UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`
`
`v.
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case IPR 2015- 01176
`Patent No. 5,978,594
`Filed March 6, 1997
`Issued November 2, 1999
`Title: System for managing computer resources across a distributed computing
`environment by first reading discovery information about how to determine system
`resources presence
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on August 18,
`2015
`
`
`
`DECLARATION OF DR. BEN BEDERSON IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313
`
`
`
`
`
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SERVICENOW, INC.
`Petitioner
`
`
`
`
`
`v.
`
`BMC SOFTWARE, INC.
`Patent Owner
`____________________
`
`Case IPR 2015- 01176
`Patent No. 5,978,594
`Filed March 6, 1997
`Issued November 2, 1999
`Title: System for managing computer resources across a distributed computing
`environment by first reading discovery information about how to determine system
`resources presence
`____________________
`
`Filed electronically via the Patent Review Processing System (PRPS) on August 18,
`2015
`
`
`
`DECLARATION OF DR. BEN BEDERSON IN SUPPORT OF PATENT
`OWNER’S RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313
`
`
`
`
`
`
`
`Table of Contents
`
`Page
`INTRODUCTION AND QUALIFICATIONS ...............................................................................1
`UNITED STATES PATENT NO. 5,978,594 ................................................................................10
`CLAIM CONSTRUCTION ...........................................................................................................16
`NON-OBVIOUSNESS OF CLAIM 1 OF THE ‘594 PATENT ...................................................23
`U.S. PATENT NO. 5,410,681 (“JESSEN”) ..................................................................................27
`UNIX SYSTEM V, RELEASE 4: THE COMPLETE REFERENCE, BY STEPHEN
`COFFIN .............................................................................................................................33
`“DISCOVERY INFORMATION ABOUT HOW TO DETERMINE WHETHER
`THE RESOURCE IS PRESENT ON THE COMPUTER SYSTEM” ..............................34
`“FINDING, ON THE STORAGE DEVICE, INSTRUCTIONS THAT ARE
`REFERRED TO IN THE DISCOVERY INFORMATION.” ...........................................38
`“DETERMINING, RESPONSIVE TO THE COLLECTED DATA, WHETHER
`THE RESOURCE IS PRESENT ON THE COMPUTER SYSTEM.” .............................40
`OBJECTIVE INDICIA OF NON-OBVIOUSNESS .....................................................................46
`
`
`
`
`
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`INTRODUCTION AND QUALIFICATIONS
`1.
`
`I have been retained on behalf of Patent Owner BMC Software, Inc.
`
`(“BMC”) to provide expert opinions in connection with this case.
`
`2.
`
`I obtained a Ph.D. in Computer Science from New York University in
`
`1992. Prior to that, I obtained my M.S. in Computer Science from New York
`
`University in 1989, and received my B.S. in Computer Science from Rensselaer
`
`Polytechnic Institute in 1986, with an undergraduate minor in Electrical
`
`Engineering. I received the Janet Fabri Memorial Award for Outstanding Doctoral
`
`Dissertation in connection with my Ph.D. work.
`
`3.
`
`I have since 1998 been a Professor of Computer Science at the
`
`University of Maryland (“UMD”), where I have joint appointments at the Institute
`
`for Advanced Computer Studies and the College of Information Studies
`
`(Maryland’s “iSchool”). I am also Associate Provost of Learning Initiatives and
`
`Executive Director of the Teaching and Learning Transformation Center. I am a
`
`member and previous director of the Human-Computer Interaction Lab (“HCIL”),
`
`the oldest and one of the best known Human-Computer Interaction research groups
`
`in the country. I was from 2006-2014 also co-founder and Chief Scientist of
`
`Zumobi, Inc., a Seattle-based startup that is a publisher of content applications and
`
`advertising platforms for smartphones. I am co-founder and Chief Technology
`
`Officer of Hazel Analytics, a company that manages food safety risk through data
`
`1
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`analytics. I am also co-founder and co-director of the International Children’s
`
`Digital Library (“ICDL”), a web site providing the world’s largest collection of
`
`freely available online children’s books from around the world with an interface
`
`aimed to make it easy for children and adults to search and read children’s books
`
`online.
`
`4.
`
`Before becoming a Professor at UMD, from 1995 to 1997 I was an
`
`Assistant Professor in the Computer Science Department at University of New
`
`Mexico. From 1992 to 1994 I was a Research Scientist at Bell Communication
`
`Research. From 1993 to 1994 I was also a Visiting Research Scientist at New York
`
`University (“NYU”). From 1990 to 1992 I was a Research Scientist at Vision
`
`Applications, Inc. From 1988 to 1990 I was a Teaching Assistant at NYU.
`
`5.
`
`In addition, I have since 1993 consulted for numerous companies in
`
`the area of user interfaces, including Microsoft, the Palo Alto Research Center,
`
`Sony, Lockheed Martin, and NASA Goddard Space Flight Center.
`
`6.
`
`For more than 25 years, I have studied, designed, and worked in the
`
`field of computer science and human-computer interaction. My experience
`
`includes 25 years of teaching and research, with research interests in human-
`
`computer interaction and the software and technology underlying today’s
`
`computing world. This includes the design and implementation of user interfaces
`
`on client-server systems for querying data systems.
`
`2
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`At UMD, my research is in the area of Human-Computer Interaction
`
`7.
`
`(“HCI”), a field that relates to the development and understanding of computing
`
`systems to serve users’ needs. Researchers in this field are focused on making
`
`universally usable, useful, efficient, and appealing systems to support people in
`
`their wide range of activities. My approach is to balance the development of
`
`innovative technology that serves people’s practical needs. Example systems
`
`following this approach that I have built include PhotoMesa (software for end
`
`users to browse personal photos), DateLens (software for end users to use their
`
`mobile devices to efficiently access their calendar information), SpaceTree
`
`(software for end users to efficiently browse very large hierarchies), ICDL (as
`
`described above), and StoryKit (an iPhone app for children to create stories).
`
`8.
`
`At Zumobi, I was responsible for investigating new software
`
`platforms and developing new user interface designs that provide efficient and
`
`engaging interfaces to permit end users to access a wide range of content on
`
`mobile platforms (including the iPhone and Android-based devices). For example,
`
`I designed and implemented software called “Ziibii,” a “river” of news for iPhone,
`
`software called “ZoomCanvas,” a zoomable user interface for several iPhone apps,
`
`and iPhone apps including “Inside Xbox” for Microsoft and Snow Report for REI.
`
`9.
`
`At the International Children’s Digital Library (ICDL), I have since
`
`2002 been the technical director responsible for the design and implementation of
`
`3
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`the web site, www.childrenslibrary.org (originally at www.icdlbooks.org). In
`
`particular, I have been closely involved in designing the user interface as well as
`
`the software architecture for the web site since its inception in 2002. I hired and
`
`worked closely with two software engineers to build and maintain the web site
`
`from its launch in 2002 to the present. I helped design, set up, configure and
`
`maintain the servers, and worked on the database architecture and software code on
`
`both the client and server.
`
`10. Beginning in the mid-1990s, I have been responsible for the design
`
`and implementation of numerous other web sites in addition to the ICDL. For
`
`example, I designed and built my own professional web site when I was an
`
`Assistant Professor of Computer Science at the University of New Mexico in 1995
`
`and have continued to design, write the code for, and update both that site (which I
`
`moved
`
`to
`
`the University
`
`of Maryland
`
`in
`
`1998,
`
`currently
`
`at
`
`http://www.cs.umd.edu/~bederson/) as well as numerous project web sites, such as
`
`Pad++, http://www.cs.umd.edu/hcil/pad++/.
`
`11. My work has been published extensively in more than 140 technical
`
`publications, and I have given approximately 100 invited talks, including 7 keynote
`
`lectures. I have won a number of awards including the Brian Shackel Award for
`
`“outstanding contribution with international impact in the field of HCI” in 2007,
`
`and the Social Impact Award in 2010 from Association for Computing
`
`4
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`Machinery’s (“ACM”) Special Interest Group on Computer Human Interaction
`
`(“SIGCHI”). ACM is the primary international professional community of
`
`computer scientists, and SIGCHI is the primary international professional HCI
`
`community. I have been honored by both professional organizations. I am an
`
`“ACM Distinguished Scientist,” which “recognizes those ACM members with at
`
`least 15 years of professional experience and 5 years of continuous Professional
`
`Membership who have achieved significant accomplishments or have made a
`
`significant impact on the computing field.” I am a member of the “CHI Academy,”
`
`which is described as follows: “The CHI Academy is an honorary group of
`
`individuals who have made substantial contributions to the field of human-
`
`computer interaction. These are the principal leaders of the field, whose efforts
`
`have shaped the disciplines and/or industry, and led the research and/or innovation
`
`in human-computer interaction.” The criteria for election to the CHI Academy are:
`
`(1) cumulative contributions to the field; (2) impact on the field through
`
`development of new research directions and/or innovations; and (3) influence on
`
`the work of others.”
`
`12.
`
`I have designed, programmed and publicly deployed dozens of user-
`
`facing software products that have cumulatively had millions of users. My work is
`
`cited in significant patents that are central to several major companies’ user
`
`interfaces, including Sony and Apple.
`
`5
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`I have over 25 years of experience studying, designing, and working
`
`13.
`
`in the field of computer science. I have built numerous software systems and
`
`developed mobile and Internet software products using a number of programming
`
`languages and tools, including Java, C++, scripting languages such as Tcl and
`
`JavaScript, and database languages such as MySQL.
`
`14. As indicated in my CV, I have been a designer of computer
`
`applications and a professor and researcher in the area of advanced computer
`
`studies for more than 25 years. My work is also described in numerous patents on
`
`which I am a named inventor.
`
`15. My work also has been published extensively in more than 140
`
`technical publications, and I have given about 100 invited talks, including seven
`
`keynote lectures. I have won a number of awards including the Brian Shackel
`
`Award for “outstanding contribution with international impact in the field of HCI”
`
`in 2007, and the Social Impact Award in 2010 from Association for Computing
`
`Machinery’s (“ACM”) Special Interest Group on Computer Human Interaction
`
`(“SIGCHI”). ACM is the primary international professional community of
`
`computer scientists, and SIGCHI is the primary international professional HCI
`
`community. I have been honored by both professional organizations. I am an
`
`“ACM Distinguished Scientist,” which recognizes those ACM members with at
`
`least 15 years of professional experience and 5 years of continuous Professional
`
`6
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`Membership who have achieved significant accomplishments or have made a
`
`significant impact on the computing field. I am a member of the “CHI Academy,”
`
`which is an honorary group of individuals who have made substantial contributions
`
`to the field of human-computer interaction. These organizations are the principal
`
`leaders of the field, whose efforts have shaped the disciplines and/or industry, and
`
`led the research and/or innovation in human-computer interaction. The criteria for
`
`election to the CHI Academy are: (1) cumulative contributions to the field; (2)
`
`impact on the field through development of new research directions and/or
`
`innovations; and (3) influence on the work of others.
`
`16.
`
`I have appeared on radio shows numerous times to discuss issues
`
`relating to software design and peoples’ use and frustration with common
`
`technologies, web sites, and mobile devices. My work has been discussed and I
`
`have been quoted by mainstream media around the world over 120 times, including
`
`by the New York Times, the Wall Street Journal, the Washington Post, Newsweek,
`
`the Seattle Post-Intelligencer, the Independent, Le Monde, NPR’s All Things
`
`Considered, New Scientist Magazine, and MIT’s Technology Review.
`
`17.
`
`I am the named inventor of 8 U.S. patents, listed below:
`
`7
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`SanGiovanni, J., Bederson, B. (2014). Systems, Methods, and
`
`Computer Program Products Displaying Interactive Elements on a
`
`Canvas. U.S. Patent No. 8,819,570.
`
` Pahud, M., Murillo, O. E., Karlson, A. K., & Bederson, B. B.
`
`(2012). Monitoring Pointer Trajectory and Modifying Display
`
`Interface. U.S. Patent No. 8,261,211.
`
` Good, L.E., Bederson, B. B., & Stefik, M.J. (2010). Methods and
`
`Systems for Supporting Presentation Tools Using Zoomable User
`
`Interfaces. U.S. Patent No. 7,707,503.
`
` Bederson, B. B., Good, L. E., & Stefik, M.J. (2010). Methods and
`
`Systems for Incrementally Changing Text Representation. U.S.
`
`Patent No. 7,650,562.
`
` Bederson, B. B., Good, L. E., & Stefik, M. J. (2009). Methods and
`
`Systems for Incrementally Changing Text Representation. U.S.
`
`Patent No. 7,549,114.
`
` Wallace, R. S., Bederson, B. B., & Schwartz, E. L. (1997). TV
`
`Picture Compression and Expansion. U.S. Patent No. 5,642,167.
`
` Bederson, B. B., Wallace, R. S., & Schwartz, E. L. (1993). Two-
`
`Dimensional Pointing Motor. U.S. Patent No. 5,204,573.
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`8
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`• Wallace, R. S., Bederson, B. B., & Schwartz, E. L. 1992).
`
`Telephone Line Picture Transmission. U.S. Patent No. 5,175,617.
`
`18.
`
`I have reviewed the ’594 patent and its prosecution history, and its
`
`subject matter is within the scope of my education and experience. I have also
`
`reviewed the District Court’s August 13, 2015 claim construction order related to
`
`the ’594 patent.
`
`19.
`
`I have also reviewed the Petition to institute inter partes review of
`
`claim 1 of the ‘594 patent, the exhibits filed with it, the Patent Owner’s
`
`Preliminary Response and the exhibits filed with it, and the decision of the Patent
`
`Trial and Appeal Board (PTAB) instituting inter partes review of the claim 1 of the
`
`‘594 patent on the ground that claim 1 of the ‘594 patent is obvious over Jessen,
`
`Coffin and Inside Macintosh.
`
`20.
`
`I offer below my opinions regarding how a person of ordinary skill in
`
`the art would have understood the claimed inventions of the ’594 patent and certain
`
`claim terms at the time of the ‘594 patent in view of the Court’s claim
`
`constructions, the scope and content of the prior art of Jessen, Coffin, and Inside
`
`Macintosh, the differences between claim 1 of the ‘594 patent and the prior art and
`
`the secondary considerations of non-obviousness relevant to claim 1 of the ‘594
`
`patent.
`
`9
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`UNITED STATES PATENT NO. 5,978,594
`21.
`
`I note that the application for the ’594 patent was originally filed on
`
`September 30, 1994 and the patent issued 5 years later, on November 2, 1999. It
`
`was examined by at least four Examiners, Primary Examiner Thomas C. Lee and
`
`Assistant Examiner Chien Yuann, with other Examiners also being reported in the
`
`prosecution history, namely Duo Chen in 1996 and Anderson Chen in 1997 and
`
`1998. I note that rejections for claim 1 occurred over a 34 month period, including
`
`rejections under 35 USC 102(e), 35 USC 102(b) and 35 USC 103(a), before claim
`
`1 ultimately was allowed. The prosecution history shows that an extensive search
`
`was conducted that included EPO and Japanese databases and US Fields of Search
`
`395/200.53, 200.54, 395/500, 712, 825, 837, 364/242, and apparently resulted in
`
`thousands of search hits. I therefore conclude that there was an extensive
`
`prosecution with the substantial Examiner involvement to ensure that the invention
`
`is patentable.
`
`22. The ‘594 Patent is directed to managing computer networks and, more
`
`specifically, to flexibly determining what resources are present in a distributed
`
`computing requirement without unduly increasing complexity but provides
`
`increased automation and efficiency. See, Ex. 1001, ‘594 Patent, 1:56-60.
`
`23. At the time of the invention in or around 1994, system administrators
`
`had
`
`to manage a distributed computing network of
`
`interconnected but
`
`10
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`geographically remote heterogeneous computers. It was very difficult to manage
`
`such a diverse and widely-dispersed network because of the range of servers
`
`installed in the wide area network. For example, one office could be using an IBM
`
`machine with a UNIX operating system, while another office was using a WANG
`
`machine with a VMS operating system. Widely varying applications were used
`
`throughout the network, making accurate determination of resources on the
`
`network extraordinarily challenging. See Id., 1:20–40.
`
`24. Companies relied on Information Technology (“IT”) department
`
`personnel to manage these complex and growing computer networks. In an effort
`
`to address the problem created by the virtual impossibility of manual monitoring,
`
`software vendors offered system management software, but existing products were
`
`not sufficiently flexible.
`
`25. There was a long felt but unsolved need for an efficient automated
`
`network management system that was less complex then existing systems but
`
`could identify new and changed resources on the network and was both easy to
`
`implement and maintained flexibility as installed applications and computers in the
`
`enterprise inevitably grew and changed. Id., 1:56-60.
`
`26. The invention claimed in the ‘594 patent addresses problems arising
`
`during management of an enterprise with various networked computer systems.
`
`An organization might have computing resources distributed over a network,
`
`11
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`where resources such as computers and software may be located remotely from
`
`one another and may consist of many different kinds of hardware and software. In
`
`such systems, it becomes a challenge to identify precisely what resources are parts
`
`of the enterprise.
`
`27. For example, the ’594 patent describes a common enterprise setup in
`
`which a client/server network installed in remotely located regional offices
`
`contains a high-capacity computer system operating as the server supporting many
`
`lower-capacity desktop computers. See Ex. 1001, 1:31 – 34. The servers in this
`
`business entity are also commonly connected to one another in a wide area
`
`network. See Id., 1:35 – 38. Users at any location within the business entity can
`
`theoretically access resources present in the company’s network regardless of
`
`where the resource is located. See Id., 1:37 – 40. The resources that constitute the
`
`enterprise are typically not all the same and are not all located in one place, and the
`
`makeup of part or all of the enterprise may be unknown. See Id., 1:42 – 54. In
`
`order to determine what resources exist throughout an enterprise, the ’594 patent
`
`inventors recognized that it would be helpful to utilize a discovery process wherein
`
`one or more computers in the system act to probe the devices on the enterprise in
`
`order to determine what resources exist.
`
`28. A challenge when performing an enterprise-wide discovery process is
`
`that the discovery system needs to know how to identify a wide variety of
`
`12
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`hardware and software resources in order to accurately describe what resources
`
`exist. See Ex. 1001, 1:42-54. Anticipating the types of resources that might exist
`
`is difficult to do without some allowance for customization: computers may have
`
`different hardware, different software, or even new hardware or software
`
`developed after the discovery system was deployed. See Id. at 3:14-33. For
`
`example, the network may contain both Windows and UNIX computers that need
`
`to be identified. The discovery system needs to “speak the language” of both in
`
`order to identify them, and also needs to be flexible in the event that the systems
`
`have been customized from their known configurations.
`
`29. The ’594 patent solves these problems with an improved system for
`
`discovery on a computer network. In particular, the ’594 patent teaches the use of
`
`an “interpretable high-level computer programming language stored in its
`
`uninterpreted form” to accomplish the discovery. See Id. at 6:32-65. Using a
`
`high-level interpretable programming language allows the implementer to define a
`
`syntax and script program language to meet their needs. See Id. at 6:51-65.
`
`Preferably, the language would be able to execute external commands, access file
`
`systems, communicate information about the existence and status of resources,
`
`allow the exchange of information between processes, and query and update a
`
`knowledge database. Id.
`
`13
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`In order to run on a given system, interpretable languages need only
`
`30.
`
`be capable of being interpreted by an interpreter on that system. Languages that
`
`are not interpretable, by contrast, must be compiled to machine code that is
`
`executable for a particular system, which introduces compatibility issues given the
`
`different machine languages that may be present on devices in the enterprise.
`
`31. A discovery system practicing the method of Claim 1 would first read
`
`information about how to discover whether a resource is present. See Ex. 1001,
`
`9:25- 41 (Claim 1). This is referred to in the claims as “discovery information.”
`
`This discovery information would contain a set of instructions that are written in an
`
`interpretable high-level computer programming language. Next, these instructions
`
`would be interpreted for the purpose of collecting data that the discovery system
`
`can use to determine whether a resource is present on a computer system. Id.
`
`Finally, the discovery process uses the collected data to determine whether the
`
`resource is present. Id. Figure 8 of the ’594 patent illustrates how one
`
`embodiment of the invention performs discovery. Id., Fig. 8.
`
`32. Using the claimed method enables a system administrator to
`
`determine what resources, including hardware and software, are present in the
`
`network. The method also has the benefit of flexibility, allowing easier
`
`customization of how the discovery is being conducted by altering the scripts
`
`14
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`which are stored in an uninterpreted form—thereby enabling the system
`
`administrator to discover resources rapidly.
`
`33. Claim 1 of the ’594 Patent reads as follows:
`
`1. A method of determining whether a resource is present on a computer
`
`system, comprising the steps of:
`
`(a) reading, from a storage device coupled to the computer system, discovery
`
`information about how to determine whether the resource is present on the
`
`computer system;
`
`(b) finding, on the storage device, instructions that are referred to in the
`
`discovery information, that are written in an interpretable high-level
`
`computer programming language, and that are stored on the storage device
`
`in their uninterpreted form;
`
`(c) interpreting the instructions for the purpose of collecting data for use in
`
`determining whether the resource is present on the computer system; and
`
`(d) determining, responsive to the collected data, whether the resource is
`
`present on the computer system.
`
`15
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`
`CLAIM CONSTRUCTION
`34.
`
`It is my opinion that, as used in the claims of the ‘594 patent and in
`
`view of the patent specification and prosecution history, “determine” is: to
`
`establish or ascertain definitely, as after consideration, investigation or calculation.
`
`35. Claim 1 recites “[a] method for determining whether a resource is
`
`present on a computer system.” The word “determine” (or its participle form,
`
`determining) appears at several points in claim 1. It also appears throughout the
`
`specification of the ‘594 patent. See, e.g., Ex. 1001, 5:17 (“the input information
`
`used to determine whether certain resources are present…”), 7:17 – 18 (“searches
`
`the knowledge database 47 to determine what knowledge therein will be
`
`pertinent…), 7:38 – 39 (“database manager 74 determines whether the knowledge
`
`stored in the created knowledge database indicates …”), and 8:26 – 27 (“command
`
`execution manager 68 determines that the job presented is for the purpose of
`
`monitoring a resource, …”).
`
`36. Every use of “determine” in the ‘594 patent is consistent with its plain
`
`and ordinary meaning to a person of ordinary skill in the art – To establish or
`
`ascertain definitely, as after consideration, investigation or calculation. See Ex.
`
`2023, Webster’s II New College Dictionary. This interpretation is consistent with
`
`other ways in which forms of “determine” appear in computer science.
`
`“Determinism” is the ability to know in advance how data will be manipulated in a
`
`16
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`processing system, so, for example, a deterministic simulation is one in which a
`
`certain input always produces the same output. See Ex. 2024, Microsoft Computer
`
`Dictionary, 2nd Ed., 1994.
`
`37.
`
`In my opinion, a person of ordinary skill in the art of computer
`
`science would not consider approximation to be determination. Something is only
`
`determined if it is definitely known. Guessing and approximation, which are
`
`inherently indefinite, cannot constitute determination when that term is properly
`
`construed. Similarly, receiving partial information which must then undergo
`
`additional processing
`
`to complete
`
`the determining step cannot constitute
`
`determination in the context of claim 1 of the ‘594 patent.
`
`38.
`
`It is my opinion that “discovery information” is “information about
`
`how to determine whether a resource is present on a computer system” and this is
`
`consistent with the plain meaning that one of ordinary skill in the art would have
`
`afforded the term “discovery information.” The ‘541 patent specification notes,
`
`when describing an embodiment, that “[d]iscovery information relates to which
`
`application classes are desired to be searched for, and also to the names and
`
`locations of the script programs required to do the searching.” See ’594 Patent,
`
`5:48-51.
`
`39. The file history for the ‘594 patent confirms that discovery
`
`information involves “discovering” resources. The patentees overcame a rejection
`
`17
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`based on prior art by Bauer, U.S. Pat. No. 5,367,635, arguing that “[t]he Bauer
`
`reference does not discover the presence of a resource or application on a computer
`
`system, but only assumes that the ‘object’ is already present on the computer
`
`system.” See Ex. 2008, ’594 FH: 9/20/96 Amendment at 6. The patentees
`
`continued: “Claim 1 of the present invention includes the step of reading
`
`‘discovery information’ about how to discover or determine whether a resource is
`
`present on the computer system” and Bauer “only reads information from its
`
`‘configuration file’ about ‘objects’ that are assumed or known to be present on the
`
`system.” Id. at 6-7.
`
`40.
`
`It is my opinion that discovery information must instruct how to
`
`discover a resource and is therefore more than simply the location of preexisting
`
`script files that are used to identify objects that are already known.
`
`41.
`
`It is my opinion that “uninterpreted form” is “a form not interpreted”
`
`according to its plain meaning. ServiceNow’s proposed construction requiring that
`
`“uninterpreted form” be restricted to “text file[s],” was rejected by the District
`
`Court when it construed the claims of the ‘594 patent. See Ex. 2006 at 61-65 (“the
`
`Court does not adopt Defendant’s construction because it improperly limits the
`
`scope of the claims to ‘text files.’”).
`
`42. ServiceNow’s construction is also directly contrary to the intrinsic
`
`evidence. See Ex. 2007 at ¶¶ 22-23. The ‘594 patent and file history discuss
`
`18
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`storing intermediately-compiled versions of the computer programming language
`
`and the advantages of storing these compiled versions as well, while also stating
`
`that storing as text files is merely “preferabl[e].” See Ex. 1001, 6:47-49 (“the
`
`compiled version of script program 42 is stored so that the next time it is required
`
`it may simply be interpreted from its intermediate form”); see also id., 6:34-38
`
`(“Script programs are written in an interpretable language, and are stored in
`
`network management computer system 10 and server computer system 14 in their
`
`uninterpreted form (preferably in the form of an ASCII text file)”; and id., 7:63-8:1
`
`(“In step 128, agent software system 36 determines whether or not the script
`
`program has yet been compiled. If not, script program compiler 64 compiles the
`
`script program in step 130 and execution continues with step 132, in which the
`
`script program is interpreted)”; and id., Figure 8; Ex. 2008, ’594 File History at
`
`9/20/96 Amendment, at 8 (“One of the benefits obtained by using script language
`
`programs of the present invention is that script programs are capable of being
`
`interpreted more quickly than languages that must be interpreted from ASCII
`
`text”).
`
`43.
`
`It is my opinion that construing “uninterpreted form” as limited to a
`
`“text file containing high level programming instructions,” would exclude a
`
`preferred embodiment where an “intermediate form” is a type of uninterpreted
`
`form that is not ASCII text. Ex. 1001, 6:34-50 (“the compiled version of script
`
`19
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`program 42 is stored so . . . it may simply be interpreted from its intermediate form
`
`. . .”).
`
`44. The ’594 patent discloses a partial compilation process whereby the
`
`original instructions are compiled into an intermediate form for the interpreter.
`
`“Script program compiler 64 is responsible for compiling script programs. Such
`
`compilation is only partial, however, resulting in an intermediate code that is not
`
`directly executable, but that is interpretable by script program interpreter 66.” Ex.
`
`1001, 4:47-51. While the script program compiler compiles script files as
`
`described above, it is separate and apart from the script program interpreter as
`
`depicted in Figure 3 of the ‘594 patent.
`
`45.
`
`In my opinion,
`
`the specification supports a plain meaning
`
`understanding of “interpreting the instructions.” Interpreting instructions is
`
`illustrated in Figure 10 of the patent. Step 184 of Figure 10 shows that a compiled
`
`script program is “interpret[ed] . . . to take recovery action.” The description of
`
`this drawing is likewise straightforward, explaining that “[e]xecution continues
`
`with step 184 in which script program interpreter 66 interprets the script program,
`
`thereby taking the desired recovery action.” Ex. 1001,’594 Patent, 9:12-14.
`
`46. One of ordinary skill in the art would understand that “interpreting the
`
`instructions” means using instructions to execute commands rather than executing
`
`the commands directly. This may be contrasted from only using machine language
`
`20
`
`
`
`
`
`Declaration of Dr. Benjamin Bederson
`
`IPR2015-01176
`
`to execute commands, as “interpreters” are generally pieces of software designed
`
`to execute platform-independent commands using instructions such that those
`
`instructions need not be first compiled to machine language (though they may be
`
`pre-compiled to other intermediate forms as illustrated in the patent). See Ex.
`
`1001, ’594 Pat
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
