UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`U.S. Patent No.: 6,467,088
`Issued: October 15, 2002
`Application No.: 09/343,607
`Filed: June 30, 1999
`
`Title: RECONFIGURATION MANAGER FOR
`CONTROLLING UPGRADES OF ELECTRONIC DEVICES
`_________________
`
`
`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
`U.S. Patent No.: 6,467,088
`Issued: October 15, 2002
`Application No.: 09/343,607
`Filed: June 30, 1999
`
`Title: RECONFIGURATION MANAGER FOR
`CONTROLLING UPGRADES OF ELECTRONIC DEVICES
`_________________
`
`
`DECLARATION OF JOHN VILLASENOR
`
`
`
`
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`Page i
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`IPR2020-00023
`Patent 6,467,088
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`TABLE OF CONTENTS
`
`Page(s)
`INTRODUCTION AND ENGAGEMENT .................................................... 1
`
`BACKGROUND AND QUALIFICATIONS ................................................. 1
`
`I.
`
`II.
`
`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’622 PATENT ................. 6
`
`IV. OVERVIEW OF THE ’088 ............................................................................. 7
`
`A.
`
`B.
`
`The ’088 Specification .......................................................................... 7
`
`The Challenged Claims .......................................................................11
`
`V.
`
`LEVEL OF SKILL IN THE ART AND CLAIM CONSTRUCTION .........12
`
`A.
`
`B.
`
`C.
`
`“List” (All Claims) ..............................................................................14
`
`“Known ... For The Electronic Device” (All Claims) .........................15
`
`1.
`
`2.
`
`“Known” ...................................................................................15
`
`“For The Electronic Device” ....................................................16
`
`“At Least One Of [A List Of Known
`Acceptable Configurations ... And A List Of Known
`Unacceptable Configurations]” (All Cls.) / “At Least One Of [A
`Software Component And A Hardware Component]” (Cls. 9, 19) ....19
`
`VI. EACH CHALLENGED CLAIM OF THE ’088
`PATENT IS UNPATENTABLE OVER THE CITED
`PRIOR ART (37 CFR § 42.104 (b)(4), 37 CFR § 42.104(b)(5)). .................21
`
`A. GROUND 1: CLAIMS 1-4, 6-14, AND 16-21 ARE
`OBVIOUS OVER APFEL IN VIEW OF LILLICH AND TODD.....23
`
`1.
`
`U.S. Patent No. 5,974,454 (“Apfel”) ........................................23
`
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`Patent 6,467,088
`U.S. Patent No. 5,613,101 (“Lillich”) .......................................23
`
`2.
`
`3. Motivation To Combine Apfel And Lillich ..............................24
`
`4.
`
`U.S. Patent No. 5,867,714 (“Todd”) .........................................25
`
`5. Motivation To Combine Apfel And Todd ................................26
`
`6. Motivation To Combine Apfel With Both Todd And Lillich ..27
`
`7.
`
`Claims 1, 11, and 21 And Their Dependent Claims
`Are Obvious Over Apfel In View Of Lillich And Todd ..........29
`
`a)
`
`Claims 1, 11, and 21 are Obvious
`Over Apfel in view of Lillich and Todd .........................29
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`“additional component” information ....................36
`
`“comparing” with “known
`acceptable configurations” ...................................38
`
`“comparing” with a list of
`“known unacceptable configurations” .................42
`
`“generating information indicative of an
`approval” ..............................................................47
`
`(5)
`
`“generating information indicative of a denial” ...47
`
`Claims 2 and 12 are Obvious
`Over Apfel in view of Lillich and Todd .........................49
`
`Claims 3 and 13 are Obvious
`Over Apfel in view of Lillich and Todd .........................50
`
`Claims 4 and 14 are Obvious
`Over Apfel in view of Lillich and Todd .........................52
`
`Claims 6 and 16 are Obvious
`Over Apfel in view of Lillich and Todd .........................54
`
`b)
`
`c)
`
`d)
`
`e)
`
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`IPR2020-00023
`Patent 6,467,088
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`f)
`
`g)
`
`h)
`
`i)
`
`Claims 7 and 17 are Obvious
`Over Apfel in view of Lillich and Todd .........................55
`
`Claims 8 and 18 are Obvious
`Over Apfel in view of Lillich and Todd .........................58
`
`Claims 9 and 19 are Obvious
`Over Apfel in view of Lillich and Todd .........................58
`
`Claims 10 and 20 are Obvious
`Over Apfel in view of Lillich and Todd .........................61
`
`B. GROUND 2: CLAIMS 9 AND 19 ARE
`OBVIOUS OVER APFEL IN VIEW OF
`LILLICH AND TODD, IN FURTHER VIEW OF PEDRIZETTI.....62
`
`1.
`
`U.S. Patent No. 6,151,708 (“Pedrizetti”) ..................................62
`
`2. Motivation To Combine Apfel And Pedrizetti .........................62
`
`3.
`
`Apfel In View Of Todd, Lillich, And Pedrizetti
`Shows The Added Limitations Of Claims 9 And 19 ................64
`
`C. ALTERNATIVE GROUNDS FOR
`UNPATENTABILITY: GROUNDS 3 AND 4 ..................................67
`
`D. GROUND 3: CLAIMS 1-3, 9-13, AND 19-21
`ARE OBVIOUS OVER APFEL IN VIEW OF LILLICH .................68
`
`1. Motivation To Combine Apfel And Lillich ..............................68
`
`2.
`
`If “At Least One Of A List Of Known Acceptable
`Configurations ... And A List Of Known Unacceptable
`Configurations” Is Read As Covering “A List Of
`Known Acceptable Configurations,” Claims 1-3, 9-13,
`And 19-21 Are Obvious Over Apfel In View Of Lillich .........68
`
`E.
`
`GROUND 4: CLAIMS 1, 3, 4, 6-11, 13, 14, AND 16-21
`ARE OBVIOUS OVER APFEL IN VIEW OF TODD ......................69
`
`1. Motivation To Combine Apfel And Todd ................................69
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`2.
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`IPR2020-00023
`Patent 6,467,088
`If “At Least One Of A List Of Known Acceptable
`Configurations ... And A List Of Known Unacceptable
`Configurations” Is Read As Covering “A List Of Known
`Unacceptable Configurations,” Claims 1, 3, 4, 6-11, 13,
`14, And 16-21 Are Obvious Over Apfel In View Of Todd ......69
`
`VII. CONCLUSION ..............................................................................................70
`
`VIII. AVAILABILITY FOR CROSS-EXAMINATION ......................................70
`
`A.
`
`B.
`
`Right to Supplement ............................................................................71
`
`Signature ..............................................................................................71
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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 in
`1.
`
`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.
`
`II. BACKGROUND AND QUALIFICATIONS
`I have either trained or worked in digital information processing and
`4.
`
`communications, including the relevant hardware, software, and devices, for
`
`approximately three decades. My work has addressed topics including image and
`
`signal processing, communications, networking, computing, and mobile devices and
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`DECLARATION OF JOHN VILLASENOR
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`networks. I have addressed these technologies both in regard to specific technical
`
`contexts such as imaging, security, networks, pattern recognition, mobile devices
`
`and systems including human interactions with such systems, and media processing,
`
`as well as more broadly.
`
`5.
`
`I received a B.S. in electrical engineering from the University of
`
`Virginia in 1985, an M.S. in electrical engineering from Stanford University in 1986,
`
`and a Ph.D. in electrical engineering from Stanford University in 1989.
`
`6.
`
`Between 1990 and 1992, I worked for the Jet Propulsion Laboratory in
`
`Pasadena, CA, where I helped to develop techniques for imaging and mapping the
`
`earth from space. Since 1992, I have been on the faculty of the Electrical Engineering
`
`Department of the University of California, Los Angeles (UCLA). Between 1992
`
`and 1996, I was an Assistant Professor; between 1996 and 1998, an Associate
`
`Professor; and since 1998, I have been a full Professor. For several years starting in
`
`the late 1990s, I served as the Vice Chair of the Electrical Engineering Department
`
`at UCLA. In addition to my faculty appointment in the UCLA Samueli School of
`
`Engineering, I hold faculty appointments in the Department of Public Policy within
`
`the UCLA Luskin School of Public Affairs, in the UCLA School of Law, and in the
`
`UCLA Anderson School of Management.
`
`7.
`
`In the UCLA Samueli School of Engineering, I have taught courses on
`
`information processing and communications, addressing systems, algorithms, and
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`DECLARATION OF JOHN VILLASENOR
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`IPR2020-00023
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`devices. At the UCLA Luskin School of Public Affairs I have taught science and
`
`technology policy and also advised graduate student project teams. At the UCLA
`
`School of Law I have created and taught a course addressing the intersection of
`
`constitutional law and digital technologies. At the Anderson School of Management
`
`I have created and taught a course on IP for technology entrepreneurs. Originally,
`
`this course was taught in the Anderson School; subsequently it became a jointly
`
`listed course in both the Anderson and engineering schools. At the Anderson School
`
`I have also advised second-year MBA students on technology-related team projects.
`
`8.
`
`At UCLA I have performed extensive research over the past several
`
`decades on various aspects of signal processing, communications and information
`
`processing systems, including the associated mobile devices and the networks and
`
`systems used in relation to those devices. My research has addressed software,
`
`algorithms, hardware, networking, protocols and other aspects of these systems,
`
`networks, and devices, and has included consideration of wireless mobile devices
`
`and systems, signal (including image) processing and communications, hardware
`
`design methodologies, human-device interfaces and interactions, and cybersecurity.
`
`In relation to systems that include mobile devices, my research has addressed issues
`
`including imaging and signal processing at mobile devices, communications to/from
`
`mobile devices (including to a remotely located server), input to and output from
`
`(including to/from a human) mobile devices, and processing at the mobile devices
`
`DECLARATION OF JOHN VILLASENOR
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`and/or at other locations in a network. My work has addressed both the hardware
`
`and software aspects of systems, including the need to ensure compatibility among
`
`system components.
`
`9.
`
`I am an inventor on approximately 20 issued and pending U.S. patents
`
`in areas including signal (including image) processing, data compression,
`
`communications, and cybersecurity. I have published over 175 articles in peer-
`
`reviewed journals and academic conference proceedings. I have also been asked on
`
`multiple occasions to provide congressional testimony on technology topics.
`
`10.
`
`In addition to my work at UCLA, I am a nonresident senior fellow at
`
`the Brookings Institution in Washington, D.C. Through Brookings I have examined
`
`a wide range of topics at the technology/policy intersection including cybersecurity,
`
`wireless mobile devices and systems, financial inclusion for “unbanked”
`
`populations, digital media policy, artificial intelligence, and digital currencies and
`
`emerging payment methods.
`
`11.
`
`In addition to publishing in traditional academic venues such as
`
`engineering journals, engineering conference proceedings, and law reviews, I have
`
`published papers through the Brookings Institution and articles and commentary in
`
`broader-interest venues including Billboard, the Chronicle of Higher Education,
`
`Fast Company, Forbes, the Los Angeles Times, the New York Times, Scientific
`
`American, Slate, and the Washington Post.
`
`DECLARATION OF JOHN VILLASENOR
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`I am also a senior fellow at the Hoover Institution at Stanford and an
`
`12.
`
`affiliate of the Center for International Security and Cooperation (CISAC) at
`
`Stanford. In relation to those affiliations, I have led a research project funded by the
`
`U.S. Department of Homeland Security aimed at improving cybersecurity in U.S.
`
`critical infrastructure.
`
`13.
`
`I am also a member of the Council on Foreign Relations. I have been a
`
`member of the World Economic Forum’s Global Agenda Council on Cybersecurity.
`
`I was also a member and then vice chair of the World Economic Forum’s Global
`
`Agenda Council on the Intellectual Property System.
`
`14.
`
`I have several decades of experience in early stage technology venture
`
`capital in the Bay Area. In that capacity I have met with a large number of startup
`
`companies seeking venture financing spanning a wide range of technology areas,
`
`including those listed above. Among other things, I have helped to evaluate the
`
`proposed technology, the competitive landscape, the market opportunities and risk,
`
`the strength of the team, and the company’s IP strategy and position. I have also
`
`served as a consultant to many companies over the years that I have been on the
`
`faculty at UCLA.
`
`15. My curriculum vita including a list of technical publications and recent
`
`previous testimonial experience is attached as Appendix A to this declaration.
`
`DECLARATION OF JOHN VILLASENOR
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`III. MATERIALS CONSIDERED AND
`INFORMATION RELIED UPON REGARDING ’622 PATENT
`In preparing this declaration, I have reviewed the following materials
`16.
`
`bearing Exhibit Nos. that I understand are being referenced in the IPR that my
`
`declaration accompanies:
`
`No.
`1001
`
`1002
`
`1004
`
`1005
`
`1006
`
`1007
`
`1010
`
`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
`from provider version available at execution,” issued March 18,
`1997 (“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”)
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`DECLARATION OF JOHN VILLASENOR
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`No.
`1011
`
`1012
`
`Description
`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”)
`
`
`IV. OVERVIEW OF THE ’088
`17. The ’088, titled “Reconfiguration manager for controlling upgrades of
`
`electronic devices” issued on October 15, 2002. The ’088 issued from U.S. Patent
`
`Application No. 09/343,607 (the “’607 application”), filed on June 30, 1999.
`
`A. The ’088 Specification
`18. The ’088 states that it relates generally to “techniques for upgrading or
`
`otherwise reconfiguring software and/or hardware components” in electronic
`
`devices. ’088, 1:6-9.
`
`19. The specification first describes a number of “conventional” techniques
`
`“for updating components of electronic devices”, faulting each as allegedly lacking
`
`in some fashion, e.g.:
`
`•
`
`•
`
`“not directly applicable to electronic devices other than computers, and
`cannot efficiently handle reconfiguration of hardware components, or
`hardware and software interdependencies” (’088, 1:41-45);
`“fails to adequately address situations in which the required resources
`are highly interdependent ... assumes that the information regarding
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`component interactions is fully specified and built in to the system”
`(’088, 1:54-59);
`“assumes either that the files are independent or that any potential
`conflicting requirements have already been resolved using other
`techniques. It fails to provide generalized techniques for ensuring
`compatibility among requested components” (’088, 1:66 – 2:3); and
`“fails to adequately ensure compatibility among software and hardware
`components for a variety of different electronic devices” (’088, 2:12-
`14).
`
`•
`
`•
`
`20. The specification then states: “a need exists for improved techniques
`
`for managing reconfiguration of electronic devices, such that compatibility
`
`determinations can be facilitated, particularly for large and complex device
`
`configurations.” ’088, 2:15-19.
`
`21. The specification then describes a “reconfiguration manager that may
`
`be implemented on a computer or other data processing device to control the
`
`reconfiguration of software or other components of an electronic device such as a
`
`computer, personal digital assistant (PDA), set-top box, television, etc.” ’088, 2:22-
`
`26. While stating that this process may be used on devices other than a computer,
`
`and may be used for “other types of device components, e.g., hardware components
`
`or combinations of hardware and software components” (’088, 2:60-64), there is no
`
`different process described in the specification depending on whether a software
`
`update is performed on a computer or some other electronic device.
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`22. The specification describes an exemplary update process as follows:
`
`23. First, an electronic device sends a request to a reconfiguration
`
`manager to upgrade a given component, e.g., a request to upgrade component A
`
`currently on the electronic device to version 2.0. ’088, 4:12-15.
`
`
`
`’088, FIG. 1; see also id., 4:22-36.
`
`24.
`
`In some cases, also included in the request is configuration information
`
`for at least one additional component currently installed on the system. In the
`
`illustrated example, this includes providing version number 2.3 of component B
`
`(erroneously referred to in Figure 1 as component “AV2.3”) and version number 2.0
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`of component C (erroneously referred to in Figure 1 as component “AV2.0”), in
`
`addition to identifying version 1.1 as the version of component A currently installed
`
`on the system. ’088, 4:15-19.
`
`25. Second, the reconfiguration manager determines whether the requested
`
`upgrade is compatible with the one or more other components specified in the
`
`request (in the claims, there can be only a single “other” component). In the
`
`illustrated embodiment, it performs this determination by referencing one or more
`
`“known good configurations” represented by solid lines and one or more “known
`
`bad configurations” represented by dotted lines, as illustrated in FIG. 1, above.
`
`26. While the specification describes these comparisons being made to
`
`“lists” of known acceptable and known unacceptable configurations, it explains that
`
`this list is not limited to “pair-wise compatibility among components.” It further
`
`explains that “the list in other embodiments could include information indicative of
`
`compatibility between groups of multiple components.” Additionally, it defines the
`
`term “list,” stating: “[t]he term ‘list’ as used herein is therefore intended to include
`
`any stored representation of information indicative of component compatibility,”
`
`and acknowledges that “[a] given stored list in accordance with the invention can be
`
`implemented in a straightforward manner, as will be apparent to those skilled in the
`
`art.” ’088, 4:2-11.
`
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`27. Third, once the required comparison(s) have been performed, the
`
`reconfiguration manager responds, by, e.g.:
`
`•
`
`if an upgrade request corresponds to a known good configuration,
`approving the upgrade request and either downloading – or permitting
`the download of – the requested update (’088, 5:19-28);
`if an upgrade request corresponds to a known bad configuration, and no
`known good configurations are available, denying the upgrade request
`(’088, 4:62 – 5:8); or
`if the requested upgrade corresponds to a known bad configuration, but
`there is another upgrade corresponding to a known good configuration
`available, recommending a different upgrade (’088, 4:62 – 5:18).
`28. As further set forth below, each of these approaches to addressing
`
`•
`
`•
`
`known acceptable or unacceptable system configurations in the context of providing
`
`system upgrades was known prior to the time the ’607 application was filed.
`
`The Challenged Claims
`B.
`29. Claims 1-4, 6-14, and 16-21 are challenged in the accompanying
`
`Petition. Claim 1 is representative of the independent claims, and recites:
`
`the
`1. A processor-implemented method for controlling
`reconfiguration of an electronic device, the method
`comprising the steps of:
`
`receiving information representative of a reconfiguration request
`relating to the electronic device;
`
`DECLARATION OF JOHN VILLASENOR
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`least one device component required to
`determining at
`implement the reconfiguration request;
`
`information
`the determined component and
`comparing
`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
`
`30. Claim 11 contains similar subject matter to claim 1 but is written in
`
`apparatus form. Claim 21 is similar but is written to claim “[a]n article of
`
`manufacture.”
`
`V. LEVEL OF SKILL IN THE ART AND CLAIM CONSTRUCTION
`I understand that the level of ordinary skill may be reflected by the prior
`31.
`
`art of record, and that a POSITA to which the claimed subject matter pertains would
`
`have the capability of understanding the scientific and engineering principles
`
`applicable to the pertinent art.
`
`32.
`
`I understand that one of ordinary skill in the art has ordinary creativity
`
`and is not a robot.
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`DECLARATION OF JOHN VILLASENOR
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`I understand there are multiple factors relevant to determining the level
`
`33.
`
`of ordinary skill in the pertinent art, including (1) the levels of education and
`
`experience of persons working in the field at the time of the invention; (2) the
`
`sophistication of the technology; (3) the types of problems encountered in the field;
`
`and (4) the prior art solutions to those problems.
`
`34. The person of ordinary skill in the art at the time the ’088 application
`
`was filed (“POSITA”) would have had a Bachelor’s Degree in Electrical
`
`Engineering, Computer Science, or a related subject and one or more years of
`
`experience working with configuring hardware and software components in
`
`electronic devices. Less work experience may be compensated by a higher level of
`
`education, such as a Master’s Degree, and vice versa.
`
`35. For purposes of this Declaration, in general, and unless otherwise noted,
`
`my testimony below refers to the knowledge of one of ordinary skill in the art during
`
`the time period around the earliest claimed priority date of the '088 Patent. I would
`
`have been a person with at least ordinary skill in the art at that time.
`
`36.
`
`It is my understanding that, for purposes of this Petition, the claims
`
`are construed pursuant to Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed.
`
`Cir. 2005) (words of a claim “are generally given their ordinary and customary
`
`meaning” as understood by a person of ordinary skill in the art in question at the
`
`time of the invention), whose qualifications I have discussed above.
`
`DECLARATION OF JOHN VILLASENOR
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`Page 13
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`IPR2020-00023
`Patent 6,467,088
`37. Under the standard of claim construction set forth above, and as viewed
`
`in terms of the level of skill of the POSITA, to the extent that they are amenable to
`
`understanding (see comments on indefiniteness herein) the following claim terms
`
`are understood as set forth below.
`
`A.
`
`“List” (All Claims)
`
`38. The term “list” encompasses “any stored representation of information
`
`indicative of component compatibility.” ’088, 4:6-8 (“The term ‘list’ as used herein
`
`is therefore intended to include any stored representation of information indicative
`
`of component compatibility.”). The ’088 patent explains that a list can be
`
`implemented “in graphical form,” “as a stored table,” as a “set of tables,” as an “other
`
`type of list,” as a “po[r]tion of a program,” or in “any other suitable format.” Id.,
`
`3:64-4:2. A list can indicate “pair-wise compatibility among components” or can
`
`“include information indicative of compatibility between groups of multiple
`
`components.” Id., 4:2-6.
`
`39.
`
`In denying institution of Apple’s Petition, the Board, for purposes of
`
`that decision, “adopt[ed] Petitioner’s proposed construction of the term “list” as “any
`
`stored representation of information indicative of component compatibility.” Ex.
`
`1012, pg. 8.
`
`DECLARATION OF JOHN VILLASENOR
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`Page 14
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`
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`IPR2020-00023
`Patent 6,467,088
`40. For the reasons set forth above, a POSITA would interpret the term
`
`“list” in the ’088 as “any stored representation of information indicative of
`
`component compatibility.”
`
`B.
`
`“Known ... For The Electronic Device” (All Claims)
`
`41. Patent Owner previously argued in its preliminary response to Apple’s
`
`IPR petition that no claim terms required construction at the pre-institution phase,
`
`while reserving the right to later offer constructions (Apple IPR POPR at 4-5). In its
`
`discussion of the Apple Petition’s application of the cited references to the claims in
`
`its POPR, however, Patent Owner stated:
`
`[Cited reference] fails to disclose either a list of known
`acceptable configurations or list of known unacceptable
`configurations for the electronic device, as required by the
`claim language. The plain language of the claim limitation
`requires that the lists be: (1) previously determined (i.e.,
`“known”) and (2) specific to the electronic device in
`question (i.e., “for the electronic device”).
`
`Apple IPR POPR at 6; see generally id. at 6-7, quoting ’088, 4:62-5:18.
`
`1.
`
`“Known”
`
`42. The PTAB panel adopted Patent Owner’s implied construction of
`
`“known” in its institution decision, stating “We also adopt, for purposes of this
`
`Decision Patent Owner’s proposed construction of ‘known’ to mean previously
`
`DECLARATION OF JOHN VILLASENOR
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`Page 15
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`
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`IPR2020-00023
`Patent 6,467,088
`determined.” Ex. 1012, pg. 8. I do not disagree that the plain meaning of the term
`
`“known” as understood by a POSITA encompasses “previously determined.”
`
`2.
`
`“For The Electronic Device”
`
`43. While the PTAB panel discussed in its Decision Patent Owner’s
`
`implied construction of “for the electronic device” as “specific to the electronic
`
`device in question,” the panel neither rejected nor adopted this implied construction
`
`in its Decision. Ex. 1012, pg. 8.
`
`44. Neither the plain reading of the claim, nor a POSITA’s understanding
`
`of the claim as read in light of the specification and file history requires that the lists
`
`of “known good” and “known bad” configurations be “specific to the electronic
`
`device.” Patent Owner appears to be improperly attempting to read into the claim a
`
`“specific” limitation that is otherwise absent.
`
`45. The portions of the specification quoted by the patent owner in its
`
`POPR make this clear, stating, in part:
`
`In step 104 of FIG. 2, the reconfiguration manager 10
`generates a potential upgrade configuration that will
`satisfy the received request. The configuration manager in
`step 106 then searches through a set of known bad
`configurations. If the upgrade configuration as generated
`in step 104 is determined in step 108 to correspond to one
`of the known bad configurations, the reconfiguration
`manager in step 110 attempts to find a set or sets of
`
`DECLARATION OF JOHN VILLASENOR
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`Page 16
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`
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`IPR2020-00023
`Patent 6,467,088
`potential upgrade configurations from a set of known good
`configurations.
`
`See Ex. 1011 at 7, quoting ’088, 4:62-5:18.
`
`46. A POSITA would know that compatibility among components would
`
`not generally be specific to a device, and therefore that a construction including this
`
`additional limitation would be unduly narrow.
`
`47. Patent Owner’s implicit construction of the “known good” and “known
`
`bad” configurations as being “specific to the device” has no support in the
`
`specification and excludes the preferred embodiment.
`
`48. There is no discussion in the specification that these sets of “known
`
`good” or “known bad” configurations are “specific to the device.” In fact, the
`
`“known configurations” in the reconfiguration manager in the preferred embodiment
`
`are not “specific to the device.” To the contrary, the “known” configurations to
`
`which the comparison is made are described as potential upgrade configurations for
`
`the device; by definition, they are not yet present on the device and are certainly not
`
`exclusive to that device. They are, instead, configurations consisting of
`
`combinations of components that are known to be “acceptable” or “unacceptable”
`
`based on some previous experience with the given component combinations, which
`
`may well have arisen outside the device in question, e.g., on other devices having
`
`the combination(s) of components in question. This is further explained in the
`
`DECLARATION OF JOHN VILLASENOR
`
`Page 17
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`
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`IPR2020-00023
`Patent 6,467,088
`specification, which, in describing the preferred embodiment, sets forth the role of
`
`the reconfiguration manager, which stores information regarding these good and bad
`
`configuration combinations:
`
`The reconfiguration manager 10 includes a listing
`16 of known configurations ...
`
`The list 16 in this example is illustrated in the form
`of a graph indicating which of a set of software
`components supported by the manager 10 are known to
`work well together or are otherwise compatible. The list
`16
`includes
`identifiers of a number of software
`components, each represented by an oval, including
`components corresponding to versions 1.1, 1.8 and 2.0 of
`the software component A, versions 1.5 and 2.3 of the
`software component B, versions 1.0, 2.0 and 3.0 of a
`software component C, and version 1.7 of a software
`component Z. ...
`
`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. 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.,
`
`DECLARATION OF JOHN VILLASENOR
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`Page 18
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`
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`IPR2020-00023
`Patent 6,467,088
`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, 3:27-63 (emphases added).
`
`49. Thus, consistent with the claims and the specification:
`
`•
`
`“known acceptable configurations for th
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