Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BOX, INC., and DROPBOX, INC.,
`Petitioners
`
`v.
`
`TOPIA TECHNOLOGY, INC.,
`Patent Owner
`
`U.S. Patent No. 9,143,561
`Filing Date: November 10, 2008
`Issue Date: September 22, 2015
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`U.S. Patent No. 10,067,942
`Filing Date: September 21, 2015
`Issue Date: September 4, 2018
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`U.S. Patent No. 10,289,607
`
`1
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`Filing Date: June 25, 2018
`Issue Date: May 14, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`U.S. Patent No. 10,642,787
`Filing Date: January 23, 2020
`Issue Date: May 5, 2020
`
`Title: Pre-File-Transfer Update Based on Prioritized Metadata
`
`U.S. Patent No. 10,754,823
`Filing Date: January 23, 2020
`Issue Date: August 25, 2020
`
`Title: Pre-File-Transfer Availability Indication Based on Prioritized Metadata
`
`U.S. Patent No. 11,003,622
`Filing Date: March 22, 2019
`Issue Date: May 11, 2021
`
`Title: Architecture for Management of Digital Files Across Distributed Network
`
`DECLARATION OF RAVIN BALAKRISHNAN, PH.D.
`
`
`
`2
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`Table of Contents
`
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS .................................... 7
`
`A. Qualifications and Experience ................................................... 7
`
`B. Materials Considered ................................................................ 13
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART (“POSA”) ............ 15
`
`III.
`
`STATEMENT OF LEGAL PRINCIPLES ......................................... 18
`
`A.
`
`B.
`
`Claim Construction................................................................... 18
`
`Obviousness .............................................................................. 20
`
`IV. OVERVIEW OF THE CHALLENGED PATENTS ......................... 25
`
`A.
`
`B.
`
`C.
`
`The Specifications of the Challenged Patents .......................... 26
`
`File Histories of the Challenged Patents .................................. 33
`
`The Challenged Claims of the Challenged Patents .................. 38
`
`V.
`
`THE CHALLENGED CLAIMS OF THE ’823, ’787, ’607, ’622,
`’942, AND ’561 PATENTS ALL RECITE SUBJECT MATTER
`THAT IS NOT DISCLOSED IN U.S. PROVISIONAL
`APPLICATION NO. 60/986,896 ....................................................... 67
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`The Challenged Claims of the ’823 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 68
`
`The Challenged Claims of the ’787 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 74
`
`The Challenged Claims of the ’607 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 77
`
`The Challenged Claims of the ’622 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 84
`
`The Challenged Claims of the ’942 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 92
`
`3
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`F.
`
`The Challenged Claims of the ’561 Patent Each Recite One or
`More Limitations that are Not Disclosed in the ’896 Provisional
` .................................................................................................. 98
`
`VI. THE CHALLENGED CLAIMS OF THE ’823, ’787, ’607, ’622,
`’942, AND ’561 PATENTS WOULD HAVE BEEN OBVIOUS IN
`VIEW OF SIGURDSSON IN COMBINATION WITH ONE OR
`MORE OF MOROMISATO, RAO AND/OR SHAPPELL ............ 104
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`H.
`
`I.
`
`Summary of the Prior Art ....................................................... 104
`
`’823 Ground 1: Claims 1-4, 8-11, and 13-16 of the ’823 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell and Rao. ..................................... 123
`
`’823 Ground 2: Claims 1-4, 8-11, and 13-16 of the ’823 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell, Rao, and Moromisato. .............. 198
`
`’787 Ground 1: Claims 1-4, 8-11, and 13-16 of the ’787 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell and Rao. ..................................... 222
`
`’787 Ground 2: Claims 1-4, 8-11, and 13-16 of the ’787 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell, Rao, and Moromisato. .............. 244
`
`’607 Ground 1: Claims 1, 3-5, 7, 12, 14, 17, 19, and 20 of the
`’607 Patent Would Have Been Obvious in View of Sigurdsson
`in Combination with Shappell and Rao. ................................ 250
`
`’607 Ground 2: Claims 1, 3-5, 7, 12, 14, 17, 19, and 20 of the
`’607 Patent Would Have Been Obvious in View of Sigurdsson
`in Combination with Shappell, Rao, and Moromisato. .......... 280
`
`’622 Sigurdsson Grounds: Claims 1, 3-5, 7, 11, 12, 14, 16, and
`17 of the ’622 Patent Would Have Been Obvious in View of
`Sigurdsson in Combination with One or More of Shappell, Rao,
`and Moromisato. ..................................................................... 292
`
`’942 Ground 1: Claims 1, 3, 4, 10, 12 and 13 of the ’942 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell. ................................................... 299
`
`4
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`J.
`
`K.
`
`L.
`
`’942 Ground 2: Claims 1, 3, 4, 10, 12 and 13 of the ’942 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell and Moromisato. ....................... 351
`
`’561 Ground 1: Claims 1, 3, 4, 8, 10 and 11 of the ’561 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell. ................................................... 361
`
`’561 Ground 2: Claims 1, 3, 4, 8, 10 and 11 of the ’561 Patent
`Would Have Been Obvious in View of Sigurdsson in
`Combination with Shappell and Moromisato. ....................... 399
`
`VII. THE CHALLENGED CLAIMS OF THE ’823, ’787, ’607, ’622,
`’942, AND ’561 PATENTS WOULD HAVE BEEN OBVIOUS IN
`VIEW OF BROWN IN COMBINATION WITH HESSELINK AND
`ONE OR MORE OF RAO AND/OR SHAPPELL .......................... 405
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`Summary of the Prior Art ....................................................... 405
`
`’823 Ground 3: Claims 1-4, 8-11, and 13-16 of the ’823 Patent
`Would Have Been Obvious in View of Brown in Combination
`with Hesselink, Shappell, and Rao. ........................................ 416
`
`’787 Ground 3: Claims 1-4, 8-11, and 13-16 of the ’787 Patent
`Would Have Been Obvious in View of Brown in Combination
`with Hesselink, Shappell, and Rao. ........................................ 497
`
`’607 Ground 3: Claims 1, 3-5, 7, 12, 14, 17, 19, and 20 of the
`’607 Patent Would Have Been Obvious in View of Brown in
`Combination with Hesselink, Shappell, and Rao. .................. 519
`
`’622 Brown Grounds: Claims 1, 3-5, 7, 11, 12, 14, 16, and 17
`of the ’622 Patent Would Have Been Obvious in View of
`Brown in Combination with Hesselink, Shappell, and Rao. .. 548
`
`’942 Ground 3: Claims 1, 3, 4, 10, 12 and 13 of the ’942 Patent
`Would Have Been Obvious in View of Brown in Combination
`with Hesselink Alone (Claims 1, 3, 4, 10, 12 and 13) and in
`Further Combination with Shappell (Claims 4 and 13). ........ 559
`
`’561 Ground 3: Claims 1, 3, 4, 8, 10 and 11 of the ’561 Patent
`Would Have Been Obvious in View of Brown in Combination
`with Hesselink. ....................................................................... 601
`
`5
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`VIII. NO SECONDARY CONSIDERATIONS OF NON-OBVIOUSNESS
` .......................................................................................................... 633
`
`IX. ENABLEMENT AND REASONABLE EXPECTATION OF
`SUCCESS ......................................................................................... 633
`
`X.
`
`CONCLUSION ................................................................................. 635
`
`
`
`
`
`
`
`6
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`I, Ravin Balakrishnan, Ph.D., declare as follows:
`
`I.
`
`INTRODUCTION AND QUALIFICATIONS
`
`A. Qualifications and Experience
`
`1.
`
`I am currently a tenured Full Professor of Computer Science in the
`
`Department of Computer Science at the University of Toronto. I joined the faculty
`
`at the University in 2001, was granted tenure in 2006, and served as Chair of my
`
`Department from 2015 to 2019. From 2006-2016, I held the Canada Research Chair
`
`in Human-Centered Interfaces in the Department of Computer Science.
`
`2.
`
`I earned a B.Sc. in Computer Science from the University of New
`
`Brunswick in 1993, and an M.Sc. in Computer Science in 1997, and a Ph.D. in
`
`Computer Science in 2001, both from the University of Toronto. Since receiving
`
`my Ph.D., I have been a member of the faculty of the Department of Computer
`
`Science at the University of Toronto where my research has focused on human
`
`computer interaction (“HCI”), including the development of user interface
`
`technologies to improve HCI on a variety of computational platforms and
`
`application areas including mobile devices, web based technologies, data
`
`visualization and data analytics including web based analytics, touch input devices,
`
`video games, large displays, televisions, 3D displays, virtual and augmented reality
`
`technologies.
`
`7
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`3.
`
`In conjunction with my professorship, I serve as Co-Director of the
`
`Dynamic Graphics Project Laboratory at the University of Toronto that has twelve
`
`faculty members and roughly 50 graduate students and postdoctoral researchers
`
`working on various aspects of user interface interaction technologies, computer
`
`graphics, and virtual environments. Tech transfer of research to industry from this
`
`lab in recent years has resulted in several spin-off companies, including ones focused
`
`on 3D user interfaces, medical data visualization, virtual reality, and 3D architectural
`
`visualization and interaction.
`
`4.
`
`As part of my professorial duties, I teach and supervise graduate
`
`students and postdoctoral fellows in their research work. To date, 27 research M.Sc.
`
`students, 15 Ph.D. students, and 9 postdoctoral fellows have completed their
`
`research training under my guidance. Their research has led to theses and peer
`
`reviewed publications over a broad range of topics covering interactive computing
`
`and user interfaces for multiple applications and technology platforms. I have taught
`
`courses covering computing topics including interactive computing, human-
`
`computer interaction, and information systems and design, as well as courses
`
`covering various user interface technologies for a variety of platforms including
`
`web-based systems.
`
`5.
`
`I have published over 140 refereed publications in peer-reviewed
`
`8
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`journals and conferences. I have further presented numerous conference abstracts,
`
`posters, talks, and demonstrations in my field. My work has been cited more than
`
`20,000 times across a spectrum of high-impact publications, and my current h-index
`
`score is 81, which is an indication of the significant impact of my research on
`
`scholarly literature in the field of Computer Science.
`
`6.
`
`I have received major awards and honors in my field. For example, in
`
`2007, I received an Alfred P. Sloan Research Fellowship. In 2011, I was elected to
`
`the Association for Computing Machinery’s Computer Human Interaction
`
`Academy, which is an honorary group consisting of researchers who have made
`
`extensive contributions to the study of HCI and who have led the shaping of the HCI
`
`field. The stated criteria for being elected to the Association for Computing
`
`Machinery’s Computer Human
`
`Interaction Academy are:
`
`(1) cumulative
`
`contributions in the field; (2) impact on the field through development of new
`
`research directions and/or innovations; and (3) influence on the work of others. In
`
`2020, I was presented with the Canadian Human Computer Communications
`
`Society’s Achievement Award, which recognizes researchers who have made a
`
`substantial contribution to the fields of computer graphics, visualization, or human-
`
`computer interaction.
`
`7.
`
`I have been a co-founder on a number of start-ups focusing on human-
`
`9
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`computer interfaces, including Bump Technologies (acquired by Google in 2010),
`
`which developed a physically realistic desktop user interface system, FindSpace
`
`(formerly Sketch2 Corp. and Arcestra), which developed software for designing 3D
`
`interior layouts (acquired by Cougar Group in 2021), and Conceptualiz, which
`
`develops surgical planning technology using primarily a touch interface.
`
`8. My research at the University of Toronto has involved nearly every
`
`broad aspect of human-computer interaction and data visualization. For instance, I
`
`have done significant work in the areas of input devices, displays, sensing
`
`technologies, interfaces to small and/or mobile computers, interfaces to displays of
`
`the future, data analytics including web analytics, and interaction techniques,
`
`including touch and multi-touch, gestural, sketching, and multi degree-of-freedom
`
`interactions. As another example, I have done work in the evaluation of user
`
`interfaces,
`
`including associated metrics and predictive models of human
`
`performance.
`
`9.
`
`In addition to my research at the University of Toronto, I have
`
`collaborated with researchers at leading institutions worldwide. For example, I have
`
`been a visiting professor at Laboratoire de Recherche en Informatique (LRI) at the
`
`Université Paris-Sud, France. Additionally, I have been a visiting researcher at
`
`several industrial laboratories, including: (1) HP Labs, (2) Mitsubishi Electric
`
`10
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`Research Laboratories (MERL), and (3) Microsoft Research Labs. At those
`
`companies, my work generally focused on developing new user interface techniques
`
`for a variety of technology platforms, including work on new data analytics and
`
`visualization systems. Prior to becoming a professor, during my MSc and PhD
`
`studies, I was also concurrently a part-time researcher at Alias | Wavefront (now part
`
`of Autodesk), that was a leading developer of 3D graphics software applications.
`
`Some of my work at these companies, and my startup companies, have resulted in
`
`software and hardware implementations that were shipped within consumer level
`
`products.
`
`10.
`
`I have also served on the organizing and paper reviewing committees
`
`of many leading conferences in my field and have taken on editorial roles for leading
`
`technical journals in fields pertinent to my research. For example, I have been an
`
`associate editor of the Association for Computing Machinery (“ACM”) Transactions
`
`on Computer-Human Interaction and an associate editor of the IEEE Transactions
`
`on Visualization and Computer Graphics, which are both peer-reviewed journals.
`
`Similarly, I have been the paper’s chair for the ACM UIST Symposium on User
`
`Interface Software and Technology and have served multiple times as an associate
`
`chair for the ACM CHI Conference on Human-Computer Interaction. Over my
`
`career, I have also reviewed hundreds of published and unpublished papers in my
`
`11
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`field.
`
`11.
`
`I am the co-inventor on 20 patents, and have several patent applications
`
`pending, all in the area of user interfaces, including new techniques and technologies
`
`for handling user input to computational platforms in novel and more facile ways.
`
`12. Additionally, I have served as an expert witness in numerous patent
`
`actions, including in multiple IPR proceedings and ITC and district court cases,
`
`including for Apple in several actions against Samsung, HTC and other entities
`
`involving multiple patents covering tablet and mobile phone interfaces, for Nintendo
`
`involving their Wii gaming technology, for Immersion involving their haptic
`
`feedback
`
`technology, for Facebook/Oculus
`
`involving
`
`their virtual reality
`
`technology, and for Rovi/Tivo involving their various TV guide, video on-demand,
`
`and set-top box technologies. A more detailed list of my qualifications and a listing
`
`of the cases in which I have served as an expert witness, including where I have
`
`testified at trial or by deposition, can be found in my Curriculum Vitae, which is
`
`attached as Ex. A.
`
`13.
`
`I am being compensated for my time working on this matter at my
`
`standard hourly rate plus expenses. I do not have any personal or financial stake or
`
`interest in the outcome of the present proceeding, and the compensation is not
`
`dependent on the outcome of this IPR and in no way affects the substance of my
`
`12
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`statements in this Declaration.
`
`B. Materials Considered
`
`14. The analysis that I provide in this Declaration is based on my education,
`
`research, and experience, as well as the documents I have considered. In forming
`
`my opinions, I have read and considered U.S. Patent Nos. 9,143,561 (“’561 patent”)
`
`[EX1001]; 10,067,942 (“’942 patent”) [EX1002]; 10,289,607 (“’607 patent”)
`
`[EX1003]; 10,642,787 (“’787 patent”) [EX1004]; 10,754,823 (“’823 patent”)
`
`[EX1005]; and 11,003,622 (“’622 patent”) [EX1006] (collectively, “Challenged
`
`Patents”) and the respective prosecution histories of the Challenged Patents. I have
`
`cited to the following documents in my analysis below:
`
`Ex. No.
`
`Description of Document
`
`1001 U.S. Patent No. 9,143,561 (“’561” or “’561 patent”)
`
`1002 U.S. Patent No. 10,067,942 (“’942” or “’942 patent”)
`
`1003 U.S. Patent No. 10,289,607 (“’607” or “’607 patent”)
`
`1004 U.S. Patent No. 10,642,787 (“’787” or “’787 patent”)
`
`1005 U.S. Patent No. 10,754,823 (“’823” or “’823 patent”)
`
`1006 U.S. Patent No. 11,003,622 (“’622” or “’622 patent”)
`
`1007
`
`Prosecution History of the ’561 Patent
`
`1008
`
`Prosecution History of the ’942 Patent
`
`1009
`
`Prosecution History of the ’607 Patent
`
`13
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`Ex. No.
`
`Description of Document
`
`1010
`
`Prosecution History of the ’787 Patent
`
`1011
`
`Prosecution History of the ’823 Patent
`
`1012
`
`Prosecution History of the ’622 Patent
`
`1013
`
`Case No. IPR2022-00782, Paper No. 1, Petition for IPR
`
`1014
`
`Case No. IPR2022-00782, Paper No. 17, Decision Granting
`Institution of IPR (Redacted – Public Version)
`
`1015 U.S. Provisional Patent Application No. 60/986,896 (“’896
`provisional”)
`
`1016 U.S. Patent Application Publication No. 2007/0174246 A1 to Johann
`Tomas Sigurdsson, et al. (“Sigurdsson”)
`
`1017
`
`File History of U.S. Patent Application Publication No.
`2007/0174246 A1 to Johann Tomas Sigurdsson, et al. (“Sigurdsson
`File History”)
`
`1018 U.S. Patent No. 7,734,690 B2 to George P. Moromisato, et al.
`(“Moromisato”)
`
`1019 U.S. Patent Application Publication No. 2006/0190506 A1 to Rajesh
`M. Rao, et al. (“Rao”)
`
`1020 U.S. Patent Application Publication No. 2005/0091289 A1 to Michael
`Shappell, et al. (“Shappell”)
`
`1021 Microsoft Computer Dictionary (5th ed. 2002) (excerpts)
`
`1022
`
`1023
`
`Jim Boyce, Microsoft Outlook Version 2002 Inside Out (2001)
`(“Boyce”) (excerpts)
`
`European Patent Application Publication No. EP 1,621,990 A2 to
`Kitamaru, et al. (“Kitamaru”)
`
`1024 U.S. Patent No. 5,923,325 to Ronald Jason Barber and Edwin Joseph
`
`14
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`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`
`Ex. No.
`
`Description of Document
`
`Selker (“Barber”)
`
`1025 U.S. Patent No. 7,035,847 B2 to David K. Brown, et al. (“Brown”)
`
`1026 U.S. Patent Application Publication No. 2005/0120082 A1 to
`Lambertus Hesselink, et al. (“Hesselink”)
`
`
`
`II.
`
`PERSON OF ORDINARY SKILL IN THE ART (“POSA”)
`
`15.
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`I understand that an assessment of claims of the Challenged Patents
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`should be undertaken from the perspective of a person of ordinary skill in the art as
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`of the earliest claimed priority date, which I understand is November 10, 2008 for
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`all of the Challenged Patents.1 If the priority date of the Challenged Patents were
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`determined to be earlier (for example, November 9, 2007—the filing date of U.S.
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`Provisional Patent Application No. 60/986,896—or May 18, 2004—the date that I
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`understand the Patent Owner to be asserting in district court), my opinions expressed
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`herein regarding the appropriate level of a person having ordinary skill in the art
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`(“POSA”) would not change.
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`16.
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`I have been advised that to determine the appropriate level of skill of a
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`POSA, the following factors may be considered: (1) the types of problems
`
`
`1 A more detailed discussion of the priority to which the Challenged Patents are
`entitled appears below in Section V.
`
`15
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`encountered by those working in the field and prior art solutions thereto; (2) the
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`sophistication of the technology in question, and the rapidity with which innovations
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`occur in the field; (3) the educational level of active workers in the field; and (4) the
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`educational level of the inventor(s).
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`17. The Challenged Patents generally relate to systems and methods for the
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`management of digital files across distributed networks (see, e.g., ’561 patent, (54),
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`Abstract); the prioritization of sending metadata of updated files before sending the
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`updated files themselves (see, e.g., ’787 patent, (54), Abstract); and the display of
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`indicators based on prioritized metadata indicating availability to download updated
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`files (see, e.g., ’823 patent, (54), Abstract). In my opinion, a POSA as of November
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`2008 would have possessed a bachelor’s degree in computer science (or similar
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`degree), and two years of work experience developing software, including at least
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`some experience working with data storage, data synchronization, and human-
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`computer interaction technologies. A person could also have qualified as a POSA
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`with some combination of (1) more formal education (such as a master’s of science
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`degree) and less technical experience, or (2) less formal education and more
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`technical or professional experience in the fields listed above.
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`18. My opinions regarding the level of ordinary skill in the art are based
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`on, among other things, my more than 30 years of experience in computer science,
`
`16
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`my understanding of the basic qualifications that would be relevant to an engineer
`
`or scientist tasked with investigating methods and systems in the relevant technical
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`area, and my familiarity with the backgrounds of colleagues, co-workers, students,
`
`and employees, both past and present.
`
`19.
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`I have been informed that Unified Patents took the following position
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`regarding the level of skill of a POSA in an IPR challenging the ’942 patent: “A
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`person of ordinary skill in the art (‘POSA’) would have been one having, by
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`November 9, 2007: (1) an undergraduate degree in computer science, computer
`
`engineering, or closely-related field, or similar advanced post-graduate education;
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`and (2) two or more years of experience with file sharing systems, with more
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`experience substituting for less education and vice versa.” EX1013, Case No.
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`IPR2022-00782, Paper No. 1, Petition for IPR at 6. I view this articulation of the
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`level of skill of a POSA to be quite similar to the level of skill I articulated above.
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`My opinions in this declaration would not change based on the POSA being assumed
`
`to have the level of skill proposed by Unified Patents.
`
`20. As of May 18, 2004 and at all times thereafter, my qualifications and
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`experience have exceeded those of the hypothetical POSA I proposed above and the
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`hypothetical POSA proposed in the Unified Patents matter. Although my analysis
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`and opinions regarding the Challenged Patents have been based on the perspective
`
`17
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`of a POSA as of November 10, 2008, my analysis and opinions would not change
`
`based on the perspective of a POSA as of November 9, 2007 or May 18, 2004.
`
`21. My opinions herein regarding the understanding of a POSA and my
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`other opinions set forth herein would remain the same if the POSA were determined
`
`to have somewhat more or less education and/or experience than I have identified
`
`above.
`
`III. STATEMENT OF LEGAL PRINCIPLES
`
`A. Claim Construction
`
`22. The following sets forth my understanding of the legal principles of
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`claim construction from counsel. I understand that under the legal principles, claim
`
`terms are generally given their ordinary and customary meaning, which is the
`
`meaning that the term would have to a person of ordinary skill in the art in question
`
`at the time of the invention, i.e., as of the effective filing date of the patent
`
`application. I further understand that the person of ordinary skill in the art is deemed
`
`to read the claim term not only in the context of the particular claim in which a claim
`
`term appears, but in the context of the entire patent, including the specification.
`
`23.
`
`I understand by counsel that the patent specification, under the legal
`
`principles, has been described as the single best guide to the meaning of a claim
`
`term, and is thus highly relevant to the interpretation of claim terms. And I
`
`18
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`understand for terms that do not have a customary meaning within the art, the
`
`specification usually supplies the best context of understanding the meaning of those
`
`terms.
`
`24.
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`I am further informed by counsel that other claims of the patent in
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`question, both asserted and unasserted, can be valuable sources of information as to
`
`the meaning of a claim term. Because the claim terms are normally used consistently
`
`throughout the patent, the usage of a term in one claim can often illuminate the
`
`meaning of the same term in other claims. Differences among claims can also be a
`
`useful guide in understanding the meaning of particular claim terms.
`
`25.
`
`I understand that the prosecution history can further inform the meaning
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`of the claim language by demonstrating how the inventors understood the invention
`
`and whether the inventors limited the invention in the course of prosecution, making
`
`the claim scope narrower than it otherwise would be. Extrinsic evidence may also
`
`be consulted in construing the claim terms, such as my expert testimony.
`
`26.
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`I have been informed by counsel that, in Inter Partes Review (IPR)
`
`proceedings, a claim of a patent shall be construed using the same claim construction
`
`standard that would be used to construe the claim in a civil action filed in a U.S.
`
`district court (which I understand is called the “Phillips” claim construction
`
`standard), including construing the claim in accordance with the ordinary and
`
`19
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Support of
`Petitions for Inter Partes Review of U.S. Patent Nos. 9,143,561, 10,067,942,
`10,289,607, 10,642,787, 10,754,823, and 11,003,622
`
`customary meaning of such claim as understood by one of ordinary skill in the art
`
`and the prosecution history pertaining to the patent.
`
`27.
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`I have been instructed by counsel to apply the “Phillips” claim
`
`construction standard for purposes of interpreting the claims in this proceeding, to
`
`the extent they require an explicit construction. The description of the legal
`
`principles set forth above thus provides my understanding of the “Phillips” standard
`
`as provided to me by counsel.
`
`B. Obviousness
`
`28. The following sets forth my understanding of the legal principles of
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`obviousness from counsel. I understand that a patent claim is obvious if, as of the
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`critical date (i.e., either the earliest claimed priority date (pre-AIA) or the effective
`
`filing date (AIA)), it would have been obvious to a person having ordinary skill in
`
`the field of the technology (the “art”) to which the claimed subject matter belongs.
`
`29.
`
`I understand that the following factors should be considered in
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`analyzing obviousness: (1) the scope and content of the prior art; (2) the differences
`
`between the prior art and the claims; and (3) the level of ordinary skill in the pertinent
`
`art. I also understand that certain other facts known as “secondary considerations”
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`such as commercial success, unexplained results, long felt but unsolved need,
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`industry acclaim, simultaneous invention, copying by others, skepticism by experts
`
`20
`
`Box & Dropbox Exhibit 1028
`
`

`

`Declaration of Ravin Balakrishnan, Ph.D. in Sup