Declaration ofDr. John M Strawn
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Samsung Electronics America, Inc.
`Petitioner,
`
`V.
`
`B.E. 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 1\/[ETHOD AND APPARATUS WITH
`PORTABLE NETWORK ORGANIZATION SYSTEM AND TARGETED
`ADVERTISING
`
`Inter Partes Review No. IPR2014—00O44
`
`Declaration of Dr. John M. Strawn
`
`Petitioner Samsung - Ex. 1005, p.
`
`i, Samsung Electronics America. Inc. v. B.E. Technology, LLC, Case IPR2014-00044
`
`

`
`Declaration ofDr. John M Strawn
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction ...........................................
`
`...............
`
`...................
`
`........ 2
`
`A.
`
`Background And Qualifications....
`
`...................
`
`........................... 3
`
`B. Materials Considered ...........
`
`.....
`
`................................................... 4
`
`II.
`
`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.
`
`B.
`
`C.
`
`Technical Overview of the ’290 Patent ........................................... .. 9
`
`Prosecution History of the ’290 Patent ....
`
`.......................
`
`......... 11
`
`Construction of Terms Used in the Claims ....
`
`..................
`
`12
`
`a)
`
`b)
`
`c)
`
`d)
`
`e)
`
`f)
`
`g)
`
`h)
`
`i)
`
`j)
`
`“client computer” ................................................................... .. 12
`
`“server” .................................................................................. .. 13
`
`“network” ............................................................................... .. 13
`
`“file” ....................................................................................... .. 13
`
`“link” ...................................................................................... .. 13
`
`“non—Vo1ati1e data storage device” ......................................... .. 14
`
`“program” ............................................................................... .. 14
`
`“information resource” .......................................................... .. 15
`
`“browser” ............................................................................... .. 15
`
`“profile” .................................................................................. .. 15
`
`Petitioner Samsung - Ex. 1005, p.
`
`ii. Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case |PR2014-00044
`
`

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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.
`
`CompuServe1 Discloses Every Limitation of Claim 2 .................. 23
`
`CompuServe1 in View of Admissions of the ’290 patent
`and/or in View of CompuServe2 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 CompuServe2
`
`Attachment C. Claim Chart — Sonnenrfii
`
`Petitioner Samsung - Ex. 1005. p. iii, Samsung Electronics America, Inc. v. B.E. Technology. LLC, Case |PR2014-00044
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`

`
`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
`
`Petitioner Samsung - Ex. 1005, p. 1, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case |PR2014-00044
`
`

`
`Declaration ofDr. John M Strawn
`
`I, Dr.
`
`John M. Strawn, hereby declare as follows:
`
`1.
`
`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:
`1*
`
`Date
`
`Case
`
`2013 Adobe v. Wowza, cv 11—o2243—cw, Northern District ofCaliforni:j
`
`2013
`
`SmartPhone v. LG, 6:10-cv-74, Eastern District of Texas.
`Adobe v. Wowza, CV 1 1-02243-CW, Northern District of California.
`Move Inc. v. Real Estate Alliance Ltd et al., 2:07-cV—02l 85, Central
`
`2012
`
`2011
`
`_{
`District of California.
`2011 Certain Wireless Communication Devices, Portable Music and Data
`Processing Devices, Computers and Components Thereof, ITC 337-
`TA-745
`Affinity Labs v. Alpine Electronics et al., 08-171-RC, Eastern
`District of Texas.
`In re Apple & ATTM Antitrust Litigation, C 07-5152, Northern
`2010 I District of California.
`2008- Konami Digital Entertainment v. Harmonix Music Systems, 6:08-cv- I
`2010
`00286, Eastern District of Texas
`2007- I Nice Systems Inc. and Nice_Szstems Ltd. v. Witness Sri_2§_tems Inc., 06-
`2
`
` '
`
`Petitioner Samsung - Ex. 1005, p. 2, Samsung Electronics America, Inc. v. B.E. Technology. LLC, Case IPRZO14-00044
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`

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`Declaration ofDr. John M Strawn
`
`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.
`Digeo, Inc. v. Audible, Inc., C05-00464, Western District of
`
`2006 Washflgtcn.
`
`3. Between 2005 and 2013, I provided trial testimony as an expert in the
`
`following cases:
`
`l
`
`Case
`Motorola v. Apple (Certain Wireless Communication Devices,
`Portable Music and Data Processing Devices, Computers and
`Com orients Thereq)’, 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.
`
`
`
`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.
`
`3
`
`Petitioner Samsung - Ex. 1005, p. 3, Samsung Electronics America. Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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`

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`Declaration ofDr. John M Strawn
`
`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
`
`
`
`U.S. Patent No. 6,771,290
`File I-Iisto
`of U.S. 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 “ComuServe1"
`Special Edition Using CompuServe, by Nancy Stevenson et al.,
`by Que Corporation (1995), pp. 720-723 and 750
`(“ComuServe2”)
`U.S. Patent No. 5,974,446 to Sonnenreich et al., filed October
`24, 1996 (“Sonnenreich”).
`U.S. Patent No. 6,141,010
`File History ofU.S. Patent No. 6,141,010
`
`1011
`1012
`
`[
`
`II.
`
`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
`
`Petitioner Samsung - Ex. 1005, p. 4, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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`

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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
`
`uhpatentability 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
`
`Petitioner Samsung - Ex. 1005, p. 5, Samsung Electronics America. Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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`

`
`Declaration ofDr. John M. Strawn
`
`prior art reference as recited in the claim. I have applied this standard in my
`
`e'valuatio‘f1‘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
`
`Petitioner Samsung - Ex. 1005. p. 6, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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`

`
`Declaration ofDr. John M Strawrz
`
`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].
`
`Petitioner Samsung - Ex. 1005, p. 7, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case IPRZO14-00044
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`

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`Declaration ofDr. John M Strawn
`
`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
`
`“Intemet 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 Internet
`
`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
`
`Petitioner Samsung - Ex. 1005, p. 8, Samsung Electronics America, Inc. v. B.E. Technology. LLC, Case |PR2014-00044
`
`

`
`Declaration ofDr. John M Strawn
`
`V.
`
`The ’290 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
`
`Petitioner Samsung - Ex. 1005, p. 9, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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`

`
`Declaration ofDr. John M Strawn
`
`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.
`
`67
`"24
`m , 8:, in __.?‘f’,_
`UL
`Erii-l—"¥.'n.r_'_'.r_o:-2-I
`-;g‘ifl-H‘
`"I: 3
`_
`--:4
`---------:-—--‘
`°"
`-
`—
`
`86-
`
`_i:—“l"£-[F-ill
`.--_ .
`
`.. _..__1i.|hi!:=::n~rr2s;u=z_~*:v.L2=v_~ J13
`‘"'- --
`
`-‘
`. Q
`
`._.
`
`an
`
`J88
`
`_
`
`ere l
`_:;i?1‘«'F'-!".=':iI_'_
`
`
`
`A*?§—T-=-,
`
`.
`
`—
`
`.u/
`
`fjjfl P a e Yo r Ad
`'
`j.¥iljQ.e9,fi"E__TJ:"_ _
`._
`7._,'.#‘__' "_'_:;'_'_
`as “
`3:2
`
`[’290 patent, Fig. 5]
`
`l0
`
`Petitioner Samsung - Ex. 1005. p. 10, Samsung Electronics America, Inc. v. B.E. Technology, LLC, Case IPRZO14-00044
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`

`
`Declaration ofDr. John M Strawn
`
`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_:_4l -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/US99/16135 (“the PCT application”),
`
`which was filed on July 16, 1999 and lists Martin David Hoyle as inventor. A
`
`ll
`
`Petitioner Samsung - Ex. 1005, p. 11, Samsung Electronics America. Inc. v. B.E. Technology, LLC, Case |PR2014-00044
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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
`
`Petitioner Samsung - Ex. 1005, p. 12, Samsung Electronics America. Inc. v. B.E. Technology, LLC Case |PR2014-00044
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`

`
`be used to send requests for information to other computers over the network.”
`
`Declaration ofDr. John M Strawn
`
`[’290 patent, 4:”1-6].
`
`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].
`
`(1)
`
`“fiie”
`
`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')
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`“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—optica1 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
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`component is defined in the ’290 patent as “[a] set of instructions stored in a file in
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`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, 4154-5 8]. A browser is a type of
`
`program (“browser - a program that can .
`
`.
`
`. .” [’290 patent, 3 :65, emphasis
`
`added]).
`
`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 networ .” [’290 patent, 4:33-36]. 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)
`
`“browser”
`
`41. “Browser” is defined in the ’290 patent as “[a] program that can
`
`communicate over a network using http or another protocol and that can display
`
`html information and other digital information.” [’290 patent, 3:65-67].
`
`j)
`
`“profile”
`
`42. “Profile” is defined in the ‘290 patent as “[u]ser-specific information
`
`relating to an individual using a computer.” [’290 patent, 4:52-53].
`
`VI.
`
`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, CompuServe1, CompuServe2, 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 ’29O 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
`
`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-
`
`readable memory comprising:
`
`a non-volatile data storage device;
`
`a program stored on said non-volatile data storage device in a
`
`computer-readable format;
`
`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
`
`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
`
`access the associated information resource over the network;
`
`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
`
`being operable in response to selection by a user of one of the user
`
`links to access the file associated with the selected user link from the
`
`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
`
`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. 1-3]. Thus, Kikinis discloses “[a]
`
`computer-reatlable 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 morefiles 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 “saidprogram
`
`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—se1ectableitems. [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