UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`GOOGLE INC.
`Petitioner
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`v.
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`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-00033
`Patent 6,771,290
`___________
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`DECLARATION OF DR. CORY PLOCK IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO PETITION
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 1
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`___________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`GOOGLE INC.
`Petitioner
`
`v.
`
`B.E. TECHNOLOGY, L.L.C.
`Patent Owner
`___________
`
`Case IPR2014-00033
`Patent 6,771,290
`___________
`
`
`
`
`
`
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`DECLARATION OF DR. CORY PLOCK IN SUPPORT OF
`PATENT OWNER’S RESPONSE TO PETITION
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 1
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`I.
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`I, Cory Plock, under penalty of perjury, declare as follows:
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`PERSONAL BACKGROUND
`1.
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`I have personal knowledge of the facts contained in this Declaration,
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`am of legal age, and am otherwise competent to testify.
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`2. My name is Cory Plock. I have been retained as a consultant by
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`Freitas Angell and Weinberg LLP on behalf of B.E. Technology, L.L.C. to provide
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`professional opinions in the Inter Partes Review of United States Patent 6,771,290
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`(“the ’290 patent”) initiated by petitioner Google Inc. Specifically, I have been
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`asked to provide my opinion on whether U.S. Patent No. 6,771,290 (the “’290
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`patent”) is unpatentable under 35 U.S.C. § 103 by U.S. Patent No. 5,706,502
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`(“Foley”).
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`3.
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`I have approximately nineteen (19) years of software engineering and
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`software development background in both academic and commercial settings.
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`Over the years, I have participated in the design, development, testing,
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`deployment, support, and ongoing maintenance of software projects of various
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`sizes across several industries.
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`4.
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`As a result of my extensive experience and work in both academia and
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`industry, I have personal knowledge concerning certain technologies and art
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`relevant to this case. I currently serve as President and Chief Executive Officer of
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`Prolifogy Inc., a software technology firm based in Danbury, Connecticut. The
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 2
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`primary functions of the business are software consulting and software
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`development. Most of my current software development work has involved my
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`personal hands-on involvement with web based software technology.
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`5. My academic background is primarily in the field of computer
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`science. I hold a Bachelor of Arts (BA) degree in computer science from Western
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`Connecticut State University, where I graduated Summa Cum Laude. I also hold a
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`Master of Science (MS) degree in computer science from Rensselaer Polytechnic
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`Institute. I also hold a Doctor of Philosophy (Ph.D.) degree in computer science
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`from the Courant Institute of Mathematical Sciences at New York University. My
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`area of research study includes formal requirements languages, embedded systems,
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`and synthesis of executable code from requirements.
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`6. My academic background in computer science includes, among other
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`things, coursework and hands-on experience with programming languages,
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`computer architecture, software engineering, assembly programming, operating
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`systems, compilers, and programming languages such as Java, PHP, and C#.
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`7.
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`I am currently an Adjunct Assistant Professor at New York University
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`where I teach graduate courses in programming languages and web application
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`development.
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`8.
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`I served as a full-time consultant to Microsoft Research Ltd. for
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`approximately two (2) years, where I worked with researchers and programmers to
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 3
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`design and implement a software framework known as an execution engine for a
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`publically available research tool used in biological modeling.
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`9.
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`I was employed as a Specialist and then later as a consultant for the
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`Information Technology (IT) department of PepsiCo Inc. I was also employed at
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`various times by Boehringer Ingelheim and Yoh Scientific in the capacities of
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`intern, employee, and consultant, where I worked with web technology.
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`10.
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`I have also served as a Teaching Assistant for several undergraduate
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`and graduate courses including Programming Languages, UNIX Tools, and
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`Machine Learning at Rensselaer Polytechnic Institute and New York University. I
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`have received recognition by the New York University Computer Science
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`department for my work as a teaching assistant.
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`11.
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`I have additionally served as a Research Assistant at various times
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`throughout my course of study at Rensselaer Polytechnic Institute and New York
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`University. Topics of research have included a programming concept known as
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`garbage collection, machine learning, software modeling, verification, and
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`synthesis.
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`12. My education, history of employment, listing of all publications,
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`listing of all prior testimony, and additional qualifications are set forth in my
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`curriculum vitae, attached to this report. Filed herewith as Exhibit 2002 is a true
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`and correct copy of my curriculum vitae.
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 4
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`13.
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`I am being compensated at my customary rate of $495.00 per hour for
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`all work I perform in the current matter, including reasonable out-of-pocket
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`expenses. The compensation is not dependent on the outcome of the matter.
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`14. The opinions I provide herein are my own, and are based on my
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`research in this matter and on the education, experience, training, and skill that I
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`have accumulated in the course of my approximately nineteen (19) years working
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`in this field. In connection with my analysis, I have reviewed the following: (1)
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`the ’290 patent, (2) the Petition, (3) the Board’s Decisions relating to the Petition,
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`and (4) Foley. I have also read the declaration and deposition testimony of Mr.
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`Stephen Gray.
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`15. All of the opinions I express in this Declaration have been made from
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`the standpoint of a person of ordinary skill in the art of the subject matter of the
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`’290 patent. It is my opinion that at the time the ’290 patent application was filed,
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`July 16, 1999, a person of ordinary skill in the art (hereafter, “POSITA”) in the
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`subject matter of the ’290 patent would have education and/or experience with the
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`World Wide Web, Common Gateway Interface (CGI), server side programming
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`languages, databases, networking, and client/server architecture. The education
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`component could be satisfied with a bachelor’s degree in computer science (or
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`related field) or at least two (2) years of experience.
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 5
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`16.
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`I understand that, from a patentability perspective, a proper analysis
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`compares the claims of the patent to the teachings of the alleged prior art reference.
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`A discussion of the relevant sections of the references based on my analysis
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`appears below.
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`17.
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`I understand that in an inter partes review proceeding, claims must be
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`given their broadest reasonable interpretation consistent with the specification,
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`unless the inventor sets forth special meaning to a term.
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`II. OPINIONS
`18.
`I have been asked by counsel to provide expert opinions on certain
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`topics and questions presented below.
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`A.
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`Foley Does Not Disclose A Separate “User Profile” From A “User
`Library”
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`19.
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`I have been asked to opine on whether Foley discloses a “user profile”
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`as distinct from a “user library.” In my opinion, Foley has not disclosed a user
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`profile distinct from a user library. The basis of my opinion is set forth below.
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`20.
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`I understand that the Patent Trial and Appeal Board has defined
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`certain terms in the ’290 patent. I have been asked to assume that a “user profile”
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`is user-specific information relating to the individual using a computer. I have
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`been also asked to assume that a “user library” is a collection of an individual’s
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`stored files.
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 6
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`21.
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`I understand that Petitioner has taken the position that a “portfolio
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`file” in Foley corresponds to the ’290 patent’s “user profile” and that a “portfolio
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`directory” in Foley corresponds to the ’290 patent’s “user library.” See Paper 1 at
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`18.
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`22. A portfolio file, as depicted in Figure 5 of Foley, is a set of references
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`to project files. This point is stated explicitly where it says in reference to Figure
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`5, “there is shown a portfolio file 160A1 that contains project file references
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`162A1j for its constituent projects.” Ex. 1002, Col. 7:29-34. Foley states that a
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`portfolio file “represents” a portfolio. Id., Col. 2:55-57. Therefore, it is my
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`opinion that the terms “portfolio” and “portfolio file” were disclosed by Foley as
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`being synonymous in referring to the same set of projects.
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`23. The project files comprising a portfolio reside together in what is
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`described as a directory. See Ex. 1002 at 2:49-51; 7:29-34. In his deposition,
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`Petitioner’s expert Mr. Stephen Gray testified that he could not think of any
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`differences between a “project” and a “project file.” (Ex. 2003 at 275:21-24) Mr.
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`Gray also testified that a “portfolio” is “the collection of projects” and the
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`“portfolio file” is “the reference to those component parts.” Ex. 2003 at 275:25-
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`276:10. Mr. Gray is simply referring to the same set of projects, whether the set is
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`in his described “portfolio” or “portfolio file.”
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`24. The projects in a “portfolio” are the same projects as referenced in a
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`“portfolio file.” That is, there exists a one-to-one correspondence between the
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`project names or URLs and the project files (ending with a “.prj” extension)
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`disclosed in Foley. See Ex. 1002, Figure 5.
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`25. To summarize, a portfolio file representing one portfolio is a set of
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`references to projects (“user profile”). The set of referenced projects are the
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`constituent members comprising the portfolio (“user library”). Foley must disclose
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`a separate “user profile” from a “user library” in order to correspond to the “user-
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`specific information relating to an individual using a computer” and “a collection
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`of an individual’s stored files” separately claimed in the ’290 patent. Therefore, it
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`is my opinion that the user profile and the user library, as Petitioner argues is
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`disclosed by Foley, are not distinct.
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`
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`B.
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`Foley Does Not Disclose A “User Profile.”
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`26.
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`I have been asked to opine on whether Foley discloses a “user
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`profile.” It is my opinion that Foley does not disclose a user profile. The basis of
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`my opinion is set forth below.
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`27.
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`In determining what a user profile should include, I looked to the
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`specification of the ‘290 patent, which makes numerous references to user profiles
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`and items contained therein. Such items include:
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`a.
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`Application setup and preference information (Ex. 1001, Col.
`8:32-33);
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 8
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`b.
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`c.
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`d.
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`e.
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`f.
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`User-specific customized settings for the operating system,
`including the desktop icons and shortcuts utilized by that
`particular user (Id., Col. 12:56-59);
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`User preferences for the interfaces provided by [software]
`applications (Id., Col. 12:62-67);
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`Bookmarks, shortcuts, and such links to file and information
`resources accessible via either the network or the Internet (Id.,
`Col. 12:67-13:3);
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`Templates, macros, and other such custom files (Id., Col. 26:7-
`9);
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`User identification data, user hyperlink bookmarks, user
`hyperlink categories, and user application shortcuts (Id., Col.
`26:18-20);
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`Information such as user identity, demographic information, a
`baseline on the user's computer usage, and the like (Id., Col.
`34:8-11; Col. 34:24-26);
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`User-specific information including home address, email
`address, telephone number (Id., Col. 36:22-24);
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`Credit card, mailing address, and other such information to
`enable the purchase of products (Id., Col. 37:18-20).
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`28. The portfolio file (the alleged “user profile”) disclosed in Foley only
`
`g.
`
`h.
`
`i.
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`contains references to project files and has a name. See Ex. 1002, Figure 3; Figure
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`5; Col. 7:20-23; Col. 8:1-6. No personal user-specific information is contained in
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`file references or portfolio names.
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`29. Projects also do not contain these items either. Foley discloses
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`projects as containing a name, type, project administration information, project
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 9
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`contents, and a run page URL. Ex. 1002, Col. 8:41-63. None of these items
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`contain user-specific information relating to the individual using the computer.
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`30. An individual user in Foley can import published portfolio and project
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`files created by other users. Entering “Portfolio 3,” for example, into a name field
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`to import a portfolio file that another user created and named is not importing user-
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`specific information relating to the individual using the computer. See Ex. 1002,
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`Col. 8:11-13; Col. 14-26. Similarly, entering the name or URL of a project is not
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`importing user-specific information relating to the individual using the computer.
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`See Ex. 1002, Col. 10:8-23; Col. 12:7-12. Foley therefore does not disclose a user
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`profile as claimed in the ’290 patent.
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`C.
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`Foley’s JWS Program And JWS Browser Are Not Related
`Program Modules.
`31. Foley teaches a “JWS program” and a “JWS browser.” I have been
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`asked to opine on whether these are considered related program modules. In my
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`opinion, they are not. The basis of this opinion is set forth below.
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`32. The ’290 patent requires “a program stored on a said non-volatile data
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`storage device in a computer-readable format.” I understand that in an inter partes
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`review proceeding, the broadest reasonable definition in light of the specification
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`applies. The inventor, acting as his own lexicographer, has defined a “program” to
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`be “[o]ne or more related program modules,” where “program module” is defined
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`as “[o]ne or more related program components.” Ex. 1001, Col. 4:59-61. The
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 10
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`’290 patent further defines “program component” as “[a] set of instructions stored
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`in a file in computer-readable format, whether as object code or source code, and
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`whether written in a compiled language, in byte code (such as Java™), or in a
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`scripting or other interpreted language.” Id., Col. 4:54-58.
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`33. Consequently, the determination of whether a set of program
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`components together constitute a single program or multiple programs rests
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`squarely on whether the program components are related. To answer this question,
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`I therefore studied Foley in order to determine whether the program components
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`comprising the “JWS program” and the “JWS browser” are related based on the
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`description of the components.
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`34. Functions carried out by the Java Workshop Program 150A (“JWS
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`program”), as disclosed in Foley (Ex. 1002, Col. 6:15-37), include:
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`a)
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`b)
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`c)
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`d)
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`e)
`
`f)
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`Providing access to an applet, which displays the projects in the
`current portfolio;
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`Providing access to an applet, in which the user can edit project
`information;
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`Providing access to an applet, in which the user can edit project
`source code;
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`Providing access to a JWS project compiler applet;
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`Providing access to an applet that allows the user to browse
`certain source programs;
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`Providing access to an applet that allows the user to debug
`certain source programs;
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`- 11 -
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 11
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`
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`g)
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`Providing access to a method that runs executable projects;
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`Providing access to an applet that provides context-sensitive
`help for operations.
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`35. The JWS browser, on the other hand, is disclosed in Foley as having
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`h)
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`the following functions:
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`a)
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`b)
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`c)
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`Providing all of the features of a conventional Web browser
`(Ex. 1002, Col. 4:59-64). A conventional web browser is a
`program that sends an HTTP request to a web server, receives a
`response, and renders the contents of the response in an
`application window. In other words, the web browser displays
`what a web server tells it to display;
`
`Providing the ability to communicate with a remote platform
`hosting the Web document (Id., Col. 4:59-64);
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`Downloading linked web documents (Id., Col. 5:2-5). In fact,
`projects can only be accessed remotely using the JWS browser
`(Id., Col. 7:39-46; 13:12-17);
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`Handling local or remote web documents (Id., Col. 5:9-18);
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`Pulling in and begin executing automatically an applet
`referenced in a web document (Id., Col. 5:23-26; 5:36-40; 5:42-
`46);
`
`Running applets in the JWS browser’s virtual machine (Id.,
`Col. 5:27-32);
`
`g) Worrying about network and operating system complexities
`(Id., Col. 5:27-32);
`
`h) Monitoring icon selection events (Id., Col. 5:53-56).
`
`
`d)
`
`e)
`
`f)
`
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 12
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`36.
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`I reviewed the two feature lists above and compared the capabilities of
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`the JWS program and JWS browser. With respect to applets, which are referenced
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`in both lists, I have observed that Foley discloses the JWS program providing
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`access to applets, whereas the Foley discloses the JWS browser running applets. I
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`consider these to be different actions because an applet can be downloaded from a
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`web server and exist in a non-running state. A POSITA would know that the act
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`of accessing an applet does not imply that the applet is running. In all other
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`respects, I have found the features and capabilities of the JWS browser and JWS
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`program listed above to be substantially different. Therefore, the two sets of
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`program components are not “related,” and are therefore different programs
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`according to the construction set forth in the ’290 patent.
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`37. The fact that the JWS program “has an integrated JWS browser” does
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`not change my opinion. Foley clearly depicts the JWS Program 150A, JWS
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`Browser 154A, and JWS Toolbar Specification 112A separately. See Ex. 1002,
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`Figure 1. Moreover, the nature of the integration disclosed by Foley is not one of
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`closely related functionality, but rather communication. Specifically, Foley
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`describes the JWS browser as monitoring the JWS program for icon selection
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`events. Id., Col. 5:50-61. This is indicative of communication between the
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`programs, but does not establish a similarity in features and capabilities between
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`the two.
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 13
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`D.
`
`Foley’s JWS Program Is Not Operable Upon Execution To
`Receive Or Access Remote Files.
`
`38.
`
`I have been asked to opine on whether the JWS program is operable
`
`upon execution to receive from a server a portfolio file (the alleged “user profile”)
`
`and access a project file via a network. In my opinion, the JWS program is not
`
`operable upon execution to receive or access remote portfolio or project files. The
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`basis of my opinion is set forth below.
`
`39. There are two types of portfolio and projects files disclosed in Foley:
`
`those that are remote and those that are local. The JWS program can access,
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`create, or modify portfolio and project files on the user’s local computer. On the
`
`other hand, remote portfolio and project files cannot be accessed by the JWS
`
`program. Foley specifically discloses that the remote portfolio and project files are
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`only accessible using the JWS browser. See Ex. 1002, Col. 7:40-46; Col. 13:2-17.
`
`40. The JWS browser is separate from the JWS program, as discussed
`
`above. Because it is only the JWS browser that can access the remote portfolio
`
`and projects files, the JWS program in Foley cannot be the “said program” claimed
`
`in the ’290 patent.
`
`E.
`
`Foley’s JWS Browser Is Not Operable Upon Execution To
`Display A Graphical User Interface Claimed In The ’290 Patent.
`41. Claim 2 of the ’290 patent reads, in part: “Said program being
`
`operable upon execution to display a graphical user interface comprising an
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 14
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`application window having a number of user-selectable items displayed therein,
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`wherein each of said items has associated with it a link to an information resource
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`accessible via the network.” Ex. 1001, Col. 39:12-17.
`
`42.
`
`I have been asked to opine on whether the JWS browser is “operable
`
`upon execution to display a graphical user interface.” In my opinion, while the
`
`JWS browser does display “a graphical user interface,” it does not display the
`
`graphical user interface “comprising an application window having a number of
`
`user-selectable items displayed therein…” The basis of my opinion is set forth
`
`below.
`
`43. Petitioner contends that the “graphical user interface” required by
`
`claim 2 is “using the Java Workshop Program (JWS) software program 150A to
`
`implement a user interface” in Foley. Paper 1 at 21-22.
`
`44. Petitioner acknowledges that it is the JWS Program 150A (not the
`
`JWS browser) that contains a “toolbar 160 which ‘causes the JWS 150A to open a
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`Portfolio display showing the projects of the current portfolio in the Applet
`
`Window 164A.’” Paper 1 at 22; see also Ex. 1002, Col. 12:36-40. Such items are
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`not part of the JWS browser.
`
`45. Most references to the JWS browser in the Foley specification
`
`describe what the JWS browser is capable of doing—not what the JWS browser
`
`displays. The reason no specific disclosure is made regarding JWS browser
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`- 15 -
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 15
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`display is most likely because the J WS browser is understood by a POSITA to
`
`display whatever the web server transmits to it. The specific contents of the J WS
`
`browser are therefore beyond the control of the Foley invention. For example,
`
`there are references to the JWS browser displaying web—based content which is
`
`based on selections that the user made in the toolbar. See Ex. 1002, Col. 5:50-67.
`
`It is the applet, executed by the J WS program, however, that takes control of the
`
`portion ofthe window to display results. See Ex. 1002, Col. 4:41-46; 5:63-67.
`
`46.
`
`Any graphical user interface displayed by the J WS browser therefore
`
`does not meet the claim limitations above, at least because:
`
`a.
`
`The graphical user interface alleged to exist by Petitioner
`
`belongs to a different program than the J WS browser.
`
`b.
`
`Foley does not disclose any specific content which is displayed
`
`by the JWS browser because the JWS browser, being a “conventional web
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`browser” (Ex. 1002, Col. 4:59-63) displays the content transmitted to it by
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`the web server.
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`I declare under penalty of perjury that the foregoing is true and correct.
`
`Executed on July 9, 2014 in Danbury, CT.
`
`é 52-.........
`
`
`Cory Plock ('
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`-15-
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 16
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 16
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`
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`CERTIFICATE OF SERVICE
`
`It is certified that copies of the DECLARATION OF DR. CORY PLOCK
`
`IN SUPPORT OF PATENT OWNER’S RESPONSE TO PETITION have
`
`been served on Petitioner as provided in 37 C.F.R. § 42.6(e) via electronic mail
`
`transmission addressed to the persons at the address below:
`
`Clinton H. Brannon
`Brian A. Rosenthal
`MAYER BROWN, LLP
`cbrannon@mayerbrown.com
`brosenthal@mayerbrown.com
`WDC-Client-IPR-Filings@mayerbrown.com
`
`Date: July 9, 2014
`
`
`
`
`
`
`
`
`
`By: /s/ Jason S. Angell
`Jason S. Angell
`Reg. No. 51408
`Counsel for Patent Owner
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`- 17 -
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`B.E. Technology, L.L.C. - Exhibit 2001, Page 17
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