Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner
`
`
`
`Case No. IPR2016-01155
`Case No. IPR2017-00622
`Patent No. 8,694,657
`
`
`
`
`DECLARATION OF CHRISTOPHER SCHMANDT
`IN SUPPORT OF PETITIONER’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`Table of Contents
`
`
`Page
`
`
`I.
`II.
`
`B.
`
`INTRODUCTORY COMMENTS ................................................................. 1
`CLAIM CONSTRUCTION ........................................................................... 2
`A.
`Response to Dr. Carbonell’s Opinions Regarding the Meaning
`of “Database” ....................................................................................... 2
`Response to Dr. Carbonell’s Opinions Regarding the Meaning
`of “Censor” ........................................................................................... 4
`C. Other Claim Terms ............................................................................... 5
`III. OPINIONS PERTAINING TO THE OBVIOUSNESS OF THE
`CHALLENGED CLAIMS ............................................................................. 6
`A.
`Standards Applied ................................................................................ 6
`1.
`Legal Standards .......................................................................... 6
`2.
`Response to Dr. Carbonell’s Opinions Regarding the
`Level of Ordinary Skill in the Art .............................................. 6
`Response to Dr. Carbonell’s Opinions Regarding Disclosure of
`Challenged Claim Limitations in the Prior Art .................................... 8
`1.
`Response to Dr. Carbonell’s Opinions Regarding the
`Limitation “database which serves as a repository of
`tokens for other programs to access” ......................................... 8
`Response to Dr. Carbonell’s Opinions Regarding the
`Limitation “determining whether the first user identity
`and the second user identity are able to form a group to
`send and to receive real-time communications” ...................... 13
`Response to Dr. Carbonell’s Opinions Regarding Motivation to
`Combine the Cited Prior Art .............................................................. 17
`1. My Previous Analysis .............................................................. 17
`2.
`Response to Dr. Carbonell’s Opinions Regarding
`Motivation to Use Prior-Art Internet Connectivity ................. 18
`Response to Dr. Carbonell’s Opinions Regarding where a
`Person of Ordinary Skill in the Art Would have been
`Motivated to Combine the Teachings of Brown with
`Social Web ............................................................................... 24
`-i-
`
`
`B.
`
`C.
`
`2.
`
`3.
`
`
`
`
`
`

`

`Table of Contents
`(continued)
`
`Page
`
`
`IV. CONCLUSION ............................................................................................. 30
`
`
`
`
`
`-ii-
`
`
`
`

`

`
`I, Christopher Schmandt, declare as follows:
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`I.
`
`INTRODUCTORY COMMENTS
`1.
`I have been retained by counsel for Facebook, Inc. (“Petitioner”) in
`
`this case as an expert in the relevant art.
`
`2.
`
`I am the same expert who submitted a declaration in this proceeding is
`
`support of Petitioner Microsoft Corporation. My previous declaration was
`
`submitted as Ex. 1003 in this proceeding.
`
`3.
`
`I have reviewed the Decision Instituting Inter Partes Review (Paper
`
`12 (“DI” or “institution decision”)) in this case, the Patent Owner’s Response
`
`(Paper 27), and the evidence submitted in support of that Response, including the
`
`expert declaration of Dr. Jaime G. Carbonell and the transcript of Dr. Carbonell’s
`
`deposition. After considering the evidence and arguments offered by Patent
`
`Owner and its expert, I maintain my opinions as stated in my previous declaration.
`
`I have prepared this declaration to offer my opinions in response to the evidence
`
`and arguments made in Patent Owner’s Response.
`
`4.
`
`I understand that in this proceeding, trial has been instituted on the
`
`following ground:
`
`1) All challenged claims unpatentable under 35 U.S.C. § 103(a) in
`
`view of Brown and Sociable Web.
`
`5.
`
`I further understand that in the proceeding as it currently stands with
`
`1
`
`

`

`
`Facebook as a joined Petitioner, claims 189 and 465 are challenged as unpatentable
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`within the instituted ground noted above.
`
`II. CLAIM CONSTRUCTION
`A. Response to Dr. Carbonell’s Opinions Regarding the Meaning of
`“Database”
`Dr. Carbonell opines that “database” should be construed as “a
`
`6.
`
`collection of logically related data which is stored with persistence and associated
`
`with tools for interacting with the data such as a DBMS.” (See Ex. 2006 at ¶¶ 25-
`
`32.)
`
`7.
`
`I respectfully disagree with Dr. Carbonell’s opinion. A person of
`
`ordinary skill in the art would have understood that the patent and claims use the
`
`term “database” consistent with its broad ordinary meaning. The patent’s written
`
`description uses the term in only one paragraph. (Ex. 1001 at 7:52-59.) The patent
`
`states that a control computer database stores tokens, which are pieces of
`
`information associated with user identity. (Id.) The written description does not
`
`impose any specific requirements or restrictions on the meaning of the term
`
`“database.” (See id.) The written description also does not state or require that the
`
`database includes any “tools” for interacting with the data such as a DBMS,
`
`contrary to Dr. Carbonell’s proposed construction.
`
`8.
`
`I have reviewed the discussion of claim construction in the Board’s
`
`2
`
`

`

`
`December 12, 2016 Institution Decision in IPR2016-01158 regarding related U.S.
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`Patent 8,473,552, which shares substantially the same written description as the
`
`patent in this case. The Board stated a construction of “database” to mean “a
`
`collection of logically related data.” (See IPR2016-01158, Paper 7 at 10.) In my
`
`opinion, to the extent any construction were deemed necessary, the Board’s stated
`
`construction is consistent with the ordinary meaning that a person of ordinary skill
`
`in the art would have understood in this context. I note the Board cited a
`
`dictionary definition dated 2000 in support of its construction, I note that another
`
`text from the field dated 1991 refers to a database as a “collection of data” and
`
`differentiates between the concepts of “database” and DBMS. (See Ex. 1102 at 1-
`
`2.)
`
`9.
`
`I disagree with the portion of Dr. Carbonell’s proposed construction
`
`requiring the database include “associated tools for interacting with the data such
`
`as a DBMS.” The singular term “database,” in my opinion, refers to the collection
`
`of logically related data, and not more broadly to software used to interact with the
`
`data. I note that Dr. Carbonell refers to an encyclopedia entry (not a dictionary
`
`definition) regarding “database design” in support of his construction regarding
`
`DBMS. (See Ex. 2006, ¶ 26.) In my opinion this does not support the argument
`
`that the term “database” should be construed to necessarily include software tools
`
`3
`
`

`

`
`such as a DBMS. Contrary to Dr. Carbonell’s opinions, the entry does not describe
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`DBMS as a “criteria of a database.”
`
`10. To the extent that Dr. Carbonell is attempting to make the argument
`
`that the cited prior art does not disclose a “database” under Patent Owner’s
`
`proposed claim construction, I disagree. To the contrary, the prior art discloses the
`
`“database” of the challenged claims under the construction used by the Board in
`
`the related case, or under Dr. Carbonell’s narrower construction. I explain those
`
`opinions in more detail below. (See ¶¶ 19-25.)
`
`B. Response to Dr. Carbonell’s Opinions Regarding the Meaning of
`“Censor”
`11. Dr. Carbonell opines that the term “censorship” should be construed
`
`to mean “examine
`
`in order
`
`to suppress or delete anything considered
`
`objectionable.” (Ex. 2006 at ¶ 33.) I respectfully disagree with Dr. Carbonell’s
`
`opinion. Dr. Carbonell does not discuss the patent specification, which explicitly
`
`states that “[c]ensorship . . . broadly encompasses control of what is said in a
`
`group, [and] is also arbitrated by means of the tokens. Censorship can control
`
`access to the system 1 by identity of the user, which is associated with the user’s
`
`tokens.” (See Ex. 1001 at 8:10-18.) The patent claims at issue use the term
`
`consistent with the specification, and do not limit the term “censorship” to
`
`examining in order to suppress or delete anything considered objectionable.
`
`4
`
`

`

`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`12.
`
`In the Institution Decision, the Board construed “censorship” as
`
`
`
`“control of what is said in a group.” (See Paper 12 at 12-15.) As the Board noted,
`
`the term as used in the claims covers actions taken with respect to a user, not solely
`
`with respect to regulation of the content of data itself. (See id.) In my opinion,
`
`these statements are correct and consistent with the discussion in the specification,
`
`which I discussed above. By citing various dictionary definitions, Dr. Carbonell is
`
`apparently trying to limit the meaning of censorship to require examination of the
`
`content of messages, and choosing whether to allow or deny them based on that
`
`content. It would not be appropriate in my opinion to limit the meaning of
`
`“censorship” from the claims based on such definitions, because it is contrary to
`
`the statements in the specification.
`
`C. Other Claim Terms
`13.
`I note that Patent Owner does not disagree with the Board’s previous
`
`construction of the term “token” as meaning “a piece of information associated
`
`with user identity.” (See Paper 27 at 12-13.) As I explain below, when I apply this
`
`construction the prior art discloses the claimed tokens and other claim elements
`
`referencing the tokens.
`
`5
`
`

`

`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`
`III. OPINIONS PERTAINING TO THE OBVIOUSNESS OF THE CHALLENGED
`CLAIMS
`A.
`Standards Applied
`1.
`Legal Standards
`In my previous declaration, I identified legal standards I relied on in
`
`14.
`
`forming the opinions stated in that declaration. (See Ex. 1003 at ¶¶ 12-40.)
`
`2.
`
`Response to Dr. Carbonell’s Opinions Regarding the Level
`of Ordinary Skill in the Art
`In my previous declaration, I opined as to the level of ordinary skill in
`
`15.
`
`the art in 1995-1996. (See Ex. 1003 at ¶ 140.) I note that in his declaration, Dr.
`
`Carbonell disagreed with my statement of the level of skill, and provided two
`
`levels of skill of his own, and states that either would be appropriate. I note that
`
`Dr. Carbonell identified a specific proposed level or ordinary skill in his previous
`
`declaration. (See Ex. 2006 at ¶ 18.) He stated that the level of ordinary skill in the
`
`art in his opinion was someone with a bachelor’s degree in computer science (or a
`
`related field) and at least one year of work experience in programming in computer
`
`communication methods. I further note that Dr. Carbonell identified another
`
`acceptable level of skill that he did not define beyond saying that it occupied a
`
`“reasonable intermediate point” between the level he proposed and the one I
`
`proposed in my previous declaration. (See Ex. 2006 at ¶ 19.)
`
`16.
`
`I understand that Dr. Carbonell provided additional clarity around
`
`6
`
`

`

`
`what this reasonable intermediate point might be in his deposition. Dr. Carbonell
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`explained that this level of skill “would be somebody that would have some
`
`knowledge of multimedia systems,” and would someone “having some experience
`
`with multimedia files and maybe the transmission of multimedia files.” (See Ex.
`
`1101 at 83:23-85:22.) I note that Dr. Carbonell also stated that he did not regard
`
`the distinction of one versus two years of experience in the field to be a
`
`“substantial difference.” (See id. at 84:22-85:5.)
`
`17.
`
`I do not find that the distinctions between my previously-stated level
`
`of skill and Dr. Carbonell’s two alternative levels to be significant, indeed my
`
`opinions as stated in my previous declaration would not change if I were to apply
`
`either of the standards supplied by Dr. Carbonell, whether it be the lower level of
`
`skill or the “reasonable intermediate” level he explained in his deposition.
`
`18.
`
`I have considered these alternative proposals for the level or ordinary
`
`skill in the field, and my opinions as to the obviousness of the challenged claims as
`
`explained below do not change based on which proposed level of skill I use in the
`
`analysis. Specifically, while Dr. Carbonell’s lowest level of skill is an individual
`
`with relatively less experience than what I previously proposed, even this relatively
`
`less-skilled artisan would have found the invention described and claimed by the
`
`ʼ657 patent to be obvious in view of the prior art.
`
`7
`
`

`

`
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`B. Response to Dr. Carbonell’s Opinions Regarding Disclosure of
`Challenged Claim Limitations in the Prior Art
`1.
`Response to Dr. Carbonell’s Opinions Regarding the
`Limitation “database which serves as a repository of tokens
`for other programs to access”
`I note that Dr. Carbonell and Patent Owner cite a small portion of my
`
`19.
`
`deposition testimony in connection with their arguments, asserting that it is
`
`relevant to this claim limitation in the context of the Brown-based challenge. (See
`
`Ex. 2006, ¶ 34; Paper 27 at 21.) However, I note the cited testimony is not actually
`
`relevant to the ʼ657 patent and my opinions about the challenged claims of that
`
`patent, because that questioning involved the ʼ245 patent, where Major BBS is one
`
`of the key references (and Brown is not raised.) (See Paper 27 at 21; see also Ex.
`
`2007 at 73:17-74:19.) In my deposition I was not asked about the “other
`
`programs” disclosures of Brown. As a result, I find that Dr. Carbonell and Patent
`
`Owner do not respond to the arguments I regarding the disclosure of this claim
`
`limitation by Brown.
`
`20.
`
`In my opening testimony, I explained the disclosures of “other
`
`programs” in Brown. For example, I explained that the “various service
`
`applications” of Brown are a disclosure of the “other programs” of this claim
`
`limitation because they check the tokens in the access rights database when a user
`
`attempts to use a service of the system. (See Ex. 1003 at ¶ 186, citing Ex. 1012 at
`
`8
`
`

`

`
`17:25-34; 20:8-27; 22:44-48; 24:1-11; 27:24-33; see also id. at ¶¶ 179-185; see
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`also Pet. at 20-21; citing Ex. 1012 at 3:27-30; 3:48-62; 20:8-27; 24:1-11; 25:23-27;
`
`25:64-26:2.) I also explained that “cached access rights lists are stored on
`
`applications servers and/or gateway computers for use by service applications
`
`(“other programs.”) (See Ex. 1003 at ¶ 186, citing Ex. 2012 at 24:13-18; 25:48-51;
`
`28:4-15; 27:53-58; 28:29-45.) I have searched Dr. Carbonell’s declaration and
`
`Patent Owner’s Response for a response regarding the above disclosures of Brown
`
`and my own opinions and not found any.
`
`21. Dr. Carbonell opines that “Telnet is not another program within the
`
`context of the claims” and states that Telnet is a conduit to access software running
`
`on the server thus “in the context of Brown, all programs run on a server, not the
`
`client.” (Ex. 2006 at ¶ 34.) I respectfully disagree. The claims require only that
`
`the database “serves as a repository of tokens for other programs to access,” and
`
`the specification and claims do not impose any requirements on the types or
`
`locations of these “other programs” or the types of “access” that they have. For
`
`example, the specification sheds no light on what this “access” may involve (e.g. to
`
`read or to modify) or whether “other programs” means multiple instances of the
`
`same program, or multiple completely different programs. The specification refers
`
`to various “programs” including, for example, one or more programs running on
`
`9
`
`

`

`
`the participator computers, a program running on the controller computer, and
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`auxiliary programs that may be used to present multimedia data. (See, e.g., Ex.
`
`1001 at 5:37-40, 7:31-36, 8:37-38, 10:36-43, Fig. 2 (“auxiliary programs”).) Thus
`
`while Patent Owner focuses solely on whether the prior art discloses “other
`
`programs” running on the participator computers, nothing in the specification or
`
`claims requires the “other programs” to be on the participator computers. Indeed,
`
`programs that access the tokens in the database, and thus qualify as “other
`
`programs” are operating on the controller computer as the system is described in
`
`the specification. (See, e.g. Ex. 1001 at 8:1-3 (“[T]okens are used by the controller
`
`computer 5 to control a user’s group priority and moderation privileges, as well as
`
`controlling who joins the group…”).)
`
`22. Furthermore, the patent specification specifically supports the use of
`
`telnet as an “other program.” The patent never details any specifics about “other
`
`programs” (other than the controller computer program) accessing the user tokens,
`
`but it does offer two embodiments of the invention, one Java based and the other
`
`“text based” or telnet. For example, Figures 28 – 34 show what is clearly, to one
`
`of skill in the art, a telnet program as the participator computer connecting to the
`
`central computer. (See Ex. 1001, Figs. 28-34; see also id., 10:54-11:31.) These
`
`figures appear to have been actual screen grabs in the original patent application,
`
`10
`
`

`

`
`and the details were carried through into the better drawn figures in the patent. As
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`is typical in computer window systems, the name of the program running in a
`
`window is displayed in the title bar at the top of the window; that shows the
`
`program name, “Telnet,” and the name of the computer to which it is currently
`
`connected:
`
`
`
`(See Ex. 1001, Fig. 28 (highlighting added).)
`
`23.
`
`In the telnet embodiment, the “computer program” on the participator
`
`computer referenced in the specification would be a telnet client program. (E.g.,
`
`Ex. 1001 at 7:32-36 (discussing “the controller computer 3 and the participator
`
`11
`
`

`

`
`computers 5, and their respective computer programs 2 and 4”).) In my opinion,
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`this further evidences that the claims encompass embodiments in which the
`
`participator computer is running a telnet client software program, which may be
`
`one of the “other programs” recited in the claims.
`
`24. Dr. Carbonell also opines that “[e]ven assuming telnet could be
`
`considered an ‘other program’ in the context of the claims, Mr. Schmandt does not
`
`sufficiently explain how it could access the tokens in the database.” (Ex. 2006 at ¶
`
`34.) I respectfully disagree. In my previous declaration, as noted above, I showed
`
`that each user of the Brown system, I explained that the “various service
`
`applications” of Brown are a disclosure of the “other programs” of this claim
`
`limitation because they check the tokens in the access rights database when a user
`
`attempts to use a service of the system. (See Ex. 1003 at ¶ 186, citing Ex. 1012 at
`
`17:25-34; 20:8-27; 22:44-48; 24:1-11; 27:24-33; see also id. at ¶¶ 179-185; see
`
`also Pet. at 20-21; citing Ex. 1012 at 3:27-30; 3:48-62; 20:8-27; 24:1-11; 25:23-27;
`
`25:64-26:2.) I also explained that “cached access rights lists are stored on
`
`applications servers and/or gateway computers for use by service applications
`
`(“other programs.”) (See Ex. 1003 at ¶ 186, citing Ex. 2012 at 24:13-18; 25:48-51;
`
`28:4-15; 27:53-58; 28:29-45.) I also discussed the manner in which access rights
`
`queries were generated and handled by application and gateway servers. (See Ex.
`
`12
`
`

`

`
`1003, ¶¶ 147-152.)
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`25. As there can be many simultaneous users of the system disclosed in
`
`Brown, and each could be performing any of the above mentioned operations,
`
`access is afforded to multiple programs, even if they are all identical versions of
`
`telnet terminal emulation software. But a second interpretation is also possible, in
`
`that there were many versions of user-side telnet programs, some stand alone,
`
`some operating inside browser windows, some for Microsoft operating systems,
`
`some for Apple, and still others for Unix computers. One of ordinary skill in the
`
`art would have recognized that by 1996 telnet was a universally accepted standard
`
`of network communication that ran on many operating systems. As I noted in my
`
`previous declaration, Brown specifically discusses any client application running
`
`on a microcomputer, and gives an example of applications in the form of Microsoft
`
`Windows 95 components. (See Ex. 1003, ¶¶ 146, 202; Ex. 1001; 8:47-53.)
`
`2.
`
`Response to Dr. Carbonell’s Opinions Regarding the
`Limitation “determining whether the first user identity and
`the second user identity are able to form a group to send
`and to receive real-time communications”
` Dr. Carbonell asserts in his declaration that this limitation requires a
`
`26.
`
`determination where
`
`information about both users
`
`is considered
`
`in
`
`the
`
`determination step. (See Ex. 2006, ¶ 42 (“determination based on whether the first
`
`user and the second user can form a group together.”). In my opinion, however,
`
`13
`
`

`

`
`the claim limitation does not require that this determining step must perform an
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`evaluation, simultaneously, of multiple user identities. The specification does not
`
`support such a requirement either. I note that the ’657 patent specification
`
`describes that each user’s group access permissions are controlled on a group
`
`basis: the system determines whether a particular user can join a particular group,
`
`regardless of the identities of any other users who might be currently present in
`
`that group. (See, e.g., Ex. 1001 at 7:60-8:4 (describing that tokens are used “to
`
`control a user’s group priority and moderation privileges, as well as controlling
`
`who joins the group, who leaves the group, and the visibility of members in the
`
`group”), 8:14-16 (“By checking the tokens, a user’s access can be controlled per
`
`group . . .”), 8:57-9:23 (describing that a first user creates and enters a group, and
`
`later a second user may enter that group if permitted).) I also note in this regard
`
`that Dr. Carbonell said in his deposition that he believed this claim limitation
`
`requires a determination that “both users have the appropriate rights to join the
`
`same chat room.” (See Ex. 1101 at 126:16-127:13.)
`
`27. As I stated in my original declaration and reiterate in this declaration,
`
`Brown clearly discloses this limitation. As an example, Brown discloses creation
`
`of chat rooms using Sysop tools such that new chat rooms are defined based on
`
`tokens specifying “user groups” that will be given access to a particular chat room
`
`14
`
`

`

`
`area. (See Pet. at 25-26; Ex. 1003, ¶¶ 211-212.) And even under Dr. Carbonell’s
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`erroneous interpretation as stated in his declaration, Brown describes creation of a
`
`“family” group in which only designated members of a family have appropriate
`
`permission to join the group that was created for them. (See Ex. 1012, 15:27-37.)
`
`In performing this step, the Brown system is determining whether two or more
`
`specified user identities are the designated members of the family who are able to
`
`form the “family” group.
`
`28. Brown also discloses setting “user-specific” permission with a token
`
`table to create a chat room that can only be formed from the specific user identities
`
`who are intended to have permission to join that chat room, where the group may
`
`be defined with a “user specific row” for each permitted user identity. (See id. at
`
`31:5-21.) Thus this is another example of the Brown system determining whether
`
`a first user identity and second user identity are able to form a group. Once
`
`afforded access to the chat room, the permitted users may then participate in real
`
`time communications, which is what is recited by this claim limitation. (See id. at
`
`9:45-47 (discussing “chat rooms” as a “real time conversation” service); see also
`
`Ex. 1101 at 123:4-16; Pet. at 27.) In this regard I note that Patent Owner stated
`
`that “joining a chat room may satisfy the determination as to whether two users can
`
`‘receive real-time communications.’” (See Paper 27 at 27.)
`
`15
`
`

`

`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`29.
`
`It is my opinion that Brown also discloses this limitation, whether
`
`
`
`under its plain meaning and under Dr. Carbonell’s erroneous declaration
`
`interpretation, through its disclosure that groups may be formed following a
`
`determination by the system that users have appropriate access rights to join
`
`specific “objects” within Brown’s system, such as chat rooms, BBS folders, and
`
`BBS messages. As Brown explains:
`
`“As with Chat objects, the access rights of users with respect to
`different BBS objects (e.g., BBS folders and messages) may vary
`from user to user. For example, certain BBS folders may be
`designated as "public," meaning that they can generally be accessed
`by all users, while other BBS folders may be designated as "private,"
`meaning that access to such folders is restricted to some subgroup of
`users. A private folder may be used, for example, to permit private
`personal correspondence between a user-specified group of family and
`friends.”
`
`(See Ex. 1012 at 10:36-45; see also Pet. at 26; Ex. 1003 at ¶ 217.) In my opinion,
`
`one of ordinary skill in the would have understood from these disclosures that in
`
`“private” correspondence the system determines whether a first user identity and a
`
`second user identity are among the user-specified group of family and friends able
`
`to form the group participating in the private personal correspondence. (See id.)
`
`At the very least, it would have been obvious to one of skill in the art that the
`
`purpose of permissions in this context is to limit access to specific nodes, which
`
`16
`
`

`

`
`requires verifying the permissions of each specific user identity prior to formation
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`of a specific group consisting of those specific user identities.
`
`30.
`
` Further, to the extent Brown is considered to not expressly disclose
`
`this particular series of steps, it would have been obvious to one of skill in the art
`
`given that the purpose of permissions is to limit access to specific nodes, and this
`
`requires verifying the permissions of every user prior to formation of a specific
`
`group.
`
`C. Response to Dr. Carbonell’s Opinions Regarding Motivation to
`Combine the Cited Prior Art
`1. My Previous Analysis
`31. While citing my deposition testimony, Dr. Carbonell and Patent
`
`Owner assert that I have applied hindsight in my obviousness analysis. (See Ex.
`
`2006, ¶ 45; Paper 27 at 19-20.) This is not true. Hopefully I have clearly
`
`expressed the opinion that there is nothing inventive in the ‘657 patent; it is merely
`
`existing BBS functionality running over the Internet, which was already being
`
`practiced at the time of filing. I understand, however, proceedings such as these
`
`require more evidence than simply my statement that the claims are obvious. To
`
`support my opinion, I must document appropriate pieces of prior art which teach
`
`each of the claim elements. If there would have been a clear motivation to
`
`combine these by one of skill in the art at the time, this would be more
`
`17
`
`

`

`
`appropriately called an obviousness analysis rather than “hindsight.”
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`2.
`
`Response to Dr. Carbonell’s Opinions Regarding
`Motivation to Use Prior-Art Internet Connectivity
`32. Turning to the disclosures of Brown and Sociable Web, I note first
`
`that I do not find that Dr. Carbonell or Patent Owner disagree with my opinion that
`
`the combination of Brown and Sociable Web discloses the Internet network
`
`limitations of the challenged claims. As Patent Owner notes in its Response, the
`
`Board “instituted based on the teaching in Brown of a ‘WAN’ and IP
`
`communications.” (See Paper 27 at 23, citing ID at 25.) Patent Owner focuses
`
`instead on the issue of motivation to combine, and seems to accept that Brown
`
`discloses the Internet network limitations of the claims.
`
`33. Brown clearly states “The WAN lines 108 may include, for example,
`
`X.25 lines, TCP/IP lines, and ISDN (Integrated Service Digital Network) lines.”
`
`(Ex. 1012 at 7:4-6). A person of ordinary skill in the art would have understood a
`
`Wide Area TCP/IP network to imply Internet, as I note in particular that “IP” is an
`
`acronym for “Internet Protocol”. Brown also shows a dedicated Internet
`
`connection to the BBS server. In my opinion this would have been understood by
`
`one of skill in the art to disclose that although the WAN could be provided by a
`
`number of networking technologies, including Internet, no matter what WAN
`
`technology is used, the BBS server would be expected to have an Internet
`
`18
`
`

`

`
`connection. The fact that this particular Internet connection is called out explicitly
`
`Declaration of Christopher Schmandt in support of
`Petitioner’s Reply in
`IPR2016-01155 and IPR2017-00622
`U.S. Patent No. 8,694,657
`
`does not support an argument that the WAN is therefore not the Internet.
`
`34.
`
`I note in this regard that in the Institution Decision the Board stated
`
`“[w]e do not draw from Brown’s explicit reference to the Internet for other aspects
`
`of its disclosure Patent Owner’s proposed implication that Brown’s WAN is not an
`
`Internet network.” (See Paper 12 at 25-26.) I agree with the Board’s interpretation
`
`of Brown. The totality of the disclosures in Brown, as I explained in my previous
`
`declaration, make clear that where Brown expressly discusses communication over
`
`WAN, one of skill in the art would have understood that reference to WAN
`
`included reference to mediating such communications over the Internet. (See Ex.
`
`1003, ¶¶ 160-173.)
`
`35. Dr. Carbonell asserts that there was no motivation to use the internet
`
`connectivity disclosures of the prior art in the context of the challenged claims.
`
`(See Ex. 2006, ¶¶ 35-41.) As I discuss in detail below, I respectfully disagree.
`
`36. Dr. Carbonell also discusses “WAN” and “LAN” technologies at
`
`length, apparently a