UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`MICROSOFT CORP.,
`Petitioner,
`
`v.
`
`DAEDALUS BLUE, LLC
`
`Patent Owner
`
`
`Case No. IPR2021-00832
`U.S. Patent No. 8,381,209
`Issue Date: February 19, 2013
`
`Title: MOVEABLE ACCESS CONTROL LIST (ACL) MECHANISMS FOR
`HYPERVISORS AND VIRTUAL MACHINES AND VIRTUAL PORT
`FIREWALLS
`
`
`
`
`DECLARATION OF MARKUS JAKOBSSON, PH.D. IN SUPPORT OF
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,381,209
`
`
`
`
`
`
`
`
`
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`Microsoft Ex. 1003, p. 1
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`
`I. 
`II. 
`
`Page
`TABLE OF CONTENTS
`INTRODUCTION ................................................................................ 1 
`EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS ..................................................... 2 
`III.  ASSIGNMENT AND MATERIALS CONSIDERED IN FORMING
`MY OPINIONS .................................................................................... 9 
`IV.  UNDERSTANDING OF GOVERNING LAW ................................. 11 
`A. 
`Claim Construction .................................................................. 12 
`B. 
`Obviousness .............................................................................. 14 
`LEVEL OF SKILL IN THE ART ...................................................... 18 
`V. 
`VI.  THE ’209 PATENT’S EFFECTIVE FILING DATE ........................ 20 
`VII.  OVERVIEW OF THE TECHNOLOGY BEFORE THE FILING
`DATE OF THE ’209 PATENT .......................................................... 20 
`A.  Virtual Machines and Virtual Machine Migration ................... 20 
`B. 
`Hypervisor-Based Virtual Machine Security ........................... 26 
`C. 
`Traffic Routing ......................................................................... 29 
`VIII.  THE ’209 PATENT ............................................................................ 31 
`A. 
`Summary of the ’209 Patent ..................................................... 31 
`B. 
`The ’209 Patent’s Claims and Specification ............................ 33 
`C. 
`The ’209 Patent’s Prosecution History .................................... 38 
`IX.  CLAIM CONSTRUCTION ............................................................... 40 
`X.  OVERVIEW OF THE PRIOR ART .................................................. 41 
`1. 
`U.S. Patent Publication No. 2007/0079307 A1
`(“Dhawan”) .................................................................... 41 
`Live Migration of Virtual Machines (“Clark”) .............. 45 
`Isolation of Shared Network Resources in XenoServers
`(“Warfield”) ................................................................... 47 
`U.S. Patent No. 8,107,370 (“Chandika”) ....................... 49 
`4. 
`XI.  UNPATENTABILITY ANALYSIS .................................................. 52 
`
`2. 
`3. 
`
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`-i-
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`Microsoft Ex. 1003, p. 2
`Microsoft v. Daedalus Blue
`IPR2021-00832
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`
`B. 
`
`C. 
`
`A.  GROUND 1: Dhawan in View of Clark and the Knowledge of
`POSITA Renders Obvious Claims 1, 3 and 6: ......................... 52 
`1. 
`Claim 1 ........................................................................... 52 
`2. 
`Claim 3: “The method according to claim 1, further
`comprising:” ................................................................... 60 
`Claim 6: “The method according to claim 1, further
`comprising adding a network section to a Virtual
`Machine Description File.” ............................................ 65 
`GROUND 2: Dhawan in View of Clark and Further in View of
`Warfield and the Knowledge of a POSITA Renders Obvious
`Claims 2, 4, and 5. .................................................................... 66 
`1. 
`Claim 2: “The method according to claim 1, further
`comprising:” ................................................................... 66 
`Claim 4: “The method according to claim 1, further
`comprising:” ................................................................... 74 
`Claim 5: “The method according to claim 1, further
`comprising setting firewalls to permit network traffic for
`the virtual machine to go to the second hardware device
`at the hypervisor layer.” ................................................. 85 
`GROUND 3: Dhawan in view of Clark and Further in View of
`Chandrika and the Knowledge of a POSITA Renders Obvious
`Claims 7 and 8. ......................................................................... 89 
`1. 
`Claim 7: “The method according to claim 1, further
`comprising storing network access control lists” .......... 89 
`Claim 8: “The method according to claim 7, further
`comprising adding a command line interface to a Virtual
`Switch configuration to set and unset a respective one of
`the access control lists.” ................................................. 91 
`3.  Motivation to Combine Dhawan, Clark, and Chandika 94 
`4. 
`Reasonable expectation of successful combination ....... 96 
`Secondary Considerations of Non-Obviousness ...................... 97 
`D. 
`XII.  CONCLUSION ................................................................................... 97 
`XIII.  DECLARATION ................................................................................ 98 
`
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`
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`-ii-
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`3. 
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`2. 
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`3. 
`
`2. 
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`
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`Microsoft Ex. 1003, p. 3
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`I, Markus Jakobsson, Ph.D., hereby declare as follows:
`
`I.
`
`INTRODUCTION
`1. My name is Markus Jakobsson, and I have been retained by Petitioner
`
`Microsoft Corporation (“Microsoft” or “Petitioner”) to evaluate and offer opinions
`
`regarding U.S. Patent No. 8,381,209 (Ex. 1001, “the ’209 patent”). Specifically, I
`
`have been asked to consider the patentability of Claims 1-8 of the ’209 patent (“the
`
`Challenged Claims”) in view of prior art and the understanding of a person of
`
`ordinary skill in the art (“POSITA”). If called upon to do so, I would testify
`
`competently to the facts and opinions herein. I have been warned that willful false
`
`statements and the like are punishable by fine or imprisonment, or both.
`
`2.
`
`I am being compensated for my time at my standard consulting rate. I
`
`am also being reimbursed for expenses that I incur during the course of this work.
`
`My compensation is not contingent upon the results of my study, the substance of
`
`my opinions, or the outcome of any proceeding involving the Challenged Claims.
`
`I have no financial interest in the outcome of this matter or in the pending litigation
`
`between Petitioner and the Patent Owner.
`
`3. My opinions are based on my years of education, research, and
`
`experience, as well as my investigation and study of relevant materials, including
`
`those cited herein.
`
`
`
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`-1-
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`Microsoft Ex. 1003, p. 4
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`IPR2021-00832
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`4.
`
`I may rely upon these materials, my knowledge and experience,
`
`
`
`and/or additional materials to rebut arguments raised by the Patent Owner.
`
`Further, I may also consider additional documents and information in forming any
`
`necessary opinions, including documents that may not yet have been provided to
`
`me.
`
`5. My analysis of the materials produced in this proceeding is ongoing
`
`and I will continue to review any new material as it is provided. This declaration
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`represents only those opinions I have formed to date. I reserve the right to revise,
`
`supplement, and/or amend my opinions stated herein based on new information
`
`and on my continuing analysis of the materials already provided.
`
`II. EDUCATION BACKGROUND, PROFESSIONAL EXPERIENCE,
`AND OTHER QUALIFICATIONS
`6. My qualifications can be found in my Curriculum Vitae, see Ex. 1004,
`
`which includes my detailed employment background, professional experience, and
`
`list of technical publications and patents.
`
`7.
`
`I am currently CTO at ZapFraud, a fraud-detection startup focused on
`
`detecting deception. At ZapFraud, I design and develop security solutions for
`
`enterprise email. We use deception and risk analysis to protect the data and email
`
`of businesses—including quarantining, discarding, alerting, or delivering
`
`suspicious messages. My work primarily involves identifying risks, developing
`
`
`
`
`-2-
`
`
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`Microsoft Ex. 1003, p. 5
`Microsoft v. Daedalus Blue
`IPR2021-00832
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`protocols and user experiences, evaluating the security of proposed security
`
`approaches, and addressing abuses in social engineering, malware, and privacy.
`
`8.
`
`I have a Master of Science degree in Computer Engineering from
`
`Lund Institute of Technology, Sweden (1993), a Master of Science degree in
`
`Computer Science from 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), my field of study was
`
`computer science, with a specialization in cryptography, Internet security, and
`
`anonymous payment systems. My coursework included systems programming,
`
`such as parallel computers. While I was a graduate student at UC San Diego, I was
`
`employed at San Diego Supercomputer Center and General Atomics, where I
`
`worked as a Researcher supporting the development of the SET protocol and
`
`studying in the areas of authentication and privacy. My Ph.D. thesis research
`
`related to cryptographic techniques for online payments and anonymity.
`
`9.
`
`Since earning my doctorate degree over twenty-four years ago, I have
`
`been an employee, entrepreneur, and consultant in the computer systems, security,
`
`and cloud computing industry. I have worked as an engineer at a number of
`
`leading companies in the computer industry, including PayPal, Qualcomm, Bell
`
`Labs, and LifeLock. I have also taught and performed research at several
`
`
`
`
`-3-
`
`
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`Microsoft Ex. 1003, p. 6
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`IPR2021-00832
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`prestigious universities, including New York University (NYU) and Indiana
`
`University (IU).
`
`10. From 1997 to 2001, I was a Member of Technical Staff at Bell Labs,
`
`where I did research on authentication, privacy, multi-party computation, contract
`
`exchange, digital commerce including crypto payments, and fraud detection and
`
`prevention. Example publications of mine from this time period include “Secure
`
`distributed computation in cryptographic applications” (U.S. App. No.
`
`2003/0046547A1, 2001 priority date) and “Secure server-aided signature
`
`generation” (International Workshop on Public Key Cryptography PKC
`
`2001: Public Key Cryptography 383-401), both of which relate to virtualization.
`
`11. From 2001 to 2004, I was employed as a Principal Research Scientist
`
`at RSA Labs, where I worked on researching and developing novel cybersecurity
`
`solutions for RSA products. Specifically, I worked on anonymity and
`
`authentication, and laid the foundation for the discipline of phishing, which refers
`
`to online theft of credentials, such as passwords, using deception. I later developed
`
`methods to predict what types of online crimes are likely to increase in
`
`commonality, and a series of countermeasures against future fraud techniques that
`
`I predicted would become most common. I also worked on problems related to
`
`fraud prevention and risk management.
`
`
`
`
`-4-
`
`
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`Microsoft Ex. 1003, p. 7
`Microsoft v. Daedalus Blue
`IPR2021-00832
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`12. While at RSA Labs, I was also employed at New York University.
`
`
`
`From 2002 to 2004, I worked there as an Adjunct Associate Professor in the
`
`Computer Science department, and I taught classes on cryptographic protocols.
`
`13. From 2004 to 2016, I held a faculty position at the Indiana University
`
`at Bloomington. First, from 2004 to 2008, I worked as an Associate Professor of
`
`Computer Science, Informatics, and Cognitive Science, and as the Associate
`
`Director of the Center for Applied Cybersecurity Research (CACR). Then, from
`
`2008 to 2016, I worked as an Adjunct Associate Professor. At that time, I was the
`
`most senior security researcher at the University, where I built a research group
`
`focused on online fraud and countermeasures, resulting in over 50 publications and
`
`two books. One of these books, “Crimeware: Understanding New Attacks and
`
`Defenses” (Wiley, 2008), described the benefits of virtualization in the context of
`
`Internet security.
`
`14. During my employment at the Indiana University, I was also
`
`employed by Xerox Palo Alto Research Center (PARC), PayPal, and Qualcomm to
`
`provide thought leadership to their security groups. From 2008 to 2010, I was a
`
`Principal Scientist at Xerox PARC. There, I developed the theory of implicit
`
`authentication, which is now ubiquitous. From 2010 to 2013, I was Director and
`
`Principal Scientist of Consumer Security at PayPal. My responsibilities included
`
`detecting network abuse, including fraud perpetrated by customers (e.g., “friendly
`
`-5-
`
`
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`Microsoft Ex. 1003, p. 8
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`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`fraud”). Then, from 2013 to 2015, I was Senior Director at Qualcomm, where I
`
`developed methods to detect the presence of malware on already infected
`
`computers, including mobile devices, which was a long-felt but then-unsolved
`
`need.
`
`15.
`
`In 2016, I left academia and joined Agari, a cybersecurity company
`
`that develops and commercializes technology to protect enterprises, their partners
`
`and customers from advanced email phishing attacks. From 2016 to 2018, I
`
`worked at Agari as Chief Scientist. My research focused on trends in online fraud,
`
`especially related to email, including problems such as Business Email
`
`Compromise, Ransomware, and other abuses based on social engineering and
`
`identity deception. My work primarily involved identifying trends in fraud and
`
`computing before they affected the market, and developing and testing
`
`countermeasures, including technological countermeasures, user interaction and
`
`education.
`
`16.
`
`I often used virtualization in my work and patented inventions related
`
`to virtualization. Example patents include “Detecting computer security risk based
`
`on previously observed communications” (US10715543B2, priority 2016) and
`
`“Using message context to evaluate security of requested data” (US
`
`US10805314B2, priority 2017).
`
`
`
`
`-6-
`
`
`
`Microsoft Ex. 1003, p. 9
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`17. From 2018 to 2020, I was employed at Amber Solutions, a
`
`
`
`cybersecurity company that develops home and office automation technologies.
`
`My title at Amber was Chief of Security and Data Analytics, and my research
`
`addressed privacy, user interfaces, and authentication techniques in the context of
`
`ubiquitous and wearable computing.
`
`18.
`
`In 2020, following my time at Amber, I joined ByteDance—a
`
`multinational Internet company that specializes in developing a range of creative
`
`content platforms and applications, including TikTok and other international
`
`products. I was employed as a Principal Scientist at ByteDance until April 2021.
`
`19.
`
`In addition to my employment history above, I am also an
`
`entrepreneur. I have founded or co-founded several successful computer security
`
`companies. In 2005, I co-founded RavenWhite Security, a provider of
`
`authentication solutions, where I currently serve as Chief Technical Officer. In
`
`2007, I co-founded Extricatus, one of the first companies to address consumer
`
`security education. In 2009 I founded FatSkunk, a provider of mobile malware
`
`detection software. I served as Chief Technical Officer of FatSkunk from 2009 to
`
`2013, until FatSkunk was acquired by Qualcomm. Following the acquisition, I
`
`joined Qualcomm as an employee. In 2013, I founded ZapFraud, a provider of
`
`anti-scam technology addressing Business Email Compromise, and I currently
`
`
`
`
`-7-
`
`
`
`Microsoft Ex. 1003, p. 10
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`serve as Chief Technical Officer. In 2014, I co-founded RightQuestion, a security
`
`consulting company.
`
`20. Additionally, I have served on the advisory boards of several
`
`technology companies. For example, I have been a member of the fraud advisory
`
`board at LifeLock (an identity theft protection company), a member of the
`
`technical advisory board at CellFony (a mobile security company), a member of
`
`the technical advisory board at PopGiro (a user reputation company), a member of
`
`the technical advisory board at MobiSocial dba Omlet (a social networking
`
`company), and a member of the technical advisory board at Stealth Security (an
`
`anti-fraud company). Moreover, I have provided anti-fraud consulting to
`
`KommuneData (a Danish government entity), J.P. Morgan Chase, PayPal, Boku,
`
`and Western Union.
`
`21.
`
`I am a named inventor on over 100 United States patents and patent
`
`applications related to applied security, privacy, cryptographic protocols,
`
`authentication, malware, social engineering, usability, and fraud. I also have
`
`authored seven books and over 100 peer-reviewed publications. Additionally, I
`
`have been engaged as a technical expert in over 50 computer-related legal matters,
`
`including numerous cases involving network security.
`
`
`
`
`-8-
`
`
`
`Microsoft Ex. 1003, p. 11
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`III. ASSIGNMENT AND MATERIALS CONSIDERED IN FORMING MY
`OPINIONS
`22.
`I have been asked to provide analysis and explain the subject matter of
`
`the ’209 patent, including the state of the art when the ’209 patent application was
`
`filed. I have also been asked to consider, analyze, and explain certain prior art to
`
`the ’209 patent including how that art relates to the challenged claims of the ’209
`
`patent and to provide my opinions regarding whether that art invalidates the
`
`claimed subject matter.
`
`23. The opinions expressed in this declaration are not exhaustive of my
`
`opinions regarding the unpatentability of the claims of the ’209 patent. Therefore,
`
`the fact that I do not address a particular point should not be understood to indicate
`
`an agreement on my part that any claim complies with the requirements of any
`
`applicable patent or other rule.
`
`24.
`
`I reserve the right to amend and supplement this declaration in light of
`
`additional evidence, arguments, or testimony presented during this IPR or related
`
`proceedings on the ’209 patent.
`
`25.
`
`In forming my opinions and reaching the conclusion given in this
`
`declaration, I have considered and relied upon my education, knowledge of the
`
`relevant field, knowledge of scientific and engineering principles, and my
`
`
`
`
`-9-
`
`
`
`Microsoft Ex. 1003, p. 12
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`experience. I have also reviewed and considered the ’209 patent (Exhibit 1001), its
`
`prosecution history (Exhibit 1002), and the following additional materials:
`
`EXHIBIT NO.
`1005
`
`1006
`
`1007
`
`1008
`1011
`
`1012
`
`1013
`
`1014
`
`1015
`
`1016
`
`DESCRIPTION
`
`U.S. Patent Application Publication No. 2007/0079307 to
`Dhawan et al. (“Dhawan”)
`
`Clark et al., Live Migration of Virtual Machines, NSDI ʼ05:
`2nd Symposium on Networked Systems Design &
`Implementation 273 (May 2-4, 2005) (“Clark”)
`
`Warfield et al., Isolation of Shared Network Resources in
`XenoServers, Computer Laboratory, University of Cambridge,
`PlanetLab 1 (November, 2002) (“Warfield”)
`
`U.S. Patent No. 8,107,370 to Chandika et al. (“Chandika”)
`
`U.S. Patent No. 7,484,208 to Nelson et al. (“Nelson”)
`
`Chen et al., When Virtual is Better than Real, The Eighth IEEE
`Workshop on Hot Topics in Operating Systems (HotOS-VIII),
`Schoss Elmau, Germany (May 20-23, 2001) (“Chen”)
`
`U.S. Patent Application No. 2005/0268298 to Hunt et al.
`(“Hunt”).
`
`U.S. Patent No. 6,397,242 to Devine et al. (“Devine”)
`
`Karger, P., Multi-Level Security Requirements for Hypervisors,
`IBM Research Report, RC 23624 (WO506-041), June 6, 2005
`(rev. Oct. 19, 2005), 21st Annual Computer Security
`Applications Conference, Tucson, AZ (Dec. 5-9, 2005)
`(“Karger”)
`
`Sailer et al., Building a MAC-Based Security Architecture for
`the Xen Open-Source Hypervisor, Proceedings of the 21st
`Annual Computer Security Applications Conference (ASCAC
`2005) (“Sailer”)
`
`
`
`
`-10-
`
`
`
`Microsoft Ex. 1003, p. 13
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`

`

`
`
`EXHIBIT NO.
`1017
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1046
`
`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`DESCRIPTION
`
`U.S. Patent No. 6,182,226 to Reid et al. (“Reid”)
`
`Huang et al., A Case for High Performance Computing with
`Virtual Machines, Cairns, Queensland, Australia (June 28-30,
`2006) (“Huang”)
`
`Keahey et al., Virtual Workspaces in the Grid, 11th
`International Euro-Par Conferences, Lisbon, Portugal (Sept.
`2005)
`
`R. Siles, Real World ARP Spoofing, SANS Institute (August
`2003)
`
`V. Antoine et al, Router Security Configuration Guide, Router
`Security Guidance Activity of the System and Network Attack
`Center (SNAC) (Sept. 27, 2002)
`
`Jiang et al., VIOLIN: Virtual Internetworking on Overlay
`Infrastructure, In: Cao J., Yang L.T., Guo M., Lau F. (eds)
`Parallel and Distributed Processing and Applications (ISPA
`2004), Lecture Notes in Computer Science, vol 3358. Springer,
`Berlin, Heidelberg
`
`Varian, VM and the VM Community: Past, Present, and
`Future, Office of Computing and Information Technology,
`Princeton University, Princeton, NJ, 1, 19-22 (April 1991)
`(“Varian”)
`
`
`IV. UNDERSTANDING OF GOVERNING LAW
`26.
`I am not an attorney, but I have been instructed in and applied the law
`
`as described in this section. I understand that the first step in comparing an
`
`asserted claim to the prior art is for the claim to be properly construed.
`
`
`
`
`-11-
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`
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`Microsoft Ex. 1003, p. 14
`Microsoft v. Daedalus Blue
`IPR2021-00832
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`

`

`
`
`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`A. Claim Construction
`27.
`I have been advised that in this Inter Partes Review, the claim terms
`
`generally should be given their ordinary and customary meaning as a POSITA
`
`would have understood them at the time of the invention and in light of the patent
`
`and its prosecution history. Furthermore, I have been instructed that a claim’s
`
`plain language can help guide the interpretation of the claim terms in question, and
`
`the manner in which a term is used in a claim may be probative of its meaning.
`
`28. Further, I understand that in an Inter Partes Review proceeding, only
`
`claim terms that are actually in dispute need to be construed. Thus, terms that are
`
`not in dispute, or those for which alternative constructions would not render a
`
`different finding, do not need to be construed.
`
`29.
`
`I have also been advised that the claim terms being construed must be
`
`construed in light of, and consistent with, the intrinsic evidence of the patent. I
`
`understand that a patent’s intrinsic evidence includes the patent’s prosecution
`
`history (which includes the prior art considered by the Examiner(s)), the patent’s
`
`claims, and the patent’s written description as given in the specification of the
`
`patent.
`
`30.
`
`I have also been advised that when the meaning of a patent’s claim
`
`term is disputed, the specification of the patent itself is often the best guide to the
`
`meaning of that claim term. I understand that while embodiments discussed in the
`
`
`
`
`-12-
`
`
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`Microsoft Ex. 1003, p. 15
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`specification can help explain the meaning of claim terms, preferred embodiments
`
`and other examples given in the specification should not further limit the claims by
`
`being read into the claim terms being construed. On the other hand, I also
`
`understand that where the inventors have limited the scope of their invention, using
`
`terms of exclusion such as “the invention is …” or the like, those terms of
`
`exclusion properly limit the scope of the claims.
`
`31.
`
`I also understand that an inventor may act as his or her own
`
`lexicographer by specifically defining his or her own terms within the specification
`
`such that they then possess a specific meaning that can be different than the
`
`meaning they would otherwise have. I also understand that such an inventor can
`
`overcome the plain and ordinary meaning of a given claim term if he or she clearly
`
`and explicitly defines or redefines a claim term.
`
`32.
`
`I also understand that the presence of a dependent claim that adds a
`
`particular limitation gives rise to a presumption that the limitation in question is
`
`not present in the independent claim.
`
`33.
`
`I have also been advised that after the patent’s claims and
`
`specification, the next critical source of evidence regarding the meaning of a
`
`patent’s claim terms comes from the patent’s prosecution history. I understand that
`
`the prosecution history contains remarks made by the applicant during prosecution
`
`of the application that issues as the patent and that those remarks may act to define,
`
`-13-
`
`
`
`Microsoft Ex. 1003, p. 16
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`redefine, disclaim, or limit the meaning of a claim term, and that if a patentee made
`
`statements during prosecution that so limit the scope of a claim term, it is improper
`
`for a patent owner to regain the scope given up during prosecution that leads to the
`
`issuance of the patent.
`
`34.
`
`I have also been advised that in addition to the intrinsic evidence
`
`discussed above, extrinsic evidence may also be considered when construing
`
`claims, although it is generally not as significant as the intrinsic record itself when
`
`understanding the meaning of a claim term. It is my understanding that extrinsic
`
`evidence is any relevant evidence that would inform the understanding of the claim
`
`terms such as textbooks, dictionaries, expert testimony, treatises, or other like
`
`material.
`
`B. Obviousness
`35.
`I have been further instructed and understand that a patent claim is
`
`unpatentable and invalid as obvious if the subject matter of the claim as a whole
`
`would have been obvious under 35 U.S.C. § 103(a) to a person of ordinary skill in
`
`the art of the claimed subject matter as of the time of the invention at issue. I
`
`understand that when assessing the obviousness of claimed subject matter, the
`
`following factors are evaluated: (1) the scope and content of the prior art; (2) the
`
`difference or differences between each claim of the patent and the prior art; and
`
`(3) the level of ordinary skill in the art at the time the patent was filed. I also
`
`
`
`
`-14-
`
`
`
`Microsoft Ex. 1003, p. 17
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`understand that the Board considers certain objective factors if they are present,
`
`generally referred to as “secondary considerations” or “objective indicia” of non-
`
`obviousness, as further discussed below.
`
`36.
`
`I understand that claimed subject matter may be obvious in view of
`
`more than one item of prior art. I understand, however, that it is not enough to
`
`show simply that all the limitations of the claimed subject matter are spread
`
`throughout the prior art. Instead, for claimed subject matter to be obvious over
`
`multiple references, there generally must have been some reason or motivation for
`
`one of ordinary skill in the art to combine the teachings of the prior art references
`
`to arrive at the claimed subject matter.
`
`37.
`
`I have been informed that, in seeking to determine whether an
`
`invention that is a combination of known elements would have been obvious to a
`
`person of ordinary skill in the art at the time of the invention, one must consider
`
`the references in their entirety to ascertain whether the disclosures in those
`
`references render the combination obvious to such a person.
`
`38.
`
`I have been informed and understand that, while not required, the
`
`prior art references themselves may provide a teaching, suggestion, motivation, or
`
`reason to combine, but other times the motivation linking two or more prior art
`
`references is common sense to a person of ordinary skill in the art at the time of the
`
`invention.
`
`
`
`-15-
`
`
`
`Microsoft Ex. 1003, p. 18
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`39.
`
`I understand that a particular combination may be proven obvious
`
`
`
`merely by showing that it was obvious to try the combination. I have been
`
`informed that, if a technique has been used to improve one device, and a person of
`
`ordinary skill in the art would recognize that it would improve similar devices in
`
`the same way, using the technique is obvious unless its actual application is
`
`beyond his or her skill. I have further been informed and understand that a
`
`POSITA combines the teachings of the prior art references and does not
`
`necessarily combine the embodiments of those teachings physically.
`
`40.
`
`I further understand that an obviousness analysis recognizes that
`
`market demand, rather than scientific literature, often drives innovation, and that a
`
`motivation to combine references also may be supplied by the direction of the
`
`marketplace. For example, when there is a design need or market pressure to solve
`
`a problem and there are a finite number of identified, predictable solutions, a
`
`person of ordinary skill has good reason to pursue the known options within his or
`
`her technical grasp because the result is likely the product not of innovation but of
`
`ordinary skill and common sense.
`
`41.
`
`I have been informed that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. Thus, where all of the elements of a claim are used in
`
`
`
`
`-16-
`
`
`
`Microsoft Ex. 1003, p. 19
`Microsoft v. Daedalus Blue
`IPR2021-00832
`
`

`

`Declaration of Markus Jakobsson, Ph.D., in Support of the
`Petition for Inter Partes Review of U.S. Patent No. 8,381,209
`
`
`substantially the same manner in devices in the same field of endeavor, the claim is
`
`likely obvious.
`
`42. Additionally, I understand that a patent is likely to be invalid for
`
`obviousness if a person of ordinary skill can implement a predictable variation or if
`
`there existed at the time of the invention a known problem for which there was an
`
`obvious solution encompassed by the patent’s claims. Therefore, when a work is
`
`available in one field of endeavor, design incentives and other market forces can
`
`prompt variations of it, either in the same field or a different one.
`
`43.
`
`I further understand that combining embodiments related to each other
`
`in a single prior art reference would not ordinarily require a leap of inventiveness.
`
`44.
`
`I also understand that one of ordinary skill in the art must have had a
`
`reasonable expectation of succe