UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GROUPON, INC.
`Petitioner
`
`V.
`
`ONLINE NEWS LINK LLC
`Patent Owner
`____________
`
`Patent 7,181,758
`Case IPR: [unassigned]
`Patent 7,508,789
`Case IPR: [unassigned]
`Patent 8,457,545
`Case IPR: [unassigned]
`____________
`
`DECLARATION OF DAVID H. CROCKER
`
`Groupon, Inc.
`Exhibit 1004
`
`

`

`TABLE OF CONTENTS
`
`Page
`INTRODUCTION........................................................................................1
`
`QUALIFICATIONS.....................................................................................1
`
`COMPENSATION.......................................................................................6
`
`MATERIALS REVIEWED .........................................................................7
`
`BASIS OF OPINIONS FORMED ...............................................................8
`
`Level of Ordinary Skill in the Art......................................................8
`A.
`Legal Standard for Claim Construction .............................................9
`B.
`Anticipation......................................................................................10
`C.
`Obviousness .....................................................................................10
`D.
`Claim Terms – “First/Second Set of Digital Data” .........................12
`E.
`Claim Terms – “Linkage Reference” ...............................................13
`F.
`Claim Terms – “ Multimedia Data”.................................................13
`G.
`Claim Terms – “Sender” ..................................................................13
`H.
`OVERVIEW OF THE ’758 PATENT....................................................13
`
`OVERVIEW OF THE ’789 PATENT....................................................16
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`VII.
`
`VIII. OVERVIEW OF THE ’545 PATENT....................................................24
`
`IX.
`
`SUMMARY OF OPINIONS......................................................................25
`
`General State of the Art....................................................................25
`A.
`’908 (Keller).....................................................................................25
`B.
`’505 (Levinson)................................................................................29
`C.
`’723 (Beck).......................................................................................34
`D.
`E. MIME RFC 1341 .............................................................................35
`
`i
`
`

`

`TABLE OF CONTENTS (Continued)
`
`F.
`G.
`
`H.
`I.
`J.
`K.
`
`Page
`RTF...................................................................................................36
`HTML+ (Hypertext markup language) (Raggett) 7/23/1993
`and Raggett-2 ...................................................................................36
`HTML+ (Hypertext markup language) (Raggett) 11/2/1993 ..........38
`Lotus Notes User’s Guide and Administrator’s Guide (1989) ........40
`Three Faces of E-Mail (InfoWorld)..................................................43
`Anticipation or Obviousness of Claims 1, 4, and 5 of the ’758
`Patent................................................................................................44
`Independent Claim 1 ........................................................................44
`L.
`M. Dependent Claim 4 (“Electronic mail”)...........................................88
`N.
`Dependent Claim 5 (“Indicating data”) ...........................................90
`O.
`Anticipation or Obviousness of Claims 1, 2, 4, 7-9, 12, 16,
`17, 19, 22, 24-26, and 29 of the ’789 Patent....................................94
`Independent Claims 1 and 16...........................................................94
`Dependent Claims 2 and 17 (“Multimedia”) ................................158
`Dependent Claims 4 and 19 (“Electronic mail”) ..........................161
`Dependent Claims 7 and 22 (“Color”)..........................................163
`Dependent Claims 8 and 25 (“Displaying second set of
`digital data”)...................................................................................169
`Dependent Claims 9 and 26 (“Second set of undisplayed
`data”) ..............................................................................................173
`Dependent Claims 12 and 29 (“Encryption”) ................................177
`V.
`W. Dependent Claims 15 and 23 (“Database”) ...................................178
`
`P.
`Q.
`R.
`S.
`T.
`
`U.
`
`ii
`
`

`

`TABLE OF CONTENTS (Continued)
`
`Page
`
`X.
`
`Y.
`
`Dependent Claim 24 (“Second remote site adapted to
`transmit”)........................................................................................182
`Anticipation or Obviousness of Claims 1, 2, 5-7, 10, 13-15,
`and 17 of the ’545 Patent ...............................................................185
`Independent Claims 1 and 14.........................................................187
`Z.
`AA. Dependent Claims 2 and 15 (“Multimedia”) ................................251
`BB. Dependent Claims 5 and 17 (“Color”)..........................................254
`CC. Dependent Claim 6 (“Displaying second set of digital data”)......259
`DD. Dependent Claim 7 (“Indicating data”) ........................................261
`EE. Dependent Claim 10 (“Encryption”).............................................267
`FF. Dependent Claim 13 (“Database”).................................................268
`
`iii
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`I, David H. Crocker, hereby declare the following:
`
`I.
`
`INTRODUCTION
`
`1.
`
`My name is David H. Crocker. I have been retained by counsel for
`
`Groupon, Inc. (“Groupon” or “Petitioner”) to provide my expert opinion on the
`
`validity of U.S. Patent Nos. 7,181,758 (“the ’758 Patent”) (Ex. 1001), 7,508,789
`
`(“the ’789 Patent”) (Ex. 1002), and 8,457,545 (“the ’545 Patent”) (Ex. 1003).
`
`2.
`
`As part of my engagement, I have been asked to provide analysis and
`
`expert opinions on whether any of claims 1, 4, and 5 of the ’758 Patent, claims 1,
`
`2, 4, 7-9, 12, 16, 17, 19, 22, 24-26, and 29 of the ’789 Patent, and claims 1, 2, 5-7,
`
`10, 13-15, and 17 of the ’545 Patent are invalid under 35 U.S.C. §102 as
`
`anticipated or under 35 U.S.C. §103 as being rendered obvious.
`
`3.
`
`I made this declaration based upon my personal knowledge. I am
`
`over the age of 21 years and competent to make this declaration.
`
`II. QUALIFICATIONS
`
`4.
`
`I am an expert in the field of computer networking, specifically
`
`networking software and hardware for use on the Internet including E-Commerce
`
`and Security, Email and MIME, Fax over Internet, and the Internet Governance
`
`and Standards process. I have been an expert in this field since prior to 1993. In
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`formulating my opinions, I have relied upon my training, knowledge, and
`
`experience in the relevant art.
`
`5.
`
`As an expert in the field of computer networking since prior to 1993, I
`
`am qualified to provide an opinion as to what a person of ordinary skill in the art
`
`would have understood, known of, concluded as of 1993. Since 1972, I have
`
`accumulated significant training and experience in the field of computer
`
`networking. I have extensive knowledge and experience relating to techniques and
`
`reasoning used in the field of computer networking, and specifically networking
`
`software and hardware for use on the Internet.
`
`6.
`
`I received a B.A. degree in Psychology from the University of
`
`California at Los Angeles. I received an M.A. degree in Communication from the
`
`Annenberg School at the University of Southern California. From 1978 to 1982, I
`
`undertook four years of study in the doctoral program in Computer Science at the
`
`University of Delaware. My doctoral study focused on electronic mail transport. I
`
`am knowledgeable in, and have written computer programs in, a variety of
`
`programming languages, including Fortran, C, BLISS and PL/1.
`
`7.
`
`From 1975-1978, I was a researcher at the RAND Corporation, where
`
`I worked on the development of early Unix-based email user and transport system
`
`software. From 1978-1982, I was a co-principal investigator in the Department of
`
`Electrical Engineering at the University of Delaware, where I developed Unix-
`
`2
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`based distributed facility for relaying mail among architecturally heterogeneous
`
`networks and operated a mail relay service for the Army Materièl Command and
`
`for the National Science Foundation. From 1983-1985 I was a Director of System
`
`Development at MCI Digital Information Services Corporation, where I designed
`
`the system architecture for MCI Mail, a national email service, and supervised its
`
`development. From 1985-1987, I was a Development Manager at Ungermann-
`
`Bass, Inc., where I delivered the initial suite of Internet-standard TCP/IP hardware
`
`products. From 1987-1989, I was a Vice President of Engineering for the
`
`Wollongong Group, Inc., where I led product development of nine networking
`
`product lines. From 1989-1991, I was a Manager of the Network Systems Lab at
`
`Digital Equipment Corporation, where I developed an early network firewall,
`
`router, and network management products, as well as assisting other company
`
`efforts to develop Internet products. Since 1991, I have been a Principal at
`
`Brandenburg InternetWorking, a consultancy in which I have participated in the
`
`founding of, among other companies, Portola Communications and Boldfish,
`
`companies that produce email server technology and software for subscription-
`
`based email sending and tracking, respectively. Portola was purchased by
`
`Netscape Corporation in 1997. I currently serve in advisory roles in the
`
`Messaging, Malware and Mobile Anti-Abuse Working Group (M3AAWG) and as
`
`3
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`a board member of the Trusted Domain Project. My academic and professional
`
`qualifications are further described in my appended Curriculum Vitae.
`
`8.
`
`I have published numerous papers including in the Internet Protocol
`
`Journal, the Information Processing Society of Japan Magazine, and the G5
`
`Messaging Forum. These publications are listed in Ex. 1017. I have conducted
`
`numerous presentations at academic and industry conferences such as the
`
`Messaging, Malware and Mobile Anti-Abuse Working Group, IBM Academy, the
`
`Organization for Economic Co-operation and Development (OECD) Anti-Spam
`
`Task Force, among others. These presentations are listed in Ex. 1017.
`
`9.
`
`From 1972 to the present, I have written 61 Requests for Comments
`
`(“RFCs”). They cover all aspects of electronic mail formats, transmission, security
`
`and management, but also cover protocol development processes and notations,
`
`and even include mechanisms for improving basic data transmission. RFCs are the
`
`primary source of technical specifications for the original Internet and its
`
`predecessor, the Arpanet. The RFC series are produced by the Internet
`
`Engineering Task Force (IETF) and span 45 years of work. Originally intended to
`
`be exactly what the name of the series implies, they nonetheless became the
`
`preeminent venue for development and publication of Internet technical standards.
`
`These are the building blocks that permit systems to be developed and operated by
`
`independent organizations, yet still be able to interoperate. The specifications
`
`4
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`range from the lower levels of technology for moving raw bits of information
`
`around, all the way up to familiar applications such as time synchronization, email
`
`and the world wide web.
`
`10. One of the RFCs that I authored is RFC 5598, entitled “Internet Mail
`
`Architecture” which describes the enhanced Internet Mail architecture and serves
`
`as the common frame of reference for Internet Mail. (http://www.rfc-
`
`editor.org/rfc/rfc5598.txt).
`
`11. Another RFC that I authored is RFC 645, entitled “Network Standard
`
`Data Specification Syntax” which describes a notation for making cross-net
`
`references to documents and data. ( http://tools.ietf.org/html/rfc645). This article
`
`teaches a “<flag>” tag to indicate an “escape-tp-NSDS-syntax,” or, in other words,
`
`it teaches a convention meant for use within otherwise normal text, such as in e-
`
`mail.
`
`12.
`
`I authored RFC 822, titled "Standard for the Format of ARPA Internet
`
`Text Messages," and released on August 13, 1982. RFC 822 revises the earlier
`
`RFC 733, titled "Standard for the Format of ARPA Network Text Message," which
`
`I co-authored, and specifies a syntax for text messages that are sent among
`
`computer users in the context of e-mail. RFC 822 codified several basic elements
`
`of e-mail, including the concept of messages as having an envelope and contents,
`
`the basic definitions for address syntax, the route, the address specification, and
`
`5
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`lower-level syntactic constructs. This RFC has been referred to as "one of the
`
`oldest and most fundamental Internet standards (registered as STD 11)." See,
`
`"Internet E-mail address format (RFC 822) explained," available at
`
`https://www.cs.tut.fi/~jkorpela/rfc/822addr.html.
`
`13.
`
`In addition to writing for practitioners of technology, I also write
`
`about email and Internet for the general public. See, e.g., David Crocker, A
`
`history of e-mail: Collaboration, innovation and the birth of a system, Washington
`
`Post (March 20, 2012), available at: http://www.washingtonpost.com/national/on-
`
`innovations/a-history-of-e-mail-collaboration-innovation-and-the-birth-of-a-
`
`system/2012/03/19/gIQAOeFEPS_story.html.
`
`III. COMPENSATION
`
`14.
`
`I am being compensated by Groupon at my compensation rate of
`
`$450/hour for discussions, research, report writing, analysis, and preparation for
`
`testimony, and $625/hour for providing deposition or direct testimony, plus
`
`reimbursement for reasonably incurred expenses. My compensation is not
`
`contingent on the conclusions I reach in my analysis, and I have no interest in the
`
`outcome of the related litigation or this proceeding.
`
`6
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`IV. MATERIALS REVIEWED
`
`15.
`
`I have reviewed the specifications, drawings, claims, and the file
`
`histories of the ’758, ’545, and ’789 Patents.
`
`16.
`
`(a)
`
`I have reviewed the following publications:
`
`U.S. Pat. No. 7,181,758 (“the ’758 Patent” (Ex. 1001));
`
`(b) U.S. Pat. No. 7,508,789 (“the ’789 Patent” (Ex. 1002));
`
`(c)
`
`U.S. Pat. No. 8,457,545 (“the ’545 Patent” (Ex. 1003));
`
`(d) U.S. Pat. No. 5,418,908 (Keller (Ex. 1005));
`
`(e)
`
`(f)
`
`U.S. Pat. No. 5,404,505 (Levinson (Ex. 1006));
`
`U.S. Pat. No. 5,903,723 (Beck (Ex. 1007));
`
`(g) MIME RFC 1341 (MIME or RFC 1341(Ex. 1008));
`
`(h)
`
`(i)
`
`(j)
`
`(k)
`
`(l)
`
`RTF Specification (RTF SPEC (Ex. 1009));
`
`D. Raggett, HTML+ (Hypertext markup language), July 23, 1993
`(Raggett (Ex. 1013));
`
`D. Raggett, HTML+ (Hypertext markup language), November 2, 1993
`(Raggett-2 (Ex. 1014));
`
`Lotus Notes – User’s Guide, 1989 (UG (Ex. 1010));
`
`Lotus Notes– Administrator’s Guide, 1989 (AG (Ex. 1011));
`
`(m) Using Lotus Notes, 1994 (Using Notes (Ex. 1012));
`
`(n) Nelson et al., Three Faces of E-Mail, InfoWorld, Apr. 6, 1992
`(InfoWorld (Ex. 1015));
`
`(o) U.S. App. No. 08/224,280 (Ex. 1018);
`
`(p) U.S. App. No. 08/255,649 (Ex. 1019);
`
`(q) U.S. App. No. 08/279,424 (Ex. 1020);
`
`7
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`(r)
`
`(s)
`
`(t)
`
`(u)
`
`(v)
`
`U.S. Pat. No. 7,181,758 File History (Ex. 1021);
`
`U.S. Pat. No. 7,508,789 File History (Ex. 1022);
`
`U.S. Pat. No. 8,457,545 File History (Ex. 1023);
`
`Comparison of ’758 spec to ’280 application (Ex. 1024);
`
`Comparison of ’789 spec to ’280 application (Ex. 1025);
`
`(w) Comparison of ’545 spec to ’280 application (Ex. 1026);
`
`(x)
`
`(y)
`
`(z)
`
`Comparison of ’758 spec to ’649 application (Ex. 1027);
`
`Comparison of ’789 spec to ’649 application (Ex. 1028);
`
`Comparison of ’545 spec to ’649 application (Ex. 1029);
`
`(aa) Comparison of ’758 spec to ’424 application (Ex. 1030);
`
`(bb) Comparison of ’789 spec to ’424 application (Ex. 1031); and
`
`(cc) Comparison of ’545 spec to ’424 application (Ex. 1032).
`
`17.
`
`I have read and understood each of the above publications. The
`
`disclosures of each of these publications provide sufficient information for
`
`someone to make and use the computer networking systems that are described in
`
`the above publications.
`
`V.
`
`BASIS OF OPINIONS FORMED
`
`A.
`
`18.
`
`Level of Ordinary Skill in the Art
`
`Factors such as the education level of those working in the field, the
`
`sophistication of the technology, the types of problems encountered in the art, the
`
`8
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`prior art solutions to those problems, and the speed at which innovations are made
`
`may help establish the level of skill in the art.
`
`19.
`
`In my opinion, the level of ordinary skill in the art of the ’545, ’789,
`
`and ’758 Patents at the time of the alleged invention is a person with a degree or
`
`equivalent experience in computer science or computer engineering and 3-4 years
`
`of practical experience developing computer network communication systems such
`
`as e-mail or hypertext systems. The more education one has, for example post-
`
`graduate degrees and/or study, the less industry experience is needed to attain an
`
`ordinary level of skill.
`
`20.
`
`I consider myself to be at least one of ordinary skill in the art of the
`
`’545, ’789, and ’758 Patents at the time of the alleged inventions claimed therein.
`
`B.
`
`21.
`
`Legal Standard for Claim Construction
`
`The first step in determining validity is to properly construe the claims
`
`to determine scope and meaning.
`
`22.
`
`I have been informed that claim construction is a matter of law and
`
`that the final claim construction will ultimately be determined by the Board. For
`
`the purposes of my invalidity analysis in this proceeding and with respect to the
`
`prior art, I have applied the claim construction standard of ordinary and customary
`
`meaning as understood by a person of ordinary skill in the art in question at the
`
`time of the invention .
`
`9
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`C.
`
`23.
`
`Anticipation
`
`I have been informed and understand that a patent claim is invalid as
`
`anticipated by the prior art if every limitation in the claim at issue is disclosed,
`
`either expressly, implicitly, or under principles of inherency in a single prior art
`
`reference. A reference inherently discloses the subject matter that a person of
`
`ordinary skill in the art would have recognized as necessarily being present in the
`
`subject matter disclosed in the reference.
`
`24.
`
`I have been informed and understand that a reference must disclose all
`
`of the limitations claimed, and that the limitations be arranged or combined in the
`
`same way as the recited claim.
`
`D.
`
`25.
`
`Obviousness
`
`I have been informed and understand that a patent claim is invalid as
`
`obvious in view of the prior art if it would have been obvious to a person of
`
`ordinary skill in the art at the time the application was filed.
`
`26.
`
`I have been informed and understand that, in order for a patent claim
`
`to have been obvious, there should be a reasoned explanation as to why
`
`collectively the prior art references would have rendered the claimed invention
`
`obvious.
`
`10
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`27.
`
`I have been informed and understand that a determination of whether
`
`a claim would have been obvious should be based on several factors, including,
`
`among others:
`
`(a)
`
`The level of ordinary skill in the art at the time the application was
`filed;
`
`(b)
`
`The scope and content of the prior art; and
`
`(c) What differences, if any, existed between the claimed invention and
`the prior art.
`
`28.
`
`I have been informed understand that the teachings of two or more
`
`references may be combined in the same way as disclosed in the claims, if such a
`
`combination would have been obvious to one having ordinary skill in the art. In
`
`determining whether a combination based on either a single reference or multiple
`
`references would have been obvious, it is appropriate to consider, among other
`
`factors:
`
`(a)
`
`(b)
`
`(c)
`
`(d)
`
`(e)
`
`obvious to try – choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success,
`
`common sense,
`
`combining or substituting known elements from the prior art to obtain
`predictable results,
`
`ordinary creativity,
`
`whether the need or problem addressed by the patent was known in
`the prior art,
`
`(f)
`
`use of known techniques to improve similar devices in the same way,
`
`11
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`(g)
`
`a teaching, suggestion, or motivation, either in the references
`themselves or in the knowledge generally available to one of ordinary
`skill in the art, to modify a reference or combine reference teachings,
`and
`
`(h) when a work is available in one field of endeavor, design incentives
`and other market forces can prompt variations of it, either in the same
`field or a different one.
`
`29.
`
`I understand that the U.S. Patent Office published guidelines for
`
`determining whether a patent would have been obvious at the time the invention
`
`was made to a person of ordinary skill in the art. The guidelines are in the
`
`M.P.E.P. Section 2141, “Examination Guidelines for Determining Obviousness
`
`Under 35 U.S.C. § 103, available at
`
`http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141.htm, and I
`
`have read these guidelines and applied them below when I analyze a claim for
`
`obviousness.
`
`30.
`
`I understand that in considering obviousness, it is important not to
`
`determine obviousness using the benefit of hindsight derived from the patent being
`
`considered.
`
`E.
`
`31.
`
`Claim Terms – “First/SecondSetofDigitalData”
`
`The construction of “First Set of Digital Data” as “a single collection
`
`of broadcast digital information that is the same for all receiving devices” and
`
`“Second Set of Digital Data” as “additional already-existing collection of digital
`
`12
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`information related to the first set” would be consistent with the understanding of
`
`one of ordinary skill in this art based on the disclosures in the specification.1
`
`F.
`
`32.
`
`Claim Terms – “LinkageReference”
`
`The construction of “Linkage Reference” as “digital data describing
`
`the location of the second set of digital data.” would be consistent with the
`
`understanding of one of ordinary skill in this art based on the disclosures in the
`
`specification.
`
`G.
`
`33.
`
`Claim Terms – “ MultimediaData”
`
`The patentee in the specification defines “multimedia data” as
`
`“comprising a combination of text, graphic, video and/or audio.” See, e.g., Ex.
`
`1002 at 2:17-21.
`
`H.
`
`Claim Terms – “Sender”
`
`34. One of ordinary skill in this art would understand the term “sender” to
`
`encompass either “equipment for producing and sending signals or data,” or “one
`
`who originates signals or data.”
`
`VI. OVERVIEW OF THE ’758 PATENT
`
`35.
`
`The application leading to the ’758 Patent was filed on December 19,
`
`2002, as a continuation of Application No. 10/079,257 filed Feb. 19, 2002, later
`
`abandoned. The ’257 Application was a continuation of Application No.
`
`1 I note that the “First Set of Digital Data” in the ’758 Patent is the “Second Set of Digital Data” in the ’789 and ’545
`Patents, and the “Second Set of Digital Data” in the ’758 Patent is the “First Set of Digital Data” in the ’789 and
`’545 Patents.
`
`13
`
`

`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`09/699,022 filed Oct. 27, 2000, also later abandoned. The ’022 Application was a
`
`continuation of Application No. 09/480,226 filed Jan. 10, 2000, which issued as
`
`U.S. Pat. No. 6,347,215. The ’226 Application was a continuation of Application
`
`No. 08/939,368 filed Sep. 29, 1997, which issued as U.S. Pat. No. 6,021,307. The
`
`’368 Application was a continuation- in-part of Application No. 08/644,838 filed
`
`May 10, 1996, later abandoned. The ’838 Application was itself a continuation-in-
`
`part of Application No. 08/279,424 filed Jul. 25, 1994, later abandoned.
`
`36.
`
`The ’758 Patent claims an information distribution and processing
`
`system. (Ex. 1001 at Title). As described in the Summary of the Invention, the
`
`’758 Patent uses two channels to deliver digital information: a broadcast channel
`
`and a bi-directional channel. (Id. at 1: 55-57). The broadcast channel is used to
`
`deliver the bul[k]2 of the digital information to subscribers. (I.d at 1:57-58). The
`
`amount of information delivered is preferably sufficient to satisfy the needs of a
`
`large number of subscribers so that they do not have to obtain additional
`
`information using the bi-directional channel. (Id. at 1:58-62). If the subscribers
`
`desire to receive additional information relating to the broadcasted information, the
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`bi-directional communication channel is used to transmit the request and the
`
`requested information. (Id. at 2:3-5).
`
`2 The specification uses the term “bulb,” but Petitioner believes that this is a typographical error and that the
`patentee intended to use the word “bulk.” See ’758 Patent at 2:6-9, ’789 Patent at 2:47-50, ’545 Patent at 2:48-51
`(“the major portion of information is delivered using low cost distribution channels”).
`
`14
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`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`37. Claim 1, in relation to Fig. 1, provides a basic overview of the claimed
`
`invention of the ’758 Patent:
`
`An information distribution system for distributing information to
`users in separate locations, said system being associated with at
`least one receiving station and a plurality of receiving devices each
`located in one of said separate locations, each of said receiving
`devices connecting to a display device that can display said
`information, said system comprising:
`
`a) a remote site containing a first set of digital data; and
`
`b) a sender sending, at a time determined by said sender, a second
`set of digital data to said at least one receiving station for
`transmission to at least one of said plurality of receiving devices,
`said second set of digital data comprising a first set of displayable
`data, a second set of displayable data, another set of data
`designating a presence of said second set of displayable data, and a
`first linkage reference associated with said second set of
`displayable data and with said first set of digital data;
`
`c) wherein said at least one of said receiving devices causes said
`display device to display said first set of displayable data in a first
`way and said second set of displayable data in a second way,
`extracts at least a portion of said first linkage reference in response
`to a selection of said second set of displayable data by a user, and
`sends said at least a portion of said first linkage reference to said
`remote site.
`
`15
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`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`38. Dependent Claim 4 recites:
`
`The system of claim 1 wherein said second set of digital data
`comprises electronic mail.
`
`VII. OVERVIEW OF THE ’789 PATENT
`
`39.
`
`The ’789 Patent issued from Application No. 11/825,905 filed July 9,
`
`2007. The ’905 Application was a continuation of Application No. 10/073,124
`
`filed February 9, 2002, which subsequently issued as U.S. Patent No. 7,991,347.
`
`The ’124 Application was a continuation of Application No. 09/812,003 filed on
`
`March 19, 2001, which issued as U.S. Patent No. 6,349,409. The ’003 Application
`
`was a continuation of Application No. 09/434,413 filed November 4, 1999, which
`
`issued as U.S. Patent No. 6,317,785. The ’413 Application was a continuation-in-
`
`16
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`

`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`part of Application No. 08/939,368 filed September 29, 1997, which issued as U.S.
`
`Patent No. 6,021,307. The ’368 Application was a continuation-in-part of
`
`Application No. 08/644,838 filed May 10, 1996, which was later abandoned. The
`
`’838 Application was a continuation-in-part both of Application No. 08/279,424,
`
`filed July 25, 1994, which was later abandoned, as well as Application No.
`
`08/255,649 filed June 8, 1994, also later abandoned. The ’649 Application was a
`
`continuation-in-part of Application No. 08/224,280 filed April 7, 1994, which was
`
`later abandoned.
`
`40.
`
`The ’789 Patent, entitled “Information Distribution and Processing
`
`System,” describes alleged improvements in systems for distributing information
`
`electronically. The ’789 Patent identifies the field of the invention as relating
`
`generally to information distribution and processing, and more particularly to
`
`distributing information using a broadcast channel and a bi-directional
`
`communication channel. (Ex. 1002 at 1:22-26).
`
`41. According to the ’789 Patent, information may be broadcast from a
`
`first remote site using a variety of means, including satellite communications. (Id.
`
`at 6: 18-22). The ’789 Patent observes that the invention does not preclude the use
`
`of bi-directional communication channels as means for distributing broadcast
`
`information. (Id. at 6:37-31). In addition, new matter added to the ’789
`
`specification in an earlier continuation-in-part application notes that information
`
`17
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`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`“can be broadcasted by sending the same information to a plurality of electronic
`
`mail or URL addresses” via the Internet (Id. at 8:1-3).
`
`42.
`
`Subscribers wishing additional information may employ a bi-
`
`directional channel both to transmit a request for such information, and to receive
`
`that information. (Id. at 2: 44-46). The broadcasted information includes two sets
`
`of displayable data, one distinct in appearance from the other. (Id. at Claims 1 and
`
`16) The distinct appearance of the second set of displayable data facilitates its
`
`selection by the user. Id. “Undisplayed data” included in the broadcast
`
`information indicates the presence of the second of the two sets of displayable
`
`data. Id.
`
`43. A linkage reference included in the broadcasted information is
`
`associated both with the second set of displayed data and with a second set of
`
`digital data contained at a second remote site. (Id.) Upon a user’s selection of the
`
`second set of displayed data, the linkage reference is transmitted to the second
`
`remote site and the second set of data is returned in response. (Id. at Claim 1). The
`
`linkage reference itself is not displayed. (Id. at Claims 1 and 16).
`
`44. Claim 1, in relation to Fig. 1, provides a basic overview of the claimed
`
`invention of the ’798 Patent.
`
`18
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`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`45. Claim 1:
`
`An information distribution system for distributing information to
`a plurality of receiving devices in a plurality of locations, at least
`one of said receiving devices being connected to a display, said
`system comprising:
`
`a first remote site containing at least a first set of digital
`data; and
`
`a second remote site containing at least a second set of
`digital data;
`
`said first remote site adapted to transmit, at a predetermined time,
`at least said first set of digital data to said at least one of said
`receiving devices, said first set of digital data comprising:
`
`a first set of displayable data and
`
`a second set of displayable data adapted to appear on said
`display, said second set of displayable data having an
`appearance on said display distinct from the appearance of
`said first set of displayable data on said display for
`facilitating a user to select said second set of displayable
`data;
`
`a first set of undisplayed data for indicating a presence of
`said second set of displayable data; and
`
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`U.S. Pat. Nos. 7,181,758, 7,508,789, and 8,457,545
`Declaration of David Crocker
`
`at least a first linkage reference, said first linkage reference
`being associated with said second set of displayable data and
`at least one portion of said second set of digital data, said
`first linkage reference not being displayed on said display;
`
`said at least one of said receiving devices being configured to
`transmit said first linkage reference to said second remote site upon
`the user's selection of said second set of displayable data on said
`display,
`
`said second remote site adapted to transmit said second set of
`digital data to said at least one of said receiving devices after sa