UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`PALO ALTO NETWORKS, INC.,
`Petitioner
`v.
`
`FINJAN, INC.
`Patent Owner
`
`____________
`
`Case IPR2015-01979
`
`U.S. Patent No. 8,141,154
`
`____________
`
`
`
`DECLARATION OF NENAD MEDVIDOVIC, PH.D.
`ON THE VALIDITY OF CLAIMS 1-5, 6-8, 10, AND 11 OF U.S. PATENT
`NO. 8,141,154 IN SUPPORT OF PATENT OWNER’S RESPONSE
`
`
`
`
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`QUALIFICATIONS ........................................................................................ 1
`
`SCOPE OF ASSIGNMENT AND APPROACH ............................................ 5
`
`III. APPLICABLE STANDARDS AND CONTROLLING
`PRINCIPLES ................................................................................................... 7
`
`A. OBVIOUSNESS ......................................................................................... 7
`
`B.
`
`PERSON OF ORDINARY SKILL IN THE ART ............................................. 9
`
`IV. SUMMARY OF MY OPINIONS ................................................................. 11
`
`V. OVERVIEW OF THE ‘154 PATENT .......................................................... 11
`
`VI. CLAIM CONSTRUCTION .......................................................................... 14
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`“FIRST FUNCTION” ................................................................................ 15
`
`“SECOND FUNCTION” ............................................................................ 16
`
`“TRANSMITTER” ................................................................................... 17
`
`“Receiver” ........................................................................................... 18
`
`“Content” ............................................................................................. 19
`
`VII. DR. RUBIN’S DESCRIPTION OF THE BACKGROUND OF
`THE ‘154 PATENT ....................................................................................... 20
`
`VIII. DISCUSSION AND OPINIONS REGARDING THE
`CONTRAST BETWEEN THE CLAIMS OF THE ‘154 PATENT
`AND THE PRIOR ART ................................................................................ 22
`
`A.
`
`TEACHINGS OF KHAZAN ....................................................................... 23
`
`1.
`
`2.
`
`Terms used in Khazan ............................................................... 26
`
`Technologies Referenced in Khazan ......................................... 35
`
`i
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`Libraries .......................................................................... 35
`
`Detours Package ............................................................. 38
`
`Binary Code .................................................................... 38
`
`a.
`
`
`
`
`
` b.
`
`c.
`
`
`
`3.
`
`Dr. Rubin’s Discussion of Khazan ........................................... 39
`
`B.
`
`Teachings of Sirer ............................................................................... 41
`
`1.
`
`Dr. Rubin’s Discussion of Sirer ................................................ 42
`
`C.
`
`Teachings of Ben-Natan ...................................................................... 42
`
`1.
`
`Technologies Referenced in Ben-Natan ................................... 43
`
`a.
`
`
`
`Structured Query Language (SQL) ................................ 43
`
`2.
`
`Dr. Rubin’s Discussion of Ben-Natan ...................................... 44
`
`D.
`
`The Claims of the ‘154 Patent are Not Invalid Under
`Grounds 1 ............................................................................................ 45
`
`1.
`
`2.
`
`A POSA would not be Motivated to Combine
`Khanzan and Sirer ..................................................................... 45
`
`The Combinations of Khazan and Sirer does not
`Teach or Suggest a “content processor” or “content
`received over a network” .......................................................... 48
`
`a.
`
`
`
`Khazan Does Not Disclose That an
`Instrumented DLL Is Content Received over a
`Network .......................................................................... 50
`
`b.
`
`
`Sirer Does not Cure any Deficiencies in Khazan ........... 53
`
`3.
`
`The Combinations of Khazan and Sirer does not
`Teach or Suggest “a call to a first function” ............................. 53
`
`a.
`
`
`
`Khazan Does Not Disclose Instrumenting
`Applications .................................................................... 55
`
`ii
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Khazan’s Jump Instruction is not a Function
`Call .................................................................................. 63
`
`
`
` b.
`
`The Combinations of Khazan and Sirer does not
`Teach or Suggest “invoking a second function with
`the input, only if a security computer indicates that
`such invocation is safe” ............................................................ 67
`
`The Combinations of Khazan and Sirer does not
`Teach or Suggest the Transmitter Elements ............................. 67
`
`The Combinations of Khazan and Sirer does not
`Teach or Suggest the Receiver Elements .................................. 68
`
`4.
`
`5.
`
`6.
`
`E.
`
`The Claims of the ‘154 Patent are Not Invalid Under
`Grounds 2 ............................................................................................ 69
`
`1.
`
`2.
`
`3.
`
`Ben-Natan is Not Analogous Art to the ‘154 Patent ................ 70
`
`There is No Motivation to Combine Khazan, Sirer and
`Ben-Natan ................................................................................. 72
`
`Ben-Natan Does Not Disclose Modifying an Input to
`a Function .................................................................................. 73
`
`IX. SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS .............. 75
`
`Commercial Success............................................................................ 75
`
`Long-Felt But Unresolved Need and Recognition of a
`problem ................................................................................................ 79
`
`Skepticism and Unexpected Results ................................................... 79
`
`Failure of Others .................................................................................. 80
`
`A.
`
`B.
`
`C.
`
`D.
`
`
`
`iii
`
`
`
`

`
`I, Nenad Medvidovic, Ph.D., declare and state as follows:
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I.
`
`QUALIFICATIONS
`1.
`
`I make this Declaration based upon my own personal knowledge,
`
`information, and belief, and I would and could competently testify to the matters
`
`set forth herein if called upon to do so.
`
`2.
`
`I received a Bachelor of Science (“BS”) degree, Summa Cum Laude,
`
`from Arizona State University’s Computer Science and Engineering department.
`
`3.
`
`I received a Master of Science (“MS”) degree from the University of
`
`California at Irvine’s Information and Computer Science department.
`
`4.
`
`I received a Doctor of Philosophy (“PhD”) degree from the University
`
`of California at Irvine’s Information and Computer Science department. My
`
`dissertation was entitled, “Architecture-Based Specification-Time Software
`
`Evolution.”
`
`5.
`
`I am employed by the University of Southern California (“USC”) as a
`
`faculty member in the Computer Science Department, and have been since
`
`January, 1999. I currently hold the title of Professor with tenure. Between
`
`January, 2009 and January 2013, I served as the Director of the Center for Systems
`
`and Software Engineering at USC. Between July, 2011, and July, 2015, I served as
`
`my Department’s Associate Chair for PhD Affairs.
`
`
`
` - 1 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I teach graduate and undergraduate courses in Software Architecture,
`
`6.
`
`Software Engineering, and Embedded Systems, and advise PhD students. I have
`
`graduated 15 PhD students and advise 7 students currently pursuing a PhD.
`
`7.
`
`I served as Program Co-Chair for the flagship conference in my
`
`field—International Conference on Software Engineering (“ICSE”)—held in May
`
`2011. I have served as Chair or Co-Chair for various other conferences in the
`
`Software Engineering field, including: the Fifth Working IEEE/IFIP Conference
`
`on Software Architecture, the Third IEEE International Conference on Self-
`
`Adaptive and Self-Organizing Systems, the Fifteenth International ACM SIGSOFT
`
`Symposium on Component Based Software Engineering, the IEEE/CSSE/ISE
`
`Workshop on Software Architecture Challenges for the 21st Century, and the
`
`Doctoral Symposium at the Sixteenth ACM SIGSOFT International Symposium
`
`on the Foundations of Software Engineering.
`
`8.
`
`I serve or have served as an editor of several peer-reviewed journals,
`
`including: “IEEE Transactions on Software Engineering,” “ACM Transactions on
`
`Software Engineering and Methodology”, “Journal of Software Engineering for
`
`Robotics,” “Elsevier Information and Software Technology Journal,” “Journal of
`
`Systems and Software,” “Journal of Software Engineering Research and
`
`Development,” and “Springer Computing Journal.” Additionally, I have served as
`
`a guest editor of several special issues for different journals.
`
`
`
` - 2 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`Between September 2013 and September 2015 I served as Chair of
`
`9.
`
`the ICSE Steering Committee. I am currently a member of the Steering Committee
`
`of the European Conference on Software Engineering. I previously served as a
`
`member of the Steering Committees of ICSE and of the Working IEEE/IFIP
`
`Conference on Software Architecture.
`
`10. Since July, 2015, I have served as Chair of the Association for
`
`Computing Machinery’s Special Interest Group on Software Engineering (ACM
`
`SIGSOFT), the largest professional organization in my field of work.
`
`11.
`
`I co-authored “Software Architecture: Foundations, Theory, and
`
`Practice,” a widely used textbook in the field of Software Systems’ Architecture.
`
`12.
`
`I have served as editor of various books in the Software Engineering
`
`field including: “Proceedings of the 3rd International Conference on Self-Adaptive
`
`and Self-Organizing Systems,” “Proceedings of the Warm-Up Workshop for the
`
`32nd International Conference on Software Engineering,” and “Proceedings of the
`
`5th Working IEEE/IFIP Conference on Software Architecture.”
`
`13.
`
`I have authored or co-authored over 200 papers in the Software
`
`Engineering field. My most cited paper has been cited nearly 2,500 times. A
`
`paper I co-authored in the 1998 International Conference on Software Engineering,
`
`my field’s flagship conference, was given ten years later, in 2008, that
`
`conference’s Most Influential Paper Award.
`
`
`
` - 3 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I have served as referee or reviewer for over twenty peer-reviewed
`
`14.
`
`journals, including: “ACM Transactions on Software Engineering and
`
`Methodology,” “IEEE Transactions on Software Engineering,” “Journal of
`
`Software Engineering for Robotics,” “IEEE Software,” “IEEE Transactions on
`
`Industrial Informatics,” “Elsevier Information and Software Technology Journal,”
`
`“Journal of Systems and Software,” “Journal of Automated Software Engineering,”
`
`“IEEE Transactions on Parallel and Distributed Systems,” “IEEE Computer,” and
`
`“IEEE Proceedings – Software Engineering.”
`
`15.
`
`I have been named a Distinguished Scientist of the Association for
`
`Computing Machinery (“ACM”). I have been elected a Fellow the Institute of
`
`Electrical and Electronics Engineers (IEEE), IEEE’s highest grade that is granted
`
`to less than 0.1% of its membership annually.
`
`16.
`
`I am very familiar with and have substantial expertise in the area of
`
`software systems development / software engineering, software architecture,
`
`software design, and distributed systems.
`
`17.
`
`I have reviewed in detail U.S. Patent No. 8,141,154 (Ex. 1001, the
`
`“‘154 Patent”); the Petition for Inter Partes Review of the ‘154 Patent filed in Case
`
`No. IPR2015-01979 (Paper No. 2, “Petition”); Dr. Rubin’s declaration filed in
`
`Case No. IPR2015-01979 (Ex. 1002, “Rubin Decl.”); the Board’s Institution
`
`Decision in Case No. IPR2015-01979 (Paper 8, the “Institution Decision”); Patent
`
`
`
` - 4 -
`
`
`
`

`
`Owner’s Request for Rehearing in Case No. IPR2015-01979 (Paper No. 11,
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`“Rehearing Request”); the Board’s Decision Denying Request for Rehearing
`
`(Paper No. 12, “Decision Denying Rehearing”); the deposition transcript of Dr.
`
`Aviel Rubin (Exhibit 2005); Patent Application Pub. No. US 2005/0108562 A1
`
`(Exhibit 1003, “Khazan”); Sirer et al., Design and Implementation of a Distributed
`
`Virtual Machine for Networked Computers (Exhibit 1004, “Sirer”); and U.S.
`
`Patent No. 7,437,362 B1 (Exhibit 1005, “Ben-Natan”).
`
`18.
`
`I understand that I am submitting a declaration in connection with the
`
`above-referenced Inter Partes review (“IPR”) proceeding involving the ‘154
`
`Patent.
`
`II.
`
`SCOPE OF ASSIGNMENT AND APPROACH
`19.
`
`I have been retained as an expert on behalf of Patent Owner, Finjan,
`
`Inc., (“Finjan”), to provide information and opinions to the Patent Trial and Appeal
`
`Board (hereinafter “the Board”) to assist in the determination of the validity of
`
`certain of Finjan’s patent claims of the ‘154 Patent for which the Board has
`
`instituted an IPR proceeding. Specifically, counsel for Finjan asked me to provide
`
`opinions regarding the validity of claims 1-8, 10, and 11 of the ‘154 Patent in view
`
`of certain prior art references cited by Petitioner Palo Alto Networks, Inc.
`
`(“PAN”).
`
`
`
` - 5 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I have been informed by counsel and I understand that the analysis of
`
`20.
`
`whether a patent is anticipated or obvious is performed from the perspective of a
`
`person of ordinary skill in the art at the time of the patented inventions. The
`
`relevant timeframe for the claims of the ‘154 Patent is December 2005.
`
`21.
`
`In reaching the opinions expressed in this declaration, I adopt the
`
`claim constructions set forth by the Board in its Institution Decision. See
`
`Institution Decision at 4-5.
`
`22.
`
`I have reviewed the documents cited by Dr. Rubin in his declaration.
`
`I intend the full page range of all exhibits attached to his declaration be considered
`
`as part of this declaration.
`
`23.
`
`I am being compensated for my time spent in connection with this
`
`matter at the rate of $350 per hour for regular work, and $500 an hour for
`
`deposition and trial testimony. My compensation is in no way contingent on the
`
`outcome of this case.
`
`24. To the extent that I am presented with new information concerning the
`
`subject matter of this declaration or affecting any assumptions made herein, I
`
`reserve the right to supplement this declaration accordingly.
`
`
`
` - 6 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`III. APPLICABLE STANDARDS AND CONTROLLING PRINCIPLES
`A. OBVIOUSNESS
`25. Counsel has informed me, and I understand, that an issued patent
`
`claim is invalid as obvious if it can be shown that the differences between the
`
`patented subject matter and the prior art are such that the subject matter as a whole
`
`would have been obvious, at the time the invention was made, to a person having
`
`ordinary skill in the art. Relevant considerations include the level of ordinary skill
`
`in the art; the scope and content of the prior art; differences between the prior art
`
`and the claims at issue; and the so-called objective secondary factors of
`
`nonobviousness.
`
`26. Counsel has informed me, and I understand, that in order to evaluate
`
`the obviousness of any claim of the ‘154 Patent over a given prior art combination,
`
`I should analyze whether the prior art references, included collectively in the
`
`combination, disclose each and every element of the allegedly invalid claim as
`
`those references are read by the person of ordinary skill in the art at the time of the
`
`invention. Then I am to determine whether that combination makes the claims of
`
`the ‘154 Patent obvious to the person of ordinary skill in the art by a
`
`preponderance of the evidence, at the time of the inventions. I understand that
`
`such preponderance of the evidence is satisfied if the proposition is more likely to
`
`be true than not true.
`
`
`
` - 7 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`27. Counsel has informed me, and I understand, that the obviousness
`
`inquiry requires that the prior art be considered in its entirety. I am further
`
`informed and I understand that an invention cannot be obvious to try where “the
`
`breadth of the[] choices and the numerous combinations indicate that the[]
`
`disclosures would not have rendered the claimed invention obvious to try.”
`
`28. Counsel has informed me, and I understand, that even where all of the
`
`claim limitations are expressly disclosed in the prior art references, there must be
`
`some showing that a person of ordinary skill in the art would have been motivated
`
`to combine such prior art references and that there would have been a reasonable
`
`expectation of successfully achieving the claimed invention from such
`
`combination.
`
`29. Counsel has informed me, and I understand, in considering the
`
`obviousness of a claimed invention, one should not view the invention and the
`
`prior art with the benefit of hindsight. It is for that reason, I am informed and I
`
`understand, that obviousness is assessed by the person of ordinary skill in the art at
`
`the time the invention was made. In this regard, I am informed and I understand
`
`that the invention cannot be used as a guide to selecting and understanding the
`
`prior art. I understand that the appropriate standard is to determine whether a
`
`person of skill in the art would be motivated to combine references, not whether
`
`they could.
`
`
`
` - 8 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`30. Counsel has informed me, and I understand, that obviousness cannot
`
`be predicated on what was unknown at the time of the invention, even if the
`
`inherency of a certain feature is later established. Counsel has also informed me,
`
`and I understand, that unknown properties of the prior art may not be relied upon
`
`to provide the rationale for modifying or combining the prior art to reach the
`
`claimed subject matter.
`
`31. Counsel has informed me, and I understand, that a reference may be
`
`said to teach away when a person of ordinary skill, upon reading the reference,
`
`would be discouraged from following the path set out in the reference, or would be
`
`led in a direction divergent from the path that was taken by the applicant.
`
`32. Counsel has informed me, and I understand, that the “time of
`
`invention” applicable to the inventions of claims 1-8, 10, and 11 of the’154 Patent
`
`is no later than December 12, 2005, which I understand to be the priority date of
`
`the ‘154 Patent.
`
`B.
`PERSON OF ORDINARY SKILL IN THE ART
`33. Counsel has informed me, and I understand, that the “person of
`
`ordinary skill in the art” (“POSA”) is a hypothetical person who is presumed to be
`
`familiar with the relevant scientific field and its literature at the time of the
`
`invention. This hypothetical person is also a person of ordinary creativity capable
`
`of understanding the scientific principles applicable to the pertinent field.
`
`
`
` - 9 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`I am informed by counsel and I understand that the level of ordinary
`
`34.
`
`skill in the art may be determined by reference to certain factors, including (1) the
`
`type of problems encountered in the art, (2) prior art solutions to those problems,
`
`(3) the rapidity with which innovations are made, (4) the sophistication of the
`
`technology, and (5) the educational level of active workers in the field. I further
`
`understand that the ‘154 Patent claims a priority date of December 12, 2005.
`
`35.
`
`It is my opinion that the person of ordinary skill in the art in the field
`
`of the ‘154 Patent would be someone with a bachelor’s degree in computer science
`
`or related field, and either (1) two or more years of industry experience and/or (2)
`
`an advanced degree in computer science or related field.
`
`36. Based on my training and experience, I believe that I am a person of
`
`greater-than-ordinary skill in the relevant art and, as of December 12, 2005 was a
`
`person of at least ordinary skill in the relevant art, which permits me to give an
`
`opinion about the qualifications of one of ordinary skill at the time of the
`
`invention.
`
`37.
`
`I note that Dr. Rubin’s opinion on person of ordinary skill in the art in
`
`his declaration is (Exhibit 1002 at ¶ 21):
`
`The relevant technology field for the ’154 patent is security programs,
`including content scanners for program code. Based on this, and the
`four factors above, it is my opinion that a POSA would hold a
`bachelor’s degree or the equivalent in computer science (or related
`academic fields) and three to four years of additional experience in the
`
`
`
` - 10 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`field of computer security, or equivalent work experience. This
`definition of the POSA applies to the time of the alleged invention of
`2005.
`
`38. My opinions stated in this declaration would be the same if rendered
`
`from the perspective of a person of ordinary skill in the art set out by Dr. Rubin.
`
`IV. SUMMARY OF MY OPINIONS
`39.
`In this declaration I explain that the person of ordinary skill in the art
`
`understands, and I conclude, that claims 1-8, 10, and 11 of the ‘154 Patent are not
`
`obvious over the combination of: (1) Khazan and Sirer1 or (2) the combination of
`
`Khazan, Sirer, and Ben-Natan.
`
`V. OVERVIEW OF THE ‘154 PATENT
`40. The ‘154 Patent was filed June 14, 2010, and claims priority to U.S.
`
`Patent No. 7,757,289, filed December 12, 2005. The systems and methods of the
`
`‘154 Patent are generally directed to systems and methods for protecting a
`
`computer from dynamically generated malicious content. Dynamically generated
`
`malicious content gets its name because it takes advantage of the dynamic features
`
`of web content, to evade traditional detection when received over the network. For
`
`
`1 On its face, Sirer appears to have been published in December 1999 as part of
`
`Operating Systems Review, pages 202-216. For the purposes of this opinion, I
`
`have been asked to treat Sirer as prior art to the ‘154 Patent.
`
`
`
` - 11 -
`
`
`
`

`
`example, dynamic web pages can include input that initially appears to be merely
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`innocuous text embedded within HTML pages, only to subsequently generate
`
`malicious content on the fly. ‘154 Patent at 3:30-4:8.
`
`41. The ‘154 Patent describes a system that protects against such
`
`dynamically generated malicious content by processing content received over a
`
`network and transmitting input within the received content to a security computer.
`
`See ‘154 Patent at 5:4–25. The ‘154 Patent discloses that a second function is then
`
`only invoked with the input if the security computer has deemed that such
`
`invocation is safe. See ‘154 Patent at 5:4–25. Thus, even if the input was yet
`
`unknown when the content was received over the network, the claimed invention
`
`can still protect against dynamically generated malicious content by including the
`
`security computer lookup when the received content is processed. In one
`
`implementation, the call to the first function can be a call to a substitute function
`
`that is found in the content received over the network (e.g.
`
`Substitute_document.write(‘<h1>hello</h1>’):”
`
`
`
` - 12 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`
`
`‘154 Patent at 10:41-59.
`
`42.
`
`In other implementations, the first function can be a non-substitute
`
`function found in the content received over the network upon invocation of which
`
`the input is sent to the security computer for inspection. Using this method, the
`
`security computer can inspect function inputs that are dynamically generated and,
`
`therefore, may not be identifiable or scannable using traditional scanning
`
`techniques. Notably, each independent claim of the ‘154 Patent recites that the call
`
`to the first function be found in the content received over a network, a feature that
`
`is disclosed nowhere in the references cited in the Petition.
`
`
`
` - 13 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`VI. CLAIM CONSTRUCTION
`43.
`I understand that during inter partes review, claims must be “given
`
`their broadest reasonable interpretation consistent with the specification.” The
`
`broadest reasonable interpretation does not mean the broadest possible
`
`interpretation. Rather, the meaning given to a claim term must be consistent with
`
`the ordinary and customary meaning of the term (unless the term has been given a
`
`special definition in the specification), and must be consistent with the use of the
`
`claim term in the specification and drawings. Thus, even under the broadest
`
`reasonable interpretation, the board’s construction cannot be divorced from the
`
`specification and the record evidence, and must be consistent with the one that
`
`those skilled in the art would reach.
`
`44.
`
`In my opinion the person of ordinary skill in the art would adopt the
`
`following claim construction, consistent with the Board’s adoption of this
`
`construction in its Institution Decision (Paper No. 8) and consistent with the
`
`broadest reasonable construction of these terms in view of the specification of the
`
`‘154 Patent:
`
`Claim Term
`
`Construction
`
`“first function”
`
`No construction
`
`“second function”
`
`No construction
`
`
`
` - 14 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`No construction
`
`No construction
`
`“transmitter”
`
`“receiver”
`
`“FIRST FUNCTION”
`
`In my opinion, a person of ordinary skill in the art would understand
`
`A.
`45.
`
`the term “first function” term as its plain and ordinary meaning. I understand that
`
`the Board declined to adopt a construction for “first function,” as it determined that
`
`the construction of the term was not at the heart of the parties’ dispute. Institution
`
`Decision at 5.
`
`46. The plain and ordinary meaning should be applied to the term “first
`
`function” because a person of ordinary skill in the art understands the meaning of
`
`this term. In fact, this term does not require construction as it is already defined in
`
`the claim language in a manner that is easily understood by one of ordinary skill in
`
`the art. For example, claim 1 explains that a call to a first function is included
`
`within the content received over a network: “content received over a network, the
`
`content including a call to a first function.” Petitioner seeks a construction that
`
`narrows the term “first function” to “substitute function” and in doing so, rewrites
`
`the claims to include limitations that do not exist in the claims. The claims that
`
`recite a first function do not explicitly mention that this function must be a
`
`
`
` - 15 -
`
`
`
`

`
`“substitute”, only that it is a “first” function. As such, it is my opinion that “first
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`function” should be understood to have its plain and ordinary meaning.
`
`B.
`47.
`
` “SECOND FUNCTION”
`
`In my opinion, a person of ordinary skill in the art would understand
`
`the term “second function” term as its plain and ordinary meaning. I understand
`
`that the Board declined to adopt a construction for “second function,” as it
`
`determined that the construction of the term was not at the heart of the parties’
`
`dispute. Institution Decision at 5.
`
`48. As with the term “first function” discussed directly above, the plain
`
`and ordinary meaning should be applied to the term “second function” because a
`
`person of ordinary skill in the art understands the meaning of this term. Petitioner
`
`seeks a construction that narrows the term “first function” to “original function”
`
`and in doing so, rewrites the claims to include limitations that do not exist in the
`
`claims. Petitioner’s proposed construction is incorrect because the claims do not
`
`limit the recited “second function” to an “original function.” Again the claims that
`
`recite a second function do not explicitly mention that this function must also be
`
`“original”, only that it is a “second” function. As such, it is my opinion that
`
`“second function” should be understood to have its plain and ordinary meaning.
`
`
`
` - 16 -
`
`
`
`

`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`“TRANSMITTER”
`
`In my opinion, a person of ordinary skill in the art would understand
`
`C.
`49.
`
`the term “transmitter” term as its plain and ordinary meaning. I understand that the
`
`Board declined to adopt a construction for “transmitter,” as it determined that the
`
`construction of the term was not at the heart of the parties’ dispute. Institution
`
`Decision at 5.
`
`50. The term “transmitter” needs no construction, and the plain and
`
`ordinary meaning within the context of the claims should apply. This term appears
`
`in challenged claims 1–3 and 6–8 with its scope clearly set forth in the claims.
`
`Petitioner proposes that the term “transmitter” should mean “a circuit or electronic
`
`device designed to send electrically encoded data to another location.” Despite the
`
`fact that this term is easily understood by one of ordinary skill in the art, Petitioner
`
`seeks a construction of the transmitter
`
`(1) being “a circuit or electronic device”, which is unnecessarily broad
`
`and ambiguous;
`
`(2) that transmits “electrically encoded data”, which would explicitly
`
`preclude a number of higher-order abstractions typically used in
`
`modern computer systems, such as packets and streams;
`
`(3) “to another location”
`
`
`
` - 17 -
`
`
`
`

`
`Petition at 11. Petitioner provides no reason to replace the common, well
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`understood term “transmitter” with “a circuit or electronic device designed to send
`
`electrically encoded data to another location.” As such, it is my opinion that
`
`“transmitter” should be understood to have its plain and ordinary meaning.
`
`D.
`51.
`
`“RECEIVER”
`
`In my opinion, a person of ordinary skill in the art would understand
`
`the term “receiver” term as its plain and ordinary meaning. I understand that the
`
`Board declined to adopt a construction for “receiver,” as it determined that the
`
`construction of the term was not at the heart of the parties dispute. Institution
`
`Decision at 5.
`
`52. As with the term “transmitter” discussed direction above, the term
`
`“receiver” needs no construction, and the plain and ordinary meaning within the
`
`context of the claims should apply. This term appears in challenged claims 1–3
`
`and 6–8 with its scope clearly set forth in the claims Petitioner proposes that the
`
`term “receiver ” should mean “a circuit or electronic device designed to accept data
`
`from an external communication system.” Petition at 12. Once again, Petitioner
`
`provides no reason to replace the common, well-understood term “receiver.”
`
`Despite the fact that this term is easily understood by one of ordinary skill in the
`
`art, Petitioner seeks a construction that adds unnecessary limitations to the claim
`
`and in doing so, rewrites the claims to include the additional limitations of the
`
`
`
` - 18 -
`
`
`
`

`
`receiver (1) being “a circuit or electronic device;” (2) “designed to accept data;”
`
`Declaration of Dr. Nenad Medvidovic
`IPR2015-01979 (U.S. Patent No. 8,141,154)
`
`
`from (3) “an external communication system.”
`
`E.
`53.
`
`“CONTENT”
`
`In my opinion, a person of ordinary skill in the art would understand
`
`the “content” in the context of the ‘154 Patent as “a data