`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`GOOGLE INC.
`Petitioner
`
`v.
`
`AT HOME BONDHOLDERS' LIQUIDATING TRUST
`Patent Owner
`
`_____________________
`
`Case IPR: Unassigned
`U.S. Patent 6,014,698
`_____________________
`
`DECLARATION OF PAUL J. LEACH
`
`
`
`
`
`
`Google Inc.
`GOOG 1005
`IPR of U.S. Patent No. 6,014,698
`
`i
`
`
`
`
`
`
`
`I.
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`I, Paul J. Leach, hereby declare as follows.
`
`Overview
`I have been retained as an expert witness on behalf of Google Inc. for
`1.
`
`the above-captioned inter partes review (IPR).
`
`2.
`
`I am over the age of eighteen (18) and otherwise competent to make
`
`this declaration. I am being compensated for my time in connection with this IPR
`
`at my standard consulting rate, which is $300 per hour. I understand that the
`
`petition for inter partes review involves U.S. Patent No. 6,014,698 ("the '698
`
`patent"), GOOG 1001, which resulted from U.S. Application No. 08/872,971 ("the
`
`'971 application"), filed on June 11, 1997, naming Michael John Griffiths as the
`
`sole inventor. The '971 application was a continuation-in-part of application
`
`number 08/858,650 that was filed on May 19, 1997 and issued on September 4,
`
`2001 as U.S. Patent No. 6,286,045. The '698 patent issued on January 11, 2000,
`
`from the '971 application. I further understand that, according to USPTO records,
`
`the '698 patent is currently assigned to At Home Bondholders' Liquidating Trust
`
`("Patent Owner").
`
`3.
`
`In preparing this Declaration, I have reviewed the '698 patent and
`
`considered each of the documents cited herein, in light of general knowledge in the
`
`art. In formulating my opinions, I have relied upon my experience in the relevant
`
`art and have also considered the viewpoint of a person of ordinary skill in the art.
`
`
`
`- 1 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`4.
`
`I am familiar with the technology at issue as of the May 19, 1997
`
`filing date of the '045 patent and as of the June 11, 1997 filing date of the '698
`
`patent. I am also familiar with a person of ordinary skill in the art with respect to
`
`the technology at issue as of the May 19, 1997 filing date of the '045 patent and the
`
`June 11, 1997 filing date of the '698 patent. Because the '698 patent is a
`
`continuation in part of the '045 patent, I will refer to the filing date of the '045
`
`patent as the "effective filing date" of the '698 patent.
`
`II. My Background and Qualifications
`I have extensive experience in network architecture and information
`5.
`
`delivery, including advertisements since at least 1997. Throughout the remainder
`
`of this declaration, I will refer to the field of network architecture and information
`
`delivery as the relevant field or the relevant art. In formulating my opinions, I have
`
`relied upon my training, knowledge, and experience in the relevant art. A copy of
`
`my current curriculum vitae is provided as GOOG 1006, and it provides a
`
`comprehensive description of my academic, employment, research and
`
`professional history.
`
`6. With my extensive experience in the field of network architecture and
`
`information delivery prior to 1997, I am qualified to provide an opinion as to what
`
`a person of ordinary skill in the art would have understood, known or concluded as
`
`of 1997.
`
`
`
`- 2 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`7.
`
`Since 1972, I have accumulated significant experience in the field of
`
`network architecture and information delivery over the Internet, including being a
`
`named inventor on 70 issued U.S. Patents. I attended the Massachusetts Institute of
`
`Technology from 1969-1972 and from 1977-1978. I was a Distinguished Engineer
`
`at the Microsoft Corporation and an Apollo Fellow at Apollo Computer/Hewlett-
`
`Packard. I am currently an Affiliate Professor at the University of Washington and
`
`have held this position since 1992. I was also a member of the Adjunct Faculty at
`
`Boston University from 1979 to 1980.
`
`8.
`
`I have been a Member of numerous Program Committees for ACM
`
`Conferences, Symposiums and Workshops, including being a Member of
`
`numerous IEEE Workshops and USENIX Conferences. I was a contributor to both
`
`the HTTP 1.0 and HTTP 1.1 specifications. Prior to the finalization of an HTTP
`
`specification there are multiple drafts that are published, mailed to the HTTP
`
`working group and an announcement mailing list, and also made available to the
`
`general public. For example, the HTTP 1.0 draft v10, spec-05, referred to in this
`
`declaration as GOOG 1008, is dated February 19, 1996 and was mailed to the
`
`HTTP working group and published to the general public on February 20, 1996.
`
`Similarly, the HTTP 1.1 draft v11, spec-03, referred to in this declaration as
`
`GOOG 1026, is dated May 2, 1996 and was mailed to the HTTP working group
`
`and published to the general public on May 3, 1996.
`
`
`
`- 3 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`9.
`
`I have authored or co-authored over 14 technical publications in the
`
`areas of network architecture, distributed computing, operating systems, HTTP
`
`protocol and authentication, and Hit-Metering. I was a co-author of two books on
`
`Network Computing and authored or co-authored another five refereed
`
`publications on distributed systems and network architecture.
`
`10. Additional contributions of mine to the field are set forth in my
`
`current curriculum vitae (GOOG 1006).
`
`11.
`
`I have been asked to opine on the state of the art as of the May 19,
`
`1997 effective filing date of the '698 patent.
`
`III. Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the art is one who is
`12.
`
`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
`
`art, and is a person of ordinary creativity. A person of ordinary skill in the art
`
`("POSA") would have had knowledge of Internet advertisement, including
`
`knowledge of banner display counting, cache usage, and various HTTP-related
`
`technologies as of 1997.
`
`13.
`
`In my opinion a POSA typically would have had at least (a) a
`
`Bachelor of Science degree in computer science and/or a similar field or (b) at least
`
`3 years of experience in web-based information management and delivery systems.
`
`
`
`- 4 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`14. Based on my education and experience, I would have easily exceeded
`
`these criteria in 1997, and I still exceed them today.
`
`IV. State of the Art as of May 1997
`'698 File History
`A.
`15.
`I was asked to review the '698 patent file history to determine what
`
`the applicant described as being the inventive aspect of the application. I found that
`
`in a reply dated March 10, 1999, that was received by the Patent Office on March
`
`24, 1999, the applicant outlined "at least three of the fundamental principles of the
`
`applicant's invention." (GOOG 1002, p. 122.)
`
`16. The first "fundamental principle" was "directed to the serving of
`
`banners or other information from a server device to a client device via a computer
`
`network and the accurate counting of such display of banners or other information
`
`on the terminal or client device." (GOOG 1002, p. 122.) The applicant further
`
`stated that "applicant's invention reduces the inaccurate display counting caused by
`
`caching of the banners or advertisements." (Id.)
`
`17. The second "fundamental principle" was that "applicant's invention
`
`allows such serving and counting to occur without significantly increasing data
`
`traffic on the computer network or unnecessarily delaying the display of the
`
`banners or other information on the client device." (Id.)
`
`
`
`- 5 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`18. The third "fundamental principle" was that "applicant's invention
`
`allows banners or advertisements to be targeted to users to increase the banners' or
`
`advertisements effectiveness…[A]pplicant'' invention allows advertisements to be
`
`selected for display to a user based on demographic or other information known
`
`about the user." (GOOG 1002, p. 123.)
`
`19. And, the file history of the parent application (the '045 patent) refers
`
`to a fourth "fundamental principle" where "applicants' invention increases fault
`
`tolerance and reliability for information and banner delivery and storage systems."
`
`(GOOG 1027, p. 151.) As discussed below, each of these fundamental principles
`
`was well known to a POSA at the time of the '698 patent's effective filing date.
`
`Serving and Counting of Banners Was Well Known
`1.
`20. The concept and concern for accurately counting the number of times
`
`a banner was displayed on a client device was a well known issue at the time of the
`
`'698 patent's effective filing date. Advertisers paid for the display of their
`
`advertising banners and also for the number of "click-throughs" where a user
`
`would click on a banner ad to request additional information. As discussed in a
`
`research paper published in September 1996, this counting or "measurement
`
`process involves counting and summarizing the visitor transactions on a Web site,"
`
`where "[m]easurement and analysis products tell managers who is accessing their
`
`site, when, and what is being accessed." (GOOG 1022, p. 7.) Based on these
`
`
`
`- 6 -
`
`
`
`
`
`
`measurements, an advertiser would be charged utilizing "exposure models, based
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`upon CPM [clicks per thousand] or Flat Fees applied to site exposure or banner ad
`
`exposure, [that] are the dominant approach to Web media pricing." (GOOG 1022,
`
`p. 5.)
`
`21.
`
`It was also well known that the use of cache would cause an
`
`underreporting of the counting of banners. As explained in the New Metrics for
`
`New Media research paper, "[a] request is a connection to an Internet site (i.e., hit)
`
`that successfully retrieves content," but undercounting could result "because
`
`browser software and many Internet gateways intercept some requests before
`
`reaching the server, and these cached requests are never logged." (GOOG 1022, p.
`
`13.)
`
`22. Given that advertisers wanted accurate counts of their displayed ads,
`
`they utilized a number of different methods to either disable caching completely or
`
`to only disable caching of the request for an ad.
`
`23. For example, it was well known that the use of a cache-control header
`
`such as "cgi-bin" and "?" would disable the use of cache. This method is discussed
`
`in the original specification where the specification explained that "caching proxy
`
`servers exist which will specifically avoid caching content related to any URL
`
`address containing the strings 'cgi-bin' and '?' which are strings conventionally used
`
`
`
`- 7 -
`
`
`
`
`
`
`in the construction of URL addresses for which responses are dynamically
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`generated and, therefore, are unsuitable for caching." (GOOG 1002, p. 41.)
`
`24. The disabling of cache to reliably determine page views was well
`
`known in early 1997. For example, in my co-authored HTTP Working Group
`
`paper, we noted that "[f]or a variety of reasons, content providers want to be able
`
`to collect information on the frequency with which their content is accessed. This
`
`desire leads to some of the "cache-busting" done by existing servers. ('Cache-
`
`busting' is the use by servers of techniques intended to prevent caching of
`
`responses; it is unknown exactly how common this is.)" (GOOG 1024, pp. 2-3.)
`
`25.
`
`In addition, as was discussed in the Sixth International WWW
`
`Conference, "[a] common resource intensive solution to the problem of reliably
`
`determining pages [sic] views and users is to use the cache specific headers in
`
`HTTP to effectively defeat all attempts at caching pages. Despite the reasons for
`
`employing such an approach, this technique is commonly referred to as cache-
`
`busting. This is accomplished in several ways including sending 'Cache-control:
`
`proxy-revalidate', or 'Expires: <past date> headers.'" (GOOG 1023, p. 5.)
`
`26. The use of HTTP for cache-busting was well known at the time of the
`
`'698 patent's effective filing date. In my co-authored HTTP Working Group paper
`
`of January 1997, we noted that "HTTP/1.1 already allows origin servers to prevent
`
`caching of responses, and we have evidence that at least some of the time, this is
`
`
`
`- 8 -
`
`
`
`
`
`
`being done for the sole purpose of collecting counts of the number of accesses of
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`specific pages." (GOOG 1016, pp. 2-3, see also GOOG 1008.)
`
`27. Therefore, in my opinion, and given the above supporting references,
`
`it was well known by a POSA at the time of the '698 patent's effective filing date
`
`that caching distorted the accurate counting of the display of advertising banners
`
`and web pages and that there were known "cache-busting" methods that could be
`
`used to prevent caching and thus allow for a more accurate method of counting the
`
`delivery and display of Internet based advertisements.
`
`2.
`
`Serving and Counting Banners Without Significantly
`Increasing Network Traffic Was Well Known
`28. The disabling of cache resulted in increased loads on servers as a
`
`server would have to resend a web page that otherwise could have been served by
`
`cache memory on a local user device or from a proxy server. This drawback was
`
`well known at the time of the '698 patent's effective filing date. As discussed at the
`
`International World Wide Web conference in April 1997, "[i]n the earlier days of
`
`the Web, the tracking of visitors was often accomplished by inserting identifiers
`
`into the URLs issued by the server and channeling all subsequent requests through
`
`a CGI script" and "[n]ot only was this method expensive computationally to the
`
`sever, but it defeated intermediary caching and did not correctly handle the
`
`exchanging of URLs between people." (GOOG 1023, p. 2.)
`
`
`
`- 9 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`29. The '698 patent's specification discloses a method that "allows the
`
`web pages and the banner information to be cached or stored in the terminals and
`
`proxy servers, [and] there is no unnecessary retransmission of the web pages or
`
`banners from the computer or web sites or the information or ad servers to the
`
`terminals which would significantly increase the data traffic and overhead on the
`
`computer network 30." (GOOG 1002, pp. 46-47.) Methodologies to allow for the
`
`serving and counting of banner advertisements without significantly increasing
`
`data traffic were well known at the time of the '698 patent's effective filing date.
`
`30.
`
`I am of the opinion that the cache disabling method discussed above
`
`involving "cgi-bin" and "?" would result in additional transmissions of information
`
`from a server when the same information could have been more readily obtained
`
`through cache. However, this was a known problem with multiple known
`
`solutions.
`
`31. At issue is a method to allow a request for information, such as an
`
`advertising banner, not to be cached and therefore "counted" while allowing for
`
`that request to either allow the requested information to be sent from a server, or to
`
`allow the request to be fulfilled through the use of cache that contains the
`
`requested information.
`
`32. One of ordinary skill in the art at the time of the '698 patent's effective
`
`filing date would have known that HTTP cache control mechanisms such as If-
`
`
`
`- 10 -
`
`
`
`
`
`
`Modified-Since or If-NoneMatch headers would result in not blocking the request
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`signal from reaching the intended server, but avoiding a refetch of the requested
`
`information if that information existed in cache.
`
`33. The HTTP 1.0 specification, published on February 20, 1996,
`
`discusses the "If-Modified-Since" request header whereby the request signal is
`
`allowed to reach the server, where "if the requested resource has not been modified
`
`since the time specified in this field, a copy of the resource will not be returned
`
`from the server; instead, a 304 (not modified) response will be returned without
`
`any Entity-Body." (GOOG 1008, p. 34.) Further, the "purpose of this feature is to
`
`allow efficient updates of cached information with a minimum amount of
`
`transaction overhead." (Id.)
`
`34. The May 2, 1996 draft of the HTTP 1.1 specification, published on
`
`May 3, 1996, discusses the "If-NoneMatch" request header. (GOOG 1026, p. 85.)
`
`"The If-NoneMatch request-header field is used with a method to make it
`
`conditional." (Id.) Similar in nature to the "If-Modified-Since" request header
`
`discussed above, the purpose of the "If-NoneMatch" command "is to allow
`
`efficient updates of cached information with a minimum amount of transaction
`
`overhead." (Id. at p. 86.) The "If-NoneMatch" request allows a request signal to
`
`reach the server and be counted, and when the entity tag of the command matches
`
`the entity tag at the server, the server returns "a 304 (Not Modified) response
`
`
`
`- 11 -
`
`
`
`
`
`
`without any Entity-Body" and the client device then fetches the requested
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`information from cache. (Id. at p. 85.) However, if the tags do not match the server
`
`returns the requested information.
`
`35.
`
`In addition, the "hit-metering" method developed by Jeffrey Mogul
`
`and myself, published on March 25, 1997, outlines a method of counting requests,
`
`or "hit counts" without defeating the use of cache where appropriate. Our hit-
`
`metering approach allowed content providers to be able to collect information on
`
`the frequency with which their content is accessed, but without resorting to "cache-
`
`busting" techniques discussed above that defeat the use of cache. (See, GOOG
`
`1024.)
`
`36. Therefore, in my opinion, and given the above supporting references,
`
`it was well known by a POSA at the time of the '698 patent's effective filing date
`
`that multiple methods existed that would allow for the accurate counting of banner
`
`advertisement requests without significantly increasing data traffic and allowing
`
`for the efficient use of cache.
`
`3.
`
`Advertisement Targeting Based on Demographics Was Well
`Known
`37. The concept of targeting advertisements to particular users to increase
`
`advertising effectiveness was a well known issue at the time of the '698 patent's
`
`effective filing date. As discussed in my Hit-Metering paper, some advertisers
`
`employed the use of "cache-busting" to "collect demographic information" so that
`
`
`
`- 12 -
`
`
`
`
`
`
`advertising images could be tailored and targeted to those demographics, e.g.,
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`"each retrieval of the page sees a different ad." (GOOG 1024, p. 3.)
`
`38. The World Wide Web Consortium ("W3C"), an international
`
`community that develops open standards for the Internet, also discussed various
`
`methodologies for gathering consumer demographics, creating a balance between
`
`advertisers' desire to gather personal information and the privacy rights of
`
`consumers, e.g., "[t]he desire to unobtrusively gather demographical information
`
`about consumers and to build user profiles, balanced with the privacy rights of
`
`consumers." (GOOG 1025, p. 3.) In addition, "[s]ome representatives from the
`
`advertising side of the fence said the key is to use the same kinds of tracking
`
`devices already used in broadcast and print." (Id.) While advertisers agreed that
`
`demographic data was needed for more effective web-based advertising, "media
`
`planners, advertising agency representatives, and researchers agreed on one point:
`
`no one Internet tracking standard is likely to emerge in the near future." (Id.)
`
`39. Therefore, in my opinion, and given the above supporting references,
`
`it was well known by a POSA at the time of the '698 patent's effective filing date
`
`that advertisers were developing methods using demographics to increase
`
`advertising effectiveness, but that no single standard had yet emerged.
`
`
`
`- 13 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`Fault Tolerance and Reliability Were Well Known
`4.
`40. The concept of fault tolerant computing for increased reliability was a
`
`well known concept at the time of the '698 patent's effective filing date. As can be
`
`seen in my curriculum vitae (GOOG 1006), I have participated in Association for
`
`Computing Machinery
`
`("ACM")conferences and committees directed
`
`to
`
`distributed computing, replication and fault tolerance as early as 1985. I published
`
`papers on the theories and principles of distributed computing in 1982, 1985 and
`
`1987. Mirroring and redundancy were common fault tolerant methods at the time.
`
`For example, in 1982 Xerox operated a distributed, redundant, multicomputer
`
`system on the Internet. As explained in an ACM paper from Xerox Research
`
`Center on distributed computing, "Grapevine is a system that provides message
`
`delivery, resource location, authentication, and access control services in a
`
`computer internet." (GOOG 1027, pp. 1-2.) "The implementation of Grapevine is
`
`distributed and replicated," where "[b]y distributed we mean that some of the
`
`services provided by Grapevine
`
`involve
`
`the use of multiple computers
`
`communication through the internet; [and] by replicated we mean that some of the
`
`services are provided equally well by any of several distinct computers." (GOOG
`
`1027, p. 2, emphasis in original.) In other words, the ACM Xerox Research Center
`
`paper taught the use of multiple servers to increase fault tolerance and reliability.
`
`
`
`- 14 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`41. Therefore, in my opinion, and given the above supporting references,
`
`it was well known by a at the time of the '698 patent's effective filing date that the
`
`fault tolerant solutions in distributed computing existed and provided increased
`
`reliability in computer delivery and storage systems.
`
`
`
`V.
`
`Conclusion
`In signing this declaration, I recognize that the declaration will be
`42.
`
`filed as evidence in a contested case before the Patent Trial and Appeal Board of
`
`the United States Patent and Trademark Office. I also recognize that I may be
`
`subject to cross-examination in the case and that cross-examination will take place
`
`within the United States. If cross-examination is required of me, I will appear for
`
`cross-examination within the United States during the time allotted for cross-
`
`examination.
`
`
`
`
`
`
`
`- 15 -
`
`
`
`
`
`
`
`Inter Partes Review of USPN 6,014,698
`Declaration of Paul J. Leach (Exhibit 1005)
`
`43.
`
`I hereby declare 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.
`
`
`
`Date:
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`Paul J. Leach
`
`
`
`- 16 -
`
`1/31/2015
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
