UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`GOOGLE LLC, MICROSOFT CORPORATION,
`
`Petitioners,
`v.
`CAROLYN W. HAFEMAN,
`
`Patent Owner.
`__________________________
`
`IPR2002-001188
`IPR2002-001189
`
`U.S. Patent No. 10,325,122
`__________________________
`
`IPR2002-001190
`IPR2002-001191
`
`U.S. Patent No. 10,789,393
`__________________________
`
`IPR2002-001192
`IPR2002-001193
`
`U.S. Patent No. 9,892,287
`__________________________
`REBUTTAL DECLARATION OF EREZ ZADOK, PH.D
`
`Ex. 1048
`
`
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________
`
`GOOGLE LLC, MICROSOFT CORPORATION,
`
`Petitioners,
`v.
`CAROLYN W. HAFEMAN,
`
`Patent Owner.
`__________________________
`
`IPR2002-001188
`IPR2002-001189
`
`U.S. Patent No. 10,325,122
`__________________________
`
`IPR2002-001190
`IPR2002-001191
`
`U.S. Patent No. 10,789,393
`__________________________
`
`IPR2002-001192
`IPR2002-001193
`
`U.S. Patent No. 9,892,287
`__________________________
`REBUTTAL DECLARATION OF EREZ ZADOK, PH.D
`
`Ex. 1048
`
`
`
`TABLE OF CONTENTS
`
`
`Page
`
`QUALIFICATIONS ......................................................................................4
`I.
`UNDERSTANDING OF RELEVANT LEGAL PRINCIPLES ..................15
`II.
`III. GROUNDS BASED ON NOVEMBER 22, 2013 PRIORITY
`DATE (IPR2022-01189, IPR2022-01191, IPR2022-01193) .......................17
`A. OPINIONS SUPPORTING THE REPLY FOR GROUND 1: Claims
`1-7 are obvious over Hafeman 298 and Chiu ..................................... 17
`OPINIONS SUPPORTING THE REPLY FOR GROUND 2: The
`’332 Application as originally filed does not provide adequate written
`description support for the “remotely initiating return/recovery
`information” limitation, thus, claims 1-7 are anticipated by Hafeman
`670 ...................................................................................................... 20
`IV. GROUNDS BASED ON NOVEMBER 25, 2002 PRIORITY
`DATE (IPR2022-01188, IPR2022-01190, IPR2022-01192) .......................30
`A. OPINIONS SUPPORTING THE REPLY FOR GROUND 1: Claims
`1-7 are obvious over Jenne and Cohen ............................................... 30
`OPINIONS SUPPORTING THE REPLY FOR GROUND 2: Claims
`1, 4, and 7 are obvious over Angelo and Helle ................................... 42
`CONCLUSION ............................................................................................44
`
`B.
`
`B.
`
`V.
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`Rebuttal Declaration of Dr. Erez Zadok
`
`I, Erez Zadok, declare as follows:
`
`1.
`
`I have been engaged by Smith Baluch LLP on behalf of Google LLC
`
`and by Faegre Drinker Biddle & Reath on behalf of Microsoft Corporation
`
`(collectively “Petitioners”) to provide this further rebuttal Declaration concerning
`
`technical subject matter relevant to the petitions for Inter Partes Review of U.S.
`
`Patent Nos. 10,325,122 (“the ’122 patent”), 10,789,393 (“the ’393 patent”), and
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`9,892,287 (“the ’287 patent”) (collectively, “the Challenged Patents”) in view of the
`
`arguments presented by Patent Owner in her Preliminary Responses and by Dr.
`
`Schaefer in his declarations.
`
`2.
`
`I am over 18 years of age. I have personal knowledge of the facts stated
`
`in this Declaration and could testify competently to them if asked to do so.
`
`3.
`
`I have reviewed and am familiar with the specification and the claims
`
`of the Challenged Patents. In general, I will cite to the specification of a United
`
`States patent using the following formats: (Patent No., Col:Line Number(s)) or
`
`(Patent No., Paragraph Number(s)). For example, the citation (’122 patent, 1:1-10)
`
`points to the ’122 patent specification at column 1, lines 1-10. Also, for
`
`convenience, I use italics to denote limitations from the Challenged Claims.
`
`4.
`
`All of the opinions contained in this Declaration are based on the
`
`documents I reviewed, my knowledge, experience, and professional judgment. In
`
`forming the opinions expressed in this Declaration, I reviewed the documents listed
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`
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`- 2 -
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`
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`in my initial declarations in support of the petitions (EX-1003 in each proceeding),
`
`Rebuttal Declaration of Dr. Erez Zadok
`
`as well as:
`
`• Patent Owner’s Preliminary Response (“POR”; Paper 20 in each
`proceeding);
`• Declaration of Dr. Scott Schaefer (EX-2040 in each proceeding);
`• Excerpts from Rebuttal Report of Dr. Scott Shaefer Regarding Validity,
`Hafeman v. LG Electronics Inc., No. 6:21-cv-696-ADA-DTG (W.D.
`Tex.) (EX-1045 in each proceeding);
`• Dictionary.com, Interactive,
`https://www.dictionary.com/browse/interactive (EX-1046 in each
`proceeding); and
`• Trial Transcript Excerpts, Hafeman v. LG Electronics Inc., No. 6:21-cv-
`696-ADA-DTG (W.D. Tex.) (EX-1047 in each proceeding).
`I have also reviewed and am familiar with the other materials referred to in this
`
`Declaration.
`
`5.
`
`I have been asked to provide my further technical opinions regarding
`
`how a person of ordinary skill in the art would have understood the claims of the
`
`Challenged Patents at the time of the alleged invention as well as my further
`
`technical opinions on how concepts in the Challenged Patents’ specification relate
`
`to the claim limitations of the Challenged Patents in light of Patent Owner’s
`
`arguments in her Preliminary Responses and Dr. Schaefer’s arguments in his
`
`declarations. In reaching the opinions provided herein, I have considered the
`
`Challenged Patents, their prosecution history, and the references cited above and
`
`
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`Rebuttal Declaration of Dr. Erez Zadok
`
`have drawn as appropriate on my own education, training, research, knowledge, and
`
`personal and professional experience.
`
`
`I. QUALIFICATIONS
`6.
`In formulating my opinions, I have relied on my knowledge, training,
`
`and experience in the relevant field, which I will summarize briefly. A more detailed
`
`summary of my background, education, experience, and publications is set forth in
`
`my curriculum vitae (CV), which is submitted as EX-1004.
`
`7.
`
`I have personal knowledge of the facts and opinions set forth in this
`
`declaration and believe them to be true. If called upon to do so, I would testify
`
`competently thereto. I have been warned that willful false statements and the like
`
`are punishable by fine or imprisonment, or both.
`
`8.
`
`My consulting company, Zadoks Consulting, LLC,
`
`is being
`
`compensated for my time at my current standard consulting rate. I am also being
`
`reimbursed for expenses that I may incur during the course of this work. My
`
`compensation is not contingent upon the results of my study and analysis, 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
`
`any litigation involving Challenged Patents.
`
`9.
`
`I am a Professor in the Computer Science Department at Stony Brook
`
`University (part of the State University of New York (“SUNY”) system). I direct
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`the File-systems and Storage Lab (FSL) at Stony Brook’s Computer Science
`
`Department. My research interests include file systems and storage systems,
`
`operating systems, information technology and system administration, security and
`
`information assurance, networking, energy efficiency, performance and
`
`benchmarking, virtualization, cloud systems, compilers, applied machine learning,
`
`and software engineering.
`
`10.
`
`I studied at a professional high school in Israel, focusing on electrical
`
`engineering (“EE”), and graduated in 1982. I spent one more year at the high
`
`school’s college division, receiving a special Certified Technician’s degree in EE. I
`
`then went on to serve in the Israeli Defense Forces for three years (1983-1986). I
`
`received my Bachelor of Science degree in computer science (“CS”) in 1991, my
`
`Master’s degree in CS in 1994, and my PhD in CS in 2001—all from Columbia
`
`University in New York.
`
`11. When I began my undergraduate studies at Columbia University, I also
`
`started working as a student assistant in the various campus-wide computer labs,
`
`eventually becoming an assistant to the head labs manager, who was managing all
`
`public computer labs on campus. During that time, I also became more involved
`
`with research within the CS Department at Columbia University, conducting
`
`research on operating systems, file and storage systems, distributed and networked
`
`systems, security, and other topics. I also assisted the CS department’s computer
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`Rebuttal Declaration of Dr. Erez Zadok
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`administrators in managing the department’s computers, which included storage, IT,
`
`networking, and cyber-security related duties.
`
`12.
`
`In 1991, I joined Columbia University’s CS department as a full-time
`
`systems administrator, studying towards my MS degree part-time. My MS thesis
`
`topic is related to file system reliability, fault tolerance, replication, and failover in
`
`mobile networked storage systems using file virtualization. My main duties as a
`
`systems administrator involved installing, configuring, and managing many
`
`networked servers, proxies, and desktops running several operating systems, as well
`
`as network devices setup; this included many hardware upgrades, device upgrades,
`
`and BIOS firmware/chipset updates/upgrades. My duties also included ensuring
`
`reliable, secure, authenticated access to networked systems/storage and licensed
`
`software, as well as software updates, security and bug fixes. Examples of servers
`
`and their protocols included email (SMTP), file transfer (FTP), domain names
`
`(DNS), network file systems (NFS), network news systems (NNTP), and Web
`
`(HTTP).
`
`13.
`
`In 1994, I left my systems administrator position to pursue my doctoral
`
`studies at Columbia University. My PhD thesis topic was on versatile file system
`
`development using stackable (virtualized) file systems, with examples in the fields
`
`of security and encryption, efficiency, reliability, and failover. I continued to work
`
`part-time as a systems administrator at the CS department, and eventually I was
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`Rebuttal Declaration of Dr. Erez Zadok
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`asked to serve as manager to the entire information technology (“IT”) staff. From
`
`1991 to 2001, I was also a member of the faculty-level Facilities Committee that
`
`oversaw all IT operations at the CS department.
`
`14.
`
`As part of my PhD studies at Columbia, I collaborated on projects to
`
`develop advanced AI-like techniques to detect previously unknown viruses (a.k.a.
`
`“zero-day malware”), using data mining and rule-based detection. This work led to
`
`several highly cited papers (over 1,500 citations for one of the papers alone), and
`
`two patents. I also became a Teaching Assistant (TA) for a first-ever Computer
`
`Security course given at Columbia University’s CS department with Dr. Matt Blaze
`
`as instructor.
`
`15.
`
`From 1990 to 1998, I consulted for SOS Corporation and HydraWEB
`
`Technologies, as a systems administrator and programmer, managing data storage
`
`use and backup/restore duties, as well as information assurance and cyber-security
`
`(e.g., malware protection, software licensing). From 1994 to 2000, I led projects at
`
`HydraWEB Technologies, and then became the Director of Software Development-
`
`overseeing the development of several products and appliances such as stateful
`
`firewalls and HTTP load-balancers, utilizing network-virtualization and high-
`
`availability techniques. From 2009 to 2019, I have consulted for Packet General
`
`Networks, a startup specializing in secure, virtualized, network storage and
`
`applications’ data security in the cloud.
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`16.
`
`In 2001, I joined the faculty of Stony Brook University, a position I
`
`have held since that time. In 2002, I joined the Operations Committee, which
`
`oversees the IT operations of the CS department at Stony Brook University. From
`
`2006 to 2010, I was the Director of IT Operations of the CS department; my day-to-
`
`day duties included setting policies regarding computing, hiring and training new
`
`staff, assisting any staff with topics of my specialty, defining requirements for new
`
`software/hardware, and purchasing. From 2010 to 2015, I had served as the Co-
`
`Chair to the Operations Committee. From 2016 to 2019, I oversaw the IT Operations
`
`as the Chair of the Operations Committee. A significant component of these duties
`
`included defining and helping implement policies for data management, so as to
`
`ensure the security of users and their data, and data reliability and availability, while
`
`minimizing the inconvenience and performance impact to users. I personally helped
`
`setup and maintain an initial virtual-host infrastructure in the department. Since late
`
`2019, I’ve been a member of the department’s Executive Committee that also
`
`oversees all IT operations.
`
`17.
`
`In 2017, I became the department’s Graduate Academic Adviser,
`
`advising all Master students (over 400 annually on average) and many other graduate
`
`students on an assortment of academic matters.
`
`18.
`
`Since 2001, I personally configured and managed my own research
`
`lab’s network. This includes setting up and configuring multiple storage systems
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`Rebuttal Declaration of Dr. Erez Zadok
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`(e.g., NFS, CIFS/SMB, NAS), virtual and physical environments, applications such
`
`as database and mail servers, user access control (e.g., NIS, LDAP), backups and
`
`restores, snapshot policies, and more. I’ve personally installed, configured, changed,
`
`replaced parts, and upgraded components in numerous devices including mobile
`
`devices, laptops, desktops, and servers, both physical and virtual.
`
`19.
`
`Since 1995, I have taught courses on operating systems, storage and file
`
`systems, advanced systems programming in Unix/C, systems administration, data
`
`structures, data/software security, and more. My courses often use storage, file
`
`systems, distributed systems, and system/network security as key teaching principles
`
`and practical examples for assignments and projects. I have taught these concepts
`
`and techniques to my students, both to my direct advisees as well as in my courses.
`
`For example, in my graduate Operating Systems course, I often cover Linux’s kernel
`
`mechanisms to protect users, applications, and data files, virtual file systems, as well
`
`as distributed storage systems (e.g., NFS). And in the System Administration
`
`undergraduate course, I covered many topics such as networking, storage, backups,
`
`and configuring complex applications such as mail, web, and database servers.
`
`20. My research often investigates computer systems from many angles:
`
`security, efficiency, energy use, scalability, reliability, portability, survivability,
`
`usability, ease-of-use, versatility, flexibility, and more. My research gives special
`
`attention to balancing five often-conflicting aspects of computer systems:
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`performance, reliability, energy use, security, and ease-of-use.
`
`21.
`
`Since joining Stony Brook University in 2001, my group in the File-
`
`systems and Storage Lab (FSL) has developed many file systems and operating
`
`system extensions; examples include a highly-secure cryptographic file system, a
`
`portable copy-on-write (COW) versioning file system, a tracing file system useful
`
`to detect intrusions, a replaying file system useful for forensics, a snapshotting and
`
`sandboxing file system, a namespace unification file system (that uses stackable,
`
`virtualized, file-based COW), an anti-virus file system, an integrity-checking file
`
`system, a load balancing and replication/mirroring file system, network file system
`
`extensions for security and performance, distributed secure cloud-based storage
`
`systems, transactional key-value stores and file systems, OS-level embedded
`
`databases, a compiler to convert user-level C code to in-kernel efficient yet safe
`
`code, GCC plugins, stackable file system templates, and a Web-based backup
`
`system. Many of these projects used one form of virtualization or another (storage,
`
`network, host, etc.). I continue to maintain and release newer versions of some of
`
`these file systems and software.
`
`22.
`
`I have published over 120 refereed publications (in ACM, IEEE,
`
`USENIX, and more). To date, my publications have been cited more than 9,800
`
`times (as per Google Scholar as of September 23, 2023). My papers cover a wide
`
`range of related technologies such as file systems, storage systems, transactional
`
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`systems, security, clouds and virtualization, performance benchmarking and
`
`optimization, energy efficiency, system administration, and more. I also published
`
`a book titled “Linux NFS and Automounter Administration” (Sybex, 2001),
`
`covering systems administration topics related to network storage and data security.
`
`23.
`
`Some of my research has led to public software releases that have been
`
`used worldwide. I have publicly maintained the Amd Berkeley Automounter in a
`
`package called “am-utils” since 1992; this software helps administrators manage the
`
`multitude of file system mounts on dozens of different Unix systems, especially
`
`helping to automate access to multiple NFS/NAS storage volumes. Since 1997, I
`
`have maintained and released several stackable (virtualized) file system software
`
`projects for Linux, FreeBSD, and/or Solaris, in a package called FiST. One of my
`
`stackable file system encryption projects, called Cryptfs, became the basis for IBM’s
`
`public release of eCryptfs, now part of Linux. Packet General Networks, for whom
`
`I have provided consulting services between 2009 and 2019, licensed another
`
`encryption file system called Ncryptfs. Another popular file system released in
`
`2003, called Unionfs, offers virtual namespace unification, transparent shadow
`
`copying (a.k.a. copy-on-write or COW), file system snapshotting (e.g., useful for
`
`forensics and disaster recovery), and the ability to save disk space by sharing a read-
`
`only copy of data among several computers, among other features.
`
`24. My research and teaching make extensive use of data security features.
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`For example, each time I taught the graduate operating system course, the first
`
`homework assignment includes the creation of a new system call that performs new
`
`or added functionality, often for encrypting a file or verifying its integrity; many of
`
`my other assignments cover topics of user/process access control, anti-virus filtering,
`
`and more. Since 2001, over 1,000 graduate students were exposed to these principles
`
`directly through my teaching and research at Stony Brook University.
`
`25. Moreover, in an undergraduate course titled “Advanced Systems
`
`Programming in Unix/C,” I cover many topics of system security and vulnerabilities,
`
`such as the structure of UNIX processes, and memory segments such as the heap and
`
`stack. This course covers details of several hundred Linux system calls. Often, the
`
`first assignment for this course is to develop a tool to encrypt/decrypt files using
`
`advanced ciphers, use digital signatures to certify the cipher keys used, and reliably
`
`recover files in case of failures. Since 2001, several hundred undergraduate students
`
`were exposed to these principles directly through my teaching and research at Stony
`
`Brook University.
`
`26.
`
`In another undergraduate course, System Administration, I taught
`
`network configuration, security, and storage configuration and reliability. In a
`
`special topics course on Storage Systems, I covered many topics such as data
`
`deduplication, RAID, transactional storage, storage hardware including modern
`
`Flash based ones, virtual storage, backup/restore, snapshots and continuous data
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`Rebuttal Declaration of Dr. Erez Zadok
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`protection (CDP), NAS and SAN, and NFS.
`
`27.
`
`Overall, in addition to the aforementioned experience, my technical
`
`experience relevant to the challenged patent(s) at the time of the alleged invention(s)
`
`included the following: set up remote access to an assortment of computer hosts;
`
`accessed such hosts remotely and/or interactively, both as a user as well as an
`
`administrator; administered remote hosts (e.g., updates and upgrades) by remote
`
`login using various techniques (e.g., telnet, rlogin, rsh, ssh, rdist, rsync); set up
`
`computers for users to use while administered said computers remotely, including
`
`changing users’ passwords, locking out computers suspected of having been
`
`breached, shutting down computers, and remotely upgrading and rebooting them;
`
`set up user login and console messages to be displayed before and during system
`
`boot-up, using both interactive and non-interactive tools. During my studies at
`
`Columbia University, I was also part of a team that investigated some of the earliest
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`generations of mobile computing using Wi-Fi and other wireless technologies. My
`
`1997 Master’s Thesis, for example, developed early techniques for mobile
`
`computers to discover available replicated file servers and automatically switch to
`
`the nearest “geo-located” network file server. In another project in 1994, I co-
`
`created a software system called “PGmake” to remotely execute and distribute parts
`
`of large software builds, with the help of a remote-execution package called Parallel
`
`Virtual Machine (PVM).
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`Rebuttal Declaration of Dr. Erez Zadok
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`28. My research has been supported by many federal and state grants as
`
`well as industry awards, including an NSF CAREER award, two IBM Faculty
`
`awards, two NetApp Faculty awards, a Western Digital award, a Facebook award,
`
`several Dell-EMC awards, and several equipment gifts. I received the 2008 SUNY
`
`Chancellor’s Excellence in Teaching award, and the 2022 SUNY Chancellor’s
`
`Award for Excellence in Scholarship and Creative Activities (both awards can be
`
`given only once in a lifetime). In 2021 I was named an ACM Distinguished Member
`
`for “Outstanding Scientific Contributions to Computing.”
`
`29. My service record to the community includes serving as the co-chair
`
`for the USENIX Annual Technical Conference in 2020 (ATC’20); serving as the co-
`
`chair for USENIX File and Storage Technologies (FAST’15) in 2015 and on the
`
`FAST Conference Steering Committee from 2015 to 2023; serving on the ACM
`
`HotStorage Steering Committee in 2021; and serving as the co-chair in 2012 and on
`
`the Steering Committee of the ACM SYSTOR conference. I have served as an
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`Associate Editor to the ACM Transactions on Storage (TOS) journal from 2009 to
`
`2022; in late 2022, I was named the Editor-in-Chief for ACM’s TOS journal.
`
`30.
`
`I am a named inventor on four patents, two titled “Systems and Methods
`
`for Detection of New Malicious Executables” (U.S. Patent No. 7,487,544, issued
`
`February 3, 2009; and U.S. Patent No. 7,979,907, issued July 12, 2011); and two
`
`more titled “Multi-Tier Caching,” (U.S. Patent No. 9,355,109, issued May 31, 2016;
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`and U.S. Patent 9,959,279, issued May 1, 2018).
`
`31.
`
`I have been disclosed as a testifying expert in 14 cases (including inter
`
`partes review (IPR) proceedings) in the past four years. I have been deposed 12
`
`times and testified in trial twice.
`
`II. UNDERSTANDING OF RELEVANT LEGAL PRINCIPLES
`32.
`I am not a lawyer, and I will not provide any legal opinions. Although
`
`I am not a lawyer, I have been advised of certain legal standards that are to be applied
`
`by technical experts in forming opinions regarding the meaning and validity of
`
`patent claims.
`
`33.
`
`I understand that a patent claim is invalid if it is anticipated or obvious
`
`in view of the prior art, and that a claim can be unpatentable even if all of the
`
`requirements of the claim cannot be found in a single prior-art reference. I further
`
`understand that invalidity of a claim requires that the claim be anticipated or obvious
`
`from the perspective of a person of ordinary skill in the art at the time the invention
`
`was made.
`
`34.
`
`I have been informed that a patent claim is invalid if it would have been
`
`obvious to a person of ordinary skill in the art. In analyzing the obviousness of a
`
`claim, I understand the following factors may be taken into account: (1) the scope
`
`and content of the prior art; (2) the differences between the prior art and the claims;
`
`(3) the level of ordinary skill in the art; and (4) any so called “secondary
`
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`Rebuttal Declaration of Dr. Erez Zadok
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`considerations” of non-obviousness if they are present. I am not aware of any
`
`evidence of secondary considerations of non-obviousness relevant to the ’122 patent.
`
`I reserve the right to supplement this Declaration if Patent Owner introduces
`
`evidence of secondary considerations of non-obviousness.
`
`35.
`
`I understand that to prove that prior art or a combination of prior art
`
`renders a patent obvious, it is necessary to:
`
`(1)
`
`(2)
`
`•
`
`•
`
`•
`
`identify the particular references that, singly or in combination, make
`the patent obvious;
`specifically identify which elements of the patent claim appear in each
`of the asserted references; and
`(3) explain why a person of ordinary skill in the art would have combined
`the references, and how they would have done so, to create the
`inventions claimed in the patent. I further understand that exemplary
`rationales that may support a conclusion of obviousness include:
`•
`combining prior art elements according to known methods to yield
`predictable results;
`simple substitution of one known element for another to obtain
`predictable results;
`use of known technique(s) to improve similar devices (methods or
`products) in the same way;
`applying a known technique to a known device (method or product)
`ready for improvement to yield predictable results;
`“obvious to try” – choosing from a finite number of identified,
`predictable solutions with a reasonable expectation of success;
`
`•
`
`
`
`- 16 -
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`
`
`Rebuttal Declaration of Dr. Erez Zadok
`
`•
`
`•
`
`known work in one field of endeavor may prompt variations of the
`work for use in either the same field or a different field based on
`design incentives or other market forces if the variations are
`predictable to a person of ordinary skill in the art; and
`some teaching, suggestion, or motivation in the prior art that would
`have led a person of ordinary skill in the art to modify the prior art
`reference or to combine prior art reference teachings to arrive at the
`claimed invention.
`
`36.
`
`I have been informed that, in considering obviousness, hindsight
`
`reasoning derived from the patent-at-issue may not be used.
`
`III. GROUNDS BASED ON NOVEMBER 22, 2013 PRIORITY DATE
`(IPR2022-01189, IPR2022-01191, IPR2022-01193)
`A. OPINIONS SUPPORTING THE REPLY FOR GROUND 1:
`Claims 1-7 are obvious over Hafeman 298 and Chiu
`37. As discussed in my original declaration, the Challenged Claims recite
`
`“initiating or changing return information which appears on the display through
`
`remote communication without assistance by a user with the computer.” I
`
`understand that both the Petitioners and the Patent Owner agree that—because of the
`
`use of the disjunctive “or”—only one of these alternatives need be satisfied by the
`
`prior art. That is, the Hafeman 298 and Chiu combination need to show only one of:
`
`(1) “initiating [return/recovery] information which appears on the display through
`
`remote communication without assistance by a user with the computer,” which I will
`
`refer to as the “remotely initiating limitation”; or (2) “changing [return/recovery]
`
`
`
`- 17 -
`
`
`
`Rebuttal Declaration of Dr. Erez Zadok
`
`information which appears on the display through remote communication without
`
`assistance by a user with the computer,” which I will refer to as the “remotely
`
`changing limitation.”
`
`38.
`
`In my original declaration, I provided support for my opinion that the
`
`combination of Hafeman 298 and Chiu disclose the remotely initiating limitation.
`
`IPR2022-01189, EX-1003, ¶¶157-166; IPR2022-01191, EX-1003, ¶¶147-156; and
`
`IPR2022-01193, EX-1003, ¶¶150-159. I understand that Patent Owner did not
`
`address or attempt to rebut this opinion.
`
`39.
`
`I have been informed that Patent Owner attempts to rebut my opinions
`
`that the combination of Hafeman 298 and Chiu render obvious the Challenged
`
`Claims by arguing that Chiu does not disclose the remotely changing limitation. As
`
`an initial matter, I have been told that Patent Owner does not appear to contest that
`
`the combination teaches the remotely initiating limitation and also does not dispute
`
`that only one of remotely initiating or changing is necessary. Nevertheless, I
`
`disagree with Patent Owner’s characterization that Chiu does not allow for changing
`
`“predetermined information,” which is one type of return/recovery information
`
`taught by Chiu that includes owner information. EX-1010, Chiu, ¶[0082].
`
`40. Chiu teaches that several types of administrative action that may be sent
`
`to, and implemented on, the mobile device through an administrative command. See,
`
`e.g., EX-1010, Chiu, ¶¶[101]-[108]. I am told that Patent Owner bases her argument
`
`
`
`- 18 -
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`Rebuttal Declaration of Dr. Erez Zadok
`
`that the remotely changing limitation is missing on the fact that one of Chiu’s
`
`disclosed embodiments that includes causing the mobile device to destroy data or
`
`disable the device. But not all of the various types of administrative actions taught
`
`by Chiu include or require data destruction. Some of these non-destructive control
`
`commands include, for example, commands to: “completely disable the device”
`
`(EX-1010, Chiu, ¶[101]), “remotely disable particular device features without
`
`entirely disabling the device” (EX-1010, Chiu, ¶[103]), “remotely lock” the device
`
`(EX-1010, Chiu, ¶[108]), “cause a predetermined message, including owner
`
`information for example, to be displayed on a device” (EX-1010, Chiu, ¶[101]), and
`
`“cause … information included in the control message to be displayed on a device
`
`display screen” (EX-1010, Chiu, ¶[109]).
`
`41. Even when the device disable remote command is used in Chiu, it
`
`teaches that ownership information may still be displayed on the disabled device.
`
`Chiu clearly states this: “Such a control message may also cause a predetermined
`
`message, including owner information for example, to be displayed on a device. It
`
`is also contemplated that an enterprise server administrator may compose a text
`
`message to be included in a remote disable command message for display on the
`
`screen of a disabled device to indicate that the device was disabled, why the device
`
`was disabled, that the device should be returned to the owner, or possibly other
`
`information.” EX-1010, Chiu, ¶[101].
`
`
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`- 19 -
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`
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`Rebuttal Declaration of Dr. Erez Zadok
`
`42. The Challenged Claims are silent, and therefore do not require, that the
`
`computer be able to function after the return/recovery information is remotely
`
`initiated or changed and displayed on the device. Therefore, the optional disable
`
`device command of Chiu does not impact my opinions that the combination of
`
`Hafeman 298 and Chiu renders the Challenged Claims obvious.
`
`B. OPINIONS SUPPORTING THE REPLY FOR GROUND 2:
`The ’332 Application as originally filed does not provide adequate
`written description
`support
`for
`the “remotely
`initiating
`return/recovery information” limitations, thus, claims 1-7 are
`anticipated by Hafeman 670
`43. As discussed above, all of the Challenged Claims require “initiating or
`
`changing [return/recovery] information through remote communication without
`
`assistance by a user with the computer.” I understand that for the Challenged Claims
`
`to be entitled to priority to the filing date of the ’606 patent, there must have been
`
`adequate written description support in the ‘332 Application as filed for this claim
`
`limitation. I further understand that, while both the Petitioners and the Patent Owner
`
`agree that the ‘332 Application as filed must have provided adequate written
`
`description for both “initiating … [return/recovery] information through remote
`
`communication” and “changing [return/recovery] information through remote
`
`communication,” there is a dispute as to whether the ‘332 Application as filed
`
`contained sufficient written description for the remotely initiating limitations.
`
`44. Dr. Schaefer essentially asserts that the plain and ordinary meaning is
`
`
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`- 20 -
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`Rebuttal Declaration of Dr. Erez Zadok
`
`the
`
`same
`
`for “initiating”
`
`return/recovery
`
`information and “changing”
`
`return/recovery information. EX-2040, Schaefer Declaration, ¶¶60-61. Thus, Dr.
`
`Schaefer concludes that the references to remotely changing return/recovery
`
`information in the ‘332 Application as filed also support the remotely initiating
`
`limitation. In effect, Dr. Schafer equates “initiating” a
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