission of user 160, either through a real time interaction
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`135 Kogan ¶ 162.
`136 Kogan ¶ 314.
`137 See, e.g., Kogan ¶¶ 162, 180, 197, 215.
`138 ’247 patent at 10:38-63.
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`94
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`Google - Exhibit 1016, page 94
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`executing on P2 from automatically accessing M1 would be recognized by a POSITA has
`disclosing and teaching the use of a sandbox.207
`457.
`In sum, Mr. Kogan’s argument is not a proper written
`description/enablement argument because it does not actually analyze a specific claim or
`limitation in the asserted patents. Nevertheless, Mr. Kogan is wrong in his suggestion that
`the inventors do not disclose and teach a multi-process web browser program with a
`sandboxed process.
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`XVI. ORIGINAL PATENT REQUIREMENT AND NEW MATTER
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`458. Mr. Kogan’s first argument regarding the original patent requirement is
`that specification does not disclose a single processor embodiment. This is incorrect. As
`discussed at length in Section XIII(A), the original specification adequately disclosed
`practicing the invention on a single processor. The disclosure in column 16 of the ’247
`patent could not be more clear. Moreover, the original claims of the ’247 patent were
`drawn to single processor embodiments. See ¶¶ 389-390.
`459. Mr. Kogan’s next opinion is that “the original ’247 Patent invention does
`not explicitly disclose or teach both the first and second processes being network
`interface programs or web browsers.” Kogan ¶ 283. This is untrue. The Court construed
`“web browser process” to be a process capable of accessing website data. As discussed
`above (¶¶ 424-437), the specification teaches a first web browser process capable of
`accessing website data. Plaintiffs’ Figure 6 embodiment and corresponding discussion
`explicitly discloses a first process capable of accessing website data. Mr. Kogan next
`argues that “to the extent” Plaintiffs contend the first and second web browser processes
`are within in single web browser program, the original ’247 patent does not disclose a
`multi-process web browser program. As discussed above, Mr. Kogan is incorrect. The
`original patent specification disclosed multiple logical processes working together to
`render a common task or application including web browsing.
`
`
`207 Kogan argues that the inventors taught away from sandboxing in the specification but
`this is incorrect. The specification’s only reference to sandboxing was with respect to
`Javascript which had proven to be vulnerable to malware attack, but that is not isolating a
`second web browser process as described in the Asserted Patents.
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`120
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`Google - Exhibit 1016, page 120
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`the that claimed embodiments of reissue patents constitute overlooked aspects of the
`invention not claimed in the ’247 patent.
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`A.
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`The Challenged Reissue Claims are Broader in Some Respect to the
`Original ’247 Patent Claims.
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`467. The first question is whether the inventors broadened the challenged
`reissue claims in some respect. The answer is yes. The applicants broadened certain
`reissue claims relative to the original claims of the ’247 patent by dropping the
`requirement of executing a second logical process using the second electronic data.
`Compare ’247 Patent, Claim 1 with ’528 patent Claim 21.
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`B.
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`The Broader Aspect of the Challenged Reissue Claims “May” Relate
`to Surrendered Subject Matter
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`468.
` The next question is whether the broader aspects of the challenged reissue
`claims “relate to surrendered subject matter.” An example of the inventors’ original
`claims (as filed) are set forth below:
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`1
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`2
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`1. A method of operating a computer system, comprising the steps of
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`executing instructions in a first logical process, wherein the first logical process is capable of
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`3
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`accessing data contained in a first memory space and a second memory space;
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`4
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`5
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`6
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`executing instructions in a second logical process, wherein the second logical process is
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`capable of accessing data contained in the second memory space, the second logical process
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`being further capable of exchanging data across a network of one or more computers;
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`469. Missing from the original claim is the requirement of executing a second
`logical process using the second electronic data processor.
`470. The examiner rejected the inventors’ original claim noting U.S. Patent No.
`6,192,477 (“Corthell”) disclosed each limitation of the original claims.217
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`217 See March 10, 2008 Office Action, at 3.
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`123
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`process and un-isolated second process, but distinguish Corthell, the inventors added a
`second processor. The material narrowing was to give up isolation in the first process but
`include one and two processor embodiments. As a result, the isolation embodiment with
`one processor was not substantially recaptured. Instead the isolation embodiment was
`dropped which means there has not been substantial recapture.
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`D.
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`The Reissue Claims Relate to “Overlooked Aspects” of the
`Original Invention.220
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`482. The inventors challenged reissue claims all relate to patentably distinct
`embodiments not originally claimed. The differences are not “mere incidental features of
`the originally-claimed invention. Indeed, Mr. Kogan states it is his opinion that the
`“invention disclosed in the Reissue Patents is completely different than that disclosed in
`the original ’247 Patent.”221 I agree they are different, but I disagree (as discussed above)
`that they were not disclosed in the specification.
`483. As discussed in ¶¶ 424-437 the inventors disclosed and enabled multiple
`embodiments of their invention including full isolation embodiments where the first
`process was isolated from website date (see ’247 claims), and more flexible embodiments
`that allowed the first process to be capable of accessing website data (Fig. 6 and
`discussion of same). However, the ’247 claims were only directed to the full isolation
`embodiments where the first process could not access website data. When the inventors
`amended their claims in reissue to claim web browser processes with access to website
`data, the inventors claimed a whole new set of embodiments that (as Mr. Kogan agrees)
`were materially different to the ’247 Patent claims. This amendment was not just an
`incidental feature of the originally claimed invention.
`484. Furthermore, the claims of the ’500 Patent were directed towards
`additional overlooked aspects of the original ’247 claims. All the claims of the ’500
`patent are directed towards “[a] portable computing and communication device” with an
`“intelligent cellular telephone capability with a secure web browser including a first web
`
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`220 I note that Kogan did not appear to have an opinion on whether the any of the
`challenged reissue claims were directed towards “overlooked aspects” of the original
`claims.
`221 Kogan ¶ 289.
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`128
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`browser process and a second web browser process.” None of the original ’247 claims
`were directed to mobile devices or enabling “intelligent cellular telephone capability.”
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`E.
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`Additional Disagreements With Mr. Kogan Regarding
`Recapture.
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`485. Mr. Kogan argues that the inventors cannot claim they only surrendered
`using a single processor with respect the hardware embodiments because Mr. Kogan
`believes the inventors never disclosed software embodiments.222 I disagree. The inventors
`more than adequately disclosed software embodiments in the original specification. See
`’247 patent, column 16. Mr. Kogan argues that the inventors emphasized throughout the
`patent and the file history that the ’247 claims relied on “physical” separation of the two
`processes, but Mr. Kogan ignores the explicit teachings throughout the specification that
`allow for logical separation between the two processes, without the need for physical
`separation.
`486. Mr. Kogan further argues that the inventors taught away from any type of
`software embodiments, and therefore could not have reserved such claims to which
`surrender of a single processor embodiment would apply. Again, I disagree that the
`inventors ever taught away from using software techniques to protect P1/M1 from
`malware executing on P2.
`487. Finally, Mr. Kogan notes that the inventors’ latest Reissue application, No.
`13/757,684 has been rejected in part because the examiner has raised improper recapture.
`It is my understanding the prosecution of this application is ongoing and by no means has
`Cioffi conceded the particular claims in application violate the rule against recapture.
`Further, I find it more persuasive that that patent office raised improper recapture
`multiple times in the prosecution of the actual Asserted Patents, and each time
`eventually withdrew its recapture objections.
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`222 Kogan ¶ 145.
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`129
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`Google - Exhibit 1016, page 129
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`XVIII. DEMONSTRATIVES AND SUPPLEMENTATION.
`I reserve the right to supplement this report to the extent permitted by the Court,
`the Federal Rules of Civil Procedure, the Court’s local rules, and any applicable order or
`rule to include any additional information produced in discovery by Defendant or address
`any additional arguments made by Defendant. I also reserve the right to create
`demonstratives for use at trial based on this report that may include additional materials.
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`PEDe•mrt
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`Dr. H.E. Dunsmore
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`130
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`Executed on September 14, 2016
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`Google - Exhibit 1016, page 130