IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`DAEDALUS BLUE LLC,
`
`Plaintiff
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`
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`vs.
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`MICROSOFT CORPORATION,
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`Defendant.
`
`§
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`C.A. No. 6:20-cv-01152-ADA
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`JURY TRIAL DEMANDED
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`DEFENDANT’S DISCLOSURE OF EXTRINSIC EVIDENCE
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`Pursuant to the Case Schedule (Dkt. No. 23), Defendant Microsoft Corporation
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`(“Defendant”) hereby discloses extrinsic evidence in connection with claim construction
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`proceedings. Unless otherwise specified below, where a claim term is identified below,
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`Defendant’s extrinsic evidence applies for purposes of all asserted claims of the patent-in-suit,
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`and of all elements of all such claims containing the claim term. Defendant reserves the right to
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`amend or supplement this disclosure, including to add or withdraw evidence as may be
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`appropriate, particularly in response to or in consideration of Daedalus Blue LLC’s
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`(“Plaintiff’s”) extrinsic evidence for the terms below, the parties’ upcoming meet and confer on
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`claim construction issues, Plaintiff’s belated supplemental infringement contentions that were
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`not served until Friday, July 30, 2021, or in response to Plaintiff’s arguments advanced during
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`claim construction proceedings.
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`I.
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`U.S. Patent No. 7,437,730
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`Claim Term Identified for Construction
`
`Defendants’ Extrinsic Evidence
`
`“resource management logic to distribute
`server resources to each of the plurality of
`virtual machines according to current and
`predicted resource needs of each of the
`multiple workloads utilizing the server
`resources”
`
`Testimony of Dr. Markus Jakobsson, see
`below for summary
`
`Dr. Markus Jakobsson has 24 years of academic and industrial experience in applying,
`
`designing, studying, teaching and writing about computer systems, security and cloud
`
`computing. He received a Master of Science degree in Computer Engineering from Lund
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`Institute of Technology, Sweden (1993), a Master of Science degree in Computer Science from
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`University of California at San Diego (1994), and a Ph.D. in Computer Science from University
`
`of California at San Diego (1997). At the University of California at San Diego (UC San Diego),
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`his field of study was computer science, with a specialization in cryptography, Internet security,
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`and anonymous payment systems. His coursework included systems programming, such as
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`parallel computers. While he was a graduate student at UC San Diego, he was employed at San
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`Diego Supercomputer Center and General Atomics, where he worked as a Researcher supporting
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`the development of the SET protocol and studying in the areas of authentication and privacy. His
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`Ph.D. thesis research related to cryptographic techniques for online payments and anonymity.
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`Based on his knowledge, experience and review of the intrinsic and extrinsic record, Dr.
`
`Jakobsson is expected to testify that the phrase “resource management logic to distribute server
`
`resources to each of the plurality of virtual machines according to current and predicted resource
`
`needs of each of the multiple workloads utilizing the server resources” would not have been
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`understood by a person of ordinary skill in the art to have a definite meaning or connote a
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`particular structure.
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`Dr. Jakobsson is expected to testify that this phrase had no recognized meaning to those
`
`of ordinary skill in the art, and did not suggest any particular structure, as of the claimed date of
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`invention of the ’730 patent. He is further expected to testify that this phrase recites “logic” for
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`performing the claimed function —“to distribute server resources to each of the plurality of
`
`virtual machines according to current and predicted resource needs of each of the multiple
`
`workloads utilizing the server resources” — without reciting any structure for performing the
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`function. Thus, Dr. Jakobsson is expected to testify that a person of ordinary skill in the art
`
`(POSITA) would have looked to the specification of the ’730 patent for guidance as to the
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`structure required to perform the function. Dr. Jakobsson is expected to testify that a POSITA
`
`would have appreciated that the function is performed by software “logic” according to the
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`claims and specification of the ’730 patent. Dr. Jakobsson is further expected to testify that the
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`specification of the ’730 patent does not disclose any algorithms or other structure for
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`performing the function recited in this phrase.
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`Dr. Jakobsson is expected to testify that the only discussion of the claimed distribution
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`according to “predicted resource needs of each of the multiple workloads utilizing the server
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`resources” recited in claim 1 is contained at column 7:4-11. He is further expected to testify that
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`this disclosure confirms that the claimed function is performed by “algorithms” of software, but
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`that this disclosure reveals no algorithms setting forth how the claimed “logic” actually
`
`determines the “predicted resource needs of each of the multiple workloads utilizing the server
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`resources.” More specifically, the disclosure merely recites that the load balancers can predict
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`the resource requirements “utilizing one of many algorithms” without identifying any particular
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`algorithms that can be used.
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`Similarly, Dr. Jakobsson is expected to testify that the only discussion of the claimed
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`distribution according to “current … resource needs of each of the multiple workloads utilizing
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`the server resources” recited in claim 1 is contained at columns 5:32-38 and 6:64-7:3. He is
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`further expected to testify that this disclosure confirms that the claimed function is performed by
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`software, but that this disclosure reveals no algorithms setting forth how the claimed “logic”
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`actually determines the “current … resource needs of each of the multiple workloads utilizing the
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`server resources.” More specifically, the disclosure merely recites that the system’s load
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`balancers measure the current offered load, without explaining any algorithm for how that
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`measuring is performed.
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`Accordingly, Dr. Jakobsson is expected to testify that claim 1 and all claims depending
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`therefrom are indefinite.
`
`Claim Term Identified for Construction
`
`Defendants’ Extrinsic Evidence
`
`Testimony of Dr. Markus Jakobsson, see
`below for summary
`
`“global resource allocator … for receiving
`said offered workload messages and assigning
`an optimum matching of combinations of
`whole integer numbers of workload servers
`and fractional virtual workload servers that
`the GRA controls to each of the respective
`customer workloads according to identified
`resource requirements”
`
`Dr. Markus Jakobsson’s qualifications are summarized above. Based on his knowledge,
`
`experience and review of the intrinsic and extrinsic record, Dr. Jakobsson is expected to testify
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`that the phrase “global resource allocator” would not have been understood by a person of
`
`ordinary skill in the art to have a definite meaning or connote a particular structure.
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`Dr. Jakobsson is expected to testify that this phrase had no recognized meaning to those
`
`of ordinary skill in the art, and did not suggest any particular structure, as of the claimed date of
`
`invention of the ’730 patent. Thus, Dr. Jakobsson is expected to testify that a person of ordinary
`
`skill in the art (POSITA) would have looked to the specification of the ’730 patent for guidance
`
`as to the structure required to perform the claimed functions of “receiving said offered workload
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`messages and assigning an optimum matching of combinations of whole integer numbers of
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`workload servers and fractional virtual workload servers that the GRA controls to each of the
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`respective customer workloads according to identified resource requirements.” Dr. Jakobsson is
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`expected to testify that a POSITA would have appreciated that these functions are performed by
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`software according to the claims and specification of the ’730 patent. Dr. Jakobsson is further
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`expected to testify that the specification of the ’730 patent discloses an algorithm for performing
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`the functions recited in this phrase, as set forth in the following portions of the ’730 patent
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`specification:
`
`1.
`
`2.
`
`Split server resources between VMs evenly to start (see ’730 patent, 5:24-56);
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`Receive measurements and/or prediction data from the load balancer(s) (see id., 2:9-19,
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`2:42-52, 5:24-56, Claim 11, Fig. 3A);
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`3.
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`4.
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`Predict what resources are needed by each customer (see id., 5:24-56, Fig. 3A);
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`Determine if any server capacity would be exhausted based on the predicted resource
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`requirements (see id., 6:58-7:58, Fig. 3A); IF NO GO TO STEP 5; IF YES GO TO STEP 6.
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`5.
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`(FROM STEP 4: If no), adjust resource allocation for each of the VMs on all servers to
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`conform with the prediction (see id., 5:24-56, 6:58-7:58, Fig. 3A).
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`5
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`6.
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`(FROM STEP 4: If yes), mark the servers as overloaded. Contact the resource control
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`agents at each server with resource assignments for each virtual machine pursuant to a process of
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`moving load from the overloaded servers (see id., 6:58-7:58, Figs. 3A, 3B).
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`Dr. Jakobsson is expected to testify that the above algorithm, taught by the specification
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`of the ‘730 patent, is what “receiv[es] said offered workload messages,” as claimed. See step 2
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`above. This algorithm is also what “assign[s] an optimum matching of combinations of whole
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`integer numbers of workload servers and fractional virtual workload servers that the GRA
`
`controls to each of the respective customer workloads according to identified resource
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`requirements,” as claimed. See steps 1, 3-6 above. The claimed optimum matching is assigned,
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`according to the specification, by starting with an even split of resources between VMs and then
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`predicting resource needs of each customer and using those predictions to adjust resource
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`allocations, as well as to move load from overloaded servers, to reach an optimum matching of
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`the servers to the workloads.
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`II.
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`U.S. Patent No. 8,381,209
`
`Claim Term Identified for Construction
`
`“enforcing … routing … via dynamic
`updating of routing controls”
`
`Defendants’ Extrinsic Evidence
`Encyclopedia.com,
`•
`https://www.encyclopedia.com/science-and-
`technology/computers-and-electrical-
`engineering/computers-and-computing/tcpip-
`network-protocols;
`
`defines “routing” – “Routing refers to an
`algorithm for choosing a path over which to
`send packets.” (to be produced – courtesy
`copy provided)
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`III. U.S. Patent No. 8,572,612
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`Claim Term Identified for Construction
`
`Defendants’ Extrinsic Evidence
`
`“flagging the instance of a VM”
`
`Testimony of Dr. Markus Jakobsson,
`Defendants incorporate by reference herein
`the Declaration of Dr. Markus Jakobsson, Ex.
`1003, as filed in IPR2021-00830 (Bates No.
`MSFTDB0001581-1696), and all exhibits
`filed in this IPR (Bates No.
`MSFTDB0001341-1580; MSFTDB0001697-
`2023).
`
`IV. U.S. Patent No. 8,671,132
`
`Claim Term Identified for Construction
`
`Defendants’ Extrinsic Evidence
`
`Testimony of Dr. Erez Zadok, see below for
`summary
`
`“communication module operable to
`communicate between the file evaluation
`module and a plurality of remote clients and
`configured to communicate with clients
`[comprising at least two different computing
`platforms] or [of varying computing
`platforms]” (Claims 1, 9)/ “means for
`communicating with a plurality of clients
`comprising at least two different computing
`platforms.” (Claim 26)
`
`Dr. Erez Zadok has 37 years of academic and industrial experience in applying,
`
`designing, studying, teaching and writing about file systems and storage systems, operating
`
`systems, information technology and system administration, security and information assurance,
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`networking, distributed systems, energy efficiency, performance and benchmarking, compilers,
`
`applied machine learning, and software engineering. He studied at a professional high school in
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`Israel, focusing on electrical engineering (“EE”), and graduated in 1982. He spent one more year
`
`at the high school’s college division, receiving a special Certified Technician’s degree in EE. He
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`then went on to serve in the Israeli Defense Forces for three years (1983-1986). He received his
`
`
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`Bachelor of Science degree in computer science (“CS”) in 1991, his Master’s degree in CS in
`
`1994, and his Ph.D. in CS in 2001—all from Columbia University in New York.
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`Based on his knowledge, experience and review of the intrinsic and extrinsic record, Dr.
`
`Zadok is expected to testify that the closely-related phrases “communication module operable to
`
`communicate between the file evaluation module and a plurality of remote clients and configured
`
`to communicate with clients [comprising at least two different computing platforms] or [of
`
`varying computing platforms]” (Claims 1, 9)/ “means for communicating with a plurality of
`
`clients comprising at least two different computing platforms” (Claim 26) would not have been
`
`understood by a person of ordinary skill in the art to have a definite meaning or connote a
`
`particular structure.
`
`Dr. Zadok is expected to testify that these phrases had no recognized meaning to those of
`
`ordinary skill in the art, and did not suggest any particular structure, in the context of and as of
`
`the claimed date of invention of the ’132 patent. He is further expected to testify that these
`
`phrases recite “modules” or “means” for performing certain functions, without reciting any
`
`structure for performing those functions. Thus, Dr. Zadok is expected to testify that a person of
`
`ordinary skill in the art (POSITA) would have looked to the specification of the ’132 patent for
`
`guidance as to the structure required to perform these functions. Dr. Zadok is expected to testify
`
`that a POSITA would have understood that these functions are performed by software according
`
`to the claims and specification of the ’132 patent. Dr. Zadok is further expected to testify that
`
`the specification of the ’132 patent does not disclose any algorithms or other structure for
`
`performing the functions recited in these phrases.
`
`Dr. Zadok is expected to testify that the only discussion of the claimed communications
`
`functions recited in claims 1, 9 and 26 is contained at columns 9:12-28, and 10:49-63. He is
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`further expected to testify that this disclosure confirms that the claimed communications
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`functions are performed by “executable modules” of software, but that this disclosure reveals no
`
`algorithms setting forth how the claimed “communications module” or “means for
`
`communicating” actually communicate with the claimed “remote clients” or “clients.”
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`Additionally, Dr. Zadok is expected to testify that, in the ’132 patent, these claimed
`
`communications are not merely trivial (e.g., one-to-one) communications, but rather more
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`complex distributed communications for at least two reasons. First, the claims require
`
`communicating with “a plurality” of remote hosts. A POSITA would have known that such
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`distributed communications are significantly more complex than one-to-one communications.
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`Second, the remote hosts comprise “at least two different computing platforms.” A POSITA
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`would have known that communications between hosts that have different computing platforms
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`are more challenging than communications between hosts that have the same computing
`
`platform. Yet the specification discloses no algorithms for how to implement these types of
`
`complex communications.
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`Accordingly, Dr. Zadok is expected to testify that claims 1, 9, 26 and all claims
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`depending therefrom are indefinite.
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`Claim Term Identified for Construction
`
`Defendants’ Extrinsic Evidence
`
`Testimony of Dr. Erez Zadok, see below for
`summary
`
`“service class rule”
`
`Proposed Construction (responsive to
`Daedalus’s service of Supplemental
`Infringement Contentions on July 30, 2021):
`
`Plain and ordinary meaning, which is “a rule
`implemented by the [data management
`system] (claims 1, 15, 26), [metadata server]
`(claim 9), or [computer code executable by a
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`
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`Claim Term Identified for Construction
`processor] (claim 23) to automatically select a
`service class for a file based on an evaluation
`of the file.”
`
`Defendants’ Extrinsic Evidence
`
`Dr. Zadok’s qualifications are summarized above. Based on his knowledge, experience
`
`and review of the intrinsic and extrinsic record, Dr. Zadok is expected to testify that the term
`
`“service class rule” would have been understood by a POSITA to have its plain and ordinary
`
`meaning, in view of the teachings of the specification, which is “a rule implemented by the [data
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`management system] (claims 1, 15, 26), [metadata server] (claim 9), or [computer code
`
`executable by a processor] (claim 23) to automatically select a service class for a file based on an
`
`evaluation of the file.”
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`Dr. Zadok is expected to testify that a POSITA would have understood that a “service
`
`class rule” in this context refers to a rule that automatically selects a service class for a file, as
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`opposed to the prior art systems that the patentee distinguished in the specification and file
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`history, which relied on users to select the service class for a file. Dr. Zadok is expected to
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`testify that the ’132 patent focused on the alleged shortcomings of prior art systems that relied on
`
`user selections, and that a POSITA would have understood that automatic selection of a service
`
`class based on an evaluation of a file was one of the points of alleged novelty to the ’132 patent.
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`Dr. Zadok’s testimony is expected to be supported by at least the following portions of the
`
`specification and the file history of the ’132 patent: ’132 patent at 1:47-49, 2:4-6, 2:46-49, 2:54-
`
`60, 3:28-29, 3:65-4:4, 7:38-40, 9:45-57; 3/6/2013 Decision on Appeal, at 5.
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`Dated: August 3, 2021
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`Respectfully submitted,
`
`
`
`
`
`/s/ Jared Bobrow
`Barry K. Shelton
`Texas State Bar No. 24055029
`SHELTON COBURN LLP
`311 RR 320, Suite 205
`Austin, TX 78734-4775
`bshelton@sheltoncoburn.com
`Tel: (512) 263-2165
`Fax: (512) 263-2166
`
`Jared Bobrow (CA State Bar No. 133712)
`Jacob M. Heath (CA State Bar No. 238959)
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`Tel: (650) 614-7400
`Fax: (650) 614-7401
`jbobrow@orrick.com
`jheath@orrick.com
`
`Donald E. Daybell (CA State Bar No. 210961)
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`2050 Main Street, Suite 1100
`Irvine, CA 92614
`Tel: (949) 567-6700
`Fax: (949) 567-6710
`ddaybell@orrick.com
`
`Attorneys for Defendant Microsoft Corporation
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`CERTIFICATE OF SERVICE
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`I, Matt Bonini, hereby certify that on August 3, 2021, I caused the foregoing document to
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`be served on the following counsel in the manner indicated:
`
`BY EMAIL:
`
`Denise M. De Mory - ddemory@bdiplaw.com
`Robin Curtis - rcurtis@bdiplaw.com
`Jennifer L. Gilbert - jgilbert@bdiplaw.com
`B. Russell Horton - rhorton@gbkh.com
`
`cc: BDIP_Daedalus_Microsoft@bdiplaw.com
`
`
`
`
`
`
`
`/s/ Matt Bonini
` Matt Bonini
`
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