UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`Unified Patents Inc.,
`
`Petitioner
`
`v.
`
`Catonian IP Management LLC
`
`Patent Owner
`
`
`IPR2017-_____
`
`U.S. Patent No. 8,799,468
`
`____________
`
`
`DECLARATION OF NORMAN HUTCHINSON, PH.D.
`
`
`
`
`
`
`
`Unified Patents Ex. 1003, pg. 1
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`Introduction.......................................................................................1
`
`II. Qualifications.....................................................................................1
`
`III. Basis of Opinions................................................................................6
`
`IV. Understanding of Legal Standards ......................................................6
`
`V. Description of the Relevant Field and Timeframe ................................9
`
`VI. The Person of Ordinary Skill in the Art (“POSA”) in the Relevant
`Timeframe ................................................................................................ 10
`
`VII. Overview of the ’468 Patent .............................................................. 11
`
`A.
`
`B.
`
`The ’468 Patent’s Specification .................................................. 11
`
`The ’468 Patent’s Prosecution History ........................................ 15
`
`VIII. Technology Background for the ’468 Patent ...................................... 17
`
`A. Discussion of the State of the Art as of 2003 ................................. 17
`
`B.
`
`Brief Overview of Relevant Prior Art ........................................... 33
`1. The Freund Patent .............................................................. 33
`2. The Spusta Patent Application .............................................. 35
`
`IX. Claim Interpretation ........................................................................ 36
`
`A.
`
`B.
`
`C.
`
`“service provider network” ........................................................ 37
`
`“controller instructions” ........................................................... 39
`
`“gateway unit” ......................................................................... 44
`
`X.
`Patentability Analysis for Claims 1-5, 9, 11-13, 19, 23-27, and 32-34 of
`the ’468 Patent .......................................................................................... 46
`
`Freund Renders Claims 1-5, 9, 12, 19, 23-27, and 33 Obvious, and
`A.
`Spusta Renders Claims 1-3, 11, 13, 23-25, 32, and 34 Obvious ................ 47
`
`B.
`
`Element-by-element analysis of the challenged claims ................... 51
`
`XI. Secondary Considerations .............................................................. 141
`
`i
`
`Unified Patents Ex. 1003, pg. 2
`
`

`

`
`
`XII. Availability for Cross Examination ................................................. 142
`
`XIII. Right to Supplement....................................................................... 142
`
`XIV. Conclusion ..................................................................................... 143
`
`
`
`ii
`
`Unified Patents Ex. 1003, pg. 3
`
`

`

`
`
`I, Dr. Norman Hutchinson, Ph.D., declare as follows:
`
`I. INTRODUCTION
`
`1.
`
`I have been retained by Unified Patents Inc. (“Unified” or
`
`“Petitioner”) as an independent expert consultant in this proceeding before the
`
`United States Patent and Trademark Office. Although I am being compensated at
`
`my rate of $275 per hour for the time I spend on this matter, no part of my
`
`compensation depends on the outcome of this proceeding, and I have no other
`
`interest in this proceeding.
`
`2.
`
`I have been asked to consider whether claims 1-5, 9, 11-13, 19, 23-27,
`
`and 32-34 of U.S. Patent Number 8,799,468 are patentable over various prior art.
`
`As discussed below, I conclude that they are not.
`
`II. QUALIFICATIONS
`
`3.
`
`I am currently a Professor of Computer Science at the University of
`
`British Columbia in the Faculty of Science, where I have worked since 1991.
`
`Previously I was a Professor of Computer Science at the University of Arizona.
`
`4.
`
`For more than 30 years, I have studied, designed, and worked in the
`
`field of computer science. My experience includes more than 25 years of teaching
`
`and research, with research interests including distributed systems, programming
`
`languages and compilers for distributed systems, file systems, network protocols,
`
`and operating systems.
`
`1
`
`Unified Patents Ex. 1003, pg. 4
`
`

`

`
`
`5.
`
`I received a Bachelor of Science (Honors) degree in Computer
`
`Science from the University of Calgary in 1982, a Master of Science degree in
`
`Computer Science from the University of Washington in 1985, and a Doctor of
`
`Philosophy degree in Computer Science from the University of Washington in
`
`1987.
`
`6.
`
`Over the last three decades, I have architected, developed, and
`
`evaluated a large number of operating systems and distributed systems: Eden and
`
`Emerald at the University of Washington; the x-kernel at the University of
`
`Arizona; Elephant, Kea, Tui, Mammoth, Remus, Parallax, Capo, DOHA and others
`
`at the University of British Columbia. These systems have included object-
`
`oriented systems and languages for distributed systems (Eden and Emerald),
`
`operating systems (x-kernel and Kea), file systems (Elephant, Mammoth, Parallax,
`
`Capo), process migration systems (Emerald and Tui), systems for high availability
`
`(Remus) and browser based middleware for interactive applications (DOHA).
`
`7.
`
`In 2001, I co-founded Silicon Chalk, Inc., which developed
`
`distributed software to enhance the utility of laptops in the classroom. This
`
`software included the ability to share information from the instructor to the
`
`students, from the students back to the instructor, and directly between students,
`
`including replication of both control information and instructional content. I
`
`2
`
`Unified Patents Ex. 1003, pg. 5
`
`

`

`
`
`served as Silicon Chalk’s Chief Technical Officer until 2005 when it was
`
`abandoned.
`
`8.
`
`I have served on the Program Committees for over a dozen scientific
`
`conferences and symposiums covering the fields of distributed computing,
`
`operating systems, object-oriented programming and architecture. I have been a
`
`reviewer for more than 40 journals and funding agencies in computer science.
`
`9.
`
`I have supervised 12 Ph.D. students in Computer Science, and an
`
`additional 45 M.Sc. students. I have taught undergraduate and graduate courses for
`
`more than 25 years in programming, programming languages, compilers, operating
`
`systems, distributed systems, and networking. Overall, I have contributed to the
`
`education of more than 2,200 students.
`
`10.
`
`I am the author or co-author of over 60 journal and conference
`
`publications. Many of these publications describe distributed computing systems,
`
`some of which are directed specifically to client-server interaction. Below is a list
`
`of my publications that are particularly relevant to this topic:
`
`
`
`
`
`
`
`A. Black, N.C. Hutchinson, E. Jul, H. Levy and L. Carter,
`“Distribution and abstract types in Emerald”, IEEE Transactions on
`Software Engineering, 13(1):65-76, January 1987.
`
`E. Jul, H.M. Levy, N.C. Hutchinson and A.P. Black, “Fine-grained
`mobility in the Emerald system”, ACM Transactions on Computer
`Systems, 6(1):109-133, February 1988.
`
`A. Black, N.C. Hutchinson, E. Jul and H. Levy, “Object structure in
`the Emerald system”. In Proceedings of the ACM Conference on
`
`3
`
`Unified Patents Ex. 1003, pg. 6
`
`

`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Object-Oriented Programming Systems, Languages and Applications,
`pp. 78-86, ACM October 1986.
`
`L.L. Peterson, N.C. Hutchinson, S.W. O'Malley and H.C. Rao, “The
`x-kernel: A platform for accessing Internet resources'', IEEE
`Computer, 23(5), May 1990.
`
`Alistair Veitch and Norman C. Hutchinson, “Kea - A Dynamically
`Extensible and Configurable Operating System Kernel”, Proceedings
`of the Third International Conference on Configurable Distributed
`Systems, pp. 123-129, Annapolis Maryland, May 1996.
`
`Norman C. Hutchinson, Stephen Manley, Michael Federwisch, Guy
`Harris, Dave Hitz, Steven Kleiman and Sean O'Malley, “Logical vs.
`Physical File System Backup''. Proceedings of the Third Usenix
`Symposium on Operating System Design and Implementation, pp.
`239--249, February, 1999.
`
`Douglas J. Santry, Michael J. Feeley, Norman C. Hutchinson and
`Alistair C. Veitch, “Elephant: The File System That Never Forgets”.
`Proceedings of the Seventh Workshop on Hot Topics in Operating
`Systems, Rio Rico, Arizona, March 1999, pp. 2--7.
`
`Douglas J. Santry, Michael J. Feeley, Norman C. Hutchinson, Alistair
`C. Veitch, Ross W. Carton, and Jacob Ofir, “Deciding when to forget
`in the Elephant file system”. Proceedings of the Seventeenth ACM
`Symposium on Operating Systems Principles, Kiawah Island, SC,
`December 1999, pp. 110--123.
`
`Peter Smith and Norman C. Hutchinson, “Heterogeneous Process
`Migration: The Tui System”. Software – Practice and Experience,
`28(6), pp. 611--639, May, 1998.
`
`D. Makaroff, Norman C. Hutchinson, “Development and Evolution of
`a Heterogeneous Continuous Media Server: a case study”. Journal
`of Software Maintenance and Evolution: Research and Practice,
`17(2), pp. 143--167, Apr 2005.
`
`Dmitry Brodsky, Michael J. Feeley and Hutchinson, Norman C.,
`“Topology Sensitive Replica Selection”, Proceedings of the 25th
`Symposium on Reliable Distributed Systems, Leeds, UK, October
`2006, pp. 18-28.
`
`4
`
`Unified Patents Ex. 1003, pg. 7
`
`

`

`
`
`
`
`
`
`Dutch T. Meyer, Gitika Aggarwal, Brendan Cully, Geoffrey Lefebvre,
`Michael J. Feeley, Norman C. Hutchinson and Andrew Warfield,
`“Parallax: Virtual Disks for Virtual Machines”, Proceedings of the
`Third EuroSys Conference (EuroSys '08), Glasgow, Scotland, April
`2008, pp. 41-54.
`
`Brendan Cully, Geoffrey Lefebvre, Dutch Meyer, Mike Feeley,
`Norman C. Hutchinson, Andrew Warfield, “Remus: High Availability
`via Asynchronous Virtual Machine Replication”, Proceedings of the
`Fifth USENIX Symposium on Networked Systems Design and
`Implementation, San Francisco, CA, April 2008, pp. 161-174.
`
`11.
`
`I am a member of several professional organizations for Computer
`
`Scientists, including the Association of Computing Machinery (ACM) and the
`
`Institute of Electrical and Electronics Engineers (IEEE). I often teach classes on
`
`distributed systems and Internet programming, and in these classes I regularly
`
`assign undergraduate students the task of implementing web servers, web clients,
`
`web proxies, and web content filters that deny access to web content based on
`
`rules. This is a straightforward assignment that third or fourth year undergraduate
`
`students can successfully complete.
`
`12. A copy of my curriculum vitae, which describes in further detail my
`
`qualifications, responsibilities, employment history, honors, awards, professional
`
`associations, invited presentations, and publications is attached to this declaration
`
`as Appendix A.
`
`5
`
`Unified Patents Ex. 1003, pg. 8
`
`

`

`
`
`III. BASIS OF OPINIONS
`
`13.
`
`In forming my opinions, I have reviewed United States Patent No.
`
`8,799,468 (“the ’468 Patent”) to Robert M. Burke II and David Z. Carman and its
`
`file history as well as the patents and applications referenced in the section of the
`
`’468 Patent entitled “Related U.S. Application Data.” I have also reviewed the
`
`publications cited in the footnotes of this declaration and referenced in the inter
`
`partes review petition submitted herewith. Additionally, I have analyzed the ’468
`
`Patent’s specification and claims and the prior art submitted in the inter partes
`
`review petition. It is my expert opinion that the prior art regarding network access
`
`controllers and infrastructure renders unpatentable the challenged claims of the
`
`’468 Patent as being obvious.
`
`IV. UNDERSTANDING OF LEGAL STANDARDS
`
`14.
`
` I understand that a patent claim is unpatentable if the differences
`
`between the patented subject matter and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person of ordinary skill in the art (“POSA”). I am informed that this standard is set
`
`forth in 35 U.S.C. § 103(a).
`
`15.
`
`I understand that the following factors must be evaluated to determine
`
`whether the claimed subject matter is obvious: (1) the scope and content of the
`
`prior art; (2) the difference or differences, if any, between the scope of the claim of
`
`6
`
`Unified Patents Ex. 1003, pg. 9
`
`

`

`
`
`the patent under consideration and the scope of the prior art; (3) the level of
`
`ordinary skill in the art at the time the patent was filed; and (4) so-called objective
`
`indicia of non-obviousness, also known as “secondary considerations,” like the
`
`following, which are also to be considered when assessing obviousness: (A)
`
`commercial success; (B) long-felt but unresolved needs; (C) copying of the
`
`invention by others in the field; (D) initial expressions of disbelief by experts in the
`
`field; (E) failure of others to solve the problem that the inventor solved; and (F)
`
`unexpected results. I also understand that evidence of objective indicia of non-
`
`obviousness must be commensurate in scope with the claimed subject matter. I am
`
`not aware of any objective indicia of non-obviousness for the ’468 Patent.
`
`16.
`
`I understand that a prior art reference can be used to invalidate a claim
`
`as being obvious under 35 U.S.C. § 103 when there was an apparent reason for a
`
`POSA, at the time of the invention, to modify the reference, which includes, but is
`
`not limited to (A) finding that it would be an obvious matter of design choice to
`
`modify the prior art reference in a particular way and that the design choice would
`
`not give unexpected results; (B) modifying the prior art method according to
`
`known methods to yield predictable results; (C) substituting one known element
`
`for another to obtain predictable results; (D) using a known technique to improve a
`
`similar device in the same way; (E) applying a known technique to a known device
`
`ready for improvement to yield predictable results; (F) trying a finite number of
`
`7
`
`Unified Patents Ex. 1003, pg. 10
`
`

`

`
`
`identified, predictable potential solutions, with a reasonable expectation of success;
`
`or (G) identifying that known work in one field of endeavor may prompt variations
`
`of it for use in either the same field or a different one based on design incentives or
`
`other market forces if the variations are predictable to one of ordinary skill in the
`
`art.
`
`17.
`
`I also understand that to prove that prior art or a combination of prior
`
`art renders a patent obvious, it is necessary to (1) identify the particular references
`
`that, singly or in combination, make the patent obvious; (2) specifically identify
`
`which elements of the patent claim appear in each of the asserted references; and
`
`(3) explain a motivation, teaching, need or market pressure that would have
`
`inspired a POSA to combine prior art references to solve a problem. In this regard,
`
`obviousness can be established by (for example): combining prior art elements
`
`according to known methods to yield predictable results; simple substitution of one
`
`known element for another to obtain predictable results; use of known techniques
`
`to improve similar devices in the same way; applying a known technique to a
`
`known device ready for improvement to yield predictable results; choosing from a
`
`limited number of identifiable, predictable solutions with a reasonable expectation
`
`of success; known work in one field of endeavor prompting variations of it for use
`
`in either the same field or a different one based on design incentives or other
`
`market forces if the variations are predictable to a POSA; or, some teaching,
`
`8
`
`Unified Patents Ex. 1003, pg. 11
`
`

`

`
`
`suggestion or motivation in the prior art that would have led a POSA to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`V. DESCRIPTION OF THE RELEVANT FIELD AND TIMEFRAME
`
`18. The ’468 Patent was issued to Robert M. Burke, II et al. on August 5,
`
`2014. I have been informed that the ’468 Patent is a continuation of Application
`
`No. 10/989,023, now U.S. Patent No. 8,122,128, filed on November 16, 2004 and
`
`also claims priority to Provisional Application Nos. 60/563,064, 60/538,370, and
`
`60/523,057 filed on April 16, 2004, January 22, 2004, and November 18, 2003,
`
`respectively. I have been informed that I should assume that November 18, 2003
`
`is the earliest possible priority date on which the ’468 Patent can rely.
`
`19.
`
`I have carefully reviewed the ’468 Patent and its file history. Based
`
`on my review of this material, I believe that the relevant field for the purposes of
`
`the ’468 Patent is networking and distributed systems. I have been informed that
`
`the relevant timeframe is on or before November 18, 2003, which is the filing date
`
`of U.S. Provisional Application No. 60/523,057.
`
`20. As described and as shown in my CV, I have extensive experience in
`
`the relevant field. Based on my experience, especially with the distributed object
`
`based systems Eden and Emerald in the 1980s which supported, remotely invoked,
`
`and moved active objects between computers within a local network, and the
`
`9
`
`Unified Patents Ex. 1003, pg. 12
`
`

`

`
`
`distributed process migration system Tui in the 1990s which moved active UNIX
`
`processes across the network between computers with different processor
`
`architectures, I have a good understanding of the relevant field in the relevant
`
`timeframe.
`
`VI. THE PERSON OF ORDINARY SKILL IN THE ART (“POSA”) IN
`THE RELEVANT TIMEFRAME
`
`21.
`
`I have been informed that a POSA is a hypothetical person to whom
`
`an expert in the relevant field could assign a routine task with reasonable
`
`confidence that the task would be successfully carried out. In my opinion, for the
`
`’468 Patent, a POSA would have a bachelor’s degree in Computer Science, or
`
`related discipline, and two years of relevant experience. I have been informed that
`
`the level of skill in the art is evidenced by the prior art references. The prior art
`
`discussed herein demonstrates that a POSA, at the time the ’468 Patent was
`
`effectively filed, would be aware of regulating network access and how to design
`
`such systems, TCP/IP-based networking as practiced in the Internet, of routers,
`
`web proxies, web caches, and web servers, and of distributed systems and their
`
`advantages and management. Based on my experience, I have an understanding of
`
`the capabilities of a POSA. I have supervised and directed many such persons over
`
`the course of my career. Further, I had those capabilities myself at the time of the
`
`earliest priority date of the patent.
`
`10
`
`Unified Patents Ex. 1003, pg. 13
`
`

`

`
`
`VII. OVERVIEW OF THE ’468 PATENT
`
`A. The ’468 Patent’s Specification
`
`22. The ’468 Patent describes a system for regulating access in a network,
`
`such as the Internet. The system includes communication gateways (installed at a
`
`subscriber site), an Internet control point (installed remotely), and various network
`
`elements installed throughout the network. The communication gateways and
`
`network elements (e.g., network switches and routers) operate in conjunction with
`
`the Internet control points to restrict or allow users at clients (or subscriber
`
`terminals) to access to specified Internet sites or “servers” (see Abstract). Fig. 1
`
`below, which I annotated for ease of reference, shows the structure of the system.
`
`In all of the figures in my declaration, I have consistently used color to identify the
`
`elements of the ’468 Patent as shown in the legend below:
`
`11
`
`Unified Patents Ex. 1003, pg. 14
`
`

`

`Network
`
`Controller
`
`Gateway Unit
`
`- - -
`
`- First Processor
`
`:] First Network Interface
`
`User Interface
`
`Second Processor
`
`a l
`
`:J
`
`_ Second Network Intertace
`
`—
`
`Storage
`
`
`
`Active
`Intervention
`
`
`
`System
`
`[—
`
`Internet
`Control Point
`
`66
`
`Access Node
`
`Terminal
`
`58..
`
`50..
`
`Subscriber
`
`
`
`12
`12
`
`Unified Patents Ex. 1003, pg. 15
`
`Unified Patents Ex. 1003, pg. 15
`
`

`

`
`
`23. The Internet Control Point (also known as “the controller”) controls
`
`which clients or users should have access to which Internet resources (e.g.,
`
`websites). The system uses a plurality of gateway units to facilitate this control.
`
`The gateway units receive instructions from the controller telling them how to
`
`control access to Internet servers by the individual subscriber terminals. The
`
`format for these instructions is not specifically described in the specification,
`
`except by what they allow the communication gateways (also known as “gateway
`
`units”) to do. (EX1001, 2:23-37; 5:19-23; 9:66-10:6; 13:23-26; 13:63-65). The
`
`instructions are primarily used to instruct the gateway units to allow or disallow
`
`user access to a particular network server. (EX1001, 9:55-10:6; 6:7-18 (explaining
`
`that a human operator discovers URLs or IP addresses to “pirate sites” to which
`
`users should be denied access and then the controller informs the gateway units so
`
`that they may prevent users from accessing those sites)). These “instructions”
`
`appear to be distinct from the “program instructions” executed by the processor
`
`(EX1001, 6:40-50), but they are described as being “executed” (EX1001, 5:17-23)
`
`and “implemented” (EX1001, 6:25-36). Other than that, there is no information
`
`about the form of the instructions that are transmitted from the controller to the
`
`gateway units in the specification. Nevertheless, the controller has a database and
`
`so do the gateway units. The controller is described as delivering new database
`
`entries to the gateway units (EX1001, 6:15-18), and the specification describes
`
`13
`
`Unified Patents Ex. 1003, pg. 16
`
`

`

`
`
`both the controller database and gateway unit databases as containing either
`
`blocked or permitted URLs or IP addresses (e.g., EX1001, 16:15-50). The term
`
`“instruction,” therefore, is used in a manner to include such things as URLs or IP
`
`addresses.
`
`24. The system operates in a simple manner as shown in Fig. 5 below.
`
`
`
`14
`
`Unified Patents Ex. 1003, pg. 17
`
`

`

`
`
`25. After receiving instructions from the controller, each time a network
`
`access request is received from a user, the gateway units allow or deny access to
`
`the network in accordance with the instructions that have been received. In other
`
`words, the instructions indicate whether the user’s request to access a particular
`
`website should be granted or denied. This is the essence of the two independent
`
`claims, claims 1 and 23. Dependent claims describe additional functionality of the
`
`gateway units, primarily based on performing actions according to other
`
`instructions received by the controller. Additionally, while the ’468 Patent’s
`
`specification mentions regulating access to a network for specific purposes, such as
`
`digital rights management and law enforcement, the challenged claims are not so
`
`limited.
`
`B. The ’468 Patent’s Prosecution History
`
`26. The ’468 Patent issued from U.S. Patent Application No. 13/369,174,
`
`filed February 8, 2012 and is a continuation of U.S. Patent Application No.
`
`10/989,023, filed on November 16, 2004. The ’468 Patent also claims priority to
`
`three Provisional Applications – Nos. 60/563,064, 60/538,370, and 60/523,057 –
`
`filed April 16, 2004, January 22, 2004, and November 18, 2003, respectively.
`
`27.
`
`I have been informed that the ’468 Patent received only one set of
`
`substantive prior art rejections. The Examiner rejected claims 1-2, 8-12, 20, 23,
`
`26, 31-32, 34, 39-43, 116-117, 119-123, 125-126, and 129-135 as anticipated by
`
`15
`
`Unified Patents Ex. 1003, pg. 18
`
`

`

`
`
`Gregg et al (US Patent No. 6,516,416, “Gregg”). The Examiner also rejected
`
`claim 17 as unpatentable over Gregg in view of Harvey et al (US Patent App. Pub.
`
`No. 2005/0033990, “Harvey”), claims 21, 28, 124, and 127 over Gregg in view of
`
`Cooper at al. (US Patent App Pub. No. 2001/0051966, “Cooper”), and claims 29
`
`and 128 over Gregg in view of Tarnoff (US Patent App. Pub. No. 2002/0169865,
`
`“Tarnoff”). (EX1008, pp. 166-80).
`
`28.
`
`In response, Applicants focused on distinguishing the independent
`
`claims over Gregg. The Applicants argued that “it is submitted that Gregg does
`
`not teach the recited ‘controller node,’ ‘controller instructions,’ and ‘gateway
`
`units,’ and the relationships between them, i.e., the ‘controller node’ generating the
`
`‘controller instructions,’ and transmitting the ‘controller instructions’ to the
`
`‘gateway units,’ for the ‘gateway units’ to use to ‘selectively transmit content
`
`requests to the service provider network.’” (EX1008, p. 205). For the obviousness
`
`rejections for the dependent claims, the Applicants argued that the additional prior
`
`art did not cure Gregg’s deficiencies. (EX1008, p. 206).
`
`29. A Notice of Allowance issued on June 3, 2014, and the Examiner
`
`explained that the prior art failed to disclose the limitations of the independent
`
`claims.
`
`30. Based on my analysis of the ’468 Patent’s prosecution history, it is my
`
`opinion that the claims were allowed because the prior art failed to specifically
`
`16
`
`Unified Patents Ex. 1003, pg. 19
`
`

`

`
`
`disclose the interaction between the controller and the gateway units in that the
`
`controller transmits controller instructions to the gateway units. However, as I
`
`discuss below, this architecture was well known before the ’468 Patent.
`
`VIII. TECHNOLOGY BACKGROUND FOR THE ’468 PATENT
`
`A. Discussion of the State of the Art as of 2003
`
`31.
`
`In the period from the 1970s leading up to 2003, a substantial body of
`
`research has reported on the advent and subsequent advancement in networked
`
`computing systems. In its simplest form, a networked system is a collection of
`
`stand-alone computing machines (servers, client-PCs, etc.) that are connected
`
`through a network, such as the Internet or a corporate intranet. One area of
`
`network system research–which is of particular relevance to the ’468 Patent–is
`
`commonly referred to as access control for network communication.
`
`32. The Internet provides a convenient medium for the delivery of
`
`electronic data or content such as text, images, music, video, and games to
`
`subscribers. This electronic content is hosted on network servers, often called web
`
`servers, and is accessed by user client computers by sending requests to the
`
`network servers that respond with the content. While it was wonderful to have
`
`access to the world of information that was available on the Internet, there were
`
`often concerns that some content may not be appropriate for some users. Thus was
`
`born the desire to regulate or control access so that users don’t see content that is
`
`17
`
`Unified Patents Ex. 1003, pg. 20
`
`

`

`
`
`not appropriate for them or that they are not allowed to see. For example, it was
`
`very common for companies to restrict its employees’ Internet access to only those
`
`websites that they need to perform their job. Regulating access has always been a
`
`concern for the Internet, both after the Internet became public in 1991 and before.
`
`33. Regulating network access and the many ways of achieving this goal
`
`were both well-known and well-published before 2003. For example, in the
`
`introduction to the Third Edition of his textbook “Computer Networks,” Andrew
`
`Tanenbaum says, “[s]ome people take a live-and-let-live view, but others feel that
`
`posting certain material . . . is simply unacceptable.”1 He argues that the network
`
`itself should not be held responsible for the material that is communicated over it,
`
`which implies that any control over what material is viewed by a client must be
`
`performed by some other agent. When discussing network security, Dr.
`
`Tanenbaum discusses the well-known needs for regulating network access:
`
`The ability to connect any computer, anywhere, to any other
`
`computer, anywhere is a mixed blessing. For individuals at home,
`
`wandering around the Internet is lots of fun. For corporate security
`
`managers, it is a nightmare. … In addition to the danger of
`
`1 Tanenbaum, Andrew S., Computer Networks Third Edition, 1996, p. 6.
`
`(“Tanenbaum”) (EX1002; EX1010, attachment 2a). See also EX1010, ¶¶39-47,
`
`regarding the public accessibility of Tanenbaum.
`
`18
`
`Unified Patents Ex. 1003, pg. 21
`
`

`

`
`
`information leaking out, there is also a danger of information leaking
`
`in. In particular, viruses, worms, and other digital pests … can breach
`
`security, destroy valuable data, and waste large amount of
`
`administrators’ time trying to clean up the mess they leave. 2
`
`He then goes on to discuss how network access regulation can be enforced at
`
`different levels, using, for example, firewalls (comprising packet filters) and
`
`application gateways. Packet filters work at the granularity of individual packets,
`
`examining each incoming and outgoing packet and discarding any that appear
`
`suspicious. Application gateways, on the other hand, work at the application layer
`
`and are customized for different applications:
`
`A mail gateway, for example, can be set up to examine each message
`
`going in or coming out. For each one it makes a decision to transmit
`
`or discard it based on header fields, message size, or even the content
`
`(e.g., at a military installation, the presence of words like “nuclear” or
`“bomb” might cause some special action to be taken). 3
`
`Dr. Tanenbaum goes on to discuss organizations setting up application gateways
`
`for a number of specific applications, perhaps permitting email and www traffic,
`
`but banning everything else as potentially dangerous.4
`
`2 Id. at p. 410.
`
`3 Id. at p. 411.
`
`4 Id. at pp. 411-412.
`
`19
`
`Unified Patents Ex. 1003, pg. 22
`
`

`

`
`
`34. The technology for regulating access to information on the Internet
`
`was well known by 2003; and, a POSA recognized that it can take a number of
`
`different forms based on the particular needs of the engineer designing the system.
`
`Cirasole, for example, describes a number of the possible variants for regulating
`
`access to the Internet, otherwise known as content filtering.5 These include
`
`exclusive filtering, or black-listing, which prevents access to all sites on a
`
`predetermined list of Internet sites and inclusive filtering, or white-listing, which
`
`allows access only to a predetermined list of Internet sites.6 Other options include
`
`word or phrase screening where the text to be displayed is examined and access to
`
`any sites that contain any word or phrase that is on a predetermined list is
`
`prevented.7 Another filtering method is to expect that content providers will
`
`
`5 Cirasole, Peter, DeRosa, Robert, and Fox, Robert, “Method and System for
`
`Content Filtering Information Material Retrieved from an Internet Computer
`
`Network”, US Patent 5,987,606, filed Mar 19, 1997 and issued Nov 16, 1999
`
`(EX1009, “Cirasole”).
`
`6 Id. at col. 1:44-48.
`
`7 Id. at col. 1:48-50.
`
`20
`
`Unified Patents Ex. 1003, pg. 23
`
`

`

`
`
`voluntarily label their content according to standard criteria; this allows filters to
`
`be based on these criteria.8
`
`35. Cirasole also describes that there are a number of locations in the
`
`network where the filtering can be performed. One example is to perform the filter
`
`function at the local (client) machine. This requires that the lists of allowed and
`
`prohibited sites are updated to deal with changes in the content of various Internet
`
`sites.9 Cirasole also describes performing the filtering on a local server through
`
`which every access by any client computer is directed, just like the ’468 Patent.
`
`This local server serves as a proxy or gateway to the Internet and is a single point
`
`of control for the installation and updating of the lists of allowed and prohibited
`
`sites.10 A third option Cirasole describes is to perform the filtering at the server
`
`site that stores the content.11 Cirasole makes it clear that these various options for
`
`regulating network access were all well within the skill set of a POSA before 2003,
`
`and that such a person would readily pursue any one of those architectures
`
`
`8 Id. at col. 1:53-57.
`
`9 Id. at col. 1:58-2:12.
`
`10 Id. at col. 2:13-35.
`
`11 Id. at col. 2:36-45.
`
`21
`
`Unified