UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________________________________________
`
`MICROSOFT CORPORATION
`Petitioner
`v.
`
`WINDY CITY INNOVATIONS LLC
`Patent Owner
`
`
`
`Patent No. 8,694,657
`Issue Date: April 8, 2014
`Title: COMMUNICATIONS SYSTEM
`__________________________________________________________________
`
`DECLARATION OF DR. CHANDRAJIT BAJAJ, PH.D.
`
`Case No. IPR2016-01155
`
`
`
`IPR2016-01155 – Ex. 2001
`Windy City Innovations, LLC, Patent Owner
`1
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`

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`
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`I, Chandrajit Bajaj, Ph.D., hereby declare and state as follows:
`
`A.
`1.
`
` Background and Qualifications
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`I am currently employed as a Professor of Computer Science at the
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`University of Texas at Austin (“UT Austin”). I have a Bachelor of Technology
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`degree in Electrical Engineering, which I obtained from the Indian Institute of
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`Technology in Delhi in 1980. I also have a Master of Science degree and a
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`Doctorate in Computer Science from Cornell University in 1983 and 1984,
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`respectively. I currently hold the Computational Applied Mathematics endowed
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`Chair in Visualization. I am also the Director of the Computational Visualization
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`Center at UT Austin, which has been funded by the National Institutes of Health,
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`the National Science Foundation, the Department of Energy, and the Department
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`of Defense. The center personnel include fifteen researchers, scientists, post-
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`graduate students, and staff.
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`2.
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`Prior to my employment at UT Austin, I was an assistant professor,
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`then associate professor, and finally professor of Computer Sciences at Purdue
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`University from 1984 until 1997. During this time, I was also the Director of
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`Image Analysis and Visualization Center at Purdue University. I was a visiting
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`associate professor of Computer Science at Cornell University from 1990 to 1991.
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`3.
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`I have spent the better part of my career, both at Purdue and UT
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`Austin, researching, designing, teaching, and using high-performance computer
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`graphics systems to model, simulate, visualize and communicate real and
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`synthesized objects and associated multimedia. I am knowledgeable about and
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`have much experience in both the hardware and software, including distributed and
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`parallel algorithms, used for capturing, displaying and communicating interactive
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`imagery and video.
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`4.
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`In the 1970s, while majoring in Electrical Engineering at Indian
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`Institute of Technology with a minor in Computer Sciences, I was intimately
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`involved in the design and fabrication of microprocessor-controlled circuits
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`including the development of microprocessor controller software. In the 1980s,
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`while at Cornell University, these past experiences led to research in computational
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`geometry and optimization as well as the development of motion-planning
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`software. In the early 1990s, I created a 3D distributed and collaborative
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`multimedia platform, which allowed for the development of fully navigable and
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`multi-person computer gaming and simulation applications. In 1993, I authored
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`several technical papers while at the Computer Sciences Department of Purdue
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`University entitled “Collaborative Multimedia Game Environments”, and
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`“Collaborative Multimedia Design Environments.” The need for increasing
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`computer graphics realism without sacrificing multi-user and remote interactivity
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`led me also to invent real-time texture mapping from compressed representations,
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`and goal directed data compression.
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`3
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`5.
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`In the mid-2000s, I began to create spatially-realistic 3D graphical
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`environments of nature’s molecules and cells with a combination of acquired and
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`reconstructed imagery within which a user may explore, query, and learn. Over
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`the course of my career, I have participated in the design and use of several
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`computer systems spanning handhelds, laptops, graphics workstations to PC/Linux
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`clusters as well as very large memory supercomputers for capturing, modeling and
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`displaying virtual and scientific phenomena. My experience with computer
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`modeling and real-time display of computer graphics imagery encompasses many
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`fields, such as interactive games, molecular, biomedical and industrial diagnostics,
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`oil and gas exploration, geology, cosmology, and military industries. During this
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`time at UT Austin, I also developed hardware and software technology that
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`allowed multiple computers with multiple programmable graphics cards (GPUs) to
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`simultaneously and synchronously display to large multi-screen immersive
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`displays. We called this the UT Meta-Buffer solution. Much of my work involves
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`issues relating to interactive computer multimedia, including interactive 3D video
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`and real-time retrieval of texture image data for use in rendering applications in
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`computer graphics. Examples of my publications, including peer-reviewed
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`publications, are listed in my Curriculum Vitae (“CV”).
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`6. My CV is submitted herewith as Appendix A. As set forth in my CV,
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`I have authored approximately 150 peer-reviewed journal articles, 33 book
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`4
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`
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`chapters (which were also peer reviewed), and 142 peer-reviewed conference
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`publications.
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`7.
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`I have written and edited four books, on topics ranging from graphics
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`and visualization techniques to algebraic geometry and its applications. I have
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`given 165 invited speaker keynote presentations. I am a Fellow of the American
`
`Association for the Advancement of Science, a Fellow of the Institute of Electrical
`
`and Electronics Engineers (IEEE), a Fellow of the Society of Industrial and
`
`Applied Mathematics (SIAM), and also a Fellow of the Association of Computing
`
`Machinery (also known as ACM), which is the world’s largest education and
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`scientific computing society. ACM Fellow is ACM’s most prestigious member
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`grade and recognizes the top 1% of ACM members for their outstanding
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`accomplishments in computing and information technology and/or outstanding
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`service to ACM and the larger computing community.
`
`B. Materials Considered
`8.
`For time spent in connection with this case, I am being compensated
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`at my customary rate of $575/hour. My compensation is not dependent upon the
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`substance of the opinions I offer below, the outcome of this petition or any issues
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`involved in or related to U.S. Patent 8,694,657 (the “’657 Patent”). I have no
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`financial interest in, or affiliation with, any of the real parties in interest or the
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`patent owner.
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`5
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`9.
`
`The materials I considered include the ’657 Patent and the original
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`prosecution history for the ’657 Patent. I also considered the materials that I refer
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`to and that I cite in this declaration.
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`10.
`
`I also considered the Petition for Inter Partes Review filed by
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`Microsoft (IPR2016-01138) including Exhibits 1001 – 1031.
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`11.
`
`I have also considered the following Patent Owner exhibits:
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`a. Merriam-Webster’s Collegiate Dictionary (10th Ed. 1994) (Ex.
`
`2002)
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`b. Microsoft Press Computer Dictionary (3rd Ed. 1997) (Ex. 2003)
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`c. Macmillan Encyclopedia of Computers (Gary G. Bitter ed.,
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`Macmillan Publ. Co. 1992) (Ex. 2004)
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`12.
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`In addition, I have drawn on my experience and knowledge, as
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`discussed above and described more fully in my CV, in the areas of distributed and
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`collaborative multimedia, image processing, computer graphics and remote
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`visualization.
`
`C. Legal Principles
`13.
`I understand that a patent claim is unpatentable as “obvious” if the
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`subject matter of the claim as a whole would have been obvious to a person of
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`ordinary skill in the art as of the time of the invention at issue. I understand that
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`the use of “the person of ordinary skill” rubric is to prevent one from improperly,
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`in the present day, using hindsight to decide whether a claim is obvious.
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`14.
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`I understand that the following factors must be evaluated to determine
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`whether the claimed subject matter is obvious: (1) the scope and content of the
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`prior art; (2) the difference or differences, if any, between the scope of the patent
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`claim and the scope of the prior art; and (3) the level of ordinary skill in the art at
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`the time of the invention.
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`15.
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`I understand that, unlike anticipation, which allows consideration of
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`only one item of prior art, obviousness may be shown by considering more than
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`one item of prior art. I understand that, when considering a combination of prior
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`art references as part of an obviousness analysis, it can be important to ascertain if
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`the references are from the same field of endeavor and also to ascertain whether
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`there is any reason that would have prompted a person of ordinary skill in the
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`relevant art to combine the elements in the way the claim does. In other words, a
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`claim generally cannot be rendered obvious by combining (i) art from across
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`different fields, including outside the field of the claimed invention, or (ii) art that
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`itself teaches away from combination with other art that would otherwise provide
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`its missing limitations, or (iii) art for which there is not at least an articulable,
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`common sense reason to bridge the gap between its disclosure and the claim at
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`issue.
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`16. Moreover, I understand that so-called “objective indicia of non-
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`obviousness,” also known as “secondary considerations,” are also to be considered
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`when assessing obviousness. I understand that this objective evidence includes at
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`least: (1) the commercial success of the invention; (2) the long felt but unresolved
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`need to develop the invention; and (3) any praise of the invention in the market. I
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`also understand that evidence of objective indicia of non-obviousness must be
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`commensurate in scope with the claimed subject matter; i.e., that there must be a
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`nexus or connection between the criteria and the claim itself.
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`D. Level of Ordinary Skill
`17.
`I understand that I should perform my analysis from the viewpoint of
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`a person of ordinary skill in the art. I understand that this hypothetical person of
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`ordinary skill in the art is considered to have the normal skills of a person in a
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`certain technical field. I understand that factors that may be considered in
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`determining the level of ordinary skill in the art include: (1) the education level of
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`the inventor; (2) the types of problems encountered in the art; (3) the prior art
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`solutions to those problems; (4) rapidity with which innovations are made; (5) the
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`sophistication of the technology; and (6) the education level of active workers in
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`the field.
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`18.
`
`In my opinion, one of ordinary skill in the art to which the ’657 Patent
`
`would pertain would have had a bachelor’s degree in computer science (or a
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`related field) and one year of work experience in programming (or equivalent on-
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`8
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`
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`the-job training). I disagree with Dr. Schmandt’s opinion that one of ordinary skill
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`would have needed two years of experience and I believe that one year of work
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`experience in programming would be sufficient. I also disagree with Dr.
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`Schmandt’s opinion that the relevant field of experience is “teleconferencing and
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`on-line chat systems, such as on-line bulletin boards,” as that field is too specific
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`for an ordinary artisan. However, my opinions expressed below would not change
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`even if the person of ordinary skill in the art were to be found to have the level of
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`skill proposed by Dr. Schmandt.
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`E. Database
`19. As of the early 1990’s there existed several known ways to store data
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`for access by one or more computer programs. These storage arrangements
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`included temporary storage such as random access memory (RAM) and other
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`forms of cached storage. Long term storage arrangements such as floppy disks,
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`magnetic disks, optical disks, and magnetic tape were also known and used.
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`20. The concept of a “database” was also well known in the early 1990’s
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`and databases were used used to store multimedia data. Although databases often
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`were associated with some storage or memory, storage is not equivalent to a
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`database. Two hallmarks of a database are (1) persistence of the data, and (2)
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`interactivity with the data via a database management system (DBMS). One
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`exemplary source, the Macmillan Encyclopedia of Computers, describes a database
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`as “a collection of related data that contains information about an enterprise such
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`as a university or an airline.” Macmillan Encyclopedia of Computers (Gary G.
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`Bitter ed., Macmillan Publ. Co. 1992). Macmillan further states that “data include
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`facts and figures that can be represented as numbers, text strings, images, or voices
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`stored in files on disk or other media.” Macmillan then describes another criteria
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`of a database, the database management system: “[a] database management system
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`(DBMS) is a set of programs (a software package) that allows accessing and/or
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`modification of the database.” Id.
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`21. When data is stored in memory, there is often no persistence of that
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`data. For example, if a program were to store information relating to a user in
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`memory, that data is typically lost when the program completes its processes and
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`exits.
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`22.
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`In a database, stored data is typically associated with meta-data. The
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`meta-data could then be interactively queried using a Simple Query Language
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`(SQL) for rapid access of information contained in the data repository. Standard
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`storage either in temporary or permanent memory does not come equipped with
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`this type of searching and retrieval architecture. Interactive queries are particularly
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`useful when data needs to be accessed simultaneously by multiple other users and
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`their programs. The DBMS typically handles all these queries.
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`23. When individual user programs store information in program
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`memory, and not in a database, that information is generally unavailable to other
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`users and their programs. This is because operating systems generally enforce
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`program execution consistency and security protocols so that a malicious user’s
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`program does not have access to other user programs’ data. Databases were
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`known to handle data consistency and security across multiple applications, and
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`especially across multiple remote applications. Even if other user’s programs
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`were to somehow gain access to the information stored in program memory, it
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`would likely be raw data without any meaningful context.
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`24. Based on the disclosure of the ’657 patent, it is my opinion that the
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`“database” of the ’657 patent would include both persistence as well as a way to
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`interact with the data such as a DBMS. This is because the claimed database is
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`responsible for storing security information such as “tokens,” for other user
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`programs to access. One of ordinary skill in the art would have expected that this
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`type of security feature would persist in a location other than in program memory
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`so that other user programs could access the information. I also note that the ’657
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`Patent describes the tokens as existing in hierarchies of tokens. Hierarchies are
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`typical of database storage organization, and natural schema when storing and
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`managing access to diverse information.
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`25.
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`I also note that terminal emulation software, such as “Telnet” existed
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`in the mid-1990’s. This type of software was typically referred to as “dummy
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`11
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`terminal” software. Telnet itself is only a portal into a different computer system.
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`As a result, Telnet does not have any native commands that would allow a user to
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`access a remote program’s storage or a database. Telnet would have required a
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`specialized command set in order to interact with a database, and even more so for
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`a hierarchical database.
`
`F.
`Internet
`26. An intranet network (LAN or WAN) is a private network of
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`communicating computers and was used to merge disparate systems into one
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`homogeneous environment. Only preauthorized users could access and use the
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`intranet. In the 1995 time frame almost all networks were intranets and used FTP
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`(File Transfer Protocol) and Dialup Telnet to connect and communicate.
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`27. On the other hand, an Internet network is a wide area and publicly
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`accessible collection of computer clients and servers that communicate with one
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`another using a standardized protocol. Anyone could access/use the Internet
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`network using TCP/IP
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`(Terminal Control Program/Internet Protocol)
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`to
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`communicate. HTTP (HyperText Transfer Protocol) is a TCP/IP based protocol
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`that enables the sharing of documents with embedded links and multimedia.
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`HTML (HyperText Markup Language) was developed as a language to be used
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`with HTTP.
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`28. Additionally, intranets often included gateway portals to the Internet.
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`12
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`However, these portals were often for the purpose of communicating web pages
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`via HTTP requests to the intranet and were not capable of direct connections
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`between computers over the Internet.
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`G. Censorship
`29. One of ordinary skill in the art would have understood the term
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`“censorship” within its plain and ordinary English meaning. For example, the
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`ordinary English meaning in the mid-1990’s of censorship was “Examine (a book,
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`movie, etc.) officially and suppress unacceptable parts of it.” Ex. 2002. This
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`definition is consistent with my technical understanding. Furthermore, Microsoft
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`itself published, albeit in 1997, a definition of “Censorship” that is consistent with
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`my understanding and the understanding of one of ordinary skill in the art in the
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`mid-1990’s:
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` “[t]he action of preventing material that a party considers
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`objectionable from circulating within a system of communication over which that
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`party has some power.” Ex. 2003. The Microsoft Dictionary further states: “[a]
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`moderated newsgroup or mailing list may be considered to be ‘censored’ because
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`the moderator will usually delete highly controversial and obscene content or
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`content that is on a different topic from that followed by a newsgroup.” Ex. 2003.
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`30. One of ordinary skill in the art would have understood that censorship
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`or “censor” would have related and be specific to the underlying data itself, and
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`that censorship would be individualized to different user groups. Censoring would
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`13
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`not have been understood to mean system access rights such as “access to system
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`information.” My understanding is consistent with the specification and claims of
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`the ’657 patent.
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`I declare that all statements made herein of my own knowledge are true and that all
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`statements made on information and belief are believed to be true, and further that
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`these statements were made with the knowledge that willful false statements and
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`the like so made are punishable by fine or imprisonment, or both, under Section
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`1001 of Title 18 of the United States Code.
`
`Dated:
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`'72- L0/é’
`
`
`
`Chandrajit Bajaj:l3h.D
`
`l4
`
`

`
`APPENDIX A
`
`APPENDIX A
`
`15
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`

`
`Biographical Sketch: Chandrajit L. Bajaj
`
`Dr. Bajaj is Computational Applied Mathematics Chair in Visualization, Professor of Computer Sciences, and Director
`of the Center for Computational Visualization at the Institute of Computational Engineering and Sciences, University
`of Texas at Austin.
`(http://www.cs.utexas.edu/~bajaj and http://www.ices.utexas.edu/~bajaj)
`
`Research Areas
`
`Dr. Bajaj's current research is in the design of algorithms and software development in the inter-twined computational
`science disciplines of multi-modal and multi-scale Image Processing, Computational Geometry, Computer Aided
`Design, Computer Graphics, Data Visualization. He is currently involved in developing integrated approaches to
`computational modeling, mathematical analysis and interrogative visualization, especially for dynamic bio-medical
`structures and phenomena.
`
`Education
`
` •
`
` B.Tech. in Electrical Engineering Indian Institute of Technology, Delhi 1980
`• M.S in Computer Science Cornell University 1983
`• Ph.D. in Computer Science Cornell University 1984
`
`Professional Experience
`
` •
`
` Assistant Professor of Computer Science, Purdue University, 1984-89
`• Associate Professor of Computer Science, Purdue University, 1989-93
`• Visiting Associate Professor of Computer Science, Cornell University, 1990-91
`• Professor of Computer Sciences, Purdue University, 1993-97
`• Director of Image Analysis and Visualization Center, Purdue University, 1996-97
`• Computational Applied Mathematics Chair in Visualization, University of Texas, 1997-
`• Professor of Computer Sciences, University of Texas 1997-
`• Director of Center for Computational Visualization, University of Texas, 1997-
`
`Recent Selected Honors and Awards
`
` •
`
`•
`
` Best paper award at Computer Aided Design (CAD) 2006
`• Best Paper Award at ACM Symposium on Solid and Physical Modeling, 2010, Haifa, Israel
`• Panel Member of the National Academy of Sciences, Vietnam Education Foundation, 2006, 2007
`• Charter Member of Molecular Structure Function (MSFD) “Computational BioPhysics” Study Section, National
`Institute of Health, 2008 –2013
`• Keynote Addresses at SIAM Computational Science (2000), Pacific Computer Graphics (2002), Volume
`Graphics (2004), EuroGraphics (2004), Computational Algebra (2004), Cyberworlds (2005), Institute of
`Mathematics and its Applications –IMA (2007), HSEMB Conference (2007), CAD conference (2009),
`Physics/Biology Interface (2009), CompImage (2010), ACM Solid Physical Modeling (2010), Symposium on
`Geometry Processing (2011), IEEE Pacific Vis (2012), Intl Conf. On Contemporary Computing (2012), Advances
`in Comp. Mechanics, (2013), 22nd Meshing Roundtable (2013), NSF CyberBridges Workshop (2013), MBI-OSU
`Large Data Visualization Workshop (2014), Banff EM Workshop (BIRS) (2014)
`Invited Jacques Morgenstern Colloquium INRIA- Sophia Antipolis, France, 2006, William Mong Distinguished
`Colloquium, Hong Kong University, 2012, Barrs Distinguished Colloquium, U of Florida, 2013, Okinawa Institute
`of Science, Technology Workshop on Quasi-Symm. Assemblies, 2015, Conference on Computer Methods in
`Biomechanics and Biomedical Engineering Imaging and Visualization, CMBBE 2015, Invited Banquet Speaker,
`“Nature’s Meshes, Models and Simulations”, 24th International Meshing Roundtable, Austin, 2015.
`• UT - Institute of Computational Engineering and Sciences (ICES) - Moncrief Grand Challenge Faculty Award,
`2009, 2012, 2016
`Fellow, Institute of Cell and Molecular Biology, (ICMB), 2009
`•
`Fellow of the Association for Computing Machinery (ACM), 2009 –
`•
`Fellow of the American Association for the Advancement of Science (AAAS), 2008 –
`•
`Fellow of the Institute of Electrical and Electronic Engineers (IEEE) 2013 –
`•
`Fellow of the Society of Industrial and Applied Mathematics (SIAM) 2016 –
`•
`• Pioneer of Solid Modeling (SM) 2016 -
`
`
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`1
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`Selected Publications
`http://scholar.google.com/citations?user=gyL3CZ0AAAAJ"&user=gyL3CZ0AAAAJ )
`(selected from over 300 publications listed in full CV; h-index 61; i-index 201)
`1. V. Anupam, C. Bajaj, D. Schikore, M. Schikore (1994) "Distributed and Collaborative Visualization", IEEE
`Computer, 27(7)37-43
`2. V. Anupam, C. Bajaj (1994). "SHASTRA - An Architecture for Development of Collaborative Applications",
`International Journal of Intelligent and Cooperative Information Systems, 3(2):155-166
`3. V. Anupam, C. Bajaj (1994). "SHASTRA: Multimedia Collaborative Design Environment", IEEE Multimedia,
`1(2):39-49
`4. V. Anupam, C. Bajaj, F. Bernardini, S. Cutchin, J. Chen, D. Schikore, G. Xu, P. Zhang, W. Zhang (1994).
`"Scientific Problem Solving in a Distributed and Collaborative Multimedia Environment", Mathematics and
`Computers in Simulation, 36:433-442
`5. C. Bajaj "Data Visualization Techniques", John Wiley and Sons, (1998).
`
`Synergistic Activities
`
` American Video Graphics vs Electronic Arts Inc., Vince Evans, TX 2004-2005
`Landmark Graphics Corp. and Magic Earth Inc. vs Seismic Microtechno., Pearl Cohen Zedek Latzer, NY 2006
`•
`• Halliburton vs Paradigm Geophysical Corp, Pearl Cohen Zedek Latzer, NY 2006
`• Metrologic Instruments vs Symbol Technologies, Hogan Harston, NY 2006-2007
`• CIBA Vision Corp., vs Coopervision, Irell Manella , CA, 2008
`• Google vs Xerox, Wilmer Hale, NY 2008
`• Mark Daniels vs Patent and Trademark Office, PKT Law, IL 2011
`• Apple vs HTC, Powell Gilbert, UK 2011-2012 --- Wrote Expert reports.
`• Kimberlie Menard vs Siemens Healthcare , Abrahams, Watkins, Nichols, Sorrels, Agosto, Friend, TX 2012 –
`Wrote expert report; Deposition.
`• Microsoft, Google vs Transcenic , Fitch Even, IL 2012 – 2015 – wrote expert reports; deposition.
`• Amazon vs Hand Held Products, Kaye Scholer, NY 2013 – 2015 – wrote expert reports; trial before judge.
`• Apple vs ZiiLabs, Inter Partes Review, Sidley Austin, TX 2015 --- wrote expert reports.
`• Samsung Electronics vs. Nvidia Corporation, Inter Partes Review, Kirkland Ellis, NY 2015–2016 --- wrote expert
`reports; deposition.
`• Microsoft vs Bradium , Inter Partes Review, Kenyon & Kenyon, CA 2016 – --- wrote expert reports;
`• Nokia vs Transcenic, Fitch Even, IL 2016 –
`
`Other Consulting in Recent Years
`• AT & T Bell Labs 1991 – 2000
`• Seton Family Hospitals, Dell Pediatric Research Center
`• Member of the NSF-CISE Board of Visitors, 2004,
`• Member of ETH Zurich, CS Dept Evaluation Committee (2004), INRIA Evaluation Committee 2007
`• Chair search committee, King Abdullah Univ. of Science and Technology Center Director, 2008, 2011
`• Member of Consolider Committee of the Spanish Ministerio de Ciencia e Innovacion, 2008, 2009
`• Member of the NIH-NCRR National Biomedical Computation Resource Advisory Committee, 2006 - 2012
`• Member of the BIMOS Research Advisory Board, TU Berlin, 2016 -
`
`
`
`2
`
` •
`
` •
`
` Editor, ACM Transactions on Graphics, 1995 – 2012
`• Editor, International Journal of Computational Geometry and Applications, 1994 –
`• Editor, ACM Computer Surveys, 2004 –
`• Editor, Computational Vision and Biomechanics, 2006 – 2009
`• Editor, SIAM Journal of Imaging Sciences, 2007 – 2012
`• Chair, Intl. Symposium on Symbolic and Algebraic Computation (ISSAC), UK, 2000, and ACM Annual
`Symposium on Computational Geometry (Applied Track), 2002, SIAM/ACM Geometric and Physical Modeling
`Conference, 2011
`
`
`Expert Witness/Patent Infringement Cases in Recent Years
`
`17