Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832,494
`Declaration of Edward A. Fox Ph.D.
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`PATENT TRIAL AND APPEAL BOARD
`
`Inter Partes Review No.:
`
`not yet assigned
`
`Inter Partes Review of:
`
`U.S. Patent No. 5,832,494
`
`Petitioner:
`Inventors:
`Patent Title:
`
`Patent Filing Date:
`Patent Issue Date:
`Patent Assignee:
`Petition for Review Filed:
`
`Facebook, Inc.; LinkedIn Corp.; and Twitter, Inc.
`Daniel Egger; Shawn Cannon; Ronald D. Sauers
`METHOD AND APPARATUS FOR INDEXING,
`SEARCHING AND DISPLAYING DATA
`May 17, 1996
`November 3, 1998
`Software Rights Archive, LLC
`July 29, 2013
`
`DECLARATION OF EDWARD A. FOX, PH.D.
`
`
`
`001
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 3,832,494
`Declaration of Edward A. Fox Ph.D.
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`III.
`IV.
`
`V.
`VI.
`
`INTRODUCTION AND QUALIFICATIONS..............................................1
`SCOPE OF ASSIGNMENT...........................................................................7
`SUMMARY OF OPINIONS..........................................................................9
`LEGAL PRINCIPLES USED IN ANALYSIS ............................................10
`A.
`Person of Ordinary Skill in the Art ....................................................10
`B.
`Prior Art..............................................................................................11
`C.
`Unpatentability ...................................................................................12
`STATE OF THE ART AND FOX PAPERS ...............................................14
`’352 PATENT...............................................................................................22
`A.
`Claim Construction.............................................................................22
`B.
`State of the Art at the Time of the ’352 Patent ..................................22
`C.
`Prior Reexamination Findings............................................................24
`D.
`Prior Art References...........................................................................26
`1.
`Fox Thesis Discloses All Elements of Claims 26, 29-30,
`32, 34, and 39, and Thus Anticipates Those Claims ...............28
`Fox SMART Discloses All Elements of Claims 26, 29-
`30, 32, and 34 and Thus Anticipates Those Claims ................46
`Claim 28 is Anticipated Over Fox Thesis or Fox SMART
`alone, or is rendered obvious in view of Fox Thesis, Fox
`Collection and Fox SMART ....................................................53
`VII. THE ’494 PATENT......................................................................................56
`A.
`Claim Construction.............................................................................57
`B.
`State of the Art at the Time of the ’494 Patent ..................................57
`C.
`Prior Art References...........................................................................58
`D.
`Fox Thesis and Fox SMART each anticipate claims 1, 5, and 35
`of the ’494 Patent ...............................................................................60
`Fox Thesis and Fox SMART each anticipate claims 14, 15, and
`16 of the ‘494 Patent ..........................................................................65
`
`2.
`
`3.
`
`E.
`
`-i-
`
`002
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`TABLE OF CONTENTS
`(Continued)
`
`Page
`
`F.
`
`G.
`
`H.
`
`I.
`
`J.
`
`K.
`
`Fox Thesis and Fox SMART each render obvious claim 40 of
`the ’494 Patent....................................................................................68
`Fox Thesis anticipates claims 18, 19, 20, 48, and 49 of the ’494
`Patent ..................................................................................................69
`Fox SMART anticipates claims 18, 19, 20, 48, and 49 of the
`’494 Patent..........................................................................................74
`Claim 45 is rendered obvious in view of Fox Thesis, Fox
`SMART, Fox Collection and Fox Envision (“Fox Papers”) and
`Fox Hypertext.....................................................................................78
`Claim 51 is rendered obvious in view of Fox Thesis, Fox
`SMART, Fox Collection, Fox Envision and Fox Handbook.............80
`Fox Thesis and Fox SMART render claims 8, 10, and 11 of the
`’494 Patent obvious in view of Fox Envision....................................81
`VIII. THE ’571 PATENT......................................................................................82
`A.
`State of the Art at the Time of the ’571 Patent ..................................83
`B.
`Prior Art References...........................................................................84
`C.
`Fox Thesis or Fox SMART render claims 12, 21, 22, 26, 28 and
`31 of the ’571 Patent obvious in view of Fox Envision.....................85
`IX. CONCLUSION.............................................................................................89
`
`-ii-
`
`003
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 3,832,494
`Declaration of Edward A. Fox Ph.D.
`
`I, Edward A. Fox, Ph.D., hereby declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`My name is Edward Alan Fox. I live with my wife in Blacksburg,
`
`Virginia. We have four sons and four grandchildren.
`
`2.
`
`I have worked with computers since the fall of 1965 when, at age 15, I
`
`took Saturday courses at Columbia University in New York City. In 1972, I
`
`earned my B.S. degree in Electrical Engineering, Computer Science Option, at the
`
`Massachusetts Institute of Technology (MIT).
`
`3.
`
`After teaching data processing 1971-1972 at Florence Darlington
`
`Technical College in Florence, SC, where I guided students on how to use
`
`computers to prepare business reports and a variety of electronic services, I was
`
`Data Processing Manager at Vulcraft, a division of Nucor Corporation. There I
`
`supported all parts of the company, including implementing systems to prepare
`
`product proposals for customers based on answers to their questions, along with
`
`engineering designs, inventory, payroll, and manufacturing instructions. After
`
`moving in 1978 to Ithaca, NY for graduate work at Cornell University, I earned
`
`M.S. (1981) and Ph.D. (1983) degrees in Computer Science. My specialty area
`
`was information retrieval (i.e., the field underlying modern search engines),
`
`including how to prepare customized answers to user queries.
`
`4.
`
`I worked 1982-1983 as the Manager of Information Systems at the
`
`-1-
`
`004
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`International Institute of Tropical Agriculture, Ibadan, Nigeria, where I ran the
`
`computer operations in support of the mission to advance tropical agriculture.
`
`From August 1983 to the present I have worked in the Department of Computer
`
`Science at Virginia Tech, Blacksburg, VA. In 1988 I was tenured, and in 1995 I
`
`became a full Professor. I also serve as Faculty Advisor to Information
`
`Technology, reporting to Virginia Tech’s Vice President for Information
`
`Technology, helping broadly with campus use of computers at Virginia’s largest
`
`public university.
`
`5.
`
`Since 1983 I have taught yearly graduate courses on Information
`
`Retrieval, or sometimes advanced graduate courses on Digital Libraries (which has
`
`a strong “IR” flavor). Since the early 1990s I have taught a course called Computer
`
`Science 4624: Multimedia, Hypertext, and Information Access. This is an
`
`undergraduate capstone course for seniors. It was one of the first courses offered
`
`in the United States at this level that covers these important technologies.
`
`6.
`
`Over the years I have taught thousands of students, and have graded
`
`many thousands of reports and assignments. I served as adviser for more than 38
`
`M.S. or Ph.D. students whose theses are now online. In addition to courses at
`
`Virginia Tech, I have taught over 78 tutorials in more than 28 countries. My
`
`research, supported by 114 grants/contracts, led to publications and presentations
`
`including: 16 books/proceedings, 107 journal/magazine articles, 49 book chapters,
`
`-2-
`
`005
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`over 180 refereed (and 40 other) conference/workshop papers, 66
`
`keynote/banquet/international invited/distinguished speaker presentations, 38
`
`demonstrations, 116 technical reports, and over 300 additional oral presentations.
`
`7.
`
`At Virginia Tech I led development of an enhanced version of
`
`SMART, followed by a long series of other systems, including: CODER,
`
`REVTOLC, LEND, MARIAN, Envision, CSTC, OpenDL, CITIDEL, ETANA,
`
`and current work on Ensemble, CINET, and CTRnet. My practical experience
`
`with computer software thus has involved writing or working with many tens of
`
`thousands of lines of source code. Many publications relate to these various
`
`systems. For example, considering CODER (funded by National Science
`
`Foundation Grant IST-8418877: Effective Retrieval of Composite Documents.
`
`$90,760, 2/15/85-7/31/87), by 1987 we published several papers about distributed
`
`computing, improved searching, integrated graphics and visualization, analyzing
`
`documents, manipulating queries, and personalization, including:
`
`E. Fox. Development of the CODER System: A Testbed for Artificial
`
`Intelligence Methods in Information Retrieval. Information Processing &
`
`Management (IP&M), 1987, 23(4): 341-366.
`
`E. Fox and R. France. Architecture of an Expert System for Composite
`
`Document Analysis, Representation and Retrieval. International Journal of
`
`Approximate Reasoning, 1987, 1(2): 151-175. Reprinted in Readings in
`
`-3-
`
`006
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`Information Retrieval, eds. K.S. Jones and P. Willett, San Francisco:
`
`Morgan Kaufmann, 1999
`
`N. Belkin, C. Borgman, H. Brooks, T. Bylander, W. Croft, P. Daniels, S.
`
`Deerwester, E. Fox, P. Ingwersen, R. Rada, K. Sparck Jones, R.
`
`Thompson, and D. Walker. Distributed Expert-Based Information
`
`Systems: An Interdisciplinary Approach. IP&M, 1987, 23(5): 395-409.
`
`8.
`
`My editorial service included as lead guest editor for special issues /
`
`sections of ACM’s flagship publication, Communications of the ACM, in July
`
`1989, April 1991, April 1995, April 1998, and May 2001—covering multimedia,
`
`interactive digital video, digital libraries, and related topics. Also with ACM (the
`
`Association for Computing Machinery), I was a member of the editorial boards for
`
`ACM’s Journal on Computing and Cultural Heritage. I was founder and co-editor-
`
`in-chief for the Journal of Educational Resources in Computing, member of the
`
`ACM Publications Board, and editor-in-chief of ACM Press Database Products
`
`(responsible for the broad area of electronic publishing including CD-ROM and
`
`interactive multimedia). Between 1995 and 2008, I served as Editor for a book
`
`series on Multimedia Information and System, published by Morgan Kaufmann.
`
`9.
`
`I served from 1987-95 as vice chair and then chair of the ACM
`
`Special Interest Group on Information Retrieval, and from 1992-94 as founder and
`
`chairman of the Steering Committee for the ACM Multimedia series of
`
`-4-
`
`007
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`conferences. From 2011-2013, I served as a member of the Board of Directors of
`
`the Computing Research Association (CRA).
`
`10. At present among other responsibilities, I serve as:
`
`a.
`
`Editor for Information Retrieval and Digital Libraries for the
`
`ACM Book Series
`
`b.
`
`Executive Director and Founder, Networked Digital Library of
`
`Theses and Dissertations (“NDLTD,” incorporated May 2003)
`
`c.
`
`Chair, Steering Committee, ACM/IEEE-CS Joint Conference
`
`on Digital Libraries
`
`11.
`
`I serve on a total of 12 editorial (advisory) editorial boards, including
`
`for: ACM Transactions on Information Systems, Information Processing and
`
`Management, and the International Journal on Digital Libraries.
`
`12.
`
`I am a founding member of the Virginia Tech Center for Human-
`
`Computer Interaction, and am experienced in designing, building, and managing
`
`work on many information systems that provide customized services based on user
`
`input.
`
`13. My research, teaching, and service have related to areas including
`
`digital libraries, information storage and retrieval, hypertext, hypermedia,
`
`multimedia, superimposed information, computing education, computational
`
`linguistics, CD-ROM and optical disc technology, electronic publishing, artificial
`
`-5-
`
`008
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`intelligence, and expert systems.
`
`14. My curriculum vitae is available online at http://fox.cs.vt.edu/cv.htm;
`
`a recent copy is attached hereto.
`
`15.
`
`I have been retained by LinkedIn, Twitter, and Facebook
`
`(“Petitioners”) as an expert in document retrieval for indexing, searching, and
`
`displaying data for computer research, including document retrieval systems
`
`involving hypertext, hypermedia, the World Wide Web, and similar document
`
`retrieval and management technologies, in connection with this matter.
`
`16.
`
`I am being compensated at my usual and customary hourly rate of
`
`$400 (or $500 for testimony during trial or deposition). My compensation is not
`
`dependent upon the outcome of the Petitions for Inter Partes Review that I
`
`understand Petitioners’ attorneys are filing along with this Declaration. Nor is my
`
`compensation dependent upon the outcome of any related litigation proceedings,
`
`the opinions I express, or my testimony.
`
`17.
`
`I have previously testified as an expert at trial or by deposition in
`
`several patent cases, including in the past four years, in Personalized User Model,
`
`LLP vs. Google, Inc. C.A. No. 09-525 (LPS) (D. Del. 2012) and Bright Response,
`
`LLC vs. Google Inc., et al., C.A. No. 2:07-CV-371-CE (E.D. Tex. 2010).
`
`18. Additional information may become available which would further
`
`support or modify the conclusions that I have reached to date. Accordingly, I
`
`-6-
`
`009
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`reserve the right to modify and/or enlarge this opinion or the bases thereof upon
`
`consideration of any further discovery, testimony, or other evidence, including any
`
`issues raised by any expert or witness of the patentee, or based upon interpretations
`
`of or conclusions about any claim term by the Patent Office different than those
`
`proposed in this declaration.
`
`II.
`
`SCOPE OF ASSIGNMENT
`
`19.
`
`I have been retained to opine on the invalidity of U.S. Patent No.
`
`5,544,352 (the “’352 Patent”), U.S. Patent No. 5,832,494 (the “’494 Patent”), and
`
`U.S. Patent No. 6,233,571 (the “’571 Patent”) (collectively the “Egger Patents”). I
`
`have studied the ’352 Patent, the ’494 Patent (Ex. 1001), and the ’571 Patent in
`
`detail; my observations follow:
`
`20.
`
`The ’352 Patent was filed June 14, 1993. It makes no claims of
`
`priority. It was issued on August 6, 1996 to Daniel Egger, listing assignee
`
`Libertech, Inc. It was issued with 52 claims. The ’352 Patent also went through ex
`
`parte reexamination and the Ex Parte Reexamination Certificate issued on
`
`September 20, 2011. As part of the reexamination, the patentability of claims 26-
`
`42 and 44 was confirmed, claim 45 was cancelled, claims 53-61 were added and
`
`determined patentable, and claims 1-25, 43, and 46-52 were not reexamined.
`
`21.
`
`The ’352 Patent’s title is “Method And Apparatus For Indexing,
`
`Searching and Displaying Data.” The patent relates to the then well-developed
`
`-7-
`
`010
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`field of Information Retrieval (IR). The field of invention is described as: “This
`
`invention pertains to computerized research tools. More particularly, it relates to
`
`computerized research on databases. Specifically, the invention indexes data,
`
`searches data, and graphically displays search results with a user interface.” (1:7-
`
`11.)
`
`22.
`
`The ’494 Patent was filed May 17, 1996. It is a continuation-in-part of
`
`the application issued as the ’352 Patent. It was issued on Nov. 3, 1998 to Daniel
`
`Egger et al., listing assignee Libertech, Inc. It was issued with 33 claims. The ’494
`
`Patent also went through ex parte reexamination and the Ex Parte Reexamination
`
`Certificate issued on September 27, 2011. As part of the reexamination, the
`
`patentability of claims 1-3, 5, 7-16, and 18-21 was confirmed, claims 23-25 and
`
`31-33 were cancelled, claims 34-54 were added and determined patentable, and
`
`claims 4, 6, 17, 22, and 26-30 were not reexamined.
`
`23.
`
`The ’571 Patent was filed May 4, 1993. It is a division of the
`
`application that issued as the ’494 Patent. It was issued on May 15, 2001 to Daniel
`
`Egger et al., listing assignee Daniel Egger. It was issued with 22 claims. The ’571
`
`Patent also went through ex parte reexamination and the Ex Parte Reexamination
`
`Certificate issued on October 4, 2011. As part of the reexamination, the
`
`patentability of claims 12-15 was confirmed, claims 1, 5, 16, 21, and 22 were
`
`amended and determined to be patentable as amended, claims 3, 4, 6-11, and 17-20
`
`-8-
`
`011
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`were determined to be patentable as dependent on an amended claim, claims 23-32
`
`were added and determined patentable, and claim 2 was not reexamined.
`
`24.
`
`I have been asked to consider whether the inventions recited in claims
`
`26, 28, 29, 30, 32, 34, and 39 of the ’352 Patent, claims 1, 5, 8, 10, 11, 14, 15, 16,
`
`18, 19, 20, 35, 40, 45, 48, 49, 51, and 54 of the ’494 Patent, and claims 12, 21, 22,
`
`26, 28 and 31 of the ’571 Patent (collectively the “Egger Patent Claims”) are
`
`unpatentable over certain published prior art references.
`
`III.
`
`SUMMARY OF OPINIONS
`
`25. Based upon my investigation and analysis, and for the reasons set
`
`forth below, it is my opinion that all of the elements recited in claims 26, 28, 29,
`
`30, 32, 34, 39 of the ’352 Patent were disclosed in published prior art references
`
`and that those claims are anticipated by and/or rendered obvious in view of these
`
`references.
`
`26. Based upon my investigation and analysis, and for the reasons set
`
`forth below, it is my opinion that all of the elements recited in claims 1, 5, 8, 10,
`
`11, 14, 15, 16, 18, 19, 20, 35, 40, 45, 48, 49, 51, and 54 of the ‘494 Patent were
`
`disclosed in published prior art references and that those claims are anticipated by
`
`and/or rendered obvious in view of these references
`
`27. Based upon my investigation and analysis, and for the reasons set
`
`forth below, it is my opinion that all of the elements recited in claims 12, 21, 22,
`
`-9-
`
`012
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`26, 28 and 31 of the ’571 Patent were disclosed in published prior art references
`
`and that those claims are anticipated by and/or rendered obvious in view of these
`
`references.
`
`IV. LEGAL PRINCIPLES USED IN ANALYSIS
`
`28.
`
`I am not a patent attorney nor have I independently researched the law
`
`on patent validity. Attorneys for petitioners have explained certain legal principles
`
`to me that I have relied on in forming my opinions set forth in this report.
`
`A.
`
`29.
`
`Person of Ordinary Skill in the Art
`
`I understand that my assessment and determination of the
`
`unpatentability of claims of the Egger Patents must be undertaken from the
`
`perspective of what would have been known or understood by someone of ordinary
`
`skill in the art as of the earliest claimed priority date of the patent claim. From
`
`analyzing the Egger Patents and the relevant prior art, it is my opinion that a
`
`person of ordinary skill in the relevant art for the Egger Patents would have at least
`
`a Bachelor’s degree in Computer Science (or an overlapping field), at least one
`
`graduate level course in Information Retrieval, and 2-3 years of experience,
`
`emphasizing the development of document retrieval systems that index, search,
`
`and display data for the purposes of computer research or equivalent education
`
`and/or experience. An individual with additional education or commercial
`
`experience also could be one of ordinary skill in the art for the Egger Patents if that
`
`-10-
`
`013
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`additional experience compensated for a deficit in one of the other aspects of the
`
`requirements stated above. Unless otherwise specified, when I state that something
`
`would be known to or understood by one skilled in the art or possessing ordinary
`
`skill in the art, I am referring to someone with this level of knowledge and
`
`understanding.
`
`30. With over 35 years of experience in the field of information retrieval,
`
`and roughly 30 years teaching students who could work and indeed have worked in
`
`this field, I am well acquainted with the level of ordinary skill required to
`
`implement the subject matter of the Egger Patents. I have direct experience with
`
`and am capable of rendering an informed opinion on what the level of ordinary
`
`skill in the art was for the relevant field as of June 14, 1993. Therefore, my
`
`analysis and opinions regarding the unpatentability of the Egger Patent Claims will
`
`be offered from this perspective.
`
`B.
`
`31.
`
`Prior Art
`
`I understand that the law provides categories of information that
`
`constitute prior art that may be used to anticipate or render obvious patent claims.
`
`To be prior art to a particular patent, a reference must have been made, known,
`
`used, published, or patented, or be the subject of a patent application by another,
`
`before the priority date of the patent. I also understand that the person of ordinary
`
`skill is presumed to have knowledge of all prior art.
`
`-11-
`
`014
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`C.
`
`Unpatentability
`
`1.
`
`Anticipation
`
`32.
`
`I understand that a claim is not patentable when a single prior art
`
`reference that existed prior to the claim’s priority date describes every element of
`
`the claim, either explicitly or inherently to a person of ordinary skill in the art. I
`
`understand that this is referred to as “anticipation.” I further understand that to
`
`anticipate a patent claim, the prior art does not have to use the same words as the
`
`claim, but it must describe the requirements of the claim with sufficient clarity to
`
`establish that the subject matter existed and that its existence was recognized by a
`
`person of ordinary skill in the art in the technology of the invention, so that looking
`
`at that one reference, that person could make and use the claimed invention. In
`
`addition, I am informed and understand that, in order to establish that an element
`
`of a claim is “inherent” in the disclosure of a prior art, it must be clear to one
`
`skilled in the art that the missing element is the inevitable outcome of the process
`
`and/or thing that is explicitly described in the prior art, and that it would be
`
`recognized as necessarily present by a person of ordinary skill in the art. I also
`
`understand that if a reference relied on expressly anticipates all of the elements of
`
`the claimed invention, the reference is presumed to be operable. Even if a reference
`
`discloses an inoperative device, it is still prior art for all that it discloses (and
`
`teaches).
`
`-12-
`
`015
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`2.
`
`Obviousness
`
`33.
`
`I understand that, even if every element of a claim is not found
`
`explicitly or implicitly in a single prior art reference, the claim may still be
`
`unpatentable if the differences between the claimed elements and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a person of ordinary skill in the art. That is, the invention
`
`may be obvious to a person having ordinary skill in the art when seen in the light
`
`of one or more prior art references. I understand that this is often referred to as
`
`“obviousness.” In other words, a patent is obvious when it is only a combination of
`
`old and known elements, with no change in their respective functions, and that
`
`these familiar elements are combined according to known methods to obtain
`
`predictable results. I understand that the following four factors are considered
`
`when determining whether a patent claim is obvious: (1) the scope and content of
`
`the prior art; (2) the differences between the prior art and the claim; (3) the level of
`
`ordinary skill in the art; and (4) secondary considerations tending to prove
`
`obviousness or nonobviousness. I understand that the courts have established a
`
`collection of secondary factors of nonobviousness, which include unexpected,
`
`surprising, or unusual results; nonanalogous art; teachings away from the
`
`invention; substantially superior results; synergistic results; long-standing need;
`
`-13-
`
`016
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`commercial success; and copying by others. I further understand that there must be
`
`a connection between these secondary factors and the scope of the claim language.
`
`34.
`
`I understand that other rationales to support a conclusion of
`
`obviousness may be relied upon. For instance, I understand that common sense
`
`(where substantiated) may be a reason to combine or modify prior art to achieve
`
`the claimed invention.
`
`3.
`
`Anticipation/Obviousness Determination
`
`35.
`
`I understand that a determination of whether the claims of a patent are
`
`anticipated or rendered obvious by prior art is a two-step analysis: (1) determining
`
`the meaning and scope of the claims, and (2) comparing the properly construed
`
`claims to the prior art. I have endeavored to undertake this process herein.
`
`V.
`
`STATE OF THE ART AND FOX PAPERS
`
`36.
`
`The state of the art in the field related to the Egger Patents, at the time
`
`of the priority dates of those patents, was such that those patents would have been
`
`obvious. Indeed, published work went far beyond the Egger Patents, in that
`
`scientific research not only described a variety of systems that went beyond the
`
`claimed inventions, but also reported extensive experimentation to show how those
`
`systems could and would work in practical settings, and where improvement in
`
`performance was proven.
`
`-14-
`
`017
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`37.
`
`The notion of using indirect citation information to help with
`
`information systems arose by the early 1960s. My undergraduate thesis advisor,
`
`Michael Kessler, wrote:
`
`Kessler, M. M. (1963), Bibliographic coupling between scientific papers,
`
`American Documentation, 14, 10-25.
`
`38. As I worked on my B.S. thesis, in this area, I also studied the first
`
`substantive textbook in the field:
`
`Gerard Salton, 1968, Automatic Information Organization and Retrieval,
`
`McGraw Hill.
`
`39. Ultimately this led me to pursue graduate work in this area, starting in
`
`1978. At that time I discussed with Dr. Salton my idea of expanding research on
`
`the vector space model to better include other types of content, or relationships,
`
`beyond terms (e.g., keywords), and that became a key theme of my doctoral
`
`research. In particular, I worked with vectors and matrices, and with database
`
`systems, demonstrating improvements in retrieval, clustering, and various ways to
`
`use bibliographic coupling and co-citation data, that were derived from direct
`
`citation data, alone or in combination with terms and other types of concepts,
`
`including dates.
`
`-15-
`
`018
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`40.
`
`In 1978, the SMART system ran on IBM systems, and was coded in
`
`Fortran and Assembly Language. By then there already had been extensive studies
`
`of retrieval methods using SMART, reported for example in:
`
`G. Salton, ed. 1971. The SMART Retrieval System—Experiments in
`
`Automatic Document Processing. Prentice-Hall, Inc., Upper Saddle River,
`
`NJ, USA.
`
`41. During my graduate work, Dr. Salton collaborated with Dr. McGill to
`
`produce another textbook that was widely used by practitioners and researchers in
`
`the field, and which included some of the results of my research. Dr. Salton has
`
`also published a number of articles relevant to information retrieval:
`
`Gerard Salton and Michael J. McGill. 1983. Introduction to Modern
`
`Information Retrieval. McGraw-Hill, Inc., New York, NY, USA.
`
`[Salton 1990] Gerard Salton and Chris Buckley, “Approaches To Text
`
`Retrieval For Structured Documents,” Technical Report, TR 90-1083,
`
`Dept. of Computer Science, Cornell University, January 1990.
`
`[Salton 1963] “Associative Document Retrieval Techniques Using
`
`Bibliographic Information,” Journal of ACM, Vol. 10, No. 4, pp. 440-57,
`
`October 1963. (Ex. 1012)
`
`42.
`
`To carry out my doctoral research, I first needed to build a next
`
`generation of the SMART system that would implement my ideas and algorithms.
`
`-16-
`
`019
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`Second, I had to build document collections and put them into a database system,
`
`where the collections would include co-citation data as well as other data such as
`
`reflecting bibliographic coupling. Third, I had to experiment to find what methods
`
`would lead to improvements in retrieval and clustering. This was all discussed in
`
`the first version of my dissertation, which was over 1000 pages in length. Guided
`
`by my graduate committee, I broke this up into three parts, leading to the following
`
`publications:
`
`[Fox SMART] E. Fox. Some Considerations for Implementing the SMART
`
`Information Retrieval System under UNIX. TR 83-560, Cornell Univ.
`
`Dept. of Comp. Science, Sept. 1983, Ithaca, NY. (Ex. 1005)
`
`[Fox Collection] E. Fox. Characterization of Two New Experimental
`
`Collections in Computer and Information Science Containing Textual and
`
`Bibliographic Concepts. TR 83-561, Cornell Univ. Dept. of Computer
`
`Science, Sept. 1983, Ithaca, NY. (Ex. 1007)
`
`[Fox Thesis] E. Fox. Extending the Boolean and Vector Space Models of
`
`Information Retrieval with P-Norm Queries and Multiple Concept Types.
`
`Cornell University dissertation, Aug. 1983. (Ex. 1008)
`
`43.
`
`The other key result of my research was a system, SMART. I
`
`proposed, designed, and led the implementation effort of a new version of the
`
`SMART system, 1980-2, written in the C language under UNIX. From 1986, I
`
`-17-
`
`020
`
`Facebook Ex. 1009
`
`

`

`Attorney Docket No. 309101-2031
`
`Inter Partes Review of U.S. Patent No. 5,832, 494
`Declaration of Edward A. Fox Ph.D.
`
`extended this for use at Virginia Tech. The version of SMART developed at
`
`Cornell, and also extended there by others (e.g., Buckley and Voorhees), was used
`
`around the world for information retrieval research. The databases called "CACM"
`
`and "ISI", developed 1980-2 for my dissertation research with SMART, were
`
`widely distributed and have been used in scores of published studies, as benchmark
`
`test sets.
`
`44.
`
`To further extend the work with SMART, I decided to build a more
`
`advanced system, with support from the US National Science Foundation, which
`
`would facilitate incorporation of methods from the field of artificial intelligence.
`
`This led to CODER. I proposed and supervised development of the COmposite
`
`Document Expert/extended/effective Retrieval System, 1985-92, which was used
`
`as a testbed for