UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC., LINKEDIN CORP., AND TWITTER, INC.,
`Petitioners
`v.
`
`SOFTWARE RIGHTS ARCHIVE, LLC
`Patent Owner
`
`Case IPR2013-00480
`Patent 5,832,494
`
`DECLARATION OF PAUL JACOBS
`in Support of Patent Owner Response
`
`EXHIBIT 2113
`Facebook, Inc. et al.
`v.
`Software Rights Archive, LLC
`CASE IPR2013-00480
`
`

`
`TABLE OF CONTENTS
`
`I.  Qualifications, Background, and Experience ............................................ 1 
`II.  Status as an Independent Expert Witness ................................................. 3 
`III. 
`Proceedings to Date .................................................................................. 4 
`IV.  Materials Reviewed .................................................................................. 6 
`V.  Summary of Opinions .................................................................................. 7 
`VI. 
`The Claims of the ‘494 Patent ............................................................... 12 
`VII.  Legal Principles Used in Analysis ......................................................... 16 
`A. A Person of Ordinary Skill in the Art ......................................................... 16 
`B. Claim Construction ...................................................................................... 17 
`C. Prior Art ....................................................................................................... 18 
`D. Patentability ................................................................................................. 19 
`VIII.  A Person of Ordinary Skill in the Relevant Art .................................. 20 
`B. Person of Ordinary Skill in the Art ............................................................. 20 
`IX.  Opinions on Anticipation ....................................................................... 21 
`A. Fox SMART Does Not Anticipate Claims 1 and 5 ..................................... 21 
`1.  Overview of Fox SMART..................................................................... 26 
`2.  Fox SMART does not disclose analyzing a database with indirect
`relationships or an analysis of indirect relationships in the database .......... 46 
`3.  There Are No Indirect Relationships In a Database Because the
`Objects Do Not Cite To Other Objects In a Database ................................. 48 
`4.  Even if an Indirect Relationship Did Not Require a Chain of
`Citations to be in a Database, there are Still No Disclosed Indirect
`Relationships in the Database. ..................................................................... 60 
`5.  Fox SMART does not disclose generating candidate cluster links ...... 62 
`6.  Fox SMART does not disclose deriving actual cluster links ................ 70 
`7.  Fox SMART does not disclose selecting a node for analysis ............... 79 
`8.  Fox SMART does not disclose the identifying and displaying steps ... 81 
`
`i
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`

`
`9.  Fox SMART Does Not Disclose the Features of Claim 1 As
`Arranged in the Claim. ................................................................................. 82 
`10.  Fox SMART does not disclose the additional steps of claim 5 ............ 88 
`B. Fox Thesis Does Not Anticipate Claims 14-16 ........................................... 92 
`1.  Claim 14(a): Fox Thesis does not disclose initializing a set of
`candidate cluster links .................................................................................. 94 
`2.  Claim 14(b): Fox Thesis does not disclose selecting the destination
`node of a path as the selected node to analyze ............................................ 96 
`3.  Claim 14(c): Fox Thesis does not teach retrieving the set of direct
`links from the selected node to any other node in the database .................. 98 
`4.  Claim 14(d): Fox Thesis does not disclose determining the weight
`of the path using the retrieved direct links ................................................. 100 
`5.  Claim 14(e): Fox Thesis does not disclose storing the determined
`weights as candidate cluster links .............................................................. 103 
`6.  Fox Thesis does not anticipate claim 15 ............................................. 105 
`7.  Fox Thesis does not anticipate claim 16 ............................................. 106 
`X.  Conclusion .................................................................................................109 
`
`ii
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`
`
`
`
`

`
`I, Paul S. Jacobs, declare as follows:
`
`1. My name is Paul S. Jacobs. I am the Founder and President of Jake
`
`Technologies, Inc. My business address is 27 Logan Circle NW #14, Washington,
`
`DC 20005. I understand that my declaration is being submitted in connection with
`
`the above-referenced Inter Partes Review proceeding, Case IPR2013-00480.
`
`I.
`
`Qualifications, Background, and Experience
`2.
`
`I received a Bachelor of Science in Applied Mathematics from
`
`Harvard University in 1981, a Master of Science in Applied Mathematics from
`
`Harvard University in 1981, and a Ph.D. in Computer Science from the University
`
`of California at Berkeley in 1985.
`
`3.
`
`I have authored or co-authored over 50 scientific and technical
`
`publications, I am listed as an inventor on two U.S. patents directed to
`
`computational lexicons, and I have over 25 years of experience in the computer
`
`and information retrieval industry.
`
`4.
`
`I have served in numerous professional and scientific capacities,
`
`including one year as a visiting professor of computer science at the University of
`
`Pennsylvania and several years as a member of the executive committee of the
`
`Association for Computational Linguistics. Currently, I serve on the Public Policy
`
`Council of the Association for Computing Machinery (USACM) and the
`
`Intellectual Property Committee of that council. I also serve on the Patent Public
`
`
`
`1
`
`

`
`Advisory Committee (PPAC) appointed by the Secretary of Commerce of the
`
`United States. I am currently a technology consultant and an adjunct lecturer at
`
`the University of Maryland in College Park, where I have taught classes in the
`
`College of Information Studies (The “iSchool”) since 2007.
`
`5.
`
`Between 1985 and 1994, I was employed as a computer scientist with
`
`General Electric (“GE”) Corporate Research and Development. I also consulted
`
`for Infonautics, an early Internet information services and advanced search
`
`company. I was the editor of a book, entitled “Text-Based Intelligent Systems.”
`
`The book was a collection of papers based on a symposium I chaired in 1990,
`
`which brought together leaders of the field of Information Retrieval to address
`
`issues related to large-scale advanced text processing.
`
`6.
`
`I joined a company named SRA International (“SRA”) in the latter
`
`part of 1994 and became director of media information technologies.1 My
`
`responsibilities included new ventures and technology activities related to the
`
`Internet and the World Wide Web. From 1994 until 2002, I held a series of
`
`technology and business management jobs in organizations focused on networked
`
`information management applications. I was CEO of IsoQuest, an SRA
`
`subsidiary, managing vice president for electronic commerce at SRA, president
`
`1 SRA International has no relationship with Software Rights Archive, owner of
`
`the patent under review.
`
`
`
`2
`
`

`
`and CTO of AnswerLogic, and CTO of Primus Knowledge Solutions. My
`
`responsibilities during this period included business and technical roles for a range
`
`of products and technologies focused on search-related solutions and on leveraging
`
`information on the Web.
`
`7.
`
`I have consulted with a number of law firms on intellectual property
`
`matters related to computer software. I provided deposition testimony and
`
`submitted declarations and reports in Inxight Software v. Verity (N.D. Cal., C-04-
`
`5387 CRB and C-05-01660 CRB). I submitted a declaration in Graphon v.
`
`AutoTrader (E.D. TX., 2:05-CV-530). I submitted declarations and reports and
`
`was deposed in New River, Inc. v. Mobular Technologies, Inc. (D. Mass., 05-CV-
`
`12285-RCL). I have served as a consultant on a number of other patent-related
`
`cases.
`
`8.
`
`A more complete recitation of my professional experience including a
`
`list of my journal publications, patents, conference proceedings, book authorship,
`
`and committee memberships may be found in my Curriculum Vitae, attached to
`
`my declaration as Appendix A.
`
`II.
`
`Status as an Independent Expert Witness
`9.
`
`I am being compensated for my work in this matter by Software
`
`Rights Archive, LLC, at my current rate of $350 per hour. I have no personal or
`
`financial stake or interest in the outcome of the above-referenced case or any
`
`
`
`3
`
`

`
`related action. My compensation is not dependent upon my testimony or the
`
`outcome of this proceeding.
`
`10.
`
`I have also been engaged by DiNovo, Price, Ellwanger and Hardy,
`
`LLP to assist with the pending litigation involving the same patents, at the same
`
`$350 hourly rate. My compensation is not dependent on my testimony or any
`
`outcome.
`
`III. Proceedings to Date
`11.
`I have been informed that the Patent Trial and Appeal Board (the
`
`Board) has granted a Petition (the “Petition”). by Facebook, Inc., LinkedIn Corp.,
`
`and Twitter, Inc. (“Petitioners”) seeking Inter Partes Review of U.S. Patent No.
`
`5,832,494 (the “‘494 patent”) (Exhibit 1001) by Daniel Egger, filed on May 17,
`
`1996, and titled “Method and Apparatus for Indexing, Searching and Displaying
`
`Data.” It is my understanding that the Board instituted review on the following
`
`grounds:
`
`Ground 1 – anticipation of claims 14-16 based on Edward A. Fox,
`
`Extending the Boolean and Vector Space Models of Information Retrieval
`
`with P-Norm Queries and Multiple Concept Types, (Aug.1983) (Ph.D.
`
`dissertation, Cornell Univ. Dept. of Comp. Sci.) (“Fox Thesis”) (Ex. 1008).
`
`Ground 2 – anticipation of claims 1 and 5 based on Edward A. Fox, Some
`
`Considerations for Implementing the SMART Information Retrieval System
`
`
`
`4
`
`

`
`under UNIX, (Sept. 1983) (Ph.D. dissertation, Cornell Univ. Dept. of Comp.
`
`Sci.) (“Fox SMART”) (Ex. 1005).
`
`Ground 3 – obviousness of claims 8, 10, 11, 35, and 40 based on Fox
`
`Thesis or Fox SMART in view of Gerard Salton, “Associative Document
`
`Retrieval Techniques Using Bibliographic Information,” JACM 10(4) (Oct.
`
`1963) (Ex. 1012) and Edward A. Fox, “Some Considerations for
`
`Implementing the SMART Information Retrieval System Under UNIX,”
`
`Department of Computer Science, Cornell University (Sept. 1983) (Ex.
`
`1006).
`
`Ground 4 – obviousness of claim 40 based on Fox Thesis, in view of
`
`Edward A. Fox, et. al., Users, User Interfaces, and Objects: Envision, a
`
`Digital Library, 44 J. Am. Soc. Inf. Sci., no. 8 at 480-91 (Sept. 1993) (Ex.
`
`1006), and Gerard Salton, “Associative Document Retrieval Techniques
`
`Using Bibliographic Information,” JACM 10(4) (Oct. 1963) (Ex. 1012).
`
`12.
`
`It is my understanding that, Google, Inc. (“Google”) filed a
`
`reexamination request with the United States Patent and Trademark Office
`
`(“USPTO,” “The Office”). In this proceeding, Google submitted that a number of
`
`pieces of prior art, anticipated or rendered obvious the disputed claims of the ‘494
`
`patent. I understand that as a result of these proceedings the USPTO issued a
`
`
`
`5
`
`

`
`reexamination certificate for the patent, affirming that all of these claims were
`
`patentable over the art considered.
`
`IV. Materials Reviewed
`13.
`In performing the analysis that is the subject of my testimony, I
`
`reviewed the ‘494 patent and its file history, as well as various public documents
`
`from litigations in the U.S. District Court for Northern District of California,
`
`including Software Rights Archive, LLC v. Facebook, Inc., 12-cv-3970 (N.D. Cal.),
`
`Software Rights Archive, LLC v. LinkedIn Corp., 12-cv-3971 (N.D. Cal.), Software
`
`Rights Archive, LLC v. Twitter, Inc., 12-cv-3972 (N.D. Cal.), and Software Rights
`
`Archive, LLC. v. Google, Case No. C-08-03172 RMW (N.D. Cal.). I have also
`
`reviewed, in detail, the many thousands of pages of references, charts, and other
`
`documents put forth by the Petitioners in this case and in the previous related
`
`matters. The documents include: (1) the Petition and the documents and references
`
`referred to in the Petition; (2) the declaration of Edward Fox, Ph.D. (Exhibit 1009)
`
`(the “Fox Declaration”); (3) the Patent Owner’s Preliminary Response (Paper No.
`
`14); (4) the Board’s decision regarding institution (“Institution Decision”) (Paper
`
`No. 17); and (5) the transcripts of the April 26 and 27, 2014, Deposition of Edward
`
`Fox (Exhibit 2016; the “Fox Deposition Transcript Pt. 1” and Exhibit 2017; the
`
`“Fox Deposition Transcript Pt. 2”), and the exhibits referred to in the Fox
`
`Deposition Transcripts.
`
`
`
`6
`
`

`
`14. Additionally, I reviewed a number of materials relating to the field of
`
`information retrieval and computerized search, and in particular, the use of
`
`semantic and non-semantic indexing and search techniques both before and after
`
`the filing of the ‘494 patent. All of the materials that I considered are listed in
`
`Appendix B. I have also taken into account my knowledge of information
`
`retrieval, computerized search, and related technologies gained from over 30 years
`
`of experience in the field.
`
`V.
`
`Summary of Opinions
`15.
`
`It is my opinion that claims 1 and 5 of the ‘494 patent are not
`
`anticipated by Fox SMART and that claims 14-16 are not anticipated by Fox
`
`Thesis.2.
`
`16. Fox SMART does not teach a “method of analyzing a database with
`
`indirect relationships” and “an analysis of one or more indirect relationship in the
`
`database” as required by claims 1 and 5. Fox SMART comprehensively describes
`
`the contents of a collection database in which documents are stored. Petitioners3
`
`2 My opinions set forth herein are directed to Grounds 1 and 2 of the Institution
`
`Decision. I understand that claims 8, 10, 11, 35, and 40, which are the subject of
`
`Grounds 3 and 4, are being cancelled.
`
`3 When I refer to the “Petitioners” in my declaration and to the allegations and
`
`arguments they put forth in these proceedings, I am, in many cases, also referring
`
`
`
`7
`
`

`
`rely upon the CITED tuples for teaching the claimed analysis. However, these
`
`CITED tuples are neither disclosed as, nor are they, part of this database. Nor do
`
`the CITED tuples express citations between documents in the database. Therefore,
`
`there is no analysis of any indirect relationships in the database, which is a
`
`requirement of claims 1 and 5.
`
`17. Furthermore, Fox SMART fails to teach “deriving actual cluster
`
`links” as recited in claim 1. The relied upon features of Fox SMART discuss
`
`generating and splitting clusters of documents, but do not teach or suggest deriving
`
`a subset of generated links that meet certain criteria, as required by the Board’s
`
`construction. The splitting procedure that is relied upon in the Petition4 describes
`
`eliminating candidate clusters having too much overlap with other clusters, which
`
`is merely applied to nodes in a cluster rather than applying any criteria to links.
`
`The Petition fails to identify how this procedure derives any subsets of links.
`
`
`to the testimony of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`4 When I refer to the “Petition” in my declaration and to the allegations and
`
`arguments put forth in the Petition, I am, in many cases, also referring to the
`
`Declaration of Dr. Fox and, to the extent that the Board has relied on these
`
`allegations and arguments, to the Board as well.
`
`
`
`8
`
`

`
`18. Contrary to the Petition, Fox SMART’s concentration and definition
`
`tests are applied to nodes, not to links. Furthermore, Fox SMART does not
`
`disclose deleting any clusters based on these tests, nor does Fox SMART teach or
`
`suggest deriving any subset of links using these tests. Rather, the tests are used to
`
`find a candidate grouping of nodes (described as a candidate cluster in Fox
`
`SMART; See Fox SMART at 45 and 49-51). Therefore, these tests, which are the
`
`disclosure in Fox SMART relied upon as allegedly disclosing the claimed deriving
`
`step, do not derive a subset of links from a generated set of links as the claims
`
`require.
`
`19. Fox SMART does not teach “displaying the identity of one or more
`
`nodes using the actual cluster links” in combination with the other claimed method
`
`steps. The relied upon features in Fox SMART for teaching the claimed
`
`“generating” and “deriving” steps are directed to experiments that would be
`
`understood to be conducted in batch mode, i.e., by programs internally calling
`
`other programs without display, rather than interactively. See, e.g. “batch
`
`experiments”, Fox SMART at 8; see discussion, infra at ¶¶ 165-68. In direct
`
`contrast, the features of Fox SMART relied upon as allegedly disclosing the
`
`claimed “displaying” step are part of on-line SMART operation, not batch
`
`experiments. The on-line and batch features are distinct and separate operations,
`
`
`
`9
`
`

`
`and would be understood to be distinct and separate by one skilled in the field.
`
`Therefore, Fox SMART cannot teach the claimed steps as arranged.
`
`20. Fox Thesis does not teach any step of claim 14. For example, step
`
`14(d) recites “determining the weight of the path using the retrieved direct links.”
`
`In addition to the absence of using direct links as claimed, Fox Thesis fails to teach
`
`determining the weight of any path. The Petitioners misinterpret the co-citation
`
`and bibliographic coupling counts of Fox Thesis as pertaining to the claimed path
`
`weights, when these counts actually represent the number of paths. As such, Fox
`
`Thesis does not teach any weight of a path as claimed. Furthermore, Fox Thesis
`
`does not teach steps 14(b) or 14(c) in any way that is consistent with the relied-
`
`upon count-based weights for 14(d). The Petition uses “Indirect Reference” as
`
`discussed in Fox Thesis for the claimed step 14(c) of “retrieving the set of direct
`
`links from the selected node to any other node in the database;” however, Fox
`
`Thesis does not teach any weights for indirect references as described, nor are
`
`these used in any of the relied-upon experiments for any other step. Alternatively,
`
`the Petition offers up bibliographic coupling and co-citation counts for claim step
`
`14(c), but Fox Thesis does not show how these are based on retrieved direct links,
`
`nor does it relate co-citation or bibliographic coupling to analyzing the destination
`
`node of a path.
`
`
`
`10
`
`

`
`21. Fox SMART also does not teach the additional features of the
`
`dependent claims. For instance, Fox SMART does not anticipate claim 5, which
`
`reads:
`
`The method of claim 1 wherein the step of generating the candidate
`
`cluster links comprises the step of:
`
`eliminating candidate cluster links, wherein the number of candidate
`
`cluster links are limited and the closest candidate cluster links are
`
`chosen over the remaining links.
`
`Ex. 1001 at 51:66 –52: 4, emphasis added. Fox SMART does not disclose, either
`
`expressly or inherently, the three distinct limitations of (1) eliminating candidate
`
`cluster links, (2) the number of candidate cluster links are limited, and (3) the
`
`closest candidate cluster links are chosen over the remaining links, which further
`
`define the generating step of claim 1.
`
`22.
`
`In addition to other deficiencies with respect to this claim, the Petition
`
`relies on Dr. Fox’s incorrect statement that “clusters that do not pass all the
`
`concentration and overlap tests are deleted.” See discussion, infra at ¶¶ 82-85;
`
`Fox Declaration at ¶ 162. However, Fox SMART teaches only that candidate
`
`clusters that have too much overlap are deleted. Fox SMART at 45, 51. The
`
`concentration and definition tests are used to “define” the candidate clusters and
`
`
`
`11
`
`

`
`Fox SMART does not teach that they eliminate any clusters or links. See
`
`discussion, infra at ¶¶ 96-103; Fox SMART at 45, 51.
`
`VI. The Claims of the ‘494 Patent
`23. Claims 1, 5, and 14-16 of the ‘494 patent recite methods of analyzing
`
`a database using cluster links to analyze indirect relationships in the database.
`
`24. For example, claim 1 is directed to “a method of analyzing a database
`
`with indirect relationships, using links and nodes,” including the novel features of
`
`“generating candidate cluster links” and “deriving actual cluster links;” the
`
`generating step comprises “an analysis of one or more indirect relationships in the
`
`database.” Specifically, claim 1 recites:
`
`A method of analyzing a database with indirect relationships, using
`
`links and nodes, comprising the steps of:
`
`
`
`
`
`selecting a node for analysis;
`
`generating candidate cluster links for the selected node, wherein
`
`the step of generating comprises an analysis of one or more indirect
`
`relationships in the database;
`
`
`
`
`
`
`
`deriving actual cluster links from the candidate cluster links;
`
`identifying one or more nodes for display; and
`
`displaying the identity of one or more nodes using the actual
`
`cluster links.
`
`
`
`12
`
`

`
`‘494 patent at 51:38-49. None of the references discloses the claimed combination
`
`of generating and deriving cluster links. In particular, the claim recites “a method
`
`of analyzing a database” and includes the limitation “an analysis of one or more
`
`indirect relationships in the database” in the generating step. Thus, the plain
`
`language of the claim requires that the nodes and links be a representation of
`
`information (i.e., the nodes represent textual objects and the links represent direct
`
`and indirect “non-semantic” citation relationships) in the database.
`
`25. The submitted references also fail to disclose the combination of
`
`generating and deriving cluster links, where the actual cluster links are derived
`
`from among the candidate cluster links.
`
`26. Claim 5 of the ’494 patent depends from claim 1 and adds additional,
`
`detailed, features to the generating step that are not disclosed in the cited art.
`
`27. Claim 5 recites:
`
`The method of claim 1 wherein the step of generating the candidate
`
`cluster links comprises the step of:
`
`eliminating candidate cluster links, wherein the number of candidate
`
`cluster links are limited and the closest candidate cluster links are
`
`chosen over the remaining links.
`
`‘494 patent at 51:66 –52: 4, emphasis added.
`
`
`
`13
`
`

`
`28. Therefore, claim 5 adds three distinct limitations to the generating
`
`step of claim 1: (1) eliminating candidate cluster links;(2) the number of candidate
`
`cluster links are limited; and (3) the closest candidate cluster links are chosen over
`
`the remaining links. The requirement of claim 5 that “the number candidate
`
`clusters links are limited” is a distinct claim limitation that cannot be met simply
`
`by eliminating or failing to generate links without a specific numeral constraint. In
`
`this regard, the ‘494 patent specification teaches that “[a]fter each iteration, the
`
`candidate cluster link set[] Ci may be pruned so that it contains only the top
`
`candidate cluster links[] (for example, the top 200).” ‘494 patent at 24:12-14. This
`
`is the only disclosure in the patent that discloses limiting the number of candidate
`
`cluster links generated during the generation step. Thus, it would have been clear
`
`to one of ordinary skill in the art that the claim language requiring the number of
`
`candidate cluster links to be limited is referring to a specific numeric limit.
`
`29. Moreover, the recited feature of “eliminating candidate cluster links”
`
`requires actually paring down generated candidate cluster links. In this regard, the
`
`eliminated links have to be generated prior to the elimination.
`
`30. Because of the dependency of claim 5 from claim 1 as part of the
`
`generating step, the claim 5 limitation “the closest … are chosen” must also
`
`correspond to links that are generated and meet the limitations of the generating
`
`step recited in claim 1 (e.g., including the “for the selected node” requirement).
`
`
`
`14
`
`

`
`31. Because the limitations of claim 5 apply to the “generating” step and
`
`not the “deriving” step of claim 1, there must still be a separate step of “deriving
`
`actual cluster links” that is different from the eliminating candidate cluster links
`
`step recited in claim 5, and which further derives cluster links in order to meet all
`
`of the limitations of claim 5.
`
`32. Thus, the three distinct limitations of claim 5 that are added to the
`
`generating step of claim 1, and separate from the deriving step of claim 1, have
`
`very specific requirements that Fox SMART does not teach.
`
`33.
`
`Independent claim 14 reads:
`
`A method for representing the relationship between nodes using stored direct
`
`links, paths, and candidate cluster links, comprising the steps of:
`
`a) initializing a set of candidate cluster links;
`
`b) selecting the destination node of a path as the selected node to
`
`analyze;
`
`c) retrieving the set of direct links from the selected node to any other
`
`node in the database;
`
`d) determining the weight of the path using the retrieved direct links;
`
`e) repeating steps b through d for each path; and
`
`f) storing the determined weights as candidate cluster links.
`
`
`
`15
`
`

`
`‘494 patent at 52:51-64. This claim is directed to the process of generating
`
`candidate cluster links by examining and weighting links and paths.
`
`34. One skilled in the art would have understood that (1) the “direct links”
`
`in this claim represent direct references (i.e., citations) in the database; (2) a “path”
`
`is a chain of direct links, thus representing a chain of relationships made up of
`
`references or citations in the database; and (3) a weight is determined for each path
`
`using direct links between nodes (e.g., using weights of direct links or using a
`
`chain of direct links to assign a path weight). See discussion supra, ¶ 20. The
`
`person skilled in this art would further have understood that the “determined
`
`weight of the path” would be for a path that uses “direct links” and therefore would
`
`be an analysis of indirect relationships. This series of steps is repeated for each
`
`path and the result is stored as a candidate cluster link.
`
`VII. Legal Principles Used in Analysis
`35.
`I am not a patent attorney nor have I independently researched the law
`
`on patentability. Rather, Patent Owner’s attorneys have explained the legal
`
`principles to me that I have relied on in forming my opinions set forth in this
`
`declaration.
`
`A. A Person of Ordinary Skill in the Art
`36.
`I understand that the person of ordinary skill in the art is a
`
`hypothetical person who is presumed to have known the relevant art at the time of
`
`
`
`16
`
`

`
`the invention. Factors that may be considered in determining the level of ordinary
`
`skill in the art may include: (A) the type of problems encountered in the art; (B)
`
`prior art solutions to those problems; (C) rapidity with which innovations are
`
`made; (D) sophistication of the technology; and (E) educational level of active
`
`workers in the field. In a given case, every factor may not be present, and one or
`
`more factors may predominate.
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`37.
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`I understand that a person of ordinary skill in the art is also a person
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`of ordinary creativity, not an automaton. I further understand that the hypothetical
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`person having ordinary skill in the art to which the claimed subject matter pertains
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`would, of necessity, have the capability of understanding the scientific and
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`engineering principles applicable to the pertinent art.
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`B. Claim Construction
`38.
`I understand that, in an inter partes review, the interpretation of the
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`claims of an expired patent is similar to that of a district court’s review, and that
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`the words of a claim are generally given their ordinary and customary meaning as
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`understood by a person of ordinary skill in the art in question at the time of the
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`invention.
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`39.
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`I also understand that, in determining the meaning of a disputed claim
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`limitation, the intrinsic evidence of record is considered by examining the claim
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`language itself, the written description, and the prosecution history. I further
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`17
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`understand that a patentee may act as its own lexicographer and depart from the
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`ordinary and customary meaning by defining a term with reasonable clarity,
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`deliberateness and precision, but that there is a heavy presumption that a claim
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`term carries its ordinary and customary meaning.
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`40. For the purposes of my evaluation of the patentability of claims 1, 5,
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`and 14-16 of the ‘494 patent and my opinions set forth herein, I used the Board’s
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`construction of the claim language set forth on pages 9-13 of the Board’s
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`Institution Decision.
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`C.
`41.
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`Prior Art
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`I have been informed that the law provides categories of information
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`(known as “prior art”) that may be used to anticipate or render obvious patent
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`claims. I have been informed that, to be prior art with respect to a particular
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`patent, a reference must have been made, known, used, published, or patented, or
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`be the subject of a patent application by another, before the priority date of the
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`patent. I also understand that a person of ordinary skill in the art is presumed to
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`have knowledge of all prior art. For purposes of this opinion, I have been asked to
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`presume that of reference materials that I opine on, i.e., Fox SMART and Fox
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`Thesis, are prior art from a technical perspective – that is, all were available to a
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`person of ordinary skill in the art on or before the priority date of the patent.
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`
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`18
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`D.
`42.
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`Patentability
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`I have been informed that a determination of whether the claims of a
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`patent are anticipated by prior art is a two-step analysis: (1) determining the
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`meaning and scope of the claims, and (2) comparing the properly construed claims
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`to the prior art. I have endeavored to undertake this process herein.
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`43.
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`I understand that a claim is not patentable when a single prior art
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`reference that existed prior to the claim’s priority date describes each and every
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`element of the claim, arranged as is recited in the claim, to a person of ordinary
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`skill in the art. I understand that this is referred to as “anticipation.” I further
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`understand that to anticipate a patent claim, the prior art must describe the
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`requirements of the claim with sufficient clarity to establish that the subject matter
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`existed and that its existence was recognized by a person of ordinary skill in the art
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`in the technology of the invention, so that looking at that one reference, that person
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`could make and use the claimed invention.
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`44.
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`In addition, I am informed and understand that in order to establish
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`that an element of a claim is “inherent” in the disclosure of a prior art, it must be
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`clear to one skilled in the art that the missing element is the inevitable outcome of
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`the process and/or thing that is explicitly described in the prior art, and that it
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`would be recognized as necessarily present by a person of ordinary skill in the art.
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`19
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`I also understand that if a reference relied on expressly anticipates all of the
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`elements of the claimed invention, the reference is presumed to be operable.
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`VIII. A Person of Ordinary Skill in the Relevant Art
`45.
`I understand that my assessment and determination of the patentability
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`of the challenged claims of the ‘494 patent must be undertaken from the
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`perspective of what would have been known or understood by someone of ordinary
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`skill in the relevant field as of the filing date of the ‘494 patent – May 17, 1996.
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`A. Relevant Field
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`46.
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`In my opinion, the field relevant to the invention of the ‘494 patent is
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`computerized search and information retrieval.
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`B. Person of Ordinary Skill in the Art
`47.
`In my opinion, a person of ordinary skill in the relevant field as of
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`May 17, 1996, would have had familiarity with information retrieval and at least a
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`bachelor’s degree in one of computer science or electrical and computer
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`engineering, or a comparable amount of combined education and equivalent
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`industry experience in computer and information retrieval.
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`48. Based on my experience in the fiel