`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT: 5,978,791
`
`
`INVENTOR: DAVID A. FARBER
`AND RONALD D. LACHMAN
`
`
`
`FILED: OCT. 24, 1997
`
`
`
` ISSUED: NOV. 2 1999
`
`
`
`TITLE: DATA PROCESSING
`SYSTEM USING SUBSTANTIALLY
`UNIQUE IDENTIFIERS TO
`IDENTIFY DATA ITEMS,
`WHEREBY IDENTICAL DATA
`ITEMS HAVE THE SAME
`IDENTIFIERS
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`DECLARATION OF MICHAEL A. SUSSELL
`
`
`
`
`
`
`
`
`
`EMC/VMWare v. PersonalWeb
`IPR2013-00082
`EMCVMW 1046
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`I, Michael A. Sussell, declare as follows:
`
`
`1.
`
`I have been asked by Petitioner to provide this Declaration regarding
`
`certain factual issues that are common to six Inter Partes Review proceedings, Case
`
`Nos. IPR2013-00082, -00083, -00084, -00085, -00086 and -00087.
`
`2.
`
`The testimony I provide in this Declaration is based on my personal
`
`knowledge of the relevant facts. Upon investigation, I came across several
`
`documents that confirm my recollection of these facts. A list of these documents is
`
`attached hereto as Appendix A.
`
`I.
`
`Background
`
`3.
`
`I am and have been a self-employed computer technician since around
`
`1996. From 1983 to 1996, I was the co-owner and system operator (“sysop”) of
`
`The Invention Factory Bulletin Board System (the “Invention Factory”), which I
`
`ran with my wife, Kathy Sussell.
`
`II. Bulletin Board Systems
`
`4.
`
`Bulletin Board Systems (“BBSs”) are computer systems that allow
`
`users to share files, messages, and articles. Once connected to a BBS, users can
`
`search for as well as upload and download content such as computer files, read
`
`news articles, and exchange messages with each other.
`
`
`
`- 2 -
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`5.
`
`By the mid-1990s, users could generally find software and other files
`
`by either browsing through file directories or performing keyword searches.
`
`III. The Invention Factory
`
`6. My wife and I launched the Invention Factory in 1983. Starting with
`
`one phone line in 1983, the Invention Factory quickly grew to become one of the
`
`world’s largest BBSs. As one newspaper reported, by mid-1993, we had over
`
`3,000 subscribers, with nearly 500 from other countries. D. Welcher, “A family’s
`
`line of business,” Business Times (Singapore), at 1 (June 21, 1993) (“Welcher”,
`
`EMCVMW 1047). In the 1993-1994 timeframe, we routinely received around
`
`4,000 to 5,000 calls on average per day.
`
`7.
`
`The Invention Factory offered both paid and unpaid access to files
`
`uploaded to and saved on its servers. Unpaid users had access to freeware
`
`uploaded to our BBS, whereas paid subscribers had access to freeware and
`
`shareware.
`
`8.
`
`By 1993, the Invention Factory ran PCBoard BBS software.1 This
`
`software enabled the Invention Factory’s keyword search functionality that was
`
`
`
`1 See generally F. Clark, “PCBoard v 14.5 User Manual” (1990) (EMCVMW
`
`1051) for a description of PCBoard’s various functions.
`
`
`
`- 3 -
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`provided to all of our users—both paid and non-paid. To utilize this function,
`
`users would first select the particular “Welcome” screen that contained the search
`
`bar. They would then enter in a word or phrase and select one of the various
`
`search commands. A search command would instruct our BBS servers to search
`
`both the titles and descriptions of the files that were previously uploaded to our
`
`BBS and still stored by our servers.
`
`9.
`
`The other main way that users would search for content of interest
`
`during this time period would be to browse through the Invention Factory’s simple
`
`directory structure of categories (which we called, “directories”), ranging from
`
`various descriptive and meaningful directories such as “games” or “file utilities.”
`
`Any given file could show up in more than one directory depending on the number
`
`of directories assigned to it. After selecting one of these file directories, users
`
`could browse the list of file titles and descriptions.
`
`10.
`
`It was common for any given file that we hosted—i.e., a file that was
`
`uploaded to our BBS and stored on our servers—to be publicly accessible and
`
`available for an extended period of time such as several months or even years.
`
`
`
`- 4 -
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`IV. The Kantor Reference
`
`11.
`
`I have been asked to provide my understanding of certain facts
`
`relating to the Frederick W. Kantor FWKCS™ Contents-Signature System Version
`
`1.22 (August 10, 1993) user manual (the “Kantor Reference,” EMCVMW 1004).
`
`12.
`
`It is my belief that the Kantor Reference (EMCVMW 1004) was
`
`publicly accessible prior to April 11, 1994.
`
`13. Many years prior to 1993, Dr. Kantor reached out to our BBS and
`
`together we discussed a common BBS sysop problem of managing storage space.
`
`After various discussions, Dr. Kantor developed and then released the first version
`
`of Frederick W. Kantor FWKCS™ Contents-Signature System software, and chose
`
`the Invention Factory as one of the software’s initial release sites. In addition to
`
`hosting this software on our site, we also installed and utilized the program on our
`
`BBS servers.
`
`14.
`
`I have reviewed a July 2, 1994 post to the “comp.sys.novell”
`
`newsgroup entitled, “Pirated software on server. Who’s liable?”, and it is
`
`consistent with my recollection that “FWKCS has been [as of July 2, 1994] used
`
`for years on the largest BBS’s such as Channel 1 and The Invention Factory.” N.
`
`Hirsch, “Pirated software on server. Who’s liable?” post to the “comp.sys.novell”
`
`newsgroup on July 2, 1994, at 1 (EMCVMW 1050). I recall Channel 1 (also
`- 5 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`referred to as “Channel One”) as having also used FWKCS because its sysop,
`
`Brian Miller, would ocassionally call me with various questions about the
`
`installation and operation of various versions of FWKCS. See B. Miller, “ziplab
`
`on bbses other,” post to the “alt.bbs” newsgroup on March 30, 1992, at 1
`
`(recommending FWKCS v 1.17, described as a program that “automatically
`
`process[es] uploaded files on BBS” and “catches duplicate or redundant files”)
`
`(EMCVMW 1049).
`
`15. From the first time we released and installed Frederick W. Kantor
`
`FWKCS™ Contents-Signature System software through the close of business in
`
`1996, the Invention Factory extensively utilized and hosted current versions of
`
`FWKCS software on its BBS. During this same time, the Invention Factory also
`
`hosted and thus made publicly accessible and available the complete FWKCS ZIP
`
`file that contained both the software as well as related documentation such as user
`
`manuals.
`
`16. Dr. Kantor’s software eliminated duplicate files from our hard drives
`
`and thus increased our storage capacity. It did so by creating an alphanumeric
`
`signature which came to be known and thought of as a “fingerprint” of every file
`
`on our hard drives. It then used these fingerprints (called “contents-signatures”) to
`
`find and delete duplicates.
`
`- 6 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`17. Because we found FWKCS to be useful, we promoted the software
`
`and publicly distributed the corresponding ZIP file as widely as possible—to both
`
`users and other BBS sysops alike.
`
`18. For example, we advertised FWKCS to users by including
`
`information about it on our “Welcome” screen, which all users—whether paid or
`
`non-paid—could immediately see. Additionally, we made the FWKCS ZIP files
`
`publicly accessible and available under four different directories of our single-page
`
`directory list—“system utilities,” “file utilities,” “BBS,” and “PCBoard utilities” (a
`
`separate directory targetted towards PCBoard sysops). Moreoever, we distributed
`
`these ZIP files on floppy disks at various BBS-related conferences.2
`
`
`
`2 For example, I recall distributing floppy disks of then-current versions of various
`
`shareware—including FWKCS—hosted by the Invention Factory at the 1993 One
`
`BBSCon Convention that took place in Colorado Springs, CO. I have reviewed the
`
`Computer Shopper article entitled, “Treading the boards,” dated January 1, 1994
`
`(EMCVMW 1048), and this article refreshes my recollection that this convention
`
`took place on August 25-29, 1993. D. Fowler, “Treading the boards: Online
`
`Networking Exchange and BBS Convention 1993 report,” Computer Shopper (Jan.
`
`1, 1994), at 54 (EMCVMW 1048).
`
`- 7 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`19.
`
`I accordingly believe that the Kantor Reference was publicly
`
`accessible on and through the Invention Factory prior to April 11, 1994. The
`
`Kantor Reference—like its other versions—was shareware and thus freely
`
`downloadable and widely available to the general public for an extended period of
`
`time.
`
`20. Moreover, the Kantor Reference was readily accessible and available
`
`to people interested in file management. People interested in file management—
`
`such as other BBS sysops—would have found the Kantor Reference by browsing
`
`under categories that contained words such as “system,” “file,” “BBS,” and/or
`
`“utilities.”
`
`21. Additionally, people interested in file management would have also
`
`found the Kantor Reference by performing a keyword search including the word or
`
`words “file” and/or “duplicate,” which I recall as being part of the automatically
`
`posted description that Dr. Kantor used when uploading his FWKCS ZIP files.
`
`22.
`
`It is my recollection that Dr. Kantor normally distributed his software
`
`by uploading a ZIP file containing not only his software but also other
`
`documentation to our BBS (as well as other BBSs, whose sysops would contact me
`
`with questions about installing and operating FWKCS). The only way for users to
`
`access this software through our BBS was to download the entire ZIP file that
`- 8 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`contained not only the software but also its associated documentation.
`
`Accordingly, users and other BBS sysops who were interested in and received the
`
`FWKCS v 1.22 software from our BBS would have also received the Kantor
`
`Reference.
`
`23. Based on my extensive interactions and conversations with Dr.
`
`Kantor, I recognize certain distinctive characteristics of the contents and substance
`
`of the Kantor Reference.
`
`24. For example, I recognize by the title of the Kantor Reference that it
`
`refers to Dr. Kantor’s de-duplication software which he distinctively referred to as
`
`the “FWKCS Contents-Signature Sytem.” I recognize “FWK” as referring to Dr.
`
`Kantor’s initials and the “CS” as referring to his software’s distinctive “contents-
`
`signature” feature. I recall that the phrase “contents-signature” refers to a file’s
`
`“fingerprint,” which was used by Dr. Kantor’s system to find and delete duplicate
`
`files.
`
`25.
`
`I have reviewed the Kantor Reference and its description of FWKCS
`
`v 1.22 is consistent with my recollection of how FWKCS software ran on our BBS.
`
`For example, the Kantor Reference’s explanation regarding saving hard drive
`
`space by deleting duplicate files (EMCVMW 1004, at Preface) and regarding
`
`master lists (e.g., CSLIST.SRT) for keeping track of the fingerprints for all of the
`- 9 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`files on various hard drives (EMCVMW 1004, at 18) are consistent with my
`
`recollection of how FWKCS software ran on our BBS.
`
`26. Moreover, the Kantor Reference describes certain interactions I had
`
`with Dr. Kantor as well as certain aspects of the Invention Factory that only Dr.
`
`Kantor would have known. For example, to facilitate Dr. Kantor’s provision of
`
`FWKCS technical support to the Invention Factory, I granted Dr. Kantor special
`
`access to our BBS’s data. The table listing “Invention Factory” data disclosed on
`
`page 212 of the Kantor Reference (EMCVMW 1004) is consistent with my
`
`recollection of our BBS’s data. More specifically, I recognize the first two
`
`columns as listing a file’s contents-signature, the third column as listing a file’s
`
`name, the fourth column as listing the name of the ZIP file that contains the file
`
`named in the third column, and the fifth column as the directory path where the
`
`particular ZIP file resides.
`
`27. Lastly, I have reviewed page 5 of the Kantor Reference (EMCVMW
`
`1004) and its description of the Invention Factory as storing 14.6 gigabytes of data
`
`and utilizing 46 “nodes” is consistent with my recollection of our BBS’s activities
`
`on or around the August 1993 copyright date of this manual. In BBS terminology,
`
`a “node” referred to a single telephone line that was connected to a modem that
`
`was connected to a computer. The June 21, 1993 Business Times (Singapore)
`- 10 -
`
`
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`article’s description of the Invention Factory as having “46 lines” as of June 1993
`
`is also consistent with both my recollection and the Kantor Reference. (Welcher at
`
`2, EMCVMW 1047).
`
`28.
`
`In signing this declaration, I recognize that the declaration will be
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I also recognize that I may be
`
`subject to cross examination in the case and that cross examination will take place
`
`within the United States. If cross examination is required of me, I will appear for
`
`cross examination within the United States during the time allotted for cross
`
`examination.
`
`
`
`- 11 -
`
`
`
`
`U.S. Patent 5,973,791
`lPR20l 3-00082
`
`Declaration of Michael A. Sussell
`
`29.
`
`l declare that all statements made herein of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true;
`
`and further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under Section 1001 of Title 18 of the United States Code.
`
`Executed on June [1/, 2013
`
`Michael A. Sussell
`
`Brooklyn, NY
`
`
`
`U.S. Patent 5,978,791
`IPR2013-00082
`Declaration of Michael A. Sussell
`
`
`APPENDIX A: EXHIBIT LIST
`
`
`
`Exhibit Description
`
` 1004.
`
`F. Kantor, “The Frederick W. Kantor Contents-Signature System
`Version 1.22,” FWKCS122.REF (August 10, 1993)
`1047. D. Welcher, “A family’s line of business,” Business Times
`(Singapore) (June 21, 1993)
`1048. D. Fowler, “Treading the boards: Online Networking Exchange and
`BBS Convention 1993 report,” Computer Shopper (Jan. 1, 1994)
`1049. B. Miller, “ziplab on bbses other,” post to the “alt.bbs” newsgroup on
`March 30, 1992
`1050. N. Hirsch, “Pirated software on server. Who’s liable?” post to the
`“comp.sys.novell” newsgroup on July 2, 1994
`
`1051.
`
`F. Clark, “PCBoard v 14.5 User Manual” (1990)
`
`
`
`
`- 13 -