UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`PLAID TECHNOLOGIES INC.,
`Petitioner
`
`v.
`
`YODLEE, INC.
`Patent Owner
`_________________________
`
`Case No. IPR2015-______
`Patent 6,317,783
`_________________________
`
`DECLARATION OF TODD MOWRY IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Plaid Technologies, Inc.
`Exhibit 1008
`
`

`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION AND QUALIFICATIONS ............................................... 1
`I.
`PROFESSIONAL QUALIFICATIONS ......................................................... 1
`II.
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................. 5
`IV. APPLICABLE LEGAL STANDARD ............................................................ 7
`A.
`Claim Construction ............................................................................... 7
`B.
`Obviousness ........................................................................................... 7
`V. OVERVIEW OF THE ACCUSED TECHNOLOGY ................................... 10
`VI. THE ’783 PATENT ....................................................................................... 12
`A. Description of the ’783 Patent ............................................................. 12
`B.
`Prosecution History ............................................................................. 16
`VII. CLAIM CONSTRUCTION .......................................................................... 18
`VIII. PRIOR ART RELIED UPON ....................................................................... 20
`ANALYSIS OF THE PROPOSED REJECTIONS ...................................... 20
`A. Ground 1: Claims 1, 3–20, and 22–36 are Rendered Obvious by
`Sugiarto in view of Brandt .................................................................. 20
`Summary of Sugiarto .......................................................................... 21
`Summary of Brandt ............................................................................. 24
`The Proposed Combination of Sugiarto and Brandt ........................... 27
`Motivation to Combine ....................................................................... 28
`Reasonable Expectation of Success .................................................... 32
`1.
`Sugiarto and Brandt render Independent Claim 1
`Obvious. .................................................................................... 37
`Dependent Claim 3. .................................................................. 50
`2.
`Dependent Claims 4 and 5. ....................................................... 52
`3.
`Dependent Claims 6–12 and 14–17 .......................................... 54
`4.
`Dependent Claim 13 ................................................................. 58
`5.
`Independent Claim 18 and Dependent Claim 19. ..................... 59
`6.
`Independent claim 20 and Dependent Claims 22–36 ............... 60
`7.
`Ground 2: Claims 2 and 21 are Rendered Obvious by Sugiarto in view
`of Brandt in further view of Chow. ..................................................... 65
`CONCLUSION ........................................................................................................ 69
`
`
`1.
`2.
`3.
`i.
`ii.
`
`i
`
`

`
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`1.
`
`I have been retained on behalf of the Petitioner Plaid Technologies,
`
`Inc., to provide this Declaration concerning technical subject matter relevant to the
`
`inter partes review of a covered business method patent of U.S. Patent No.
`
`6,317,783 (“the ’783 Patent”).
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts
`
`stated in this Declaration and could testify competently to them if asked to do so.
`
`II. PROFESSIONAL QUALIFICATIONS
`
`3.
`
`I am a Professor in the Department of Computer Science at Carnegie
`
`Mellon University. I also have a courtesy appointment in the Department of
`
`Electrical and Computer Engineering. I have served on the faculty of Carnegie
`
`Mellon University for eighteen (18) years starting in 1997 through the present
`
`(2015).
`
`4.
`
`I also served on the faculty of the University of Toronto for four (4)
`
`years between 1993 and 1997, in the Department of Electrical and Computer
`
`Engineering and a courtesy appointment in the Department of Computer Science.
`
`Prior to that appointment, I served as a Graduate Research Assistant in the
`
`Department of Electrical Engineering at Stanford University for four (4) years
`
`between 1989 and 1993.
`
`5.
`
`As a faculty member, I have taught and continue to teach courses and
`
`1
`
`

`
`
`
`directed research in computer systems and software, operating systems, distributed
`
`and network systems, object-oriented programming and design, and mobile
`
`computing.
`
`6.
`
`I received a B.S. degree in Electrical Engineering with Highest
`
`Distinction from the University of Virginia in May 1988. I received an M.S. in
`
`Electrical Engineering from Stanford University in June 1989, and a Ph.D. in
`
`Electrical Engineering from Stanford University in March 1994.
`
`7.
`
`I have worked in the computer industry in various capacities. I was a
`
`part-time Computer Architect and then Computer Architecture Consultant at
`
`Silicon Graphics, Inc. in Mountain View, California (formerly MIPS Computer
`
`Systems in Sunnyvale, California) from 1989 to 1993 and 1993 to 1996,
`
`respectively. I was a Visiting Scientist at IBM in Toronto from 1996 to 2004.
`
`During that same time period (1996 to 2004), I was also a Member of the
`
`Technical Advisory Board of SandCraft, Inc. in Santa Clara, California. I was the
`
`Director of the Intel Research Pittsburgh Lab at Intel Corporation in Pittsburgh,
`
`Pennsylvania from 2004 to 2007.
`
`8.
`
`I have authored 19 journal articles and 55 conference papers. I am
`
`also an inventor on 5 patents.
`
`9.
`
`I have published a number of papers in the top research conferences in
`
`the fields of operating systems and data storage and retrieval (including a paper
`
`2
`
`

`
`
`that won the Best Paper Award at the USENIX 2nd Symposium on Operating
`
`Systems Design and Implementation (OSDI ’96)). I have also been an active
`
`member of the Parallel Data Lab at Carnegie Mellon University since 1997,
`
`described as “academia’s premiere storage systems research center.”1
`
`10.
`
`I am the recipient of several honors and awards: the Arthur Samuel
`
`Thesis Award (awarded by the Stanford Computer Science department to the top
`
`two Ph.D. theses in a given year), several IBM Faculty Development Awards
`
`(1996, 1997, 1998, 2000, 2001, 2002, and 2003), several Best Paper Awards (the
`
`Second Symposium on Operating Systems Design and Implementation in 1996;
`
`the 20th International Conference on Data Engineering (ICDE) in 2004), the
`
`Alfred P. Sloan Research Fellowship (awarded to researchers in recognition of
`
`distinguished performance and a unique potential to make substantial contributions
`
`to their field), the Most Thought- Provoking Idea Award (awarded by the
`
`Architectural Support for Programming Languages and Operating Systems
`
`(ASPLOS), in 2004), and the TR100 Award (awarded by MIT’s Technology
`
`Review magazine to the top 100 most promising young innovators in science and
`
`technology, in 1999).
`
`
`1 See the Parallel Data Lab website at http://www.pdl.cmu.edu/.
`
`3
`
`

`
`
`
`11.
`
`I am a member of the Institute of Electrical and Electronics Engineers
`
`(IEEE) and the Association of Computing Machinery (ACM). I am the Editor-in-
`
`Chief of ACM Transactions on Computer Systems (since 2013), which is the
`
`premier journal for computer systems research. (I was an Associate Editor for the
`
`journal prior to that, since 2001). I was the Program Chair of the International
`
`Conference on Architectural Support for Programming Languages and Operating
`
`Systems (ASPLOS) in 2010. I was the Co-Program Chair of the International
`
`Conference on Parallel Architectures and Compilation Techniques (PACT) in
`
`2001. I have been on the programming committee in various years for ASPLOS,
`
`the International Symposium on Computer Architecture (ISCA), the International
`
`Symposium on Microarchitectures, the Workshop on Architectural and System
`
`Support for Improving Format) Workshop.
`
`12. Overall, I have over twenty-three (23) years of experience in the field
`
`of computer science and, specifically, computer architecture, compiler
`
`optimizations, operating systems, and parallel processing. A copy of my
`
`curriculum vitae, including references to the publications I authored, is attached to
`
`my Report as Appendix A.
`
`13.
`
`In light of the foregoing, I consider myself to be an expert in the field
`
`of computer science, and believe that I am qualified to provide an opinion as to
`
`what a person of ordinary skill in the art would have understood, known, or
`
`4
`
`

`
`
`
`concluded regarding the subject matter of the ’783 Patent the time of its alleged
`
`invention.
`
`14.
`
`I am being compensated for the time I have spent on this action at my
`
`customary rate of $600 per hour, plus reimbursement for expenses. My
`
`compensation does not depend in any way upon the opinions or testimony that I
`
`provide or the outcome of this action.
`
`15. My opinions expressed herein are based on review and analysis of
`
`certain information obtained in connection with my work on this matter, together
`
`with my training, education, and experience. The opinions expressed herein are
`
`my own.
`
`16.
`
`In my analysis, I considered the ’783 Patent and its file history, as
`
`well as the prior art and other documentation discussed below.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`
`17. Throughout this report, I consider the issues from the perspective of a
`
`person having ordinary skill in the art in or around October 1998, the earliest date
`
`to which the ’783 Patent could claim priority.
`
`18. The ’783 Patent is titled “Apparatus and methods for automated
`
`aggregation and delivery of and transactions involving electronic personal
`
`information or data” and describes a process for automated aggregation, retrieval
`
`5
`
`

`
`
`
`and delivery of personal information. Generally categorized, the ’783 Patent deals
`
`with methods for logging into websites and gathering personal data from them.
`
`19.
`
`In determining the characteristics of a hypothetical person of ordinary
`
`skill in the art around October 1998 for the technology described in the ’783
`
`Patent, I considered a number of factors, including how web-based information
`
`retrieval systems were designed and implemented at and before that time, the
`
`nature of problems encountered in this field, and the pace at which innovations
`
`were made at that time. I also considered the educational background and
`
`experience of those actively working in the field.
`
`20.
`
`It is my opinion that for the purposes of the ’783 Patent, a person of
`
`ordinary skill in the art, at the time the patent was filed, would be one having a
`
`Bachelor’s Degree in electrical engineering, computer science, or a related
`
`scientific field, and some work experience in the computer science field which
`
`could include programming experience. Alternatively, a person of ordinary skill in
`
`the art would possess a combination of education and experience in certain
`
`relevant fields of computer science, such as graphical user interface design, and
`
`knowledge of software design, data structures, operating systems, archiving
`
`systems, and client-server computing. I recognize that someone with less technical
`
`education but more practical experience, or more technical education but less
`
`6
`
`

`
`
`
`practical experience could also have been considered a personal of ordinary skill in
`
`the art.
`
`IV. APPLICABLE LEGAL STANDARD
`
`A. Claim Construction
`21.
`I have been informed by counsel and therefore understand that the
`
`first step in determining the validity of an asserted claim is for the claim to be
`
`properly construed.
`
`22.
`
`I understand that in proceedings before the Board, patent claims are to
`
`be given their broadest reasonable interpretation, consistent with the teachings of
`
`the specification and file history.
`
`23.
`
`I have reviewed Petitioner’s proposed constructions as explicitly
`
`identified in the Petition, and I agree that those constructions reflect the broadest
`
`reasonable interpretation of those claims. I understand that the Board has not yet
`
`construed the terms in this proceeding, and I reserve the right to supplement this
`
`Declaration based on alternative constructions proposed by the Patent Owner and
`
`the constructions adopted by the Board to the extent that these constructions differ
`
`from those proposed by Petitioner.
`
`B. Obviousness
`24.
`I understand that a patent claim is invalid under 35 U.S.C. §103 if the
`
`differences between the invention and the prior art are such that the subject matter
`
`7
`
`

`
`
`
`as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which the subject matter pertains.
`
`Rationales that may support a finding of obviousness include:
`
`• combining prior art elements according to known methods to yield
`predictable results;
`• simple substitution of one known element for another to obtain
`predictable results;
`• use of known techniques to improve similar devices (methods, or
`products) in the same way;
`• applying a known technique to a known device (method, or
`product) ready for improvement to yield predictable results;
`• “obvious to try” — choosing from a finite number of identified,
`predictable solutions, with a reasonable expectation of success;
`• known work in one field of endeavor may prompt variations of it
`for use in either the same field or a different one based on design
`incentives or other market forces if the variations would have been
`predictable to one of ordinary skill in the art; and
`• some teaching, suggestion, or motivation in the prior art that would
`have led one of ordinary skill to modify the prior art reference or to
`combine prior art reference teachings to arrive at the claimed
`invention.
`
`25. Even if one reference does not show the whole of the invention, if it
`
`would have been obvious to a person of ordinary skill in the art at the relevant time
`
`to add the missing pieces to the invention (for example as a matter of standard
`
`engineering practice or application of a well-known principle in the field), then a
`
`single reference can render a claim invalid even if it does not show the whole
`
`8
`
`

`
`
`
`invention. Moreover, a combination of two or more references can render a claim
`
`invalid as obvious whether or not there is an explicit suggestion in one of the
`
`references to combine the two references, if as a matter of engineering skill or
`
`practice in the field it would be known to do so. That said, I understand that it is
`
`impermissible to simply engage in hindsight reconstruction of the claimed
`
`invention, using the applicant’s invention as a template and selecting elements
`
`from the references to fill the gaps.
`
`26.
`
`I understand that the obviousness inquiry is based on the scope and
`
`content of the prior art, the differences between the prior art and the claim, the
`
`level of ordinary skill in the art at the relevant time, and any objective evidence
`
`(secondary indicia) of non-obviousness, to the extent they exist.
`
`27.
`
`I understand that an inquiry pertinent to secondary indicia of non-
`
`obviousness may include, for example, evidence of:
`
`• long-felt and unmet need in the art that was satisfied by the
`invention of the patent;
`• failure of others to achieve the results of the invention;
`• commercial success or lack thereof of the products and processes
`covered by the invention;
`• deliberate copying of the invention by others in the field;
`• taking of licenses under the patent by others;
`• and praise of the invention by others skilled in the art.
`
`9
`
`

`
`
`
`28.
`
`I also understand that there must be a nexus between any such
`
`secondary indicia of non-obviousness and the invention, which it is the patentee’s
`
`burden to show. I understand that absent a nexus, any evidence of secondary
`
`inddicia is to be given little to no probative weight.
`
`V. OVERVIEW OF THE ACCUSED TECHNOLOGY
`
`29. By the early-to-mid 1990s, computers had started to become
`
`household items, and the world saw an explosion of content become available to
`
`individuals using the World Wide Web. As people’s connectivity increased, so too
`
`did their ability to “access various types of information, disseminate information,
`
`and be exposed to electronic commerce activities, all with a great degree of
`
`freedom.” U.S. Patent No. 6,401,118 (“Thomas”) (Ex. 1015), 1:18–29.
`
`30. While the proliferation of web-based content increased access to
`
`information, it also brought with it the problem of finding efficient, user-friendly
`
`methods for accessing that data. As a result, software solutions that provided for
`
`the collection and delivery of data on the web had become well known to those of
`
`ordinary skill in the art before October 1998.
`
`31.
`
`In one example, in describing the state of the art, the specification of
`
`the ’783 patent explains that “the portal strategy was successfully adopted as an
`
`efficient way for consumers to easily access a variety of content sources in a
`
`single, easy to use format.” Id., 1:50–53. However, “[a]s the volume of available
`
`10
`
`

`
`
`
`online content continues to grow exponentially; portals are now confronted with
`
`the need to make different types of content available to different consumers based
`
`upon their particular preferences and tastes.” Id., 1:53–57.
`
`32.
`
`In another, U.S. Patent No. 6,278,449 to Sugiarto (“Sugiarto”) (Ex.
`
`1005) describes an apparatus which “collect[s] information from various web
`
`pages from the worldwide web internet, configure[s] this various information in
`
`accordance with a predefined user configuration file, defined by a particular user,
`
`and transmit[s] the configured various information to a highly portable internet
`
`access device.” Sugiarto, Ex. 1005, 2:10–17.
`
`33. As new aggregation and delivery services developed, those of
`
`ordinary skill in the art recognized that much of the personal information available
`
`on the WWW is only accessible after the user has been authenticated, for example,
`
`by providing his or her login credentials (username and password). In order to
`
`automate and streamline this process, skilled artisans developed simulated web
`
`clients that simulated the user providing his or her credentials.
`
`34.
`
`In one example, U.S. Patent No. 5,892,905 to Brandt et al. (“Brandt”)
`
`(Ex. 1006) describes “the capability to easily access many different application
`
`programs over the WWW via a standardized [graphical user interface].” Brandt,
`
`3:57–60. In Brandt, a gateway accesses a user library to obtain authentication data
`
`needed to access software applications for the user. Id., 12:15–17. The gateway
`
`11
`
`

`
`
`
`then logs the user onto a requested service using normal security procedures. Id.,
`
`12:28–28.
`
`35. Likewise, skilled artisans at this time recognized end users often could
`
`not find out if server information changed given the Web’s client-server model.
`
`U.S. Patent No. 6,029,175 to Chow et al. (“Chow”) (Ex. 1006) sought to address
`
`this problem within the existing client-server architecture, disclosing a software
`
`agent, termed a “Revision Manager,” to monitors content at a server. Chow, Ex.
`
`1006, 3:60–64. The Revision Manager accepts user input indicating the user’s
`
`interest in monitoring a document. Id., 5:32–34. In response, the Revision
`
`Manager “spontaneously monitors the server to notice if the document has been
`
`modified.” Id., 6:2–4.
`
`VI. THE ’783 PATENT
`
`A. Description of the ’783 Patent
`36. The ’783 Patent relates to “an apparatus and process for automated
`
`aggregation and delivery of electronic personal information or data (PI),” ’783
`
`Patent, Ex. 1001, 1:23–26, as shown in Fig. 2 (below). According to the
`
`specification, an end user 210 accesses a client computer 220 that connects to the
`
`Internet 230 to access a PI engine 240 running on a PI host 290. Id., 4:29–34.
`
`Freishtat further discloses that client software 270 “could be a general Web
`
`browser such as Navigator or Communicator (Netscape).” Id., 4:29–34, 4:39–46.
`
`12
`
`

`
`
`
`PROVIDER
`CONIPUTER
`
`CLIENT
`SOFHNARE
`270
`
`Pl
`HOST
`
`160
`
`29°
`
`END
`USER
`210
`
`WEBSERVER
`
`PROVIDER
`COMPUTER
`
`\
`
`150
`
`PI ENGINE
`
`
`
`WEB SERVER
`
`
`
`
`
`13
`
`13
`
`

`
`
`
`37. The PI engine 240 (shown in Fig. 3 above) running on PI host 290
`
`examines stored PI 280 and refreshes it by directly reacquiring the PI from the
`
`particular information provider’s Web site 250 running on the provider’s computer
`
`system 260. Id., 4:33–39. PI engine 240 accesses multiple provider web sites for a
`
`single end user. Id., Fig. 5; id., 4:60–62; 6:55–67.
`
`38. The PI Engine includes a “PI access/transact component,” which
`
`“supports the update, acquisition and transaction functionality of the PI engine.”
`
`Id., 9:30–32. “For each piece of PI requiring access or update,” the PI
`
`access/transact component “looks up the access procedure and information needed
`
`for the particular PI in the Provider store” as well as “verification and access data,”
`
`which is found in the user store. Id., 9:38–41. “A simulated Web client could
`
`perform access or transaction processes automatically supplying access and
`
`verification data as necessary.” Id., 9:59–61.
`
`39. The PI engine 240 also stores the aggregated PI in its store 280 and
`
`delivers the PI to a selected destination, for example across the Internet 230 to the
`
`client computer 220 which displays the information to the end user 210 using the
`
`client software 270. Id., 4:39–46. “The present invention also contemplates
`
`indirect access of PI by the end user utilizing a Web site as an intermediary.” Id.,
`
`9:15–21. Freishtat further discloses delivery of “an access point directly to the
`
`14
`
`

`
`
`
`provider’s page supplying that PI. The access point may take the form of a link, a
`
`form button or some other interactive access mechanism.” Id., 14:24–67.
`
`40. A person of ordinary skill in the art at the relevant time would have
`
`appreciated that the end user in Freishtat is a specific natural person because the
`
`end user is the operator of desktop computer 220. To access his or her PI, an end
`
`user may be required to “login” to the system, i.e., request access to his or her PI.
`
`Id., 7:16–18; 10:30–44 (“the act of logging into the system by an end user
`
`effectively selects that end user for immediate PI update.”). Moreover, the PI that
`
`is aggregated and sent to the end user is “specific to the end user requiring identity
`
`verification for access.” Id., 4:22–26. Indeed, PI is “all of the data that companies,
`
`information providers, have that is specific or unique to each person such as
`
`monthly bills, bank account balances, investments information, health care
`
`benefits, email, voice and fax messages, 401(k) holdings or potentially any other
`
`information pertinent to a particular end user.” Id., 4:15-21, 4:65-67.
`
`41. The specification of the ’783 Patent discloses a system for delivering
`
`“personal information” (PI) wherein the system includes “a user store including
`
`end user data, a provider store including information provider data, a personal
`
`information store
`
`including personal
`
`information and a processor
`
`that
`
`communicates with these data stores.” Id., 3:20–24. The processor “retrieve[s]
`
`personal information for the selected end user from the connected information
`
`15
`
`

`
`
`
`providers.” Id., 3:28–31. At bottom, the ’783 Patent is directed toward retrieving
`
`and storing personal information from multiple sources.
`
`B. Prosecution History
`42.
`I understand
`
`that Application No. 09/428,511
`
`(“the
`
`’511
`
`Application”), which was filed on October 27, 1999 with claims 1–28. ’783 Patent
`
`File History, Ex. 1003, 32. I also understand that the ’511 Application claimed the
`
`benefit of Provisional Application Nos. 60/105,917 and 60/134,395, filed October
`
`28, 1998 and May 17, 1999, respectively. Id., 35.
`
`43.
`
`I understand that, during prosecution of the ’511 Application, the
`
`USPTO issued an Office Action in Oct. 2000 in the ’511 Application, rejecting all
`
`of pending claims 1–28. Id., 184. Specifically, claims 1–28 were rejected under
`
`nonstatutory, obviousness-type double patenting over then-pending Application
`
`No. 09/427,602 (“the ’602 Application”) and under 35 U.S.C. § 103(a) as being
`
`obvious over U.S. Patent No. 5,995,965 to Experton (“Experton”), in view of U.S.
`
`Patent No. 5,862,325 to Reed et al., (“Reed”). Id., 149–53.
`
`44.
`
`I understand that the Applicant filed a Reply to the Office Action,
`
`which included a Terminal Disclaimer over the ’602 Application to overcome the
`
`double patenting rejection, and added claims 29–36. Id., 168. The Reply also
`
`included amendments to then-pending independent claims 1, 14, and 27 to
`
`overcome the obviousness rejection. For example, the Applicant amended
`
`16
`
`

`
`
`
`independent claim 14 (which was renumbered as claim 1 in the ’783 Patent) as
`
`follows:
`
`14. (Once amended) A method for delivering non-public
`personal information relating to an end user via a computer network to
`[at least one] an end user from at least one of a plurality of
`information providers securely storing the personal information, the
`method comprising the steps of:
`
`(a) the processor connecting with at least one information
`provider;
`(b) for a selected end user, the processor retrieving
`
`personal information for the selected end user from the connected at
`least one information provider based on end user data associated with
`the selected end user and information provider data associated with
`the connected one or more information providers, the end user data
`including
`information
`identifying
`the plurality of
`information
`providers securely storing the personal information relating to the end
`user the provider data Including a protocol for instructing the
`processor how to access the securely stored personal information via
`the network. the information accessible to the processor using the
`protocol also being accessible by the end user via the network
`independently of the system for delivering personal information; and
`
`(c)
`the processor storing
`the
`retrieved personal
`information in a personal information store for access by the selected
`end user.
`
`Id., 165.
`
`17
`
`

`
`
`
`45.
`
`I understand that the Applicant amended then-pending independent
`
`claims 1 and 27 in a similar manner. Id., 164–66. Moreover, in its Remarks, the
`
`Applicant argued that, as amended, then-pending claims 1, 14, and 27 were
`
`patentable over Experton and Reed because, “[i]n Applicant’s invention, the
`
`information providers are those that an end user could alternatively choose to
`
`access in a conventional manner, i.e., independently of using the inventive
`
`system. . . . Neither Experton nor Reed addresses the issue of making access to
`
`multiple ones of such personal information providers more convenient by
`
`obviating a user contacting each provider individually.” Id., 169 (italics removed).
`
`Thereafter, the Examiner allowed the ’511 Application, concluding that prior art of
`
`record did not disclose or render obvious “an end user data including identifying
`
`the plurality of information providers securely storing the personal information
`
`relating to the end user, the provider data including a protocol for instructing the
`
`processor how to access the securely stored personal information.” Id., 175
`
`(bolding in the original). But as described below, the concept that the Examiner
`
`found to be novel and non-obvious—automatic authentication and gathering—was
`
`well-known by the priority date of the ’783 Patent.
`
`VII. CLAIM CONSTRUCTION
`
`46.
`
`I understand that for purposes of this inter partes review proceeding,
`
`in comparing the claim language to the prior art, I am to construe that claim
`
`18
`
`

`
`
`
`language as a person of ordinary skill in the art at the time of the alleged invention
`
`would do in light of the specification. I also understand that in proceedings before
`
`the Board, patent claims are to be given their broadest reasonable interpretation,
`
`consistent with the teachings of the specification and file history.
`
`47.
`
`I have reviewed the claim constructions explicitly set forth in the
`
`Petition from that perspective and, in my opinion, believe the constructions are
`
`consistent with the broadest reasonable interpretations in light of the specification.
`
`At this time, I have no opinion as to whether these constructions would be the
`
`proper constructions for any district court litigation involving the ’783 Patent.
`
`48. Moreover, for terms where the parties have proposed different
`
`constructions in the Co-Pending District Court Action, it is my opinion that the
`
`proposed grounds of invalidity render the claims obvious under either Patent
`
`Owner’s or Petitioner’s proposed construction.
`
`49. To one of skill in the art at the time of the alleged invention, under the
`
`broadest reasonable interpretation standard, the term “non-public” would cover
`
`information secured by Web sites that require user log on (e.g., with a user name
`
`and password). This construction is consistent with the specification and the file
`
`history of the ’783 Patent.
`
`50. To one of skill in the art at the time of the alleged invention, the
`
`broadest reasonable interpretation of the term “intermediary web site” would be “a
`
`19
`
`

`
`
`
`Web site that is served by a Web server running on a computer that is not the end
`
`user’s computer and is not the “processor.” This construction is consistent with the
`
`specification and the file history of the ’783 Patent, as laid out in the Petition.
`
`VIII. PRIOR ART RELIED UPON
`
`51. The present petition states invalidity grounds under 35 U.S.C. § 103
`
`using the following patents and printed publication prior art:
`
`– U.S. Patent No. 6,287,449 to Sugiarto et al. (Ex. 1004) was filed on September
`
`3, 1998; this reference is prior art under pre-AIA 35 U.S.C. § 102(e) (the ’783
`
`Patent’s earliest claimed priority date is October 28, 1998).
`
`
`
`– U.S. Patent No. 5,892,905 to Brandt et al. (Ex. 1005) was filed on December
`
`23, 1996; this reference is prior art under pre-AIA 35 U.S.C. § 102(e).
`
`– U.S. Patent No. 6,029,175 to Chow et al. (Ex. 1006) was filed on June 6, 1996;
`
`this reference is prior art under pre-AIA 35 U.S.C. § 102(e).
`
`ANALYSIS OF THE PROPOSED REJECTIONS
`
`A. Ground 1: Claims 1, 3–20, and 22–36 are Rendered Obvious by
`Sugiarto in view of Brandt
`52. After studying the prior art mentioned above in detail, it is my opinion
`
`that a person of ordinary skill in the art at the relevant time would have viewed
`
`Sugiarto in combination with Brandt as disclosing each element of claims 1, 3–20,
`
`and 22–36 of the ’783 Patent. I have reviewed the discussion of these references in
`
`the Petition, which cites to certain portions of Sugiarto and Brandt that correspond
`
`20
`
`

`
`
`
`to the various elements of the challenged claims of the ’783 Patent, and it is my
`
`opinion, in view of the general knowledge in the art at the time, that this discussion
`
`is accurate and confirms that each element of claims 1, 3–20, and 22–36 is fully
`
`disclosed in Sugiarto in combination with Brandt. I have expanded on that
`
`discussion in more detail below.
`
`1. Summary of Sugiarto
`53. An annotated version of Fig. 1 of Sugiarto is provided below. The
`
`annotations in blue illustrate Petitioner’s proposed modification of Sugiarto in
`
`view of Brandt, and the annotations in red illustrate Petitioner’s mapping of the
`
`’077 claims onto the proposed combination. At bottom, Sugiarto discloses an
`
`apparatus that “collect[s] information from various web pages from the worldwide
`
`web internet, configure[s] this various information in accordance with a predefined
`
`user configuration file, defined by a particular user, and transmit[s] the configured
`
`various information to a highly portable internet access device.” Sugiarto, Ex.
`
`1005, 2:10–17.
`
`21
`
`

`
`
`
`
`
`“End user”
`
`Application Gateway
`“Processor”
`
`“Wide-area
`computer network”
`
`Provider
`Store
`Person