UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`_________________
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`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
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`Page i
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`_________________
`
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`
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`
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`Page i
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`IPR2020-00023
`Patent 6,467,088
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`TABLE OF CONTENTS
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`Page(s)
`INTRODUCTION AND ENGAGEMENT .................................................... 1
`I.
`BACKGROUND AND QUALIFICATIONS ................................................. 2
`II.
`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’088 PATENT ................. 2
`IV. POSITA / CLAIM CONSTRUCTION / STANDARDS ................................ 4
`V.
`SUMMARY OF CONCLUSIONS ................................................................. 4
`VI. PATENT OWNER’S ASSERTIONS REGARDING APFEL’S
`TEACHINGS MISCONSTRUE BOTH THE REFERENCE AND
`THE PETITION, AND THE PETITION’S OBVIOUSNESS SHOWING .... 4
`A. Apfel Clearly Teaches Determining That Certain
`Upgrades Are Known To Be Compatible With Certain
`Configurations In Determining Configurations
`That “Should Result In Their Download” By A User ........................... 5
`B. Apfel Is Different In At Least One Important
`Respect From The Apple IPR’s Primary Cited Reference ................... 8
`C. Apfel’s Related Disclosures Of “Require[d]
`Upgrade Packages” That The User “Should Install” ..........................11
`VII. PATENT OWNER’S ASSERTIONS REGARDING APFEL’S
`COMBINATION WITH TODD AND LILLICH MISCONSTRUE THE
`REFERENCES, THE PETITION, AND THE ’088 PATENT’S OWN
`DESCRIPTION, ARE CONFUSING, AND DO NOT REBUT THE
`CLAIMS’ OBVIOUSNESS OVER APFEL, LILLICH, AND TODD ........12
`Patent Owner Misconstrues Lillich’s
`A.
`Teachings And Their Combination With Apfel ..................................12
`Patent Owner Likewise Misconstrues Todd’s
`Teachings And Their Combination With Apfel ..................................16
`
`B.
`
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`Page ii
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`Patent 6,467,088
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`C.
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`Patent Owner’s Assertion That Apfel Is
`Limited To “One Specific Computer Application” Is Incorrect .........20
`VIII. AVAILABILITY FOR CROSS-EXAMINATION ......................................22
`A.
`Right to Supplement ............................................................................23
`B.
`Signature ..............................................................................................23
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`Page iii
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`Patent 6,467,088
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`I, John Villasenor, do hereby declare as follows:
`
`I.
`
`INTRODUCTION AND ENGAGEMENT
`I have been retained as an independent expert on behalf of Microsoft
`1.
`
`in connection with the above-captioned Petition for Inter Partes Review (“IPR”) to
`
`provide my analyses and opinions on certain technical issues related to U.S. Patent
`
`No. 6,467,088 (hereinafter “the ’088 Patent”).
`
`2.
`
`I am being compensated at my usual and customary rate for the time I
`
`spent in connection with this IPR. My compensation is not affected by the outcome
`
`of this IPR.
`
`3.
`
`Specifically, I have been asked to provide my opinions regarding
`
`whether claims 1-4, 6-14, and 16-21 (each a “Challenged Claim” and collectively
`
`the “Challenged Claims”) of the ’088 Patent would have been obvious to a person
`
`having ordinary skill in the art (“POSITA”) as of its filing date, June 30, 1999. It is
`
`my opinion that each Challenged Claim would have been obvious to a POSITA
`
`after reviewing the prior art discussed herein.
`
`4.
`
`This Supplemental Declaration is in addition to the first declaration
`
`that I prepared and submitted earlier in the IPR proceeding relating to the ’088
`
`patent, signed and dated October 10, 2019 (“First Declaration” or “Villasenor
`
`Declaration”).
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`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
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`Page 1
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`In the First Declaration I explained the unpatentability of the
`
`5.
`
`challenged claims. In this supplemental declaration, I respond to points raised by
`
`Patent Owner in its Response Brief (“POR”), particularly those points drawing on
`
`the understanding of a POSITA, as explained in my First Declaration.
`
`II. BACKGROUND AND QUALIFICATIONS
`The First Declaration explains my education and professional
`6.
`
`background in paragraphs 4-15.
`
`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’088 PATENT
`In preparing my First Declaration, I reviewed the following materials,
`7.
`
`each of which is the sort of material that experts in my field would reasonably rely
`
`upon when forming their opinions. I also considered other background materials
`
`that are referenced in that declaration.
`
`No.
`1001
`
`1002
`
`1004
`
`1005
`
`Description
`U.S. Patent No. 6,467,088, “Reconfiguration manager for
`controlling upgrades of electronic devices,” issued October 15,
`2002 (the “’088 patent”)
`File History for U.S. Patent No. 6,467,088, Application No.
`09/343,607 (the “’088 FH”)
`U.S. Patent No. 5,974,454, “Method and system for installing and
`updating program module components,” issued October 26, 1999
`from an application filed November 14, 1997 (“Apfel”)
`U.S. Patent No. 5,613,101, “Method and apparatus for
`determining at execution compatibility among client and provider
`components where provider version linked with client may differ
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`No.
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`1006
`
`1007
`
`1010
`
`1011
`
`1012
`
`Description
`from provider version available at execution,” issued March 18,
`1997 from an application filed June 7, 1995 (“Lillich”)
`U.S. Patent No. 5,867,714, “System and method for distributing
`configuration-dependent software revisions
`to a computer
`system,” issued February 2, 1999 from an application filed
`October 31, 1996 (“Todd”)
`U.S. Patent No. 6,151,708, “Determining program update
`availability via set intersection over a sub-optical pathway,”
`issued November 21, 2000 from an application filed December
`19, 1997 (“Pedrizetti”)
`Petition in Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056
`(P.T.A.B.), filed October 17, 2018 (“Apple IPR Petition”)
`Patent Owner Preliminary Response in Apple Inc. v. Uniloc 2017
`LLC, IPR2019-00056 (P.T.A.B.), filed February 8, 2019
`(“Apple IPR POPR”)
`PTAB Decision in Apple Inc. v. Uniloc 2017 LLC,
`IPR2019-00056 (P.T.A.B.), issued April 29, 2019
`(“Apple IPR Decision”)
`
`8.
`
`In preparing this Supplemental declaration, I have reviewed those
`
`materials, as well as the Petition, the Institution Decision, and Uniloc’s Patent
`
`Owner Response, each of which is the sort of material that experts in my field
`
`would reasonably rely upon when forming their opinions. I also considered other
`
`background materials that are referenced in this declaration, as noted herein.
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`Page 3
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`IV. POSITA / CLAIM CONSTRUCTION / STANDARDS
`Paragraphs 31-55 of my First Declaration lay out my understanding of
`9.
`
`a Person of Ordinary Skill in the Art (“POSITA”), claim construction for certain
`
`claim terms, and certain patent law standards.
`
`V.
`
`SUMMARY OF CONCLUSIONS
`10. As explained in my First Declaration, my opinion is that a POSITA
`
`would have viewed claims 1 and 2 of the ’088 patent as being obvious in view of at
`
`least the following grounds:
`
`Ground
`
`Reference(s)
`
`Basis
`
`Claims
`
`Ground 1 Apfel (Ex. 1004) in view of Lillich
`(Ex. 1005) and Todd (Ex. 1006)
`Ground 2 Apfel in view of Lillich, Todd,
`and Pedrizetti (Ex. 1007)
`Apfel in view of Lillich
`
`Ground 3
`(Alternate)
`Ground 4
`(Alternate)
`
`Apfel in view of Todd
`
`35 U.S.C. § 103 1-4, 6-14,
`and 16-21
`35 U.S.C. § 103 9 and 19
`
`35 U.S.C. § 103 1-3, 9-13,
`and 19-21
`35 U.S.C. § 103 1, 3, 4, 6-
`11, 13, 14,
`and 16-21
`
`VI. PATENT OWNER’S ASSERTIONS REGARDING APFEL’S
`TEACHINGS MISCONSTRUE BOTH THE REFERENCE AND THE
`PETITION, AND THE PETITION’S OBVIOUSNESS SHOWING
`11. Uniloc’s Patent Owner Response (“POR”) contains several assertions
`
`that appear to misapprehend the cited references, my prior declaration’s assertions
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`regarding them, or both. I will attempt to address several of those deficiencies in
`
`the POR herein.
`
`A. Apfel Clearly Teaches Determining That Certain
`Upgrades Are Known To Be Compatible With
`Certain Configurations In Determining Configurations
`That “Should Result In Their Download” By A User
`12. The POR addresses the term “should,” appearing in Apfel in column
`
`9, stating:
`
`The Petition acknowledges, however, that the cited portion
`of Apfel states “the database server 80a maintains a
`database of upgrade packages and corresponding
`configurations which should result in their download.”
`Id. (emphasis and underlining by Petitioner). The quoted
`statement provides
`an
`explicit
`acknowledgement
`concerning a “result” that only “should” occur—and
`hence admittedly may not. This indecisive “should result”
`language is itself independently fatal to the unsupported
`speculation that Apfel inherently discloses a given
`upgrade necessarily will download and operate as
`intended.
`
`The equivocating disclosure in Apfel concerning a “result”
`that only “should” occur, and hence admittedly will not
`necessarily occur, is cumulative with what the Board had
`considered, and found to be distinguishable, in related
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`Page 5
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`IPR2020-00023
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`matter Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056,
`Decision Denying Institution (Paper 7)
`POR at 17 (emphasis in original).
`
`13. The footnote accompanying this text states:
`
`Petitioner misleadingly states, without explanation, that
`Apfel’s use of the word “should” in this context refers to
`what “‘should’ be installed.” Pet. 42. But in the quoted
`statement from Apfel, the word “should” modifies the
`word “result”
`that
`immediately
`follows,
`thereby
`expressing equivocation as to whether the result will
`occur.
`Id., n. 2 (emphasis in original).
`
`14.
`
`I disagree with Patent Owner’s assertion that the “should result”
`
`language is “independently fatal” to the use of Apfel as an invalidating reference.
`
`Further, I disagree with Patent Owner, to the extent it asserts that this language
`
`raises uncertainty as to whether a given configuration presented to the user is
`
`known to be acceptable because it “express[es] equivocation as to whether the
`
`result will occur.” POR at 17. The result in question is not determining that a given
`
`configuration is compatible or “comparing to a known list of acceptable
`
`configurations.” To the contrary, at the point that this choice is presented to the
`
`user, the compatibility determination for the proposed downloads that “should
`
`result in their download” has already been performed. The “speculative” result in
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`question is whether the user chooses to actually download the recommended
`
`upgrade.
`
`15.
`
`I note that while claims 3 and 13 of the ’088 patent require a method
`
`and an apparatus, respectively, for “download[ing] the determined component to
`
`the electronic device if the determined component and the additional component
`
`are consistent with a given one of the known acceptable configurations,” nowhere
`
`does Patent Owner specifically allege that these additional dependent claim steps
`
`are not shown in the cited reference combinations.
`
`16. The independent claims, e.g., claim 1, do not require such an actual
`
`download to take place. Claim 1 is exemplary, and states, in pertinent part:
`
`comparing the determined component and information
`specifying at least one additional component currently
`implemented in the electronic device with at least one of a
`list of known acceptable configurations for the electronic
`device and a list of known unacceptable configurations for
`the electronic device; and
`
`generating information indicative of an approval or a
`denial of the reconfiguration request based at least in part
`on the result of the comparing step.
`
`17. Claim 1 and the other independent claims do not require a download
`
`to actually take place. Each of these claims does require comparing to a list of
`
`configurations that are known to be acceptable. The same certainty is present in
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`Apfel, as is made clear at least by the text in column 9 (including 9:28-57) as well
`
`as Figures 4A and 4B. For instance, box 427 in Figure 4A identifies whether there
`
`is an upgrade. If the answer to the question “Is there an upgrade?” is “yes”, then in
`
`box 442 in Figure 4B the user is given the option to proceed with the upgrade or
`
`not to proceed. If the user does approve proceeding with the upgrade, it is
`
`downloaded and installed.
`
`18. There is no requirement in Apfel that the user elect to proceed with
`
`the upgrade, but Apfel is clear that if that election to proceed is made, then the
`
`upgrade, which is already known to be compatible by virtue of the fact that the
`
`choice to install it was given to the user, will be installed.
`
`B. Apfel Is Different In At Least One Important
`Respect From The Apple IPR’s Primary Cited Reference
`19. Apfel’s teaching of ensuring compatability is different in an important
`
`way from the teaching in the primary reference cited in the Apple IPR. See POR,
`
`10-11. There, the Board considered the reference’s teaching that the corresponding
`
`code updates were “potentially appropriate.” POR, 11 quoting Apple Inc. v. Uniloc
`
`2017 LLC, IPR2019-00056, Decision Denying Institution (Paper 7) at 11-12. In
`
`reviewing Apple’s contention that this taught or suggested the required “list of
`
`known acceptable configurations,” the Board wrote that “[t]he indecisive language
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`‘potentially’ is not the required decisive language of “known”—a difference that
`
`Petitioner does not explain persuasively, if at all.” Id.
`
`20. Thus, the Board in the Apple IPR made a distinction between known
`
`compatibility in the 088 patent and potentially appropriate code updates cited in
`
`the Apple petition, because the Board found that Apple’s Petition left open the
`
`possibility that the code updates in its cited reference were not appropriate, and
`
`therefore not “‘known’ to be acceptable configurations.” Id. No such uncertainty
`
`exists in Apfel.
`
`21.
`
`In Apfel, there is no uncertainty with regard to the compatibility of the
`
`upgrade. As Figures 4A and 4B make clear, that compatibility was definitively
`
`established upon a “yes” output from box 427. If the user approves the installation
`
`of the upgrade, it will be installed. The fact that the user “should”—but is not
`
`obligated to—approve this installation in no way alters the fact that the upgrade is
`
`already known to be compatible.
`
`22.
`
`In short, in Apfel there is no uncertainty regarding the compatibility of
`
`an upgrade. The “should result in their download” language pointed to by Patent
`
`Owner refers to an aspect of Apfel that occurs after the compatibility of an upgrade
`
`has already been decisively established, namely: a user should, but is not obligated,
`
`to proceed with the download of the known compatible upgrade.
`
`
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`23. Page 19 of the POR states:
`
`Here, the Petition similarly fails to establish that the
`indecisive language in Apfel, which is explicitly directed
`to an expected “result” that only “should” occur, allegedly
`renders obvious the “required decisive language” recited
`as “comparing the determined component and information
`specifying at least one additional component currently
`implemented in the electronic device with at least one of a
`list of known acceptable configurations for the electronic
`device . . . .” Id. (POR at 19, emphasis and citation in
`original)
`24. Patent Owner’s focus on whether a download actually occurs or not is
`
`misplaced. As noted earlier, the key disclosure at issue in Apfel is the decisive and
`
`unambiguous identification (upon a “yes” output from box 427 in Figure 4A) of a
`
`known compatible upgrade. I have already explained in my previous declaration
`
`how this inherently teaches the comparing to a list of “known acceptable
`
`configurations” as required by the 088 patent claims. First Declaration, ¶ 85.
`
`25.
`
`In focusing on the language in Apfel stating that the download of the
`
`configuration “should” occur after its known compatibility is established, the POR
`
`offers no rebuttal to the unambiguous disclosure in Apfel that the configuration is
`
`known to be compatible.
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`In my earlier declaration, I already noted that Apfel inherently
`
`26.
`
`determines that compatibility, writing, for example, that Apfel “determines
`
`whether an appropriate upgrade is available.” First Declaration at ¶ 83, emphasis
`
`added. In that same section of my declaration, I also quoted from the portion of
`
`Apfel (9:30-42) describing box 427. Id.
`
`C. Apfel’s Related Disclosures Of
`“Require[d] Upgrade Packages” That The User “Should Install”
`27. The POR takes issue with the Petition’s further citation of Apfel at
`
`6:65-67, also cited in my declaration:
`
`Not only are there certain upgrades that “should” be
`installed, but certain computer configurations, according
`to Apfel “require” certain upgrade packages. Apfel, 6:65-
`67. (“[E]ach configuration of computer 20 may require a
`different upgrade package and, therefore, a different
`URL.”)
`
`First Declaration, ¶ 84 (citations and parentheses in original).
`
`28. This is a fully accurate characterization of Apfel. As I have explained
`
`at length above, Apfel recognizes the requirement to ensure that an identified
`
`upgrade package is compatible with the configuration of the computer where it will
`
`ultimately be installed (if the user elect to proceed.) Apfel further teaches that
`
`different configurations may require different upgrade packages. Finally, Apfel
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`teaches that a user should, but does not have to, actually install the identified
`
`upgrade packages.
`
`29. As I explained previously, in instances when an upgrade should be
`
`installed, it is a precondition in Apfel that the upgrade be compatible with the
`
`destination computer. First Declaration, ¶ 85.
`
`VII. PATENT OWNER’S ASSERTIONS REGARDING APFEL’S
`COMBINATION WITH TODD AND LILLICH MISCONSTRUE THE
`REFERENCES, THE PETITION, AND THE ’088 PATENT’S OWN
`DESCRIPTION, ARE CONFUSING, AND DO NOT REBUT THE
`CLAIMS’ OBVIOUSNESS OVER APFEL, LILLICH, AND TODD
`Patent Owner Misconstrues Lillich’s
`A.
`Teachings And Their Combination With Apfel
`30. The POR criticizes the addition of Lillich’s “compatibility range” to
`
`the compatibility determination set forth in Apfel, stating:
`
`the “comparing” / “compare” limitations (recited in each
`challenged claim) at least require specific comparative
`consideration of (1) “the determined component” required
`to implement a requested reconfiguration of an electronic
`device; (2) “information specifying at least one additional
`component currently implemented in the electronic
`device;” and (3) the interoperability of these specific
`components with a list of configurations known to be either
`acceptable or unacceptable.
`
`POR, 22 (emphasis in original).
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`31. First, Patent Owner is incorrect that the claims require consideration
`
`of “the interoperability of” these [“determined” and “additional”] components
`
`with a list of configurations known to be either acceptable or unacceptable.” There
`
`is no determination of interoperability with the list(s). Rather, component
`
`interoperability is determined using the list(s). The list(s) are used to determine
`
`interoperability of specific components with each other. So, in the example given
`
`in the specification, the “list” sets forth that version 1.1 of component A and
`
`version 1.5 of component B “work well together or are otherwise compatible” and
`
`are therefore tagged as a “known good configuration”:
`
`A solid line between a given pair of components in the
`exemplary list 16 indicates that the pair of components
`corresponds to a known “good” configuration, i.e., the
`components work well
`together or are otherwise
`compatible. The pair including version 1.1 of component
`A and version 1.5 of component B is an example of a
`known good configuration.
`
`’088, 3:52-58 (emphasis added); see also FIG. 1 (selected portion):
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`’088 patent, FIG. 1 (selected portion, annotation added).
`
`32.
`
`Just like the ’088, Lillich provides a list that provides information on
`
`ranges of components that are compatible. Such a list could readily be applied by
`
`the servers described in Apfel to determine which components (or ranges of
`
`components) are compatible with one another as part of these servers “determining
`
`compatibility,” as I previously explained. First Declaration, ¶¶ 59-61.
`
`33. Second, Patent Owner argues that the verification technique in Lillich
`
`“applies to the clearly distinguishable context of a client program and a provider
`
`program that are both currently installed and executing locally in memory of the
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`same computer system.” POR, 24. But, Apfel already teaches both “the determined
`
`component” and “the additional component” and determining their compatibility,
`
`as described above. See supra, Sections VI.A, VI.C.
`
`34. Lillich, on the other hand, is cited for its use of a “list” of compatible
`
`component version numbers. The step of determining compatible or incompatible
`
`version numbers by comparing them to a list is agnostic as to whether those
`
`components are currently installed or not (or, if installed, whether they are
`
`“executing locally” or not). Lillich’s “list” simply identifies components that are
`
`compatible. Similarly, the “list” in the ’088 patent, an example of which is shown
`
`above, places no requirements on the install status of the relevant components.
`
`Components are either known to be compatible, or they are not. If they are known
`
`to be compatible, they are listed as such. They are compatible together whether
`
`they are currently installed, are not yet installed, or are a mix of the two (i.e., an
`
`already-installed component can be known to be compatible with a component that
`
`is not yet installed). The status of their installation is immaterial.
`
`35. Finally, Patent Owner’s conclusory statement at the end of its
`
`discussion of the Apfel/Lillich combination regarding “changing [the] fundamental
`
`principles of operation” of Apfel (POR, 24) offers no explanation of how any
`
`principle of operation in Apfel would be modified. As the Board has already noted,
`
`Lillich provides a compatibility check using a list, and Apfel provides servers that
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`check for compatibility. Decision, 21. As shown in the Petition, Apfel either
`
`inherently discloses or implicitly suggests doing so using a list. And, as stated
`
`above, that “compatibility list” in Apfel, like the “known good” “list” in the ’088
`
`itself, is agnostic as to whether the components themselves are currently on the
`
`system or not. Patent Owner provides no evidence of any difficulty in adding
`
`Lillich’s “known good” list to Apfel’s compatibility check, and I previously
`
`explained both reasons for, and a POSITA’s reasonable expectation of success in
`
`performing, the suggested combination. See First Declaration, ¶¶ 59-61.
`
`B.
`
`36.
`
`Patent Owner Likewise Misconstrues Todd’s
`Teachings And Their Combination With Apfel
`In a similar challenge to its failed Lillich/Apfel challenge, the POR
`
`criticizes the addition of Todd’s “conflict check” to the compatibility
`
`determination set forth in Apfel, stating:
`
`the claim language in question it least [sic] requires
`specific comparative consideration of (1) “the determined
`component”
`required
`to
`implement a
`requested
`reconfiguration of an electronic device; (2) “information
`specifying at least one additional component currently
`implemented in the electronic device;” and (3) the
`interoperability of these specific components with a list of
`configurations known
`to be either acceptable or
`unacceptable.
`
`POR, 25 (emphasis in original).
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 16
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`
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`IPR2020-00023
`Patent 6,467,088
`37. First, as set forth above, both elements 1 and 2 of the proposed
`
`comparison are provided by Apfel. And, Patent Owner is incorrect that the claims
`
`require consideration of “the interoperability of” these [“determined” and
`
`“additional”] components with a list of configurations known to be either
`
`acceptable or unacceptable.” (Emphasis in bold added.) There is no determination
`
`of interoperability with the list(s). Rather, component interoperability is
`
`determined using the list(s). So, in the example given in the specification, the “list”
`
`sets forth that version 1.8 of component A and version 1.0 of component C “are not
`
`compatible” and are therefore tagged as a “known bad configuration”:
`
`A dashed line between a given pair of components in the
`list 16 indicates that the pair of components correspond
`to a known “bad” configuration, i.e., are not compatible.
`The pair including version 1.8 of component A and
`version 1.0 of component C is an example of a known
`bad configuration.
`
`’088, 3:58-63 (emphasis added); see also FIG. 1 (selected portion):
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 17
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`
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`IPR2020-00023
`Patent 6,467,088
`
`
`
`’088 patent, FIG. 1 (selected portion, annotation added).
`
`38.
`
`Just like the ’088, Todd provides information on components that are
`
`incompatible, e.g., “conflicts inherent in the hardware and software configuration
`
`of a single computer system,” such as in a “registration database” which includes
`
`“knowledge required to identify [a] conflict” that has been experienced by a “user
`
`or other party,” and further explains that “the knowledge required to identify the
`
`conflict and the necessary configuration revisions supplement the diagnostic and
`
`analytic process in the remote data source.” Petition, 46-48, quoting Todd, 3:15-23;
`
`5:8-13; 3:43-51, 55-59; 12:9-15; First Declaration, ¶¶ 92-95. Such conflict
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 18
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`IPR2020-00023
`Patent 6,467,088
`information could readily be applied by the servers described in Apfel to determine
`
`which components are incompatible with one another as part of these servers
`
`“determining compatibility,” as I previously explained. First Declaration, ¶¶ 64-66.
`
`39. Second, Patent Owner argues that in discussing the conflict
`
`determination in Todd “the Petition fails to explain how the cited portions of Todd
`
`allegedly maps [sic] onto any of the above requirements.” POR, 25. This is untrue.
`
`The Petition clearly sets out that Todd is relied on as teaching the list of “known
`
`unacceptable configurations” and combining this list with the compatibility
`
`determination performed by Apfel’s servers in determining whether to provide
`
`information on available upgrades. Petition, 45-48.
`
`40. Third, Patent Owner argues that “the Petition does not even mention
`
`the word ‘list’ in addressing Todd, much less either of the specific lists defined in
`
`the context of the comparisons set forth in the claims.” POR, 26. To the extent that
`
`Patent Owner is asserting an alleged deficiency in the Petition based on the word
`
`“list” not appearing in the quoted language from Todd, the ’088 itself makes clear
`
`that its claimed “list” is not a rigid construct, but may include “any other suitable
`
`format” for representing information on compatibility:
`
`It should be understood that the list 16, although shown
`in graphical form in FIG. 1, may be implemented, e.g.,
`as a stored table, set of tables or other type of list in a
`memory of the reconstruction manager 10, as a potion
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 19
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`
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`IPR2020-00023
`Patent 6,467,088
`[sic] of a program executed by the reconfiguration
`manager 10, or in any other suitable format.
`
`’088 patent, 3:64-4:2 (emphasis added).
`
`41.
`
`Indeed, the “list” term, as a POSITA would have understood it, does
`
`not require that the information on acceptable or unacceptable configurations take
`
`any particular specific form, and Todd teaches this element by providing a “stored
`
`representation of information indicative of component compatibility,” as described
`
`in the Petition and in my first declaration.
`
`42.
`
`In this context, then, Todd clearly teaches providing a stored
`
`representation of information indicative of component incompatibility, i.e., “a
`
`known unacceptable configuration,” and can readily be combined with Apfel to
`
`teach the required comparison.
`
`C.
`
`Patent Owner’s Assertion That Apfel Is
`Limited To “One Specific Computer Application” Is Incorrect
`43. The POR argues against the combination of Apfel with Lillich or
`
`Todd, as follows: “The teachings of Apfel are directed to automated, ongoing
`
`upgrades to one specific computer application. By contrast, Lillich and Todd are
`
`directed to entirely different endeavors of ensuring compatibility of one particular
`
`computer component with another particular computer component, and detecting
`
`and avoiding conflicts in computer systems, respectively.” POR at 26.
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 20
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`
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`IPR2020-00023
`Patent 6,467,088
`44. Apfel is not limited in the manner Patent Owner suggests. At multiple
`
`places in my declaration, I cited the following section from Apfel:
`
`The query is structured to identify the information needed
`to determine which upgrade package URL is required by
`computer 20. This information may include the versions
`of the program module components to be upgraded, the
`platform that the program module components are running
`on, and the language of the program module components.
`In an exemplary embodiment, the appended information
`will typically include the version of the Web Authoring
`Components program module 37a, the version of a HTML
`converter in the word processor program module 37, the
`version of the word processor program module 37, the
`localization language, and the type of operating system on
`computer 20.
`
`First Declaration, ¶ 78, quoting Apfel, 8:53-66; see also id., ¶¶ 79, 82, 115.
`
`45. This disclosure makes clear that the information considered in Apfel
`
`when identifying compatibility includes “the platform that the program module
`
`components are running on.”
`
`46. Apfel makes this clear elsewhere in its disclosure, as well. For
`
`example, Apfel states that “It should be understood each configuration of computer
`
`20 may require a different upgrade package and, therefore, a different URL.” First
`
`Declaration, ¶ 84, quoting Apfel, 6:65-67.
`
`SUPPLEMENTAL DECLARATION OF JOHN VILLASENOR
`
`Page 21
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`
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`IPR2020-00023
`Patent 6,467,088
`47. Thus, Apfel ensures compatibility among computer components and
`
`detects and avoids conflicts—which is what Patent Owner itself admits Lillich and
`
`Todd do: “Lillich and Todd are directed to … ensuring compatibility of one
`
`particular computer component with another particular computer component, and
`
`detecting and avoiding conflicts in computer systems, respectively.” POR at 26.
`
`48. Patent Owner’s further assertion that these are “entirely different
`
`endeavors” (id.) is simply incorrect, as a POSITA would have understood. What
`
`Patent Owner has attempted to portray as a difference between Apfel on the one
`
`hand and Lillich/Todd on the other is actually a commonality of approach that
`
`underscores the compatibility between all three of these references, a commonality
`
`that would have been well understood by a POSITA, including for the reasons set
`
`forth in my original declaration. See First Declaration, ¶¶ 68-71.
`
`VIII. AVAILABILITY FOR CROSS-EXAMINATION
`In signing this declaration, I recognize that th
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