`
`Exhibit No. 1005
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics America, Inc.
`Petitioner,
`
`V.
`
`BE. Technology, LLC
`
`Patent Owner
`
`Patent No. 6,771,290 (Claims 2-3)
`Issued: August 3, 2004
`Filed: April 11, 2001
`Inventors: Martin David Hoyle
`Title: COMPUTER INTERFACE METHOD AND APPARATUS WITH
`
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`
`ADVERTISING
`
`Inter Partes Review No.
`
`Declaration of Dr. John M. Strawn
`
`
`
`Declaration ofDr. John M Strawn
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ................................................................................................... 2
`
`A.
`
`Background And Qualifications........................................................ 3
`
`B. Materials Considered ......................................................................... 4
`
`11.
`
`Legal Standards For Patentability .............................................................. 4
`
`A.
`
`B.
`
`Anticipation ......................................................................................... 5
`
`Obviousness ......................................................................................... 6
`
`III.
`
`Person of Ordinary Skill in the Art............................................................. 7
`
`IV. Background Of The Technology ................................................................. 7
`
`V.
`
`The ’290 Patent ............................................................................................. 9
`
`A.
`
`Technical Overview of the ’290 Patent ............................................. 9
`
`B.
`
`C.
`
`Prosecution History of the ’290 Patent ........................................... 11
`
`Construction of Terms Used in the Claims .................................... 12
`
`a)
`
`b)
`
`0)
`
`(1)
`
`e)
`
`f)
`
`g)
`
`h)
`
`i)
`
`j)
`
`“client computer” ..................................................................... 12
`
`“server” .................................................................................... 13
`
`“network” ................................................................................. 13
`
`“file” ............................................................................. . ........... 13
`
`“link” ........................................................................................ 13
`
`“non—volatile data storage device” ........................................... 14
`
`“program” ................................................................................. 14
`
`“information resource” ............................................................ 15
`
`“browser” ................................................................................. 15
`
`“profile” .................................................................................... 15
`
`
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`Declaration ofDr. John M Strawn
`
`VI.
`
`Patentability Evaluation Of The ’290 Patent ........................................... 15
`A.
`Kikinis Discloses Every Limitation of Claims 2 and. 3.................. 17
`
`a)
`
`b)
`
`Kikinis Discloses Every Limitation of Claim 2 ....................... 17
`
`Kikinis Discloses Every Limitation of Claim 3 ....................... 22
`
`B.
`
`C.
`
`CompuServel Discloses Every Limitation of Claim 2 .................. 23
`
`CompuServel in View of Admissions of the ’290 patent
`and/or in View of CompuServeZ Teach Claim 3 ........................... 26
`
`D.
`
`Sonnenreich Discloses Every Limitation of Claims 2 and 3 ......... 28
`
`a)
`
`b)
`
`Sonnenreich Discloses Every Limitation of Claim 2 ............... 28
`
`Sonnenreich Discloses Every Limitation of Claim 3 .............. 31
`
`VII. Conclusion ................................................................................................... 32
`
`Attachment A. Claim Chart - Kikinis
`
`Attachment B. Claim Chart — CompuServel and CompuServeZ
`
`Attachment C. Claim Chart — Sonnenreich
`
`
`
`
`
`
`Declaration ofDr. John M. Strawn
`
`I, John M. Strawn, do hereby declare and state that all statements made
`
`herein of my own knowledge are true and that all statements made on information
`
`and belief are believed to be true; and further that these statements were made with
`
`the knowledge that willful false statements and the like so made are punishable by
`
`fine or imprisonment, or both, under Section 1001 of Title 18 of the United States
`
`Code:
`
`Dated: October 9, 2013
`
`John M. Strawn
`
`
`
`
`
`Declaration ofDr. John M Strawn
`
`I, Dr. John M. Strawn, hereby declare as follows:
`
`I.
`
`Introduction
`
`1.
`
`I have been retained by Greenberg Traurig, on behalf of Samsung
`
`Electronics America, Inc. (“Samsung”), as an expert in the above-captioned
`
`proceeding.
`
`I have been asked to render an opinion regarding the validity of
`
`claims 2 and 3 of U.S. Patent No. 6,771,290 (“the ’290 patent”), a copy of which is
`
`submitted herewith as Exhibit 1001.
`
`I am being compensated at a rate of $425.00
`
`per hour for my study and testimony in this matter.
`
`I am also being reimbursed for
`
`reasonable and customary expenses associated with my work and testimony in this
`
`matter. My compensation is not contingent on the outcome of this matter or the
`
`specifics of my testimony.
`
`2. Between 2005 and 2013, I was deposed as an expert in the following cases:
`
`
`
`District of California.
`
`|
`
`
`
`Case
`
`
`Adobe v. Wowza, CV 11-02243-CW, Northern District of California
`
`SmartPhone v. LG, 6:10—cv-74, Eastern District of Texas.
`
`
`
`Adobe v. Wowza, CV 11—02243-CW, Northern District of California.
`2011 Move Inc. v. Real Estate Alliance Ltd et al., 2:07-cv—02185, Central
`
`
`2010 Afiinity Labs v. Alpine Electronics et al., 08—171—RC, Eastern
`District of Texas.
`
`2010 District of California.
`
`2011
`
`Certain Wireless Communication Devices, Portable Music and Data
`Processing Devices, Computers and Components Thereof, ITC 337-
`
`TA—745
`
`
`
`
`
`
`2009-
`In re Apple & ATTMAntitrust Litigation, C 07-5152, Northern
`|
`
`
`2008- Konami Digital Entertainment v. Harmonix Music Systems, 6:08-CV—
`
`
`2010
`00286, Eastern District of Texas
`
`
`Nice_S_ystems Inc. and Nice Systems Ltd. v. Witness S stems Inc, 06-
`
`
`2
`
`
`
`Declaration ofDr. John M Strawn
`
`
`
`2008
`
`311-JJF, District of Delaware.
`Lucent Technologies Inc. v. Gateway, Inc., et al., defendants, and
`Microsoft Corporation, Intervener., 02-CV- 2060 B, Southern
`
`District of California.
`
`2006 Washington.
`
`Digeo, Inc. v. Audible, Inc, COS-00464, Western District of
`
`
`3. Between 2005 and 2013, I provided trial testimony as an expert in the
`
`following cases:
`
`
`
`
`Case
`
`2012
`
`
`
`2007—
`
`
`
`
`
`
`
`
`Motorola v. Apple (Certain Wireless Communication Devices,
`
`Portable Music and Data Processing Devices, Computers and
`
`Com onents Thereo , ITC 337—TA-745).
`
`Nice Systems Inc. and Nice Systems Ltd. v. Witness Systems Inc., 06-
`311-JJF, District of Delaware.
`
`Lucent Technologies Inc. v. Gateway, Inc., et al., defendants, and
`Microsoft Corporation, Intervener., 02-CV-2060 B, Southern
`
`
`District of California.
`
`2008
`
`2005—
`
`
`
`2007
`
`L—
`
`A.
`
`Background And Qualifications
`
`4.
`
`I have been working in the field of software, digital signal processing, and
`
`processor architecture since 1986.
`
`I earned a Bachelor’s degree from Oberlin
`
`College in 1973 and a Ph.D. degree from Stanford in 1985, with my doctoral
`
`dissertation focusing on signal processing for analyzing digital audio.
`
`5.
`
`I have over 30 years involvement in software, digital audio, digital music,
`
`digital signal processing, and processor architecture. Working in those areas, I
`
`have been an employee, a manager of a team of other Ph.D.s, and an independent
`
`software consultant in signal processing specializing in high-level languages and
`
`assembly language.
`
`
`
`Declaration ofDr. John M Sirawn
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`6. A copy of my curriculum vitae, which describes in further detail my
`
`qualifications, employment history, honors, patent, awards, professional
`
`associations, presentations, and publications is submitted herewith as Exhibit 1006.
`
`B. Materials Considered
`
`7. In forming my opinions, in addition to my knowledge and expertise, I have
`
`considered the following materials that I have obtained, or that have been provided
`
`to me, as well as any materials cited herein that may not be listed below:
`
`
`Description
`
`US. Patent No. 6,771,290
`
`File History of US. Patent No. 6,771,290
`International Patent Application Publication No. W0 97/09682,
`.ublished March 13, 1997 (“Kikinis”
`The Complete Idiot’s Guide to CompuServe, by Andy Shafran,
`Macmillan Computer Publishing (1995), pp. ii, iv-v, 7-9, 15-31,
`40—41, 65-71, 187, and 201-206 (“ComuServel”)
`Special Edition Using CompuServe, by Nancy Stevenson et al.,
`by Que Corporation (1995), pp. 720—723 and 750
`
`(“ComouServeZ”)
`US. Patent No. 5,974,446 to Sonnenreich et al., filed October
`
`24, 1996 (“Sonnenreich”).
`US. Patent No. 6,141,010
`
`1001
`
`1002
`1007
`
`1008
`
`1009
`
`1010
`
`‘
`1011
`
`
`
`
`1012
`
`File History ofU.S. Patent No. 6,141,010
`
`11.
`
`Legal Standards For Patentability
`
`8. In forming my opinion detailed herein, I am relying on certain legal
`
`principles that counsel has explained to me.
`
`9.
`
`I understand that, for an invention claimed in a patent to be found patentable,
`
`it must at least be new and not obvious over patents and other publications that
`
`4
`
`
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`Declaration ofDr. John M Strawn
`
`predated it.
`
`I understand that the patents and other publications that predate the
`
`invention are referred to as “prior art.”
`
`10.
`
`I understand that, in this matter, the burden is on the party asserting
`
`u‘npatentability to prove it by a preponderance of the evidence. I understand that “a
`
`preponderance of the evidence” is evidence sufficient to show that a fact is more
`
`likely true than not true.
`
`11.
`
`I understand that, in this matter, the claims must be given their broadest
`
`reasonable interpretation consistent with the specification. After the claims are
`
`interpreted, they are then compared to the prior art.
`
`12.
`
`I understand that, in this matter, the prior art is limited to patents and
`
`printed publications. My analysis below compares the claims as interpreted to
`
`patents and printed publications that are prior art to the claims of the ’290 patent.
`
`Counsel has explained that there are two ways in which prior art may render a
`
`patent claim unpatentable. First, the prior art can be shown to “anticipate” the
`
`claim. Second, the prior art can be shown to “render obvious” the claim. My
`
`understanding of the two legal standards as explained to me by counsel is set forth
`
`below.
`
`A.
`
`Anticipation
`
`13.
`
`I understand that, for a patent claim to be “anticipated” by the prior art,
`
`each and every element of the claim must be found, expressly or inherently, in one
`
`5
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`Declaration ofDr. John M Strawn
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`prior art reference as recited in the claim. I have applied this standard in my
`
`evaluatioh'of whether the claims of the ’290 patent are anticipated.
`
`B.
`
`Obviousness
`
`14.
`
`I understand that a claim in a patent is obvious when the differences
`
`between the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious to a person of ordinary skill in
`
`the art in the field of the invention (“the skilled person”) at the time of the
`
`invention.
`
`15.
`
`I understand that the effective filing date of claims 2 and 3 of the ’290
`
`patent is July 16, 1999.
`
`I have used July 16, 1999 as “the time of the invention” in
`
`developing my opinion. Even if it were to be shown that the effective filing date
`
`were July 17, 1998, my opinions would not change, and the patents and
`
`publications upon which I rely would still qualify as prior art.
`
`16.
`
`I understand that the following standards govern the determination of
`
`whether a claim in a patent is obvious. I have applied these standards in my
`
`evaluation of whether claims 2 and 3 of the ’290 patent would have been
`
`considered obvious as of July 16, 1999.
`
`17.
`
`I understand that the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results.
`
`I understand that, if a technique has been used to improve one device, and a skilled
`
`6
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`Declaration ofDr. John M Strawn
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`person would recognize that it would improve similar devices in the same way,
`
`using that technique to improve the latter devices would have been obvious unless
`
`its actual application yields unexpected results or challenges in implementation.
`
`18.
`
`I understand that the obviousness analysis can take into account the
`
`“ordinary innovation” that does no more than yield predictable results, which are
`
`inferences and creative steps that a skilled person would employ.
`
`III.
`
`Person of Ordinary Skill in the Art
`
`19. A person of ordinary skill in the art in the field of the ’290 patent (“the
`
`skilled person”) would have been familiar with software engineering techniques
`
`published in the literature and known in the field as of July of 1999. The skilled
`
`person would have gained this familiarity through graduate level studies in
`
`computer engineering or computer science, and/or through work experience in
`
`academia (either as a professor or a graduate student), and/or by working for a
`
`technology company or the government.
`
`IV. BackgrOund Of The Technology
`
`20. The ’290 Patent is directed to “user interfaces for maintaining, organizing
`
`and communicating information accessible to a computer network such as the
`
`Internet and, in particular, to user interfaces that provide the user with availability
`
`to that information in a personalized manner.” [’290 patent, 1:17-21].
`
`
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`Declaration ofDr. John M Strawn
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`21. Before 1999, much work had been done in the field of allowing a user to
`
`have the personalized computer experience that is independent of a particular
`
`computer and a network service provider. See generally Ex. 1007—1010.
`
`Particularly, much work had been done in the field of allowing Internet users to
`
`have service-independent access to their electronic documents on a
`
`server.
`
`[Kikinis, 1:7—9].
`
`22. Before 1999, there had been tremendous growth in users’ ability to access
`
`their electronic documents that are remotely stored from anywhere in the world
`
`using theirs or someone else’s computer (e.g., a public workstation), by utilizing,
`
`for example, a Web-based graphical interface. [Kikinis, 1:15-25].
`
`23. Before 1999, as the ’290 patent admits, it was well-established that
`
`“Internet users typically employ[ed] browser applications and related technologies
`
`in order to access the WWW; and to locate and view files, documents and
`
`audio/video clips. Exemplary browser applications include Opera by Opera
`
`Software, Netscape Navigator, Netscape Communicator 4.6 and Microsoft lntemet
`
`Explorer 5.0. Browser applications are loaded onto a user’s computer, and then can
`
`be used for communication over networks using protocols such as that utilized by
`
`the WWW. Browsers are useful for accessing desired files and web sites, and also
`
`have the capability of storing information regarding visited or favorite web sites on
`
`the user’s computer.” [’290 patent, 3:41-52].
`
`8
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`Declaration ofDr. John M Strawrz
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`V.
`
`The ’29() Patent
`
`A.
`
`Technical Overview of the ’290 Patent
`
`24.
`
`I have reviewed the ’290 patent. The main focus of the ’290 patent is
`
`delivering targeted advertising to a portable computer: “Computer interface method
`
`and apparatus with portable network organization system and targeted advertising”
`
`[’290 patent, title, emphasis added]. The ’290 patent mentions disadvantages of what
`
`is believed to be then-current systems. For example, targeted advertising can be
`
`controlled by parameters built into computer programs on a program-by-program
`
`basis. However, a “problem with these currently available programs is that these
`
`parameters can only be changed by replacement of the entire program with an
`
`updated, revised version, making it difficult to respond to desired changes in
`
`advertising approaches.” [’290 patent, 2:29-33]. Another problem identified in the
`
`’290 patent is that it is difficult to gather statistical information about the user in order
`
`to target advertising. The ’290 patent states that “One of the disadvantages of prior art
`
`Systems that acquire data regarding an end-user’s computer usage is that they are
`
`generally limited to gathering information concerning only certain limited uses of the
`
`computer.” [’290 patent, 3:18-22].
`
`25. The ’290 patent identifies one solution in presenting the user of a computer
`
`with a graphical user interface divided into regions, one of which is intended for
`
`the user: “with a first one of the regions including a number of user-selectable
`
`items, at least some of which are each associated with a different data set. The data
`
`9
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`Declaration ofDr. John M Strawn
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`sets are each representative of a different category of information (e. g., financial,
`
`news, sports, etc.) and each of the data sets comprises a number of user-selectable
`
`links to different information resources. For example, the data sets can be groups
`
`of related URLs, whereby the information resources comprise web pages
`
`accessible via the Internet.” [’290 patent, 5:14 — 23]. A second region is dedicated
`
`to advertising: “[a] second one of the regions comprises an information display
`
`region which can display such things as banner advertisements.” [’290 patent,
`
`5:23-25]. Software associated with the second region can “select the
`
`informational data to be displayed from among a larger amount of informational
`
`data, and
`
`store statistical data regarding the display of the selected informational
`
`data. This permits targeting of banner advertisements based upon the type of link
`
`(financial, news, sports, etc.) selected by the user, the software applications clicked
`
`on by the user, and other network accessible files accessed by the user.” [’290
`
`patent, 5:33-42]. An example of a region with advertising is shown below.
`
`. ‘67P
`
`..
`
`(’8
`
`”24
`
`80
`
`Edit View. TOE-Ill—S Help
`
`I
`
`(SF)
`
`[88
`
`70 Lli§fi_¢—mq.r___8j"_f_:_é__-.(m—_Tf__.'":—i. " 2‘i.— Il'élLJI
`
`
`‘
`--
`m
`84 :11“ I? , @_W. @_ H
`_.:MIII-[hflp_!!mliar—onhynot];
`[J
`7.I“ Place YourAd' Here I
`II‘JlEI) @th‘n n5
`_
`_'_'___
`_ :LQHFJCELI'
`
`
`
`
`86 ‘
`
`I
`
`72
`
`[’290 patent, Fig. 5]
`
`10
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`Declaration ofDr. John M Strawn
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`26. The ’290 patent expands beyond the realm of targeted advertising but
`
`continues the notion of two windows by describing how user-specific information
`
`can be made available in the graphic user interface by requiring the user to log in.
`
`Upon login, the user’s client computer connected to a network can “receive from
`
`the server a user profile that contains one or more user data sets and user links to
`
`information resources.” [’290 patent, 8:27—29]. Because the user profile is stored
`
`at the server, not on the user’s computer, the “profile is accessible to the user from
`
`any computer, regardless of computer, location or network access capability.”
`
`{’290 patent, 8:41-43]. The graphic user interface on the client computer’s screen
`
`is again divided into at least two regions. One of the regions includes icons that
`
`cause programs to be launched.
`
`[See ’290 patent, 8:11-17]. The second region
`
`includes icons that link to data that the user can select, called data sets.
`
`[See ”290
`
`patent, 8: 17-23]. The second region is populated using information contained in
`
`the user profile, because the user’s computer can display “a user selectable item for
`
`each of the user data sets and user links contained within the user profile.” [’290
`
`patent, 8:30-32].
`
`B.
`
`Prosecution History of the ’290 Patent
`
`27. The ’290 patent issued from U.S. Patent Application No. 09/744,033 which
`
`claims priority to PCT Application No. PCT/U899/16135 (“the PCT application”),
`
`which was filed on July 16, 1999 and lists Martin David Hoyle as inventor. A
`
`11
`
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`Declaration ofDr. John M Strawn
`
`Notice of Allowability was issued on March 22, 2004 without any intervening
`
`Office Action. The ’290 patent issued on August 3, 2004.
`
`C.
`
`Construction of Terms Used in the Claims
`
`28.
`
`I understand that, in the context of this proceeding, the claims must be
`
`given their broadest reasonable construction in light of the specification.
`
`29.
`
`I understand that the words of a claim are generally given their ordinary
`
`and customary meaning, and the ordinary and customary meaning of a claim term
`
`is the meaning that the term would have to a skilled person at the time of the
`
`invention.
`
`30.
`
`I understand that the skilled person is deemed to read the claim term not
`
`only in the context of the particular claim in which the term appears, but in the
`
`context of the entire patent, including the specification.
`
`31.
`
`I understand that Claim 2 of the ’290 patent is independent, and claim 3
`
`depends from claim 2.
`
`32.
`
`I understand that the preamble of claim 2 is limiting and will be construed
`
`as if in the balance of the claim.
`
`a)
`
`“client computer”
`
`33. “Client computer” is defined in the ’290 patent as “[a] computer that is
`
`connected to a network (including computers that are connected only occasionally
`
`to the network such as, for example, by a modem and telephone line) and that can
`
`12
`
`
`
`be used to send requests for information to other computers over the network.”
`
`Declaration ofDr. John M Strawn
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`[’290 patent, 421-6].
`
`b)
`
`“server”
`
`34. “Server” is defined in the ’290 patent as “[a] computer on a network that
`
`stores information and that answers requests for information.” [’290 patent, 4:66-
`
`67].
`
`c)
`
`“network”
`
`35. “Network” is defined in the ’290 patent as “[a] system having at least two
`
`computers in communicable connection, including intranets, personal networks,
`
`virtual private networks, and global public networks such as the Internet.” [’290
`
`patent, 4:42-45].
`
`d)
`
`“We”
`
`36. A “file” is defined in the ’290 patent as “[a]ny digital item, including
`
`information, documents, applications, audio/Video components, and the like, that is
`
`stored in memory and is accessible Via a file allocation table or other pointing or
`
`indexing structure.” [’290 patent, 4:25-28].
`
`e)
`
`“link”
`
`37. A “link” is defined in the ’290 patent as “[a] data item that identifies the
`
`13
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`Declaration ofDr. John M Strawn
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`location or address of a program or information resource. A URL is a link, as is a
`
`path and filename of an information resource.” [’290 patent, 4:39-41].
`
`1)
`
`“non-volatile data storage device”
`
`38. A “non-volatile data storage device” is defined in the ’290 patent as “[a]
`
`memory device that retains computer-readable data or programming code in the
`
`absence of externally—supplied power, including such things as a hard disk or a
`
`floppy disk, a compact disk read-only memory (CDROM), digital versatile disk
`
`DVD), magneto-optical disk, and so forth.” [’290 patent, 4:46-51].
`
`g)
`
`“program”
`
`39. A “program” is defined in the ’290 patent as “one or more related program
`
`modules.” [’290 patent, 4:61]. A program module is defined in the ’290 patent as
`
`“one or more related program components.” [’290 patent, 4:59—60]. A program
`
`component is defined in the ’290 patent as “[a] set of instructions stored in a file in
`
`computer-readable format, whether as object code or source code, and whether
`
`written in a compiled language, in byte code (such as JavaTM), or in a scripting or
`
`other interpreted language.” [’290 patent, 4:54-5 8]. A browser is a type of
`
`program (“browser - a program that can .
`
`.
`
`. .” [’290 patent, 3:65, emphasis
`
`added]).
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`14
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`Declaration ofDr. John M Strawn
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`h)
`
`“information resource”
`
`40. An “information resource” is defined in the ’290 patent as “[a] source of
`
`information stored on a server or other computer that is accessible to other
`
`computers over a network.” [’290 patent, 4:33-3 6]. For example, a web page is a
`
`type of information resource [’290 patent, 5:23]. A file can be an information
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`resource (a “file” is defined as “any digital item, including information .
`
`. .” [’290
`
`patent, 4: 25-28, emphasis added]).
`
`i)
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`“browser”
`
`41. “Browser” is defined in the ’290 patent as “[a] program that can
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`communicate over a network using http or another protocol and that can display
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`html information and other digital information.” [’290 patent, 3:65-67].
`
`j)
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`“profile”
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`42. “Profile” is defined in the ‘290 patent as “[u]ser-specific information
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`relating to an individual using a computer.” [’290 patent, 4:52-53].
`
`VI.
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`Patentability Evaluation Of The ’290 Patent
`
`43. As detailed below, I believe claims 2-3 of the ’290 patent are anticipated
`
`and/or rendered obvious by Kikinis, CompuServel, CompuServeZ, Admissions of
`
`the ’290 Patent, and Sonnenreich.
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`15
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`Declaration ofDr. John M Strawn
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`44. Claim 2 of the ’290 patent is reproduced below:
`
`“A computer-readable memory for use by a client computer in
`
`conjunction with a server that is accessible by the client computer via
`
`a network, the server storing a user profile and user library for each of
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`a number of different users, with the user library containing one or
`
`more files and the user profile containing at least one user link that
`
`provides a, link to one of the files in the user library, the computer-
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`readable memory comprising:
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`a non—volatile data storage device;
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`a program stored on said non-volatile data storage device in a
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`computer—readable format;
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`said program being operable upon execution to display a
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`graphical user interface comprising an application window having a
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`number of user—selectable items displayed therein, wherein each of
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`said items has associated with it a link to an information resource
`
`accessible via the network and wherein said program is operable upon
`
`execution and in response to selection by a user of one of said items to
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`access the associated information resource over the network;
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`said program being operable upon execution to receive from
`
`server one of the user profiles and to display a user—selectable item for
`
`16
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`Declaration ofDr. John M Strawn
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`user links contained within the user profile, said program further
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`being operable in response to selection by a user of one of the user
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`links to access the file associated with the selected user link from the
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`user library associated with the received user profile.”
`
`45. Claim 3 of the ‘290 patent is reproduced below:
`
`“A computer-readable memory as defined in claim 2, wherein
`
`said program is operable upon execution and in response to selection
`
`by a user of one of said items to access the associated information
`
`resource over the network using a browser.”
`
`A.
`
`a)
`
`Kikinis Discloses Every Limitation of Claims 2 and 3
`
`Kikinis Discloses Every Limitation of Claim 2
`
`46. Kikinis discloses a user station or kiosk having a computer system (63, 107)
`
`(client computer), having well-known elements of such a computer system, that
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`communicates with a Web server (67) and a set of electronic document servers
`
`(69) by means of a modem (61, 105) and telephone line (83 cited in text, number
`
`not in figures) using communication protocols such as PPP or SLIP (i.e., via a
`
`network). A computer—readable memory is one of the well-known elements of a
`
`computer system (63, 107). [Attachment A, pp. l-3]. Thus, Kikinis discloses “[a]
`
`computer-readable memoryfor use by a client computer in conjunction with a
`
`server that is accessible by the client computer via a network.”
`
`17
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`Declaration ofDr. John M Strawn
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`47. The Web server (67) supports a set of data bases (71). Each of the data
`
`bases (71) belongs to a different client, and has a user profile, as shown by, e. g.,
`
`the user-specific home page (73). The electronic document servers (69) are linked
`
`to each user-specific data base (71), and contain user-specific files such as lower-
`
`order data bases (89, 91, 93, 95). The set of lower-order data bases comprises the
`
`user library, and the files of these lower-order data bases are the user’s files, such
`
`as voice mail files. [Attachment A, pp. 3—5]. Thus, Kikinis discloses “the server
`
`storing a user profile and user libraryfor each ofa number ofdifferent users, with
`
`the user library containing one or more files and the user profile containing at
`
`least one user link that provides a, link to one ofthe files in the user library.”
`
`48. Kikinis discloses that the computer system (63, 107) has well-known
`
`elements of such a computer system, which would necessarily include a non-
`
`volatile data storage device. [Attachment A, pp. 5]. Thus, Kikinis discloses “the
`
`computer readable memory comprising: a non—volatile data storage device.”
`
`49. Kikinis discloses that the computer system (e. g., 63, 107) includes a Web-
`
`browser (e. g., 65, 109).
`
`[Attachment A, pp. 6 ]. The browser (e. g., 65, 109) is the
`
`program. [Attachment A, pp. 6; see also, p. 14, supra]. Because the computer
`
`system (63, 107) necessarily has a non-volatile memory and operates the web
`
`browser that is stored on the computer, Kikinis discloses “a program stored on
`
`said non-volatile data storage device in a computer-readableformat.”
`
`18
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`Declaration ofDr. John M Strawn
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`50. Kikinis discloses that it is well known that a browser may have screen
`
`buttons, data-entry fields, and display fields (user-selectable items). For example,
`
`Kikinis discloses a browser (109) that displays a graphical user interface with an
`
`application window having buttons and a field (a user-selectable item, 113) for
`
`entering a URL. [Attachment A, pp. 7-9]. Thus, Kikinis discloses “said program
`
`being operable upon execution to display a graphical user interface comprising an
`
`application window having a number ofuser-selectable items displayed therein.”
`
`Kikinis also discloses a user home page (73) that is displayed “by using the
`
`facilities of a Web browser”, which user home page (73) includes buttons 117,
`
`118, 120, and 122, i.e., user-selectable items. [Attachment A, pp. 7—9]. Thus,
`
`Kikinis discloses “said program being operable upon execution to display a
`
`graphical user interface comprising an application window having a number of
`
`user-selectable items displayed therein.”
`
`51. Kikinis discloses that a user may enter a URL (link) to a Web destination
`
`(information resource) in the field (113) of the browser (109). In particular,
`
`Kikinis discloses the link “http:P/www.home.com.” [Attachment A, p. 10]. Thus,
`
`Kikinis discloses “wherein each ofsaid items has associated with it a link to an
`
`information resource accessible via the network.” Kikinis also discloses that each
`
`of the user-selectable items (117, 118, 120, 122) on the user-specific home page
`
`(73) has a link to one or more files of the lower-order data bases (89, 91, 93, 95)
`
`19
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`Declaration ofDr. John M Strawn
`
`accessible Via the Internet. [Attachment A, p. 10]. Thus, Kikinis discloses
`
`“wherein each ofsaid items has associated with it a link to an information
`
`resource accessible via the network.”
`
`52. Kikinis discloses that, after the user selects the Web destination and enters
`
`the URL, the browser accesses the selected Web destination (information resource,
`
`home page) using-the Internet (i. e., over the network). In particular, Kikinis
`
`discloses that a user home page (in this case, the information resource, 73) is
`
`retrieved (accessed). [Attachment A, p. 9-10]. Thus, Kikinis discloses “wherein
`
`said program is operable upon execution and in response to selection by a user of
`
`one ofsaid items to access the associated information resource over the network.”
`
`Kikinis also discloses that the user may select one of the user-selectable items
`
`(117, 118, 120, 122) on the user—specific home page (73). In response the system
`
`will access, using the Internet (i. e., over the network), one or more files of the
`
`lower-order data bases (89, 91, 93, 95) associated with the selected user-selectable
`
`item. [Attachment A, pp. 10-12]. Then, as shown in FIG. 3, when an item is
`
`selected, a browser window (e.g., voice-mail browser window 125) is opened and
`
`the user selected item is accessed. [Attachment A, pp. 6—7, 11]. Voice mail
`
`browser window 125 of FIG. 3 is a “browser window” because Kikinis states:
`
`“Fig. 3 shows an example set I I I ofwindows accessible in a home page for
`
`accessing electronic documents by using thefacilities ofa Web browser.”
`
`20
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`Declaration ofDr. John M Strawn
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`[Attachment A, p. 7]. Thus, Kikinis discloses “wherein said program is operable
`
`upon execution and in response to selection by a user ofone ofsaid items to access
`
`the associated information resource over the network.”
`
`53. Kikinis discloses that the browser (109) retrieves a user-specific home page
`
`(73), which necessarily would require receiving a user profile from the server (69).
`
`The user-specific home page (73) displays user-selectable items (117, 118, 120,
`
`122) for user links contained within the user profile. [Attachment A, pp. 12-13].
`
`Thus, Kikinis discloses “saidprogram being oper