Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`Case IPR2016-01156, Patent 8,458,245
`Case IPR2016-01157, Patent 8,407,356
`Case IPR2016-01158, Patent 8,473,552
`Case IPR2016-01159, Patent 8,694,657
`
`SECOND DECLARATION OF TAL LAVIAN, PH.D.
`
`
`IPR2016-01156, -01157, -01158, -01159
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC.
`Petitioner
`
`v.
`
`WINDY CITY INNOVATIONS, LLC
`Patent Owner.
`
`Case IPR2016-01156, Patent 8,458,245
`Case IPR2016-01157, Patent 8,407,356
`Case IPR2016-01158, Patent 8,473,552
`Case IPR2016-01159, Patent 8,694,657
`
`SECOND DECLARATION OF TAL LAVIAN, PH.D.
`
`
`
`Table of Contents
`
`Page
`
`I.
`II.
`
`V.
`
`INTRODUCTION .......................................................................................... 1
`RESPONSE TO DR. CARBONELL’S OPINIONS RE PERSON OF
`ORDINARY SKILL IN THE ART ................................................................ 3
`III. RESPONSE TO DR. CARBONELL’S OPINIONS RE CLAIM
`CONSTRUCTION ......................................................................................... 4
`“Censor” / “Censored” / “Censorship” ................................................ 4
`A.
`“Database” ............................................................................................ 5
`B.
`IV. RESPONSE TO DR. CARBONELL’S OPINIONS RE PRIOR ART ........ 10
`A.
`Response To Dr. Carbonell’s Opinions Re Internet .......................... 10
`Response To Dr. Carbonell’s Opinions Re Database ........................ 14
`B.
`C.
`Response To Dr. Carbonell’s Opinions Re Tokens ........................... 22
`D.
`Response To Dr. Carbonell’s Opinions Re Other Programs ............. 25
`Response To Dr. Carbonell’s Opinions Re Censorship ..................... 29
`E.
`F.
`Response To Dr. Carbonell’s Opinions Re Pointer-Triggered
`Message .............................................................................................. 31
`Response To Dr. Carbonell’s Opinions Re Two Client Software
`Alternatives ........................................................................................ 34
`Response To Dr. Carbonell’s Opinions Re API, Multiplexing
`and Demultiplexing, and Virtual Connection .................................... 36
`CONCLUSION ............................................................................................. 41
`
`G.
`
`H.
`
`-i-
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`
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`I, Tal Lavian, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION
`1.
`I previously submitted declarations in the above-captioned IPR
`
`proceedings dated June 3, 2016 setting forth my qualifications and experience.
`
`(IPR2016-01156, Ex. 1002 (“Lavian 01156 Declaration”); IPR2016-01157, Ex.
`
`1002 (“Lavian 01157 Declaration”); IPR2016-01158, Ex. 1002 (“Lavian 01158
`
`Declaration”); IPR2016-01159, Ex. 1002 (“Lavian 01159 Declaration”).) In the
`
`interest of brevity, I refer to that information rather than repeat it here. (E.g.,
`
`Lavian 01156 Decl. ¶¶ 3-10 & Ex. A.)
`
`2.
`
`In this second declaration, I refer to the above-captioned IPR
`
`proceedings collectively as “the Windy City IPRs” and the challenged patents
`
`collectively as “the Windy City patents.”
`
`3.
`
`I understand that trial was instituted in the Windy City IPRs as
`
`follows:
`
`•
`
`•
`
`IPR2016-01156 (’245 patent):
`Claims 1–5, 7, and 9–14 as unpatentable under 35 U.S.C. §
`o
`103(a) in view of Roseman, Rissanen, Vetter, Pike, and
`Westaway
`Claims 6, 8, 15, 17, and 18 as unpatentable under 35 U.S.C. §
`103(a) in view of Roseman, Rissanen, Vetter, Pike, Westaway,
`and Lichty
`IPR2016-01157 (’356 patent):
`
`o
`
`1
`
`
`
`o
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`o
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`Second Declaration of Tal Lavian, Ph.D.
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`Claims 1–5, 8, 9, 12, 14–16, 19–24, 27, 28, 31, 33–35, and 37
`o
`as unpatentable under 35 U.S.C. § 103(a) in view of Roseman,
`Rissanen, and Vetter
`Claims 6, 7, 17, 26, and 36 as unpatentable under 35 U.S.C. §
`103(a) in view of Roseman, Rissanen, Vetter, and Pike
`Claims 18 and 25 as unpatentable under 35 U.S.C. § 103(a) in
`view of Roseman, Rissanen, Vetter, and Gosling
`IPR2016-01158 (’552 patent):
`Claims 1–59 and 64, under 35 U.S.C. § 103(a), as obvious over
`o
`Roseman, Rissanen, Vetter, Pike, and Lichty
`IPR2016-01159 (’657 patent):
`Claims 189, 334, 342, 348, 465, 580, 584, and 592, under 35
`o
`U.S.C. § 103(a), as obvious over Roseman, Rissanen, Vetter,
`Pike, and Lichty.
`(See IPR2016-01156, Paper 7 (“01156 Decision”) at 30-31; IPR2016-01157, Paper
`
`•
`
`•
`
`7 (“01157 Decision”) at 27; IPR2016-01158, Paper 7 (“01158 Decision”) at 37;
`
`IPR2016-01159, Paper 7 (“01159 Decision”) at 36.)
`
`4.
`
`I have been asked to prepare this second declaration to respond to
`
`certain points raised in the “Declaration of Dr. Jaime G. Carbonell, Ph.D.” in the
`
`Windy City IPRs. (IPR2016-01156, Ex. 2005 (“Carbonell 1156 Declaration”);
`
`IPR2016-01157, Ex. 2005 (“Carbonell 1157 Declaration”); IPR2016-01158, Ex.
`
`2005 (“Carbonell 1158 Declaration”); IPR2016-01159, Ex. 2005 (“Carbonell 1159
`
`Declaration”).) I have prepared this second declaration to address the points made
`
`across all four of Dr. Carbonell’s declarations, all of which present considerable
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`overlap in content. Accordingly, not all of the points that I address in this second
`
`declaration will apply to all of the IPR petitions.
`
`5.
`
`In preparing this second declaration, in addition to the materials that I
`
`previously reviewed, I have also reviewed:
`
`•
`
`•
`•
`
`•
`
`the “Decision” by the Patent Trial and Appeal Board (“Board”)
`instituting inter partes review in the Windy City IPRs;
`the “Patent Owner Response” in the Windy City IPRs;
`the transcript of Dr. Carbonell’s deposition taken in connection with
`the Windy City IPRs.
`any other materials I cite herein.
`
`II.
`
`RESPONSE TO DR. CARBONELL’S OPINIONS RE PERSON OF
`ORDINARY SKILL IN THE ART
`6.
`My previous declarations included a definition of a person of ordinary
`
`skill in the art. (Lavian 01156 Decl. ¶ 14; Lavian 01157 Decl. ¶ 13; Lavian 01158
`
`Decl. ¶ 14; Lavian 01159 Decl. ¶ 13.) I understand that Dr. Carbonell has opined
`
`that one of ordinary skill in the art would have had 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. (E.g., Carbonell 01156 Decl.
`
`¶ 18; Carbonell 01157 Decl. ¶ 18; Carbonell 01158 Decl. ¶ 18; Carbonell 01159
`
`Decl. ¶ 18.) While I adhere to the definition that I provided in my original
`
`declarations, my opinions would not change if the person of ordinary skill in the art
`
`were to be found to have the level of skill proposed by Dr. Carbonell.
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`III. RESPONSE TO DR. CARBONELL’S OPINIONS RE CLAIM
`CONSTRUCTION
`A.
`“Censor” / “Censored” / “Censorship”
`7.
`Dr. Carbonell opines that the term “censorship” means “examine in
`
`order to suppress or delete anything considered objectionable.” (Carbonell 01156
`
`Decl. ¶ 67; Carbonell 01157 Decl. ¶ 64; Carbonell 01158 Decl. ¶ 67; Carbonell
`
`01159 Decl. ¶ 64.) Dr. Carbonell’s definition appears to be based primarily on a
`
`definition from a non-technical dictionary (Merriam-Webster’s Collegiate
`
`Dictionary). (Id. (quoting from Ex. 2002, p.185).)
`
`8.
`
`I note that Dr. Carbonell’s description of these terms contains no
`
`citation to the patent specification. In my opinion, Dr. Carbonell’s construction is
`
`incorrect because it is inconsistent with the express statements from the
`
`specification. For example, the Board construed “censored” as “controlled with
`
`respect to what is said in a group” (01156 Decision at 9), “censor” as “control what
`
`is said in a group” (01158 Decision at 13; 01159 Decision at 13), and “censorship”
`
`as “control of what is said in a group” (01157 Decision at 10). The Board derived
`
`these constructions from express statements in the specification that “[c]ensorship .
`
`. . broadly encompasses control of what is said in a group” and that “[c]ensorship
`
`can control of [sic] access to system 1 by identity of the user, which is associated
`
`with the user’s tokens.” (01156 Decision at 8; 01157 Decision at 10; Decision
`
`4
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`01158 at 12; 01159 Decision at 12.) These statements support the Board’s
`
`constructions.
`
`9.
`
`I also note that Dr. Carbonell’s proposed construction is identical to
`
`the construction that the patent owner’s previous expert, Dr. Chandrajit Bajaj,
`
`proposed in their Patent Owner Preliminary Response. In fact, the discussion of
`
`censorship in Dr. Carbonell’s declaration appears to be identical to the discussion
`
`that was provided in Dr. Bajaj’s earlier declaration. (Compare IPR2016-01156,
`
`Ex. 2001 ¶ 29 with Carbonell 01156 Decl. ¶ 67, Carbonell 01157 Decl. ¶ 64,
`
`Carbonell 01158 Decl. ¶ 67, Carbonell 01159 Decl. ¶ 64.) The Board expressly
`
`considered and rejected Dr. Bajaj’s proposed construction and his analysis.
`
`(01156 Decision at 8-9; 01157 Decision at 9-10; 01158 Decision at 11-12; 01159
`
`Decision at 11-12.) Dr. Carbonell nevertheless repeated Dr. Bajaj’s analysis
`
`without acknowledging the Board’s reasoning, and without addressing the express
`
`statements in the common specification the Board cited in support of its definition.
`
`B.
`“Database”
`10. Dr. Carbonell states that the term “database” refers to “a collection of
`
`logically-related data which is stored with persistence and associated tools for
`
`interacting with the data such as a DBMS.” (Carbonell 01156 Decl. ¶ 39;
`
`Carbonell 01157 Decl. ¶ 39; Carbonell 01158 Decl. ¶ 39; Carbonell 01159 Decl. ¶
`
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`5
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`39.) As I will explain below, Dr. Carbonell’s construction is incorrect and
`
`unwarranted.
`
`11.
`
`I understand that in IPR2016-01158, the Board construed “database”
`
`to mean “a collection of logically related data.” (01158 Decision at 10.) In my
`
`opinion, this construction is generally consistent with the plain and ordinary
`
`meaning of “database” to a person of ordinary skill in the art in 1996. Although
`
`the Board cited a technical dictionary that was published several years later, the
`
`plain and ordinary meaning of a database had not changed. For example, the 1991
`
`textbook Database System Concepts, by Henry F. Korth and Abraham Silberschatz
`
`(“Korth”) states that the term “database” refers to a “collection of data.” (Ex.
`
`1017, p.1.)
`
`12.
`
`In my opinion, there is no basis to define “database” to require “tools
`
`for interacting with the data such as a DBMS [database management system],” as
`
`Dr. Carbonell proposes. A key to Dr. Carbonell’s conclusion is his opinion that
`
`“[t]wo hallmarks of a database are (1) persistence of the data, and (2) interactivity
`
`with the data via a database management system (DBMS).” (Carbonell 01156
`
`Decl. ¶ 39; Carbonell 01157 Decl. ¶ 39; Carbonell 01158 Decl. ¶ 39; Carbonell
`
`01159 Decl. ¶ 39.) But a database and a database management system (DBMS)
`
`are different things. The term “database” refers to the actual collection of data
`
`whereas the DMBS refers to software tools for managing the data. For example,
`
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`Second Declaration of Tal Lavian, Ph.D.
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`Korth explains that “[a] database management system (DBMS) consists of a
`
`collection of interrelated data and a set of programs to access that data. The
`
`collection of data, usually referred to as a database, contains information about one
`
`particular enterprise.” (Ex. 1017 (“Korth”), p.1.)
`
`13. Moreover, a person of ordinary skill in the art would have understood
`
`that a “database,” i.e., a collection of logically related data under the Board’s
`
`definition, simply does not require a DBMS. It was well-known to persons of
`
`ordinary skill in the art that software programs could store and retrieve data using
`
`their own internal logic and programming, without relying on a DBMS. For
`
`example, in Mary Loomis, The Database Book (1987), Loomis refers to this
`
`approach as the “traditional” or “applications-oriented” approach in which a
`
`software application creates manages its own database without using a DBMS.
`
`(Ex. 1020 (“Loomis”), pp. 5-6.) Loomis explains that, under this approach, the
`
`software application “manages its own files: a file is a collection of data managed
`
`and accessed as a unit.” (Id., p.5.) A database under this approach can be built
`
`from a series of files. Because the logic of how to store and retrieve information
`
`from the database files is built-into the software program itself, a DBMS is not
`
`required.
`
`14.
`
`In fact, Loomis explains that there may be situations in which the
`
`“traditional” or “applications-oriented” (non-DMBS) approach is preferable over
`
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`using a DBMS. Loomis explains that “[u]sing a DBMS commonly requires more
`
`hardware and software overhead than does using a conventional file organization,
`
`not just during system implementation, but also on a continuing basis.” (Id., p.13
`
`(under “Operation Costs”).) Loomis further explains that “[n]ot all data-processing
`
`organizations are ready to use a DMBS effectively to implement a database
`
`environment.” (Id., p.14.) For example, Loomis asserts that “the traditional
`
`applications-oriented approach is still satisfactory” when the organization has
`
`“relatively small data volumes with little expected growth in volumes,” among
`
`other reasons. (Id.) Loomis thus confirms that a “database,” i.e. a collection of
`
`logically related data under the Board’s definition, could have been implemented
`
`without a DMBS.
`
`15. My conclusion is further supported by the common specification,
`
`which contains only a few mentions of the claimed database. In fact, the term
`
`“database” appears only the following passage in the written description:
`
`With regard to the arbitrating of the controller computer 3 is directed
`by the controller computer program 2 to use “identity tokens”, which
`are pieces of information associated with user identity. The pieces of
`information are stored in memory 11 in a control computer database,
`along with personal information about the user, such as the user's age.
`The control computer database serves as a repository of tokens for
`other programs to access, thereby affording information to otherwise
`independent computer systems. In the database, the storage of tokens
`
`
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`8
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`can be by user, group, and content, and distribution controls can also
`be placed on the user’s tokens as well as the database.
`
`(’245, 8:6-15; ’356, 8:9-21; ’552, 7:61-8:5; ’657, 7:49-59.) The passage above
`
`merely states the purpose of the database – to store the identity tokens – and does
`
`not impose any requirement on how the database is implemented. In my opinion,
`
`the common specification’s exceedingly brief and high-level description of the
`
`“control database” supports the Board’s broader construction of “database” as a
`
`“collection of logically related data.” The terms “DBMS” or “database
`
`management system” appear nowhere in the common specification.
`
`16. A person of ordinary skill in the art would have appreciated that, in
`
`implementing the database described in the challenged claims, it might have been
`
`preferable not to use a DBMS. This is because the claims only require “a database
`
`which serves as a repository for other programs to access.” The claim does not
`
`require any particular type of indexing or specify any particular type of access.
`
`The claimed database could have been carried out using a simple database built up
`
`from files managed directly by the application software, without needing a DBMS.
`
`The amount of data that would be stored the tokens would likely have been
`
`exceedingly small, possibly on the order of a single value or number for each token
`
`for each user. A person of ordinary skill the art might have reasonably decided
`
`that a DBMS, with its increased processing overhead, complexity and costs, was
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`not warranted given the rudimentary database called for by the claims.
`
`Accordingly, Dr. Carbonell’s inclusion of a DBMS or similar functionality into the
`
`definition of “database” should be rejected.
`
`17. Dr. Carbonell further points to a document filed January 14, 2017 by
`
`the applicant in a related U.S. Patent Application No. 14/246,965. (Carbonell
`
`01156 Decl. ¶¶ 49-50; Carbonell 01157 Decl. ¶¶ 49-50; Carbonell 01158 Decl. ¶¶
`
`49-50; Carbonell 01159 Decl. ¶¶ 49-50.) In my opinion, the statements in this
`
`document are not relevant because they were made after the Board instituted the
`
`IPRs, presumably, in an attempt to bolster the patent owner’s narrow construction.
`
`IV. RESPONSE TO DR. CARBONELL’S OPINIONS RE PRIOR ART
`A. Response To Dr. Carbonell’s Opinions Re Internet
`18. Each independent claim at issue in the Windy City IPRs, except claim
`
`19 of the ’356 patent, recites “an [or the] Internet network” or “the Internet.”
`
`19. As I explained in my original declarations, Roseman discloses the
`
`ability to distribute communications over “commercially-available” Wide Area
`
`Networks (WANs). (Lavian 01156 Decl. ¶ 51; Lavian 01157 Decl. ¶¶ 41, 83;
`
`Lavian 01158 Decl. ¶¶ 30, 62; Lavian 01159 Decl. ¶¶ 28, 60.) I explained that a
`
`person of ordinary skill in the art would have understood that the Internet is an
`
`example of a Wide Area Network (WAN). (Lavian 01156 Decl. ¶ 51; Lavian
`
`01157 Decl. ¶ 83; Lavian 01158 Decl. ¶ 62; Lavian 01159 Decl. ¶ 60.) At his
`
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`Second Declaration of Tal Lavian, Ph.D.
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`deposition, Dr. Carbonell agreed that the Internet is an example of a commercially-
`
`available WAN. (Ex. 1016 (“Carbonell Depo. Tr.”), 21:24-22:16.)
`
`20. Dr. Carbonell does not dispute that Vetter discloses systems for
`
`conferencing over the Internet. (Carbonell 01156 Decl. ¶ 24; Carbonell 01157
`
`Decl. ¶ 24; Carbonell 01158 Decl. ¶ 24; Carbonell 01159 Decl. ¶ 24.) Dr.
`
`Carbonell also does not dispute that the combination of Roseman and Vetter
`
`discloses the Internet network or Internet as claimed. Dr. Carbonell only disputes
`
`that it would have been obvious to combine Roseman and Vetter. (Carbonell
`
`01156 Decl. ¶ 63; Carbonell 01157 Decl. ¶ 63; Carbonell 01158 Decl. ¶ 63;
`
`Carbonell 01159 Decl. ¶ 63.) I respectfully disagree.
`
`21. Dr. Carbonell ignores that Vetter discloses actual use of conferencing
`
`systems over the Internet. He ignores that Vetter states that “Videoconferences are
`
`becoming increasingly frequent on the Internet and generating much research
`
`interest.” (Vetter, Ex. 1005, p.77.) He further ignores that Vetter concludes that
`
`his own project to demonstrate a virtual classroom over the Internet using
`
`conferencing tools was a “success.” (Vetter, Ex. 1005, p.77.) While Vetter also
`
`describes various challenges encountered during the project, it provides clear
`
`motivation to use conferencing systems over the Internet and an expectation that
`
`doing so would be successful. I provided a full explanation in my opening
`
`declarations as to why the challenges reported in Vetter would not have
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`discouraged a person of ordinary skill in the art from combining with Roseman,
`
`particularly given the numerous express motivations to combine in Vetter. (Lavian
`
`01156 Decl. ¶¶ 51-57; Lavian 01157 Decl. ¶¶ 84-89; Lavian 01158 Decl. ¶¶ 63-68;
`
`Lavian 01159 Decl. ¶¶ 61-66.)
`
`22. Dr. Carbonell also relies on an article by Bob Metcalfe, but it offers
`
`no insight into what would have been obvious to one of ordinary skill in the art in
`
`1996. A person of ordinary skill in the art would have given little, if any, credit to
`
`statements in the Metcalfe article. Metcalfe, who identified himself as “a
`
`journalist” and “not an engineer,” described the article as “sarcastic” and “largely
`
`tongue-in-cheek,” and in fact publicly retracted shortly after publishing it. (Ex.
`
`1018, p.14; Ex. 1019.)
`
`23. Dr. Carbonell also asserts that because there were other allegedly
`
`better communication methods (such as ISDN and ATM), one of ordinary skill in
`
`the art would have used one of those methods rather than the Internet. (Carbonell
`
`01156 Decl. ¶¶ 60, 63; Carbonell 01157 Decl. ¶¶ 60, 63; Carbonell 01158 Decl. ¶¶
`
`60, 63; Carbonell 01159 Decl. ¶¶ 60, 63.) I disagree that the existence of
`
`alternatives, even if allegedly better in some respects, would not have negated the
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`obviousness of using the Internet.
`
`24.
`
`I am informed that a particular combination need not be the preferred,
`
`or
`
`the most desirable, combination
`
`in order
`
`to provide motivation—the
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`Second Declaration of Tal Lavian, Ph.D.
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`combination need only be a suitable option from which the prior art does not teach
`
`away. I am further informed that a reference teaches away when a person of
`
`ordinary skill, upon reading the reference, would be discouraged from following
`
`the path set out in the reference, or would be led in a direction divergent from the
`
`path that was taken in the claim. I am further informed that a reference that merely
`
`expresses a general preference for an alternative invention but does not criticize,
`
`discredit, or otherwise discourage investigation into the claimed invention does not
`
`teach away.
`
`25. There is no question that Vetter makes clear to a person of ordinary
`
`skill in the art that it was suitable to use conferencing systems over the Internet, as
`
`I explained in my previous declaration. Moreover, Dr. Carbonell does not identify
`
`any teaching away. In fact, with respect to the Metcalfe article, in addition to
`
`disparaging and retracting the article, the author himself stated that “the Internet is
`
`infinitely cool. . . . The Internet is the hope of the future. . . . That’s why we’re
`
`investing all this money.” (Ex. 1018, p.16.) These statements are consistent with
`
`my recollection of the enthusiastic development of the Internet in the 1996 time
`
`frame. For these reasons, and the reasons discussed in my original declarations, it
`
`would have been obvious to combine Roseman and Vetter.
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`B. Response To Dr. Carbonell’s Opinions Re Database
`26. Each independent claim at issue in the Windy City IPRs recites “a
`
`database which serves as a repository of tokens for other programs to access.”
`
`27. As I explained in my original declarations, Roseman discloses a
`
`database because the host computer stores the keys issued to invites to control
`
`access to a conference room. (Lavian 01156 Decl. ¶¶ 67-69; Lavian 01157 Decl.
`
`¶¶ 63-65; Lavian 01158 Decl. ¶¶ 54-56; Lavian 01159 Decl. ¶¶ 48-50.) I further
`
`explained that, even if Roseman did not sufficiently disclose a “database,” it would
`
`have been trivially obvious to a person of ordinary skill in the art to add one, and
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`discussed the disclosure of an analogous database in the Rissanen reference.
`
`(Lavian 01157 Decl. ¶¶ 70-72; Lavian 01157 Decl. ¶¶ 66-68; Lavian 01158 Decl.
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`¶¶ 57-59; Lavian 01159 Decl. ¶¶ 51-53.)
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`28. Dr. Carbonell disputes that the host computer in Roseman stores keys.
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`(Carbonell 01156 Decl. ¶ 40; Carbonell 01157 Decl. ¶ 40; Carbonell 01158 Decl. ¶
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`40; Carbonell 01159 Decl. ¶ 40.) Dr. Carbonell speculates that user authentication
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`could instead be carried out by using a “hash function” without storing the keys on
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`the host. (Id.) I respectfully disagree.
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`29. Such a hash function is nowhere disclosed or suggested in Roseman.
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`In fact, the use of a hash function is incompatible with the express teachings of
`
`Roseman. In particular, Roseman explains that a “meeting room ‘knows’ about
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`each key and its invitation level.” (Roseman, 9:49-50 (emphasis added).) The
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`problem with Dr. Carbonell’s hash function theory is that a hash function is one-
`
`way and irreversible. In other words, the input to the hash function, in this case a
`
`“key” of Roseman, is essentially unknowable and cannot be reproduced from the
`
`output of the hash function. Thus, if a hash function were used in Roseman as Dr.
`
`Carbonell speculates, a meeting room could not “know” about the key. For
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`instance, one well-known hash function is the MD5 algorithm. Using MD5, a
`
`character string of arbitrary length can be digested into a 32-byte hash. For
`
`example, inputting the first paragraph of the Declaration of Independence into the
`
`MD5 algorithm yields a hash of 7ec5724ca87c5fa5a68d50273c82fb19. There is
`
`no way to reverse that hash to know that it corresponds to the first paragraph of the
`
`Declaration of Independence.
`
`30.
`
`In addition, Roseman expressly discloses that invitations, which
`
`contain keys, are distributed from the host computer. (Roseman, 4:23-25, 9:42-43,
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`9:54-55.) Under Dr. Carbonell’s hash function theory, the keys at the host
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`computer would have to be destroyed at some point after invitations were
`
`distributed. Dr. Carbonell does not explain why it would make sense to do so or
`
`identify anything in Roseman suggesting that any such deletion ever occurs. In
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`fact, as I noted above, Roseman discloses the opposite, expressly stating that
`
`meeting rooms “know” about the keys and therefore clearly indicating that the
`
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`15
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`keys are stored on the host computer. (Lavian 01156 Decl. ¶¶ 67-68; Lavian
`
`01157 Decl. ¶¶ 63-64; Lavian 01158 Decl. ¶¶ 54-55; Lavian 01159 Decl. ¶¶ 48-
`
`49.)
`
`31. Dr. Carbonell also opines Roseman does not disclose a database under
`
`his proposed construction of that term. (Carbonell 01156 ¶ 48; Carbonell 01157
`
`Decl. ¶ 48; Carbonell 01158 Decl. ¶ 48; Carbonell 01159 Decl. ¶ 48.) I disagree.
`
`As I explained above, I disagree with Dr. Carbonell’s proposed construction, but
`
`Roseman nevertheless discloses a database even when applying that construction.
`
`32. Roseman makes clear that keys on the host computer are stored with
`
`persistence. As I explained above, Roseman discloses that the host computer
`
`stores the conference room keys. Roseman further explains that a conference room
`
`has “persistence in time” beyond the time period in which computer programs
`
`associated with the conference room are executed. (Roseman, 12:23-25.) In
`
`particular, Roseman states that, even after termination of a conference, “a person
`
`having proper authorization can gain entry to the conference room.” (Roseman,
`
`12:20-23.) A person of ordinary skill in the art would have understood that
`
`because of the persistence in time of the conference room and the continued
`
`required authorization to access it, the stored keys associated with accessing the
`
`conference room would also have persistence.
`
`
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`16
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`33. Moreover, to the extent that Dr. Carbonell’s interpretation of
`
`“persistence” requires storage in a non-volatile storage medium (e.g., Carbonell
`
`01156 Decl. ¶ 34; Carbonell 01157 Decl. ¶ 34; Carbonell 01158 Decl. ¶ 34;
`
`Carbonell 01159 Decl. ¶ 34), a person of ordinary skill in the art would have
`
`understood that storing the keys of Roseman exclusively in volatile memory
`
`associated with executing conference room applications would be incompatible
`
`with Roseman’s teachings. First, Roseman makes clear that the execution of
`
`programs associated with a conference room can be terminated and then resumed
`
`at a later date. (Roseman, 12:16-25.) If the keys for the conference room were
`
`only stored in the memory of those executing programs, they would be lost when
`
`those programs terminated and authorization at a later time described by Roseman
`
`for a user to re-enter the conference room could not occur. Second, a person of
`
`ordinary skill in the art would understand that it would make no sense to keep
`
`those programs running indefinitely, as doing so would needlessly consume
`
`valuable computing resources that could be required for other activities, such as
`
`running conference rooms that were actually in use. Third, storing the keys
`
`exclusively in volatile memory would result in an inferior system susceptible to
`
`power outages and program crashes. Instead, it would be clear to a person of
`
`ordinary skill in the art that the disclosures of Roseman require storing keys on the
`
`host computer on a non-volatile storage medium, such as a hard drive.
`
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`34. A person of ordinary skill in the art would have further understood
`
`that Roseman includes associated tools for interacting with the keys. For
`
`example, Roseman explains that the host computer can send email invitations that
`
`include the keys. (Roseman, 4:23-25, 9:42-43, 9:54-55.) A person of ordinary
`
`skill in the art would understand that the tools for creating and sending the
`
`invitations would interact with the stored collection of keys, by reading from
`
`and/or writing to that collection to ensure that the distributed keys matched the
`
`keys in the collection at the host computer.
`
`35. Therefore, in my opinion, Roseman discloses a “database” under both
`
`the Board’s construction and Dr. Carbonell’s proposed construction.
`
`36. However, even if Roseman were to be found to not sufficiently
`
`disclose a “database,” I note that Dr. Carbonell does not dispute, and the patent
`
`owner concedes, that Rissanen discloses a database under both the Board’s
`
`construction and Dr. Carbonell’s proposed construction. (01156 PO Response at
`
`22 (“Rissenan [sic] does disclose a database”); 01157 PO Response at 22 (same);
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`01158 PO Response at 23 (same); 01159 PO Response at 22 (same); Carbonell
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`01156 Decl. ¶¶ 39, 41, 48; Carbonell 01157 Decl. ¶¶ 39, 41, 48; Carbonell 01158
`
`Decl. ¶¶ 39, 41, 48; Carbonell 01159 Decl. ¶¶ 39, 41, 48.)
`
`37.
`
`I agree that Rissanen discloses a database, even under Dr. Carbonell’s
`
`proposed construction. Rissanen clearly discloses a relational database whose data
`
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`18
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`is stored persistently and includes tools for interacting with the data such as a
`
`DBMS. In particular, Rissanen discloses a database 100 that is stored on non-
`
`volatile media such as a disk (Rissanen, 5:9-14), whose data is organized into a
`
`table having columns and rows (id., 5:24-48), and that has associated tools for
`
`interacting with the data (id., 2:26-29, 2:38-42, 8:8-13). The fact that Rissanen
`
`discloses such a relational database is consistent with the deposition testimony of
`
`Dr. Carbonell, who stated that a relational database stores data in tables with
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`columns and rows (Carbonell Depo. Tr., 12:17-21) and that all commercial
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`relational database systems that he could recall from the early 1990s included
`
`database management software for interacting with the database data. (Id., 12:22-
`
`13:25.)
`
`38. Dr. Carbonell also opines that a person of ordinary skill in the art
`
`would not be motivated to combine Rissanen and Roseman. (Carbonell 01156
`
`Decl. ¶¶ 41-47; Carbonell 01157 Decl. ¶¶ 41-47; Carbonell 01158 Decl. ¶¶ 41-47;
`
`Carbonell 01159 Decl. ¶¶ 41-47.) I respectfully disagree. As I explained in my
`
`original declarations, I point to Rissanen for a very simple proposition: it was
`
`known to use databases to store user identity and authentication information.
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`(Lavian 01156 Decl. ¶¶ 70, 72; Lavian 01157 Decl. ¶¶ 66, 68; Lavian 01158 Decl.
`
`¶¶ 57, 59; Lavian 01159 Decl. ¶¶ 51, 53.) Locating, accessing, and using a key
`
`
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`19
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`Second Declaration of Tal Lavian, Ph.D.
`IPR2016-01156, -01157, -01158, -01159
`stored in a database is not more complicated than, and would involve the same
`
`steps as, locating, accessing, and using a key stored elsewhere.
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`39. Dr. Carbonell’s opinion is based on irrelevant alleged issues with
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`physically combining the system of Rissanen with Roseman. For example, Dr.
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`Carbonell states that “[i]t would take substantial creativity to modify Risanen [sic]
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`exentsively [sic] to perform the functions tau
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