UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
` Petitioner
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
` Patent Owner
`
`Case IPR2023-00701
`U.S. Patent No. 8,510,407 B1
`
`_____________________________________________________________
`
`DECLARATION OF GEORGE KEMBEL
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`SAMSUNG ELECTRONICS CO., LTD.,
` Petitioner
`
`v.
`
`DODOTS LICENSING SOLUTIONS LLC,
` Patent Owner
`
`Case IPR2023-00701
`U.S. Patent No. 8,510,407 B1
`
`_____________________________________________________________
`
`DECLARATION OF GEORGE KEMBEL
`
`
`
`I, George Kembel, declare as follows.
`
`I.
`
`Introduction
`1.
`I am one of the named co-inventors for United States Patent No.
`
`8,510,407. At the time of the invention, I was the Chief Executive Officer and a co-
`
`founder of DoDots, Inc.
`
`2.
`
`Along with my twin brother, John Kembel, we founded DoDots, Inc.
`
`with a goal of disrupting and changing the paradigm of how internet content was
`
`created by companies and how it was delivered to users.
`
`3.
`
`As a threshold matter, given how pervasive and mainstream apps and
`
`the app ecosystems are now, it’s hard to remember what it was like in the late
`
`1990’s.
`
`4.
`
`At the time of our inventions, the technology industry was impacted
`
`by divided ecosystems struggling to adapt to the growth of the internet. One
`
`ecosystem contained rich client software capabilities and experiences on desktop
`
`computers that were slow to update to new versions due to large software sizes and
`
`stale content as it resided on client computers and devices.
`
`5.
`
`Another ecosystem allowed for accessing web content through the
`
`browser to obtain live-up-to-date content but was stuck in a cumbersome page by
`
`page document model that made searching for and viewing content
`
`counterintuitive and difficult.
`
`1
`
`
`
`6.
`
`And, a third ecosystem was an emerging mobile market that allowed
`
`customers to take computing capabilities with them connected to mobile networks
`
`but broke the large screen model of software interaction and forced limits on data
`
`and large file sizes.
`
`7.
`
`Against this backdrop, the ecosystem that we take for granted—
`
`blended application functionality with the flexibility and immediacy of internet
`
`data that allows one to move seamlessly across desktop and mobile platforms—
`
`was not obvious to most people then. Indeed, market players struggled to see the
`
`future because they saw the world from their own siloed points of view.
`
`8.
`
`Our unique design practice and interest in exploring emergent
`
`behavior in new technologies gave us a way to look at the emerging internet
`
`opportunity with an entirely new lens and birth a set of inventions that were
`
`category creating and not obvious at the time.
`
`9.
`
`In fact, we developed a collection of insights and a set of novel
`
`inventions that redistributed the technology stack (where content came from, how
`
`it was displayed, what data sat on which devices, what sat on servers and who
`
`decided what collection of capabilities were important) and also redistributed the
`
`stakeholder network (companies, developers and customers) providing more direct
`
`access between customers and providers that birthed the modern app and app
`
`ecosystem market.
`
`2
`
`
`
`10. Our novel solutions bridged the divided worlds, offering companies,
`
`customers and developers the benefits of direct customer access and advanced
`
`application like functionality of client software, the immediacy and real time
`
`nature of internet content and allowed for the seamless and personal experience
`
`across desktop and mobile platforms.
`
`11. We founded a venture-backed startup to pursue this vision and
`
`developed a truly unique set of technologies -- that received the backing of leading
`
`tech investors, the support of global brands and content developers, recognition
`
`from top-tier pundits, awards from leading tech conferences, and praise from both
`
`business and popular press.
`
`12.
`
`The company grew rapidly with widespread adoption, until the
`
`dotcom bubble burst and late-stage funding dried up. While the company
`
`ultimately didn't survive the bubble, the vision and the patents did. Looking back,
`
`it’s exciting to see how DoDots was the first to demonstrate key elements of what
`
`we now take for granted and refer to as the “app ecosystem”.
`
`II.
`
`Receiving Support and Praise for DoDots’s Innovative Solution
`13.
`I have been informed that Industry praise for an invention may
`
`provide evidence of nonobviousness where the industry praise is linked to the
`
`claimed invention. I have also been informed that this is relevant because
`
`“Appreciation by contemporaries skilled in the field of the invention is a useful
`
`3
`
`
`
`indicator of whether the invention would have been obvious to such persons at the
`
`time it was made.” In view of this, as we grew our company, it became readily
`
`apparent that people understood the significance of our technology as we received
`
`effuse praise from various media outlets.
`
`14. As DoDots introduced its new technology to the market, it was met
`
`with support from tech investors, interest and adoption from leading brands & web
`
`developers, awards from preeminent tech conferences, and praise from both the
`
`business and popular press.
`
`15. For example, as we sought investors, Tom Kosnik – a professor at
`
`Stanford University and Harvard Business School that taught global
`
`entrepreneurship, marketing and more—thought our technology was
`
`groundbreaking. In assisting with the launch of our company, he noted that he was
`
`“more excited about the [Dots] concept than any I have seen since Netscape
`
`browser first gave us graphical access to the World Wide Web. In fact, MORE
`
`excited. Their concept creates enormous leverage for anyone who multitasks on
`
`computer based tasks in a real-time business, as well as anyone who channel
`
`surfs!” See Ex. 2031 at DODOTS0026067.
`
`16.
`
`Indeed, the Dots technology was so groundbreaking that Softbank’s
`
`west coast venture firm invested in the company. They noted that “Unlike the full-
`
`screen document model of the Web which forces users to a single page at a time,
`
`4
`
`
`
`DoDots enables online companies to engage users with a simultaneous collection
`
`of content, services, and Web applications. Not only can online companies enable
`
`users to do more at once, they can also notify the user of certain content events,
`
`such as reaching a particular stock price, sale price, or auction bid.” See Ex. 2032.
`
`And Softbank further noted “DoDots has the potential to revolutionize the way
`
`people use the Internet. They have created a very powerful technology for both
`
`Internet content providers as well as Internet users . . .”. Id.
`
`17. Likewise, the press was replete with adulation as technology writers at
`
`the time of our invention praised the Dots technology. A February 21, 2000 Forbes
`
`Article noted that “the ideas of DoDots, a Palo Alto startup, [were] so interesting.
`
`The company unveiled the prototype of a platform that online companies can use to
`
`develop Internet applications that don’t feel like Web pages but like handy virtual
`
`appliances.” See Ex. 2022.
`
`18. Moreover, multiple content providers quickly adopted the product
`
`because of its potential. Indeed, a March 13, 2000 Business Wire article noted that
`
`“DoDots enables online companies to exploit the multibillion-dollar opportunity
`
`that exists ‘outside the browser’ with a whole new approach for Internet content.
`
`DoDots’ technology delivers the benefits of consumer packaging and distribution
`
`to the Internet, enabling online companies to fully brand and appropriately package
`
`5
`
`
`
`their content so it can be instantly distributed and shared between users.” See Ex.
`
`2035 at DODOTS0026259.
`
`19. And content providers using our product included several major
`
`companies like ABC, PC World, ZD Net, and Merriam Webster.
`
`20. ABC noted that “In our continuing effort to find new ways to connect
`
`with our audience, the ABC Dot truly stands out as a revolutionary new
`
`communication device,” said Alan Cohen, executive vice president, marketing,
`
`advertising & promotion, ABC Entertainment Television Group. “The ABC Dots
`
`will allow people to experience the stars, the shows, and everything ABC has to
`
`offer in a whole new way.” See Ex. 2034.
`
`21. Wide spread adulation was nearly unanimous, as seen below:
`
`●
`
`●
`
`●
`
`●
`
`“Dots are a cool new technology that give our customers a greater
`user experience. Partnering with DoDots was an obvious decision for
`AnyDay, given the value-add that Dots provide” said Dennis Kelly,
`AnyDay cofounder and chief operating officer.
`“Our brand is very strong, and we work hard to keep it that way,” said
`John Morse, Merriam-Webster president and publisher. “Being
`associated with DoDots ' exciting new technology definitely enhances
`our leadership position, both on the Web and in the conventional
`publishing world.”
`“We understand the fear associated with making the wrong
`purchasing decision,” said Mike Speiser. Cofounder of Epinions.com.
`“By leveraging DoDots ‘technology, consumers will be able to
`quickly access high quality, unbiased product reviews directly from
`their desktops.”
`“Our new mySimon Dot(TM) offers our shoppers instant and easy
`access to the online shopping features they care about most,” said
`
`6
`
`
`
`Adam Taggart, product marketing manager for mySimon. “ DoDots
`provides an attractive new means for mySimon to enhance our brand
`and increase distribution among online shoppers.”
`“We’re always looking for innovative ways to meet the informational
`needs of our management-level audience, and DoDots ‘technology
`offers swift access to PCWorld.com’s award-winning editorial,” said
`Bob Ostrow, publisher of PC World. “Since the business PC-buying
`process is a collaboration between several individuals, the ability to
`share Dots is a benefit to our readers - who turn to PC World to help
`them buy and use technology. And Dots’ continuous presence on the
`desktop is invaluable as PC World continues to strengthen its brand,
`both in print and online.”
`“Our customers are looking for ready access to the many resources
`and information available on Work.com,” said David Williams,
`Work.com general manager at Excite@Home. “DoDots ‘technology
`lets us put the right information at our customer’s fingertips.”
`“ZD Net’s innovative customer retention program has been expanded
`by DoDots ,” said Steve Giannini, director of strategic partners. “ As
`the Internet market-leader in keeping customers (according to media
`metrix), we are always looking for creative ways to enhance and
`lengthen our customer experience with ZDNet. Dots deliver for us.
`“We will be using Dots to package, brand and distribute our gaming
`content,” said Joe Perze, chief executive officer of Zupit.com. “we are
`excited to be the first gaming site to feature content in Dots.”
`
`●
`
`●
`
`●
`
`●
`
`Ex. 2035.
`
`22.
`
`Likewise, Excite@Home praised DoDots as it began to license the
`
`technology. See Ex. 2036. Notably, they noted “A comprehensive set of Work.com
`
`Dots(TM) will be available on the Work.com site (www.work.com). With a single
`
`click of the mouse, users can access Dots(TM) that will help search and navigate
`
`7
`
`
`
`the service. For example, users will be able to search for companies, news, and
`
`industries among other types of information from the Work.com dots.” Id.
`
`23.
`
`In doing so, they noted “This is a valuable addition to Work.com’s
`
`service, said David Williams, Work.com general manager, Excite@Home.
`
`DoDots’technology will make Work.com a more flexible tool in serving the needs
`
`of our business users.” Id.
`
`24. As the company continued to grow, additional content providers
`
`joined, and all of them praised the product. 2Roam joined and noted “DoDots
`
`technology is a killer application for wireless devices as it supports the information
`
`needs of the on-the-go mobile professional and, like 2Roam, enables users to
`
`maintain a constant state with their wireless content or application, insuring the
`
`optimal user experience. We look forward to working closely with DoDots to help
`
`reach millions of wireless users.” See Ex. 2037.
`
`25. Because of this revolutionary technology, multiple leading companies
`
`quickly adopted the technology to reach their consumers. Those companies
`
`included “AnyDay.com, Inc., Bluelight.com, Broad Daylight, Inc., drDrew.com,
`
`Epinions, Inc., eHow, Inc., GreatRestaurants.com, Jumbomall.com Corporation,
`
`Kibu, Merriam-Webster, Inc., mySimon, Inc., Noomedia Solutions, Ltd., PC
`
`World.com, PhotoPoint Corp., Snapfish, StartSampling, Inc., Work.com, ZDNet
`
`8
`
`
`
`and zupit.com (formerly i2e2).” See Ex. 2038, BusinessWire – April 3, 2000 –
`
`“DoDots Go Live” (DODOTS0026253).
`
`26. Aside from our growing client base, our product was praised at the
`
`DEMO conferences. DEMO Conferences were the preeminent conference for tech
`
`start-ups at the turn of the century. People attending the conference were at the
`
`pinnacle of the start-up industry.
`
`27. Not all companies were able to present at such conferences. The
`
`Demo conference was specifically curated by industry analyst Chris Shipley, who
`
`was on the cutting edge of all new technologies emerging in the global ecosystem
`
`and would hand select a small number of companies that were bringing
`
`groundbreaking new technologies to market that the market hadn't seen before.
`
`Java and other foundational technologies were launched at DEMO. DoDots was
`
`selected to present at both the DEMO and DEMO MOBILE conferences.
`
`28. Notably, the conference guide for one DEMO Conference noted that
`
`“[the] Internet is a vast source for information, yet most people connect only to one
`
`site at a time. DoDots is an innovative way to connect to multiple sites, allowing
`
`anyone to track fast changing information and other forms of internet content.” See
`
`Ex. 2039, Demo 2000 – Guide – List of Attendees – Conference Schedule.
`
`(DODOTS0025943).
`
` 9
`
`
`
`29. Materials from a second conference noted “DoDots extensible
`
`software architecture is a rare find in today’s world. It increases the power and
`
`capabilities of handheld computers and other small form factor internet devices.
`
`And what makes DoDots more remarkable is that it uses a tool to extend web
`
`presence to new emerging form factors.” See Ex. 2040, DemoMobile 2000 – Guide
`
`– List – Conference Schedule (DODOTS0025982).
`
`30. Amazingly, we also received a DemoGod award at both conferences.
`See Ex. 2041, Demo Letter – March 6, 2000 – “Demo God” Award to DoDots
`
`(DODOTS0026222). This award was a major deal because only a handful of
`
`companies won the award. In fact to be selected as a Demo God meant that a
`
`majority of start-up investors, experts in the fields, and competitors thought our
`
`product was among the best of the best. In short the awards represented widespread
`
`praise from the start-up industry.
`
`31.
`
`The Dots technology also received an award at the Investor’s Choice
`
`conference. It was named most likely to succeed based on votes from an audience
`
`that included leading ecommerce companies as well as a panel of distinguished
`
`investors, and observers. See Ex. 2042, Press Release - “Investor’s Choice” winner
`
`at Technologic Partners Internet Outlook Conf. 2000 - 9/20/2000 - EXH. 4 -
`
`COMPLAINT. Notably, Richard A. Shaffer, founder of Technologic Partners noted
`
`that “As a recipient of the Investors’ Choice award, DoDots was recognized
`
`10
`
`
`
`above and beyond other presenting companies to receive one of 10 Investors’
`
`Choice awards. We believe DoDots exemplifies the key characteristics needed to
`
`succeed in this competitive market environment and are looking forward to seeing
`
`its positive growth in the coming year.”
`
`III. The Success of the DoDots Startup
`32.
`The Dots Technology also proved to be a huge commercial success in
`
`the start-up realm.
`
`33. Upon launch in early 1999, two separate investors were willing to
`
`provide venture capital to get the business off the group. Softbank proposed a 4.5
`
`million dollars pre-money valuation, with an initial investment of 1.5 million
`
`dollars from Softbank and another 1.5 million dollars from another investor. See
`
`Ex. 2043 and Ex. 2044. With a competitive offer, on the other hand, Menlo
`
`Ventures proposed a 5 million dollar valuation.
`
`34. DoDots opted to proceed with Softbank because of less restrictive
`
`terms and the strength of the Softbank network and investor experience. Using this
`
`money as well as debt financing, DoDots was able to rapidly grow over the next
`
`several months. It soon formed partnerships with 15 other companies to use the
`
`DoDots technology.
`
`35. By the spring of 2000, DoDots needed additional capital to expand its
`
`business. The company eventually met with Chase H&Q in San Francisco. Id.
`
`11
`
`
`
`After the meeting, Chase indicated that they believed the company was worth a
`
`$275 million pre-money valuation. Based on this, the parties entered into a
`
`preliminary term sheet where Chase would invest $25 Million for the second round
`
`total of $60 Million dollars. Id.
`
`36.
`
`The declining tech market shifted the final terms of the deal, valuing
`
`DoDots closer to $175M pre-money and raising $17M. Despite this, the company
`
`was able to still close a financing round in a declining market when many other
`
`companies were unable to.
`
`37.
`
`Even with the downward market pressure, DoDots’ growth in value
`
`from its first and second round of financing represented the largest increase in
`
`venture value in the venture firm’s portfolio at the time.
`
`38.
`
`It was celebrated as an enormous success, further validating the
`
`foundational nature of the technology and the broad market need of the solution
`
`that was not available anywhere else.
`
`39.
`
`Through the rest of spring and summer of 2000, DoDots continued to
`
`grow its partner network of companies offering Dots to the market, it’s user base of
`
`customers using Dots in their daily lives and its independent developer network
`
`offering new to the world Dots.
`
`40. By fall of 2000, DoDots continued its financing efforts to prepare for
`
`expansion into the infrastructure and mobile markets and to prepare for a potential
`
`12
`
`
`
`IPO. The company received a term sheet for a Series C round from late stage
`
`investors in New York. This further validated that the foundational technology was
`
`becoming more mainstream (from silicon valley validation to New York, global
`
`financial epicenter validation).
`
`41. When the consumer internet tech market collapsed, the timing caught
`
`DoDots in an unfortunate cash flow timing gap with investors taking a pause
`
`before investing again. We acted quickly to reduce the size of the company,
`
`lowering the monthly expenses and started looking for strategic acquisition
`
`opportunities.
`
`42.
`
`In fact, a leading mobile network operator in Europe (Hutchinson
`
`Whampoa and Orange UK) quickly realized the value of the DoDots app
`
`functionality and app ecosystem value. They were building out their higher speed
`
`mobile networks and saw the emerging mobile application market. Instead of
`
`building a mobile app ecosystem from scratch, the CEO saw the acquisition of
`
`DoDots to be a fast track way to get to market ahead of competition. The higher
`
`speed networks were being rolled out earlier in Europe. This signaled a market
`
`validation of what we now know as the trillion dollar app ecosystem globally.
`
`43. Orange decided to acquire the foundational technology and core team
`
`of DoDots. But, 24 hours before closing of the acquisition, the CEO decided he
`
`couldn’t make it happen because his engineering team preferred to build their own
`
`13
`
`
`
`technology from scratch. While he protected his team’s engineering culture, he was
`
`disappointed as he knew he also lost the market lead and technology advantage
`
`DoDots represented.
`
`IV. Despite the collapse of the consumer tech market at the time, the
`company’s IP and vision lived on.
`44.
`In fact, over the next two decades, the paradigm that we developed
`
`has been adopted across all platforms, from desktop, laptop, tablets, mobiles
`
`devices and other smart devices, as apps and app stores. The modern app
`
`ecosystem operates and functions exactly how we envisioned our Dots would
`
`work. And many now take for granted the concept of internet-powered apps (vs.
`
`web pages or disconnected software) , and the existence of “app stores” and
`
`developer ecosystems.
`
`45. Our inventions were decades ahead of their time. It’s exciting to see
`
`something that has touched so many people (over 6B people now use internet
`
`powered apps on a range of smart devices) , established a primary conduit for direct
`
`internet powered services and experiences (over 88% of users time on smart
`
`devices are spent on apps) and created so much market value for companies,
`
`customers and developers alike (trillions of dollars a year growing 29% year over
`
`year) .
`
`14
`
`
`
`V.
`
`Closing
`46.
`I hereby declare that all statements made herein of my own
`
`knowledge are true and that all statements made on information and belief are
`
`believed to be true; and further that these statements were made with the
`
`knowledge that willful false statements and the like so made are punishable by fine
`
`or imprisonment, or both, under Section 1001 of Title 18 of the United States Code
`
`and that such willful false statements may jeopardize the results of these
`
`proceedings.
`
`47.
`
`I declare under penalty of perjury that the foregoing is true and
`
`correct.
`
`Sworn to this __day of February, 2024 in _________, ________.
`
`__________________________________
`
`George Kembel
`
`15
`
`
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