Petition for InterPartes Review of U.S Patent No 5894554
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`PARALLEL NETWORKS LICENSiNG LLC
`Patent Owner
`
`Patent No 5894554
`
`Issued April 13 1999
`
`Filed April 23 1996
`
`Title
`
`Levine and Ronald
`
`Inventors Keith Lowery Andrew
`SYSTEM FOR MANAGING DYNAMIC WEB PAGE
`GENERATION REQUESTS BY INTERCEPTING REQUEST AT
`WEB SERVER AND ROUTING TO PAGE SERVER THEREBY
`RELEASING WEB SERVER TO PROCESS OTHER REQUESTS
`
`Howell
`
`Inter Partes Review No 1PR2015-00483
`
`MITZENMACHER REGARDING U.S
`DECLARATION OF MICHAEL
`PATENT NO 5894554
`
`Petitioner IBM – Ex. 1007, p. 1
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`PARALLEL NETWORKS LICENSiNG LLC
`Patent Owner
`
`Patent No 5894554
`
`Issued April 13 1999
`
`Filed April 23 1996
`
`Title
`
`Levine and Ronald
`
`Inventors Keith Lowery Andrew
`SYSTEM FOR MANAGING DYNAMIC WEB PAGE
`GENERATION REQUESTS BY INTERCEPTING REQUEST AT
`WEB SERVER AND ROUTING TO PAGE SERVER THEREBY
`RELEASING WEB SERVER TO PROCESS OTHER REQUESTS
`
`Howell
`
`Inter Partes Review No 1PR2015-00483
`
`MITZENMACHER REGARDING U.S
`DECLARATION OF MICHAEL
`PATENT NO 5894554
`
`Petitioner IBM – Ex. 1007, p. 1
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`TABLE OF CONTENTS
`
`INTRODUCTION
`
`Engagement
`
`Background and Qualifications
`
`Compensation and Prior Testimony
`
`Infonnation Considered
`
`II
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`Anticipation
`
`Obviousness
`
`III
`
`THE 554 PATENT
`
`Effective Filing Date of the 554 Patent
`
`Other Patent Family Members
`
`Overview of The 554 Patent
`
`The Prosecution History of The 554 Patent
`
`Original Prosecution
`
`Ex Parte Reexamination Proceedings
`
`Claims of the 554 Patent
`
`Litigation Involving the 554 Patent
`
`Construction of Terms Used in the 554 Patent Claims
`
`Broadest Reasonable Interpretations
`Web server All Claims
`
`page server All Claims
`
`ii
`
`iii
`
`10
`
`16
`
`16
`
`16
`
`16
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`20
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`20
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`21
`
`33
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`45
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`47
`
`50
`
`50
`
`53
`
`intercepting said request at said Web server All Claims 55
`
`iv dispatching All Claims
`
`dispatcher All Claims
`
`56
`
`61
`
`Petitioner IBM – Ex. 1007, p. 2
`
`
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`Petition for InterPartes Review of U.S Patent No 5894554
`
`vi
`
`releasing said Web server to process other requests All
`Claims
`
`vii concurrently processes All Claims
`viii Web page All Claims
`ix routing All Claims
`
`dynamically generating All Claims
`xi custom HTML extension templates Claims 18
`
`19
`
`xii connection cache Claim 15
`
`xiii
`
`application sofiware Claims 26 and 40
`
`Phillips Constructions
`
`Patent Owners Phiiiis Constructions
`
`ii
`
`Patent Owners Prior Phillips Constructions
`
`iii Additional Phillips Constructions
`
`Level of Ordinary Skill
`
`in the Art
`
`IV COMPARISON OF THE PRIOR ART TO THE 554 PATENT
`
`Background
`Andresen et al SWEB Towards
`Scalable World Wide Web
`Server On Multicomputers SWEB 95 Ex 1009
`U.S Patent No 5754772 to Leaf Leaf Ex 1060
`Bradley et al Web-basedAccess
`to an Online Atlas of
`Anatomy The Digital Anatomist Common Gateway Interface
`1995 Bradley Ex 1048
`Claims 12 through 49 Are Unpatentable Over SWEB 95 Alone
`In View of Leaf or Bradley
`and/or
`Claim 12 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Step
`
`iii Processing Step
`
`iv Dynamically Generating Step
`
`Wherein Dispatching Includes Examining
`
`62
`
`64
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`66
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`68
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`69
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`71
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`72
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`74
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`75
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`75
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`76
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`77
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`79
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`79
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`79
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`84
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`92
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`96
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`99
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`99
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`99
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`102
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`119
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`122
`
`125
`
`Petitioner IBM – Ex. 1007, p. 3
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`
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`Petition for InterPartes Review of U.S Patent No 5894554
`
`vi Wherein Dispatching Includes Selecting
`
`vii Wherein Dispatching Includes Sending
`Claim 13 Is Unpatentable Over SWEB 95
`Claim 14 Is Unpatentable Over SWEB 95 Alone and/or
`ViewofLeaf
`
`Claim 15 Is Unpatentable Over SWEB 95 Alone and/or
`ViewofLeaf
`
`In
`
`In
`
`Claim 16 Is Unpatentable Over SWEB 95
`Claim 17 Is Unpatentable Over SWEB 95
`Claim 17 Is Obvious Over SWEB 95 in View of Bradley
`Claim 18 Is Obvious Over SWEB 95 Alone and/or
`of Leaf
`
`In View
`
`Claim 19 Is Obvious Over SWEB 95 Alone and/or
`of Leaf
`
`In View
`
`10 Claim 20 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Element
`
`iii Processing Element
`
`iv Dynamically Generating Elemnent
`
`Wherein Dispatching Includes Examining
`
`vi Wherein Dispatching Includes Selecting
`
`vii Wherein Dispatching Includes Sending
`11 Claim 21 Is Unpatentable Over SWEB 95
`12 Claim 22 Is Unpatentable Over SWEB 95
`13 Claim 23 Is Unpatentable Over SWEB 95
`14 Claim 24 Is Unpatentable Over SWEB 95
`15 Claim 25 Is Unpatentable Over SWEB 95
`16 Claim 26 Is Unpatentable Over SWEB 95
`17 Claim 27 Is Unpatentable Over SWEB 95
`18 Claim 28 Is Unpatentable Over SWEB 95
`
`126
`
`128
`
`132
`
`133
`
`138
`
`143
`
`145
`
`147
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`150
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`157
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`160
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`160
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`161
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`162
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`162
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`162
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`163
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`163
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`164
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`168
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`169
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`171
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`172
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`177
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`180
`
`181
`
`Petitioner IBM – Ex. 1007, p. 4
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`
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`Petition for InterPartes Review of U.S Patent No 5894554
`
`19 Claim 29 Is Unpatentable Over SWEB 95
`20 Claim 29 Is Obvious Over SWEB 95 in View of Bradley
`21 Claim 30 Is Unpatentable Over SWEB 95
`22 Claim 31 Is Unpatentable Over SWEB 95
`23 Claim 32 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Step
`
`iii Processing Step
`
`iv Dynamically Generating Step
`
`Wherein Dispatching Includes Examining
`
`vi Wherein Dispatching Includes Selecting
`24 Claim 33 Is Obvious Over SWEB 95 Alone and/or
`of Leaf
`
`in View
`
`25 Claim 34 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Step
`
`iii Processing Step
`
`iv Dynamically Generating Step
`
`Wherein Dispatching Includes Examining
`
`vi Wherein Dispatching Includes Selecting
`26 Claim 35 Is Unpatentable Over SWEB 95
`27 Claim 36 Is Unpatentable Over SWEB 95
`28 Claim 37 Is Unpatentable Over SWEB 95
`29 Claim 38 Is Unpatentable Over SWEB 95
`30 Claim 39 Is Unpatentable Over SWEB 95
`31 Claim 40 Is Unpatentable Over SWEB 95
`32 Claim 41 Is Unpatentable Over SWEB 95
`33 Claim 42 Is Unpatentable Over SWEB 95
`34 Claim 43 Is Unpatentable Over SWEB 95 Alone and/or
`View of Bradley
`
`In
`
`184
`
`185
`
`188
`
`189
`
`190
`
`190
`
`191
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`191
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`191
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`192
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`192
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`197
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`204
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`204
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`205
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`205
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`205
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`206
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`206
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`208
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`208
`
`208
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`209
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`209
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`210
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`210
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`210
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`211
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`Petitioner IBM – Ex. 1007, p. 5
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`
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`Petition for InterPartes Review of U.S Patent No 5894554
`
`35 Claim 44 Is Unpatentable Over SWEB 95
`36 Claim 45 Is Unpatentable Over SWEB 95
`37 Claim 46 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Step
`
`iii Processing Element
`
`iv Dynamically Generating Element
`
`Wherein Dispatching Includes Examining
`
`vi Wherein Dispatching Includes Selecting
`38 Claim 47 Is Unpatentable Over SWEB 95 Alone and/or
`ViewofLeaf
`
`In
`
`39 Claim 48 Is Unpatentable Over SWEB 95
`
`Preamble
`
`ii Routing Element
`
`iii Processing Element
`
`iv Dynamically Generating Element
`
`Wherein Dispatching Includes Examining
`
`vi Wherein Dispatching Includes Selecting
`40 Claim 49 Is Obvious Over SWEB 95 Alone and/or
`of Bradley
`
`In View
`
`211
`
`212
`
`212
`
`212
`
`212
`
`213
`
`213
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`214
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`214
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`215
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`216
`
`216
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`216
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`217
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`217
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`217
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`218
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`218
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`Petitioner IBM – Ex. 1007, p. 6
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`
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`Petition for Inter Partes Review of U.S Patent No 5894554
`
`INTRODUCTION
`
`Engagement
`
`have been retained by counsel
`
`for Microsoft Corporation as an
`
`expert witness in the above-captioned proceeding
`
`have been asked to provide
`
`my opinion about the state of the art of the technology described in U.S Patent No
`
`5894554 the 554 Patent Exhibit 1001 and on the patentability of the claims
`
`of this patent The following is my written report on these topics
`
`Background and Qualifications
`
`am currently employed as Professor of Computer Science at
`
`Harvard University Specifically
`
`am the Thomas Waston Sr Professor of
`
`Computer Science in the School of Engineering and Applied Sciences
`
`joined the
`
`faculty of Harvard as an Assistant Professor in January 1999
`
`was promoted to
`
`Associate Professor in 2002 and to Professor in 2005 Tn 2010 began
`
`three-
`
`year term as Area Dean which is essentially equivalent to what other schools call
`
`Department Chair of Computer Science and held that position through June 2013
`
`My work address is 33 Oxford Street Cambridge MA 02138
`
`received my undergraduate degree in Mathematics and Computer
`
`Science from Harvard College in 1991
`
`received
`
`Certificate of Advanced Study
`
`in Mathematics from Cambridge University in 1992
`
`received
`
`Ph.D in
`
`Computer Science from the University of California at Berkeley in 1996 From
`
`August 1996 to January 1999 was employed as Research Scientist at Digital
`
`Petitioner IBM – Ex. 1007, p. 7
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`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`Systems Research Center
`
`am listed as an inventor or co-inventor on 18 issued
`
`patents and am the co-author of
`
`textbook entitled Probability and Computing
`
`published by Cambridge University Press
`
`The fields of endeavor at
`
`issue in this case are networking and
`
`distributed computing
`
`in particular load balancing for
`
`distributed server such
`
`as for providing content via the Internet and World Wide Web Much of my work
`
`involves issues relating to networking
`
`have published over 150 research papers
`
`in computer science conferences and journals many of which have explored
`
`algorithms and data structures for communication networks and data transmission
`
`regularly serve on program committees for conferences in networking
`
`algorithms and communication For example have served on the program
`
`committee multiple times for the SIGCOMIVI conference which is described on
`
`the conference hoinepage as follows SIGCOMM is the flagship annual
`
`conference of the ACM Special
`
`Interest Group on Data Communication
`
`SIGCOTVIM on the applications technologies architectures and protocols for
`
`computer commnunication Similarly have served several times on the Program
`
`Committee for NSDI the USENTX Symnposium on Networked Systems Design and
`
`Implemnentation
`
`have written papers on networking that have been published in
`
`the IEEE/ACM Transactions on Computer Networking the SIGCOTVIINl
`
`conference the INFOCOM conference and other major venues for networking
`
`Petitioner IBM – Ex. 1007, p. 8
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`research My graduate course entitled Algorithms at the end of the wire covers
`
`many subjects at the intersection of networking and algorithms
`
`My research relates to
`
`number of issues in networking and
`
`distributed systems generally My Ph.D thesis for example considered the effects
`
`that small amounts of infonnation could have in distributed load balancing
`
`showing that even very small amounts of load information could yield dramatically
`
`improved perfonnance
`
`have written multiple papers on load balancing methods
`
`Much of my research has involved the design and analysis of hash-based
`
`algorithms and data structures that are used in network environments and products
`
`In the past Cisco has provided research funding for my work on hashing-based
`
`and sampling-based data structures and algorithms and their potential use in
`
`networking hardware
`
`have also consulted in the past for Huawei another
`
`networking company on hash-based and sampling-based data structures and
`
`algorithms for their potential use in networking hardware
`
`have also consulted in
`
`the past for TVlicrosoft on various networking topics including working part-time in
`
`role similar to that of Visiting Researcher at Microsoft Research New England
`
`this past year during my sabbatical
`
`As other examples of my research in communications and networking
`
`have worked on coding methods that improve network efficiency and discussed
`
`how they can be made compatible with networking protocols such as TCP
`
`Petitioner IBM – Ex. 1007, p. 9
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`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`Transmission Control Protocol
`
`have worked on utilizing overlay networks
`
`efficiently for distribution of bulk data
`
`have worked on congestion control
`
`schemes for multicast
`
`have multiple papers analyzing aspects of TCP have
`
`worked on efficient means for computing network coordinates for overlay
`
`networks for approximating inter-node latency
`
`have worked on the problem of
`
`application identification of network traffic using network graph algorithmic
`
`techniques
`
`Several of my patents relate to networking including the use of error-
`
`correction coding and erasure coding techniques in networks distributed caching
`
`for Internet systems and load balancing for multiprocessor system
`
`My Curriculum Vitae is submitted herewith as Ex 1008
`
`Compensation and Prior Testimony
`
`am being compensated at
`
`rate of $750 per hour for my study and
`
`other work in this matter
`
`am
`
`also being reimbursed for reasonable and
`
`customary expenses associated with my work in this investigation My
`
`compensation is not contingent on the outcome of this matter or the specifics of my
`
`testimony
`
`10
`
`Previously
`
`have testified either by deposition or at trial
`
`in the
`
`following litigation matters The list below includes all deposition and trial
`
`testimony within the last five years
`
`Petitioner IBM – Ex. 1007, p. 10
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`JuniperNetworks Inc
`
`Palo Alto Networks Inc U.S District
`
`Court Delaware Case No 11 l-cv-01258-SLR
`
`United States International Trade Commission Investigation No
`
`337 -TA-7 52 Motorola Inc complainant vs Microsoft Corporation
`
`respondent
`
`US Ethernet Innovations LLC Acer Inc et al Northern District
`
`of California Federal Court Case No
`
`l0-cv-03724-JW Case
`
`No
`
`l0-cv-05254-JW Case No 51 0-cv-0348 -JW
`
`US Ethernet Innovations LLC Ricoh et al Eastern District of
`
`Texas Federal Court Case No
`
`12-cv-000235-LED-JDL
`
`Case
`
`12-cv-000236-LED-JDL
`
`Case No
`
`12-cv-000237-LED-
`
`No
`
`JDL
`
`Edgenet
`
`Inc vs Home Depot USA Inc et al Wisconsin Circuit
`
`Court Case No l0-CV-0 1090
`
`3Com Corporation vs D-Link Systems Inc Northern District of
`
`California Federal Court Case No CV-03-2177-VRW
`
`3Com Corporation vs Realtek Semiconductor Corporation
`
`Northern District of California Case No CV-05-00098-VRW
`
`Petitioner IBM – Ex. 1007, p. 11
`
`
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`Petition for Inter Partes Review of U.S Patent No 5894554
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`France Telecom S.A Marveli Semiconductor
`
`Inc S.D.N.Y
`
`Case No 12 Civ 4986
`
`Mm/Check OCR Inc vs Global Payments Check Services Inc
`
`125th Judicial Court of Harris County Texas No 20 11-72523
`
`Qiang Wang
`
`Palo Alto Networks Inc Nir Zuk and Fengmmn
`
`Gong Northern District of California U.S District Court Case
`
`No 312-cv-05579-WHA
`
`JobDiva Inc Monster Worldwide Inc Southern District of
`
`New York U.S District Court Case No 113-CV-08229-KBF
`
`Information Considered
`
`11 My opinions are based on my years of education research and
`
`experience as well as my investigation and study of relevant materials In forming
`
`my opinions
`
`have considered the materials
`
`identify in this report and those
`
`listed in Appendix
`
`12
`
`may rely upon these materials and/or additional materials to respond
`
`to arguments raised by the Patent Owner may also consider additional
`
`documents and information in fonning any necessary opinions
`
`including
`
`documents that may not yet have been provided to me
`
`Petitioner IBM – Ex. 1007, p. 12
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`13 My analysis of the materials produced in this investigation is ongoing
`
`and will continue to review any new material as it
`
`is provided This report
`
`represents only those opinions
`
`have fonned to date
`
`reserve the right to revise
`
`supplement and/or amend my opinions stated herein based on new infonnation
`
`and on my continuing analysis of the materials already provided
`
`II
`
`LEGAL STANDARDS FOR PATENTABILITY
`
`14
`
`In expressing my opinions and considering the subject matter of the
`
`claims of the 554 Patent
`
`am relying upon certain basic legal principles that have
`
`been explained to me
`
`15
`
`First
`
`understand that for an invention claimed in patent
`
`to be
`
`found patentable it must be among other things new and not obvious from what
`
`was known before the invention was made
`
`16
`
`understand the information that is used to evaluate whether an
`
`invention is new and not obvious is generally referred to as prior art and
`
`generally includes patents and printed publications e.g books journal
`
`publications articles on websites product manuals etc.
`
`17
`
`understand that
`
`in this proceeding Microsoft has the burden of
`
`proving that the claims of the 554 Patent are anticipated by or obvious from the
`
`prior art by
`
`preponderance of the evidence
`
`understand that
`
`preponderance
`
`Petitioner IBM – Ex. 1007, p. 13
`
`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`of the evidence is evidence sufficient
`
`to show that
`
`fact
`
`is more likely true than it
`
`is not
`
`18
`
`As
`
`discuss further in the claim construction section below
`
`understand that the 554 Patent
`
`is not expired so its claims must be given the
`
`broadest reasonable construction consistent with the specification However
`
`also
`
`understand that
`
`it
`
`is possible that the 554 Patent will expire before the Board in
`
`these proceedings issues
`
`final decision in which case
`
`understand that
`
`it
`
`is
`
`possible the Board will apply the Phillips standard of claim construction in that
`
`final decision my understanding of which is set forth in greater detail below The
`
`claims after being construed are then to be compared to the information in the prior
`
`art
`
`19
`
`understand that in this proceeding the inforniation that may be
`
`evaluated is limited to patents and printed publications My analysis below
`
`compares the claims to patents and printed publications that are prior art to the
`
`claims
`
`20
`
`understand that there are two ways in which prior art may render
`
`patent claim unpatentable First the prior art can be shown to anticipate the
`
`claim Second the prior art can be shown to have made the claim obvious to
`
`person of ordinary skill
`
`in the art My understanding of the two legal standards is
`
`set forth below
`
`Petitioner IBM – Ex. 1007, p. 14
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`Anticipation
`
`21
`
`understand that the following standards govern the detennination of
`
`whether
`
`patent claim is anticipated by the prior art
`
`22
`
`have applied these standards in my evaluation of whether the claims
`
`of the 554 Patent would have been anticipated by the prior art
`
`23
`
`understand that the prior art includes patents and printed
`
`publications that existed before the earliest filing date the effective filing date
`
`of the claim in the patent
`
`also understand that
`
`patent will be prior art if it was
`
`filed before the effective filing date of the claimed invention while printed
`
`publication will be prior art if it was publicly available before that date
`
`24
`
`understand that for
`
`patent claim to be anticipated by the prior
`
`art each and every requirement of the claim must be found expressly or
`
`inherently in single prior art reference as recited in the claim understand that
`
`claim limitations that are not expressly described in prior art reference may still
`
`be there if they are inherent to the thing or process being described in the prior
`
`art For example an indication in prior art reference that
`
`particular process
`
`complies with
`
`published standard would indicate that the process must inherently
`
`perfonn certain steps or use certain data structures that are necessary to comply
`
`with the published standard
`
`Petitioner IBM – Ex. 1007, p. 15
`
`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`25
`
`understand that
`
`if
`
`reference incorporates other documents by
`
`reference the incorporating reference and the incorporated references should be
`
`treated as
`
`single prior art reference for purposes of analyzing anticipation
`
`26
`
`understand that
`
`it
`
`is acceptable to consider evidence other than the
`
`information in particular prior art document
`
`to determine if
`
`feature is
`
`necessarily present
`
`in or inherently described by that reference
`
`Obviousness
`
`27
`
`understand that
`
`claimed invention is not patentable if it would have
`
`been obvious to
`
`person of ordinary skill
`
`in the field of the invention at the time
`
`the invention was made
`
`28
`
`understand that the obviousness standard is defined in the patent
`
`statute 35 U.S.C 103a as follows
`
`29
`
`patent may not be obtained though the invention is not identically
`
`disclosed or described as set forth in section 102 of this title if the differences
`
`between the subject matter sought
`
`to be patented and the prior art are such that the
`
`subject matter as whole would have been obvious at the time the invention was
`
`made to
`
`person having ordinary skill
`
`in the art to which said subject matter
`
`pertains Patentability shall not be negatived by the manner in which the invention
`
`was made
`
`in
`
`Petitioner IBM – Ex. 1007, p. 16
`
`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`30
`
`understand that the following standards govern the detennination of
`
`whether
`
`claim in patent
`
`is obvious
`
`have applied these standards in my
`
`evaluation of whether the asserted claims of the 554 Patent would have been
`
`considered obvious in April 1996
`
`31
`
`understand that to find claim in patent obvious one must make
`
`certain findings regarding the claimed invention and the prior art Specifically
`
`understand that the obviousness question requires consideration of four factors
`
`although not necessarily in the following order
`
`The scope and content of the prior art
`
`The differences between the prior art and the claims at issue
`
`The knowledge of
`
`person of ordinary skill
`
`in the pertinent art and
`
`Whatever objective factors indicating obviousness or non-obviousness
`may be present
`in any particular case
`
`32
`
`In addition understand that
`
`the obviousness inquiry should not be
`
`done in hindsight but must be done using the perspective of
`
`person of ordinary
`
`skill
`
`in the relevant art as of the effective filing date of the patent claim
`
`33
`
`understand the objective factors indicating obviousness or non
`
`obviousness may include commercial success of products covered by the patent
`
`claims
`
`long-felt need for the invention failed attempts by others to make the
`
`invention copying of the invention by others in the field unexpected results
`
`achieved by the invention praise of the invention by those in the field the taking
`
`of licenses under the patent by others expressions of surprise by experts and those
`
`11
`
`Petitioner IBM – Ex. 1007, p. 17
`
`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`skilled in the art at the making of the invention and the patentee proceeded
`
`contrary to the accepted wisdom of the prior art
`
`also understand that any of this
`
`evidence must be specifically connected to the invention rather than being
`
`associated with the prior art or with marketing or other efforts to promote an
`
`invention
`
`am not presently aware of any evidence of objective factors
`
`suggesting the claimed methods are not obvious and reserve my right to address
`
`any such evidence if
`
`it
`
`is identified in the future
`
`34
`
`understand the combination of familiar elements according to known
`
`methods is likely to be obvious when it does no more than yield predictable results
`
`also understand that an example of
`
`solution in one field of endeavor may make
`
`that solution obvious in another related field
`
`also understand that market
`
`demands or design considerations may prompt variations of prior art system or
`
`process either in the same field or
`
`different one and that these variations will
`
`ordinarily be considered obvious variations of what has been described in the prior
`
`art
`
`35
`
`also understand that
`
`if
`
`person of ordinary skill can implement
`
`predictable variation that variation would have been considered obvious
`
`understand that for similar reasons if
`
`technique has been used to improve one
`
`device and
`
`person of ordinary skill
`
`in the art would recognize that
`
`it would
`
`improve similar devices in the same way using that
`
`technique to improve the other
`
`Petitioner IBM – Ex. 1007, p. 18
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`device would have been obvious unless its actual application yields unexpected
`
`results or challenges in implementation
`
`36
`
`understand that the obviousness analysis need not seek out precise
`
`teachings directed to the specific subject matter of the challenged claim but
`
`instead can take account of the ordinary innovation and experimentation that
`
`does no more than yield predictable results which are inferences and creative steps
`
`that
`
`person of ordinary skill
`
`in the art would employ
`
`37
`
`understand that sometimes it will be necessary to look to interrelated
`
`teachings of multiple patents the effects of demands known to the design
`
`community or present
`
`in the marketplace and the background knowledge
`
`possessed by
`
`person having ordinary skill
`
`in the art
`
`understand that all
`
`these
`
`issues may be considered to determine whether there was an apparent
`
`reason to
`
`combine the known elements in the fashion claimed by the patent at issue
`
`38
`
`understand that the obviousness analysis cannot be confined by
`
`formalistic conception of the words teaching suggestion and motivation
`
`understand that in 2007 the Supreme Court issued its decision in KSR Intl Co
`
`Teleflex Inc 550 U.S 398 2007 where the Court rejected the previous
`
`requirement of
`
`teaching suggestion or motivation to combine known elements
`
`of prior art for purposes of an obviousness analysis as
`
`precondition for finding
`
`obviousness It
`
`is my understanding that KSR confinns that any motivation that
`
`Petitioner IBM – Ex. 1007, p. 19
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`would have been known to
`
`person of skill
`
`in the art including common sense or
`
`derived from the nature of the problem to be solved is sufficient
`
`to explain why
`
`references would have been combined
`
`39
`
`understand that
`
`person of ordinary skill attempting to solve
`
`problem will not be led only to those elements of prior art designed to solve the
`
`same problem understand that under the KSR standard steps suggested by
`
`common sense are important and should be considered Common sense teaches
`
`that familiar items may have obvious uses beyond the particular application being
`
`described in reference that
`
`if something can be done once it
`
`is obvious to do it
`
`multiple times and in many cases
`
`person of ordinary skill will be able to fit
`
`the
`
`teachings of multiple patents together like pieces of puzzle As such the prior art
`
`considered can be directed to any need or problem known in the field of endeavor
`
`as of the effective filing date and can provide
`
`reason for combining the elements
`
`of the prior art in the manner claimed In other words the prior art does not need
`
`to be directed towards solving the same problem that
`
`is addressed in the patent
`
`Further the individual prior art references themselves need not all be directed
`
`towards solving the same problem
`
`40
`
`understand that an invention that might be considered an obvious
`
`variation or modification of the prior art may be considered non-obvious if one or
`
`more prior art references discourages or lead away from the line of inquiry
`
`lzI
`
`Petitioner IBM – Ex. 1007, p. 20
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`disclosed in the references
`
`reference does not teach away from an invention
`
`simply because the reference suggests that another embodiment of the invention is
`
`better or prefened My understanding of the doctrine of teaching away requires
`
`clear indication that the combination should not be attempted e.g because it
`
`would not work or explicit statements saying the combination should not be made
`
`41
`
`understand that
`
`person of ordinary skill
`
`is also
`
`person of ordinary
`
`creativity
`
`42
`
`further understand that in many fields it may be that there is little
`
`discussion of obvious techniques or combination and it often may be the case that
`
`market demand rather than scientific literature or knowledge will drive design
`
`trends When there is such
`
`design need or market pressure to solve
`
`problem
`
`and there are
`
`finite number of identified predictable solutions
`
`person of
`
`ordinary skill has good reason to pursue the known options within their technical
`
`grasp If this leads to the anticipated success it
`
`is likely the product not of
`
`innovation but of ordinary skill and common sense In that
`
`instance the fact
`
`that
`
`combination was obvious to try might show that
`
`it was obvious
`
`The fact
`
`that
`
`particular combination of prior art elements was obvious to try may indicate that
`
`the combination was obvious even if no one attempted the combination
`
`If the
`
`combination was obvious to try regardless of whether it was actually tried or
`
`Petitioner IBM – Ex. 1007, p. 21
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`leads to anticipated success then it
`
`is likely the result of ordinary skill and
`
`common sense rather than innovation
`
`III
`
`THE 554 PATENT
`
`Effective Filing Date of the 554 Patent
`
`43
`
`The 554 Patent
`
`issued from U.S Application No 08/636477 477
`
`application filed April 23 1996 Ex 1001 at Face
`
`therefore understand that
`
`the effective filing date of the claims of the 554 Patent
`
`is no earlier than April 23
`
`1996
`
`Other Patent Family Members
`
`44
`
`U.S Patent No 6415335 the 335 Patent Ex 1004 issued from
`
`U.S Application No 09/234048 048 application filed January 19 1999 The
`
`048 application is
`
`divisional of the 477 application and the 335 Patent claims
`
`priority to the 477 application filing date of April 23 1996 Ex 1004 at Cover
`
`Page
`
`understand that Petitioner is simultaneously filing
`
`petitions for inter
`
`partes review of the 335 Patent
`
`Overview of The 554 Patent
`
`45
`
`The 554 Patent
`
`is directed to methods and apparatuses for managing
`
`Web page requests by routing requests received at Web server to multiple page
`
`servers the page servers processing the requests and generating dynamic Web
`
`pages as needed Routing the requests to the page servers frees the Web server to
`
`process other requests Ex 1001 at Abstract 215-34
`
`Petitioner IBM – Ex. 1007, p. 22
`
`
`
`Petition for InterPartes Review of U.S Patent No 5894554
`
`46
`
`The 554 Patent describes
`
`typical prior art Web server enviromnent
`
`as each Web site having one Web server that handles all requests Id at 364-65
`
`and Fig
`
`The prior art Web server is described as receiving
`
`request after
`
`which the Web server executable examines the URL to determine whether it
`
`is
`
`HTIVIL document or
`
`CGI application Id at 418-20 For
`
`static Web page request
`
`the Web server executable locates the document and it
`
`is then transmitted back through the requesting Web browser for formatting and
`
`display Id at 1-24 For dynamic Web page request the Web server
`
`executable locates the CGI application that then executes and outputs HT1VIL
`
`output with the HTML output
`
`then transmitted back to requesting Web browser
`
`for formatting and display Id at 425-31
`
`47
`
`The 554 Patent states that in such
`
`prior art Web server environment
`
`i.e single Web server servicing all requests to Web site processing
`
`limitations are
`
`problem Id at 435-37 When numerous requests are being
`
`simultaneously processed by multiple threads on
`
`single machine the Web server
`
`can slow down significantly and become highly inefficient
`
`Id at 448-5
`
`48
`
`The 554 Patents solution to this problem what
`
`it calls
`
`claimed
`
`invention is
`
`partitioned architecture Id at 451-52 The disclosed
`
`partitioned architecture comprises Web server and multiple page servers such
`
`that
`
`the Web server can route requests to the page servers for processing thus
`
`17
`
`Petitioner IBM – Ex. 1007, p. 23
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`freeing itself to handle more requests Id at Abstract 215-34 454-559 For
`
`example Figure
`
`illustrates an embodiment of the purported invention with an
`
`interceptor and dispatcher routing requests from the Web server to page
`
`servers
`
`coNEcriot
`ACr1E 42j1i
`
`Id at Fig
`
`If for example Page server 4042 receives the request Page server
`
`4042 will process the request While Page server 4042 is processing the
`
`request Web server executable 201E can concurrently process other Web client
`
`requests This partitioned architecture thus allows both Page server 4042 and
`
`Web server executable 201E to simultaneously process different requests thus
`
`increasing the efficiency of the Web site Id at 620-27 emphasis added
`
`is
`
`Petitioner IBM – Ex. 1007, p. 24
`
`
`
`Petition for Inter Partes Review of U.S Patent No 5894554
`
`49
`
`The 554 Patent
`
`teaches that the Web server dispatcher and/or page
`
`servers may reside on different machines on the network to distribute the
`
`processing of the request
`
`Id at 550-51 This embodiment overcomes the
`
`limitation described above in prior art Web servers wherein all processing is
`
`perfonned by the processor on
`
`single machine Id at 59-12 In this way the
`
`request can then be processed by
`
`different processor
`
`than the Web server
`
`executable and the Web server is thus free to continue servicing client requests
`
`Id at 514-17
`
`50
`
`The 554 Patent also states however
`
`that the Web server dispatcher
`
`and/or page servers may reside on the same machine This embodiment will not
`
`enjoy the advantage described above namely off-loading the processing of Web
`
`requests from the Web server machine Ex 1001 at 526-28 But this
`
`embodiment does allow flexibility
`
`for
`
`small Web site to grow For example
`
`small Web site administrator can use
`
`single machine for both Dispatcher 402 and
`
`Web server 201 initially then off-load Dispatcher 402 onto
`
`separate machine as
`
`the Web site grows Id at 529-33
`
`51
`
`The 554 Patent states that various selection criteria and/or
`
`load
`
`balancing techniques can be employed to select to which
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