CASE IPR2019-01279
`Patent No. 8,510,407
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC,
`Petitioners,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`
`
`CASE IPR2019-01279
`Patent No. 8,510,407
`
`
`
`
`
`
`
`
`SUPPLEMENTAL DECLARATION OF
`DOCTOR EARL SACERDOTI, PH.D.
`
`
`
`DoDots Exhibit 2007
`
`
`Patent No. 8,510,407
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`LENOVO HOLDING COMPANY, INC.,
`LENOVO (UNITED STATES) INC., and
`MOTOROLA MOBILITY LLC,
`Petitioners,
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
`Patent Owner.
`
`
`
`CASE IPR2019-01279
`Patent No. 8,510,407
`
`
`
`
`
`
`
`
`SUPPLEMENTAL DECLARATION OF
`DOCTOR EARL SACERDOTI, PH.D.
`
`
`
`DoDots Exhibit 2007
`
`
`
`
`
`I, Dr. Earl Sacerdoti, Ph.D., declare as follows:
`
`1)
`
`I am submitting this declaration in response to PETITIONER’S
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`REPLY, Case IPR2019-01279 Patent No. 8,510,407 (the “Reply”). This
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`declaration supplements the earlier declaration that I submitted in this
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`matter. (Declaration of Doctor Earl Sacerdoti, Ph.D., Patent Owner’s
`
`Response, Exhibit 2004 (“Sacerdoti Declaration”))
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`2)
`
`The Reply incorrectly and without justification that Figure 13
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`from the ‘407 Patent “is merely a bulleted list of attributes and connotes no
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`particular structure.” (Reply at 3). However, the ’407 patent describes Figure
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`13 as a data structure. “FIG. 13 illustrates a data structure for a NIM
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`definition, stored in the NIM application server's template database or user
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`profile database;” (3:63-65, emphasis added) One of skill in the art would
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`understand that, when identified as a data structure, Figure 13 would indicate
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`a hierarchical data structure in which the alleged “bulleted list” is understood
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`to indicate that the indented, bulleted elements were attributes of each NIM
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`definition (identified by the value of the “IDENTIFICATION” element) that
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`stored values specifying the FRAME, MENU, and CONTROLS that defined
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`each NIM.
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`1
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`3)
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`The Reply states that the following sentence from the ‘407
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`Patent is limited to just one embodiment: “NIMs are extremely flexible,
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`because the definition of the NIM is content, rather than compiled code.”
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`(21:48-50) However, I believe it is a broad general statement about NIMs
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`and their definitions. One of skill in the art would understand that the “one
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`embodiment” in the paragraph cited in the Reply suggests alternative
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`embodiments which employ description languages that are alternative to
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`XML to define a NIM, rather than alternative embodiments in which the
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`definitions of NIMs are compiled code.
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`4)
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`The Reply also asserts incorrectly and without justification that
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`the assertion in the specification that a NIM definition can be distributed as
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`an XML blob demonstrates that a NIM definition could be executable. The
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`’407 patent states, “The NIM definition is therefore fairly small in size
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`(~2K), and is therefore easily distributable as an XML file or Blob (binary
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`large object) which is communicated using the same mechanisms (HTTP/
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`HTTPS requests) as regular Web pages.” (33:59-63) The Reply states, “But
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`this example also fails to support Patent Owner’s narrow construction as the
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`example includes not only an XML file but also a binary large object, which
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`might contain any binary content, including executable code.” (Reply at 4)
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`In suggesting that a blob may contain any binary content, I believe that the
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`2
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`authors of the Reply mis-parsed the phrase “an XML file or Blob” to mean
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`“either an XML file or a Blob”. One of skill in the art would parse the phrase
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`as “an XML file or an XML Blob.” My opinion of the correct parsing of the
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`phrase as “an XML file or an XML Blob” is supported by the only other
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`reference to a Blob in the ’407 patent, approximately 35 lines below the
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`phrase in question, which refers explicitly to an “XML Blob containing the
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`NIM definition.” “When users share NIMs or NIM packs, their home NIM
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`application generates a [] share module, which may for example be an XML
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`Blob containing the NIM definition or Sharepack modules shared. The
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`shared NIM XML is then sent to, and saved in, the Sharelink database
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`(78 of FIGS. 1 and 24).” (34:26-30) I further note that the Reply’s parsing of
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`the phrase in question is not supported by expert testimony. Thus, while a
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`Blob data type may in general contain executable code, the entirety of the
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`specification makes clear that the Blob cited in the Reply encodes XML, not
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`an executable program.
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`5)
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`The Reply additionally asserts without justification or support
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`of expert testimony that the specification discloses embodiments that
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`describe NIM templates that are executable. “Second, Patent Owner’s
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`construction should also be rejected because it attempts to exclude disclosed
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`embodiments that describe NIM templates that are executables, …” (Reply
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`3
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`at 5.) The Reply identifies two alleged descriptions of executable code.
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`Neither identified description refers to a NIM template that is executable
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`code.
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`6)
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`The first example of an allegedly executable NIM template
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`cited by the Reply is a “second executable module” mentioned in the
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`Summary of the Invention. (3:8-10) Having read the specification, one of
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`skill in the art would recognize that the “second executable module” is
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`embedded in a paragraph that summarizes the method further described in
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`detail in the Detailed Description of the Invention and sketched in Figure 11.
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`It summarizes four steps, each carried out by an executable module
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`operating on the client computer, required to provide a NIM to a client
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`computer. “The apparatus of the invention includes a computer readable
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`memory to direct a computer to function in a specific manner. The computer
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`readable memory includes a first executable module to identify a definition
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`of a Networked Information Monitor (NIM). A second executable module
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`defines a NIM frame for the NIM using the definition. A third executable
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`module retrieves content for the NIM. A fourth executable module places
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`the content in a N[I]M viewer defined by the frame.” (3:4-12)
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`7)
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`The specification provides a full description of these steps,
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`carried out in the identical sequence, in conjunction with Figure 11. That
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`4
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`figure shows the four steps summarized in the Summary of the Invention
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`and detailed in the Detailed Description of the Invention. Figure 11 is
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`reproduced below.
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`8)
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`The specification details the four steps as follows: 1: Identify a
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`definition of a NIM: “After logging in (step 240) the user clicks on the name
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`of a NIM, and the client parser application 38 sends a request including the
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`NIM_ID of the NIM definition, to the applications server 50 via the
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`transmission channel 44 (step 241).” (20:8-12) 2: define a NIM frame for the
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`NIM using the definition: “After the user is logged in and has clicked on the
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`5
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`NIM, the applications server 50 retrieves the NIM definition from the NIM
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`template database 74 using the NIM ID, in step 242, and provides it to the
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`client 20 in step 243. The client 20 receives the NIM definition from the
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`applications server 50 in step 244, and the client parser application 38
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`creates a frame in the display of the user interface 42 in step 245.” (20:18-
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`24) 3: retrieve content for the NIM: “In step 246, the client 20 requests the
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`necessary content elements 94 stored at the URLs identified in the NIM
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`definition from the corresponding content server 82.” (20:24-27) 4: place the
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`content in a NIM viewer defined by the frame: “The content server 82
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`transmits the content 94 in step 247, and in step 248 the client parser
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`application 38 places the content in the viewer, which is enclosed by the
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`frame, allowing the user to preview the NIM.” (20:27-30)
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`9)
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`One of skill in the art would readily recognize that the steps
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`detailed above are the same ones summarized in the Summary of the
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`Invention. These steps are performed by the client parser application which
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`is resident on the client computing device. “When the user clicks on the
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`name of a collected NIM (step 253) the client parser application 38 creates a
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`frame in the display 42 of the user interface 40 in step 254.” (21:19-21)
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`6
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`10) My belief that the “second executable module” is a component
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`of the client parser application, not the NIM template, is supported by the
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`fact that the second executable module is never described as a template.
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`11)
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`As the citations above and Figure 11 make clear, the “second
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`executable module” is a component of the client parser application, and
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`hence it is distinct from the NIM template read by the client parser
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`application. They also make clear that that the “second executable module”,
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`as a component of the client parser application, must be resident on the
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`client computer before the NIM template is transmitted from the server over
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`the network responsive to the transmitted request. Hence, the “second
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`executable module” cannot be the NIM template.
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`12)
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`The second example of an allegedly executable NIM template
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`cited by the Reply is the NIM definition module. “In a second example, the
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`specification describes additional modules that define a NIM, i.e., modules
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`that are NIM templates. The specification describes these NIM templates as
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`“NIM definition modules” …” (Reply at 5-6.) No justification for this
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`assertion is offered in the Reply; its assertion appears to be based on an
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`incorrect assumption that “module” means “executable code”.
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`13)
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`One of skill in the art would understand that the term “module”
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`is not limited to executable code. The specification of the ’407 patent is
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`7
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`consistent with this understanding. For example, the Share module of Fig 24
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`is not executable.
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`14)
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`As discussed above with respect to Figure 13, one of skill in the
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`art would understand that Figure 24 indicates a hierarchical data structure in
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`which the indented items were accessible elements of the element from
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`which they were indented. So, for example, “Creation date” could be
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`retrieved from the Share Module, “Look and Feel” could be retrieved from
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`the NIM Definition Module, and “NIM Definition Module 1” could be
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`retrieved from the Sharepack module.
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`15)
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`The Reply also asserts that Petitioner’s infringement
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`contentions in the related district court action conflict with a NIM template
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`not being executable. This is incorrect. It is known in the current art that
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`downloading an app from an app store to a mobile device does not entail
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`directly downloading an application. In making its argument, the Reply
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`appears to assume that an executable application is downloaded when
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`“downloading an app.” One of skill in the art would understand that
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`“downloading an app” is shorthand for downloading an app package from a
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`server (an “app store” such as the Lenovo App Explorer) and the subsequent
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`installation on the client device of the corresponding app defined by the app
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`package. An app package (such as an .appx file downloaded to a Lenovo
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`8
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`Yogabook) is known in the art to be a hierarchical data structure that can
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`include code elements, picture elements (such as icons or emoji), string
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`elements (such as names, screen titles or captions, messages, or other text to
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`be presented by the mobile app), and other elements such as URLs. The
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`Reply thus wrongly equates “download an app” with “download a file that is
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`an executable program.” Hence, the Reply’s assertion that the infringement
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`contentions require an alternative claim construction is false.
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`16) For my efforts in connection with the preparation of this
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`declaration I am being compensated at my standard hourly rate for this type
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`of consulting activity. My compensation is in no way contingent on the
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`results of these or any other proceedings relating to the above-captioned
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`patent.
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`17)
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`I declare under penalty of perjury that the foregoing is true
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`and correct.
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`Sworn to this 18th day of September, 2020 in Alamo, California.
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`Een0> Qeote
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