IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`John Albert Kembel, et al.
`In re Patent of:
`8,510,407
` Attorney Docket No.: 39843-0149IP1
`U.S. Patent No.:
`August 13, 2013
`Issue Date:
`Appl. Serial No.: 11/932,553
`October 31, 2007
`Filing Date:
`Title:
`DISPLAYING TIME-VARYING INTERNET BASED DATA
`USING APPLICATION MEDIA PACKAGES
`
`DECLARATION OF DR. PHILIP GREENSPUN
`
`Declaration
`
`I declare that all statements made herein on 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 under Section 1001 of Title 18 of
`
`the United States Code.
`
`By:
`Philip Greenspun, Ph.D.
`
`1
`
`Exhibit 1029
`Samsung v. DoDots
`IPR2023-00701
`
`
`
`John Albert Kembel, et al.
`In re Patent of:
`8,510,407
` Attorney Docket No.: 39843-0149IP1
`U.S. Patent No.:
`August 13, 2013
`Issue Date:
`Appl. Serial No.: 11/932,553
`October 31, 2007
`Filing Date:
`Title:
`DISPLAYING TIME-VARYING INTERNET BASED DATA
`USING APPLICATION MEDIA PACKAGES
`
`DECLARATION OF DR. PHILIP GREENSPUN
`
`Declaration
`
`I declare that all statements made herein on 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 under Section 1001 of Title 18 of
`
`the United States Code.
`
`By:
`Philip Greenspun, Ph.D.
`
`1
`
`Exhibit 1029
`Samsung v. DoDots
`IPR2023-00701
`
`
`
`I.
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`1.
`I have been retained on behalf of Samsung Electronics Co., Ltd.
`
`(“Petitioner”) and asked to review and provide my opinion on the patentability of
`
`claims 1-24 of U.S. Patent No. 8,510,407 (“the ’407 patent”).
`
`2.
`
`A detailed description of my professional qualifications, including a
`
`listing of my specialties/expertise and professional activities, is contained in my
`
`curriculum vitae, a copy of which is provided along with this declaration. In what
`
`follows, I provide a short summary of my professional qualifications.
`
`3.
`
`In terms of my background and experiences that qualify me as an
`
`expert in this case, I earned a Ph.D. in Electrical Engineering and Computer
`
`Science from Massachusetts Institute of Technology in 1999. I also obtained a
`
`Bachelor of Science Degree in Mathematics from Massachusetts Institute of
`
`Technology in 1982 and a Master of Science Degree in Electrical Engineering and
`
`Computer Science from Massachusetts Institute of Technology in 1993.
`
`4. My Ph.D. thesis concerned the engineering of large online Internet
`
`communities with a Web browser front-end and a relational database management
`
`system (RDBMS) containing site content and user data.
`
`5.
`
`I have authored five computer science textbooks in total, including
`
`Database Backed Web Sites (Macmillan), Software Engineering for Internet
`
`Applications (MIT Press), and a SQL language tutorial.
`
`2
`
`
`
`6.
`
`I have served as an independent member of various advisory and
`
`corporate boards, mostly for technology companies. For example, I joined the
`
`corporate board of an MIT materials science spin-off in late 2005 during a
`
`$550,000 seed capital phase. I stepped down when the company secured $10
`
`million in venture capital in mid-2007.
`
`7.
`
`I have previously served as an expert witness for Amazon.com, IBM,
`
`Microsoft, Xerox, and Google, among others, in patent cases.
`
`8.
`
`I began working full-time as a computer programmer in 1978,
`
`developing a database management system for the Pioneer Venus Orbiter at the
`
`National Aeronautics and Space Administration’s Goddard Space Flight Center.
`
`9.
`
`Some of my pre-Web work as a software developer included building
`
`computer programs that ran on desktop computers with window systems and that
`
`downloaded information from servers. For example, I built a system for Fidelity
`
`Investments that downloaded financial market information and produced graphs
`
`and charts on a Macintosh computer in the 1980s.
`
`10.
`
`I developed my first program using a relational database management
`
`system in 1994. It was a Web interface to the Children’s Hospital Oracle RDBMS
`
`version 6. This enabled doctors at the hospital to view patient clinical data using
`
`any computer equipped with a Web browser.
`
`3
`
`
`
`11.
`
`In 1995, I led an effort by Hearst Corporation to set up an
`
`infrastructure for Internet applications across all their newspaper, magazine, radio,
`
`and television properties. This infrastructure included software for managing users,
`
`shopping carts, electronic commerce, advertising, and user tracking.
`
`12. Between 1995 and 1997, I significantly expanded the photo.net online
`
`community that I had started, in 1993, in order to help people teach each other to
`
`become better photographers. I began distributing the source code behind
`
`photo.net to other programmers as a free open-source toolkit, called “ArsDigita
`
`Community System.”
`
`13. The photo.net site enabled users to upload photos as attachments to
`
`discussion forum postings and also, beginning in 1999, included a complete photo-
`
`sharing system along the lines of Flickr.
`
`14.
`
`In May 1997, Macmillan published my first textbook on Internet
`
`Application development, “Database Backed Web Sites.” This book advises
`
`readers that server-based programs should, to the extent possible, summarize
`
`information from the database and make previews of content available so that users
`
`don’t have to navigate as much. See Chapter 13, for example: “One-line
`
`summaries of the newest [classified] ads should be displayed on the very first page
`
`of the system. Users shouldn't have to click to see ads.”
`
`4
`
`
`
`15.
`
`In 1997, I started a company, ArsDigita, to provide support and
`
`service for the free open-source toolkit. Between 1997 and the middle of 2000, I
`
`managed the growth of ArsDigita to 80 people, almost all programmers, and $20
`
`million per year in annual revenue. This involved supervising dozens of software
`
`development projects, nearly all of which were Internet Applications with a Web
`
`front-end and an Oracle RDBMS back-end. As the founder, CEO, and chief
`
`technical employee of
`
`the company, I personally developed functional
`
`specifications, SQL data models (Structured Query Language, or “SQL,” is the
`
`standard programming language for relational database management systems), and
`
`Web page flows that determined the user experience. Our work at ArsDigita
`
`included “push technology” and representing data in XML and HTML.
`
`16. Between 2000 and the present, I have done software development
`
`projects for philip.greenspun.com and photo.net, two online services that are
`
`implemented as relational database management applications. In addition, I
`
`developed postclipper.com, a database-backed Web application that works in
`
`conjunction with Facebook to allow parents to produce electronic baby books
`
`based on photographs previously included in Facebook posts.
`
`17. Separately from this commercial and public work, I have been
`
`involved, as a part-time teacher within the Department of Electrical Engineering
`
`and Computer Science, educating students at MIT in how to develop Internet
`
`5
`
`
`
`Applications with an RDBMS back-end. In the Spring of 1999, I taught 6.916,
`
`Software Engineering of Innovative Web Services, with Professors Hal Abelson
`
`and Michael Dertouzos. Some of the teams in this class got early access to the
`
`then-new Microsoft .NET system, which emphasizes the exchange of data among
`
`computers in XML format as part of a “Web services” standard. In the Spring of
`
`2002, this course was adopted into the standard MIT curriculum as 6.171. I wrote
`
`15 chapters of a new textbook for this class, “Software Engineering for Internet
`
`Applications.”
`
`
`
`This
`
`book was
`
`published
`
`on
`
`the Web
`
`at
`
`http://philip.greenspun.com/seia/ starting in 2002 and 2003 and also in hardcopy
`
`from MIT Press in 2006. I am the sole author of a supplementary textbook for the
`
`class, “SQL for Web Nerds,” a succinct SQL programming language tutorial
`
`available only on the Web at http://philip.greenspun.com/sql/. I am also one of the
`
`creators and teachers of a three-day intensive course in developing database
`
`applications. We teach this class periodically at MIT.
`
`18.
`
`I periodically teach a database programming class at Harvard Medical
`
`School. Students have access to a relational database of more than 5 billion
`
`insurance claims and write SQL programs to try to identify correlations and trends.
`
`I taught this course most recently in March 2021. Also in 2021, I taught an
`
`Information Security class at Florida Atlantic University. Most recently, I taught an
`
`aeronautical engineering class at MIT in January 2024.
`
`6
`
`
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`19.
`In writing this Declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of
`
`computer science and electrical engineering; my experience in teaching those
`
`subjects; and my experience in working with others involved in those fields. In
`
`addition, I have analyzed the following publications and materials, in addition to
`
`other materials I cite in my declaration:
`
` Petition for Inter Partes Review of United States Patent No. 8,510,407
`
` Patent Owner’s Response to Petition for Inter Partes Review of United
`
`States Patent No. 8,510,407
`
` U.S. Patent No. 8,510,407 (SAMSUNG-1001), and its accompanying
`
`prosecution history (SAMSUNG-1002)
`
` Declaration of Dr. Douglas C. Schmidt (SAMSUNG-1003)
`
` Curriculum Vitae of Dr. Douglas C. Schmidt (SAMSUNG-1004)
`
` U.S. Patent No. 6,278,448 B1 (“Brown”) (SAMSUNG-1005)
`
` U.S. Patent No. 6,449,638 B1 (“Wecker”) (SAMSUNG-1006)
`
` U.S. Patent No. 5,793,368 (“Beer”) (SAMSUNG-1007)
`
` U.S. Patent No. 6,789,263 B1 (“Shimada”) (SAMSUNG-1008)
`
` U.S. Patent No. 6,088,340 (“Buchholz”) (SAMSUNG-1009)
`
` U.S. Patent No. 6,819,345 B1 (“Jones”) (SAMSUNG-1010)
`
`7
`
`
`
` HTML 4 Unleashed (“Darnell”) (SAMSUNG-1011)
`
` IPR2019-01278 Final Written Decision (SAMSUNG-1012)
`
` U.S. Patent No. 6,342,907 B1 (“Petty”) (SAMSUNG-1013)
`
` Lenovo Holding Company, Inc. v. DoDots Licensing Solutions LLC, No.
`
`2021-1247, 2021 WL 5822248 (Dec. 8, 2021) (SAMSUNG-1014)
`
` U.S. Patent No. 6,311,058 B1 (“Wecker 2”) (SAMSUNG-1015)
`
` U.S. Patent No. 5,737,560 (“Yohanan”) (SAMSUNG-1016)
`
` CNET News, “PointCast unveils free news service,”
`
`https://web.archive.org/web/20110616130215/http://news.cnet.com/Poin
`
`tCast-unveils-free-news-service/2100-1023_3-204658.html, last
`
`accessed Feb. 16, 2023 (SAMSUNG-1017)
`
` Declaration of June Ann Munford (SAMSUNG-1018)
`
` DoDots Licensing Solutions LLC v. Samsung Electronics Co., Ltd. et al.,
`
`6:22-cv-00535, W.D. Tex., filed May 24, 2022 (SAMSUNG-1019)
`
` U.S. Patent No. 6,094,681 (“Shaffer”) (SAMSUNG-1020)
`
` U.S. Patent No. 6,185,614 B1 (“Cuomo”) (SAMSUNG-1022)
`
` U.S. Patent No. 6,216,141 (“Straub”) (SAMSUNG-1028)
`
` Transcript of the deposition of Dr. Ted Selker (SAMSUNG-1030)
`
` Transcript of the deposition of John Kembel (SAMSUNG-1031)
`
` Transcript of the deposition of George Kembel (SAMSUNG-1032)
`
`8
`
`
`
` Microsoft’s Computer Dictionary, 4th Edition (SAMSUNG-1034)
`
`
`
`Inside Dynamic HTML (SAMSUNG-1035)
`
` U.S. Patent No. 6,539,387 (“Oren”) (SAMSUNG-1036)
`
` U.S. Patent No. 6,243,700 (“Zellweger”) (SAMSUNG-1037)
`
` U.S. Patent No. 6,144,962 (“Weinberg”) (SAMSUNG-1038)
`
` XHTML™ 1.0: The Extensible HyperText Markup Language,
`
`https://www.w3.org/TR/1999/PR-xhtml1-19991210/ (SAMSUNG-
`
`1039)
`
` U.S. Patent No. 9,438,467 (“The ’467 Patent”) (SAMSUNG-1040)
`
` U.S. Patent No. 8,510,406 (“The ’406 Patent”) (SAMSUNG-1041)
`
` U.S. Patent No. 9,369,545 to Kembel, et al. (“the ’545 Patent”)
`
`(SAMSUNG-1042)
`
` Hypertext Markup Language - 2.0,
`
`https://datatracker.ietf.org/doc/html/rfc1866 (SAMSUNG-1043)
`
` Declaration of Ted Selker, Ph.D. (DODOTS-2010)
`
` Curriculum Vitae of Ted Selker, Ph.D. (DODOTS-2011)
`
`
`
`Introduction to Active Channel Technology, dated 08/15/2017
`
`(DODOTS-2014)
`
` U.S. Patent No. 7,660,868 (“The ’868 Patent”) (DODOTS-2015)
`
`9
`
`
`
` What is Data Structure? (available at
`
`https://www.geeksforgeeks.org/data-structure-meaning/) (DODOTS-
`
`2016)
`
` HTML Data Guide, W3C Interest Group Note 08 March 2012
`
`(DODOTS-2017)
`
` Specifications of Personal Computers Over Time (available at
`
`https://www.hp.com/us-en/shop/tech-takes/specifications-personal-
`
`computers-over-time) (DODOTS-2018)
`
` Barnett, S., Palm VII: Like its predecessors, the Palm VII doesn’t do all
`
`that a desktop does, but it just might do enough (DODOTS-2019)
`
` CNET: Windows CE to become “Windows powered” (available at
`
`https://www.itprotoday.com/windows-78/cnet-windows-ce-become-
`
`windows-powered#close-modal) (DODOTS-2020)
`
` Declaration of John Kembel (DODOTS-2021)
`
`
`
`Imagining a Web Beyond the Browser; Fortune Magazine, February 21,
`
`2000 (DODOTS-2022)
`
` Lyons, D., Browser Bashers; Forbes, May 15, 2000 (DODOTS-2023)
`
` Baig, E., Bits of organization clear clutter; USA Today (DODOTS-
`
`2024)
`
` Heim, K., Tools turn browser into galaxy, July 7, 2000 (DODOTS-2025)
`
`10
`
`
`
` Mossberg, W., New Metabrowsers Allow You To Create a Quilt of Web
`
`Pages, May 18, 2000 (DODOTS-2026)
`
` A New World Needs a New Internet (DODOTS-2027)
`
` DoDots Technical Overview (DODOTS-2028)
`
` How to Build Dots (DODOTS-2029)
`
` Declaration of George Kembel (DODOTS-2030)
`
`
`
`June 15, 1999 Email from Tom Kosnik to investors re: Periphio (next
`
`steps) (DODOTS-2031)
`
` SOFTBANK Venture Capital’s Technology Fund Invests in DoDots,
`
`Inc., October 13, 1999 (DODOTS-2032)
`
` DoDots Website (DODOTS-2033)
`
` DoDots Technology Embraced by ABC Television Network and
`
`ABC.com to Deliver Innovative ABC Dots on the Internet, October 2,
`
`2000 (DODOTS-2034)
`
` Leading Online Companies Do Dots With DoDots ; DoDots '
`
`Technology Delivers Internet Packaging and Distribution for Internet
`
`Content, Applications and Services, March, 13, 2000 (DODOTS-2035)
`
` Excite@Home Partners With DoDots to Enhance Service for Business
`
`Professionals On Work.com, March 13, 2000 (DODOTS-2036)
`
`11
`
`
`
` DoDots Announces Partnership With Wireless Solution Provider 2Roam
`
`at DEMOmobile 2000 Wireless Conference in Pasadena, California,
`
`September 7, 2000 (DODOTS-2037)
`
` Dots Go Live; Web Sites Now Offer Internet Applications, Content, and
`
`Services in Dots, April 3, 2000 (DODOTS-2038)
`
` Conference Guide to Demo 2000 (DODOTS-2039)
`
` DemoMobile Conference Program, September 6-8, 2000 (DODOTS-
`
`2040)
`
` Demo 2000: The innovation Continues, March 6, 2000 (DODOTS-
`
`2041)
`
` DoDots Named “Investors’ Choice” Winner at Telenelogic Partners’
`
`Internet Outlook Conference in Burlingame, California, September 20,
`
`2000 (DODOTS-2042)
`
` Stanford Business School Case Study of DoDots, June 2000 (DODOTS-
`
`2043)
`
` Stanford Business School Case Study of DoDots, September 2001
`
`(DODOTS-2044)
`
` Dots Messaging and XML specification (DODOTS-2045)
`
` Yurko, C., DoDots: The Web without a browser, April 7, 2000
`
`(DODOTS-2046)
`
`12
`
`
`
` Back to the launch pad: after a few dormant years, tech entrepreneurs are
`
`returning to the game (DODOTS-2047)
`
`20. This expert Declaration explains the conclusions that I have formed
`
`based on my analysis. These conclusions are based upon my knowledge and
`
`experience and my review of the prior art publications listed above. The following
`
`points are a summary:
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 1-4, 7-11, 13-16, 19-
`
`23 of the ’407 patent are obvious over Brown.
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 1-4, 7-16, 19-24 of the
`
`’407 patent are obvious over Brown in view of Wecker.
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 5-6 and 17-18 of the
`
`’407 patent are obvious over Brown and Beer, and/or Brown, Wecker,
`
`and Beer.
`
` Based upon my knowledge and experience and my review of the prior
`
`art publications listed above, I believe that claims 1-24 of the ’407 patent
`
`are obvious over Shimada in view of Buchholz.
`
`13
`
`
`
`21.
`
`In forming these conclusions, I have also reviewed the prior
`
`declaration of Dr. Douglas Schmidt. SAMSUNG-1003. Except where otherwise
`
`noted or qualified, I adopt Dr. Schmidt’s conclusions. Id.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`22.
`I have reviewed and concur with the established definition of a person
`
`of ordinary skill in the art (“POSITA”) relating to the subject matter of the ’407
`
`Patent, as defined in the Petition and Dr. Schmidt’s declaration. Petition, p. 5;
`
`SAMSUNG-1003, ¶¶20-21.
`
`23. Based on my experiences, I have a good understanding of the
`
`capabilities of a POSITA. Indeed, I have taught, participated in organizations, and
`
`worked closely with many such persons over the course of my career. From
`
`teaching and supervising both undergraduate and post-graduate students, I also
`
`have an understanding of the knowledge that a person with this academic
`
`experience possesses. As founder and CEO of ArsDigita, I hired and supervised
`
`dozens of computer science graduates, many with at least three years of experience,
`
`in the second half of the 1990s. Furthermore, I possess the capabilities of a
`
`POSITA myself.
`
`IV. LEGAL STANDARDS
`A.
`Terminology
`24.
`I have been informed by Counsel and understand that the best
`
`indicator of claim meaning is its usage in the context of the patent specification as
`
`14
`
`
`
`understood by one of ordinary skill. I further understand that the words of the
`
`claims should be given their plain meaning unless that meaning is inconsistent with
`
`the patent specification or the patent’s history of examination before the Patent
`
`Office. Counsel has also informed me, and I understand that, the words of the
`
`claims should be interpreted as they would have been interpreted by one of
`
`ordinary skill at the time of the invention was made (not today). Because I do not
`
`know at what date the invention as claimed was made, I have used the earliest
`
`priority date of U.S. Patent No. 8,510,407 as the point in time for claim
`
`interpretation purposes. That date was April 26, 1999.
`
`B.
`25.
`
`Legal Standards for Anticipation
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`anticipated. I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a person of ordinary skill in the art.
`
`26.
`
`I am informed by Counsel and understand that a challenged claim is
`
`unpatentable as “anticipated” under 35 U.S.C. § 102 if it is determined that all the
`
`limitations of the claim are described in a single prior art reference. I am informed
`
`by Counsel and understand that, to anticipate a claim, a prior art reference must
`
`disclose, either expressly or inherently, each and every limitation of that claim and
`
`enable one of ordinary skill in the art to make and use the invention.
`
`15
`
`
`
`27.
`
`I have been informed by Counsel and understand that in an inter
`
`partes review, “the petitioner shall have the burden of proving a proposition of
`
`unpatentability,” including a proposition of anticipation, “by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e).
`
`C.
`28.
`
`Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
`
`materials that qualify as prior art can render a patent claim unpatentable as obvious.
`
`I am informed by Counsel and understand that all prior art references are to be
`
`looked at from the viewpoint of a person of ordinary skill in the art at the time of
`
`the invention, and that this viewpoint prevents one from using his or her own
`
`insight or hindsight in deciding whether a claim is obvious.
`
`29.
`
`I have been informed by Counsel and understand that a claim is
`
`unpatentable for obviousness under 35 U.S.C. § 103 “if the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.” I am
`
`informed by Counsel and understand that obviousness may be based upon a
`
`combination of references. I am informed by Counsel and understand that the
`
`combination of familiar elements according to known methods is likely to be
`
`obvious when it does no more than yield predictable results. However, I am
`
`16
`
`
`
`informed by Counsel and understand that a patent claim composed of several
`
`elements is not proved obvious merely by demonstrating that each of its elements
`
`was, independently, known in the prior art.
`
`30.
`
`I am informed by Counsel and understand that when a patented
`
`invention is a combination of known elements, a court must determine whether
`
`there was an apparent reason to combine the known elements in the fashion
`
`claimed by the patent at issue by considering the teachings of prior art references,
`
`the effects of demands known to people working in the field or present in the
`
`marketplace, and the background knowledge possessed by a person having
`
`ordinary skill in the art.
`
`31.
`
`I am informed by Counsel and understand that a patent claim
`
`composed of several limitations is not proved obvious merely by demonstrating
`
`that each of its limitations was independently known in the prior art. I am
`
`informed by counsel for the Patent Owner and understand that identifying a reason
`
`those elements would be combined can be important because inventions in many
`
`instances rely upon building blocks long since uncovered, and claimed discoveries
`
`almost of necessity will be combinations of what, in some sense, is already known.
`
`I am informed by Counsel and understand that it is improper to use hindsight in an
`
`obviousness analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`17
`
`
`
`32.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
`
`such as commercial success, long-felt but unresolved need, failure of others,
`
`industry recognition, copying, and unexpected results. I understand that the
`
`foregoing factors are sometimes referred to as the “Graham factors.”
`
`33.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a combination of multiple prior art references. I
`
`understand that the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two or more prior art
`
`references is sometimes simple common sense. I have been informed by Counsel
`
`and understand that obviousness analysis recognizes that market demand, rather
`
`than scientific literature, often drives innovation, and that a motivation to combine
`
`references may be supplied by the direction of the marketplace.
`
`34.
`
`I have been informed by Counsel and understand that if a technique
`
`has been used to improve one device, and a person of ordinary skill at the time of
`
`invention would have recognized that it would improve similar devices in the same
`
`way, using the technique is obvious unless its actual application is beyond his or
`
`her skill.
`
`18
`
`
`
`35.
`
`I have been informed by Counsel and understand that practical and
`
`common sense considerations should guide a proper obviousness analysis, because
`
`familiar items may have obvious uses beyond their primary purposes. I have been
`
`informed by Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the teachings of multiple
`
`prior art references. I have been informed by Counsel and understand that
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill would have employed at the time of invention.
`
`36.
`
`I have been informed by Counsel and understand that a proper
`
`obviousness analysis focuses on what was known or obvious to a person of
`
`ordinary skill at the time of invention, not just the patentee. Accordingly, I
`
`understand that any need or problem known in the field of endeavor at the time of
`
`invention and addressed by the patent can provide a reason for combining the
`
`elements in the manner claimed.
`
`37.
`
`I have been informed by Counsel and understand that a claim can be
`
`obvious in light of a single reference, without the need to combine references, if
`
`the elements of the claim that are not found explicitly or inherently in the reference
`
`can be supplied by the common sense of one of skill in the art.
`
`38.
`
`I have been informed by Counsel and understand that secondary
`
`indicia of non-obviousness may include (1) a long felt but unmet need in the prior
`
`19
`
`
`
`art that was satisfied by the invention of the patent; (2) commercial success of
`
`processes covered by the patent; (3) unexpected results achieved by the invention;
`
`(4) praise of the invention by others skilled in the art; (5) taking of licenses under
`
`the patent by others; (6) deliberate copying of the invention; (7) failure of others to
`
`find a solution to the long felt need; and (8) skepticism by experts. I understand
`
`that evidence of secondary indicia of non-obviousness, if available, should be
`
`considered as part of the obviousness analysis.
`
`39.
`
`I have been informed by Counsel and understand that there must be a
`
`relationship between any such secondary considerations and the invention, and that
`
`contemporaneous and independent invention by others is a secondary consideration
`
`supporting an obviousness determination.
`
`40.
`
`In sum, my understanding is that prior art teachings are properly
`
`combined where one of ordinary skill having the understanding and knowledge
`
`reflected in the prior art and motivated by the general problem facing the inventor,
`
`would have been led to make the combination of elements recited in the claims.
`
`Under this analysis, the prior art references themselves, or any need or problem
`
`known in the field of endeavor at the time of the invention, can provide a reason
`
`for combining the elements of multiple prior art references in the claimed manner.
`
`41.
`
`I have been informed by Counsel and understand that in an inter
`
`partes review, “the petitioner shall have the burden of proving a proposition of
`
`20
`
`
`
`unpatentability,” including a proposition of obviousness, “by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e).
`
`IV.
`
`INTERPRETATIONS OF THE ’407 PATENT CLAIMS AT ISSUE
`42.
`I understand that, for purposes of my analysis in this inter partes
`
`review proceeding, the terms appearing in the patent claims should be interpreted
`
`“using the same claim construction standard that would be used to construe the
`
`claim in a civil action under 35 U.S.C. 283(b)....” 37 C.F.R. § 42.100(b). In that
`
`regard, I understand that the best indicator of claim meaning is its usage in the
`
`context of the patent specification as understood by a POSITA. I further
`
`understand that the words of the claims should be given their plain meaning unless
`
`that meaning is inconsistent with the patent specification or the patent’s history of
`
`examination before the Patent Office. I also understand that the words of the
`
`claims should be interpreted as they would have been interpreted by a POSITA at
`
`the time of the invention was made (not today). Because I do not know at what
`
`date the invention as claimed was made, I have used the earliest possible priority
`
`date of U.S. Patent No. 8,510,407 as the point in time for claim interpretation
`
`purposes. That date was April 26, 1999.
`
`43.
`
`I understand that the following terms should be interpreted as follows:
`
`
`
`
`
`21
`
`
`
`A.
`“networked information monitor” (“NIM”)
`I understand that for the purposes of the present proceeding, this term,
`
`44.
`
`which appears in claims 1, 11, 13, and 23, should be construed to mean “a fully
`
`configurable frame, with one or more controls, through which content is presented
`
`to the user.” This definition is consistent with the use of the term in the
`
`specification of the ’407 patent, as well as the definition adopted by Patent Owner
`
`in prior proceedings. See, e.g., SAMSUNG-1001, 5:21-24; SAMSUNG-1012,
`
`Pages 10-11; SAMSUNG-1014, *3-4. Thus, for purposes of this IPR, I have
`
`adopted Patent Owner’s construction of networked information monitor, which
`
`was adopted in IPR2019-01278 and Dr. Schmidt’s declaration. SAMSUNG-1012,
`
`Page 10-11; SAMSUNG-1014, *3-4; SAMSUNG-1003, ¶28.
`
`B.
`“networked information monitor template”
`I understand that for the purposes of the present proceeding, this term,
`
`45.
`
`which appears in claims 1-8, 10-16, 19-20, and 22-24, should be construed to mean
`
`“a data structure that defines the characteristics of a NIM, including the NIM frame,
`
`view,
`
`and
`
`control
`
`characteristics,
`
`and
`
`that
`
`excludes
`
`executable
`
`applications/compiled code.” This definition is consistent with the use of the term
`
`in the specification of the ’407 Patent. See, e.g., SAMSUNG-1001, 6:66-67, 7:1-2
`
`(“Each NIM template defines the characteristics of a specific NIM, including fully
`
`configurable frame characteristics, viewer and control characteristics, and NIM
`
`22
`
`
`
`content references”). Additionally, the ’407 Patent states, “NIMs allow a developer
`
`to provide an application feel without developing custom client applications.” Id.,
`
`26:38-40. The ’407 Patent further states that a NIM definition “is content, rather
`
`than compiled code.” Id., 21:49-50. According to Patent Owner in IPR2019-
`
`01278, a networked information monitor template “is not compiled code, and
`
`cannot be an executable application or applet.” SAMSUNG-1012, Page 12. Thus,
`
`for purposes of this IPR, I have adopted Patent Owner’s construction of networked
`
`information monitor template, which was adopted in IPR2019-01278 and Dr.
`
`Schmidt’s declaration. SAMSUNG-1012, Page 13-14; SAMSUNG-1014, *3-4;
`
`SAMSUNG-1003, ¶29.
`
`V. A POSITA WOULD HAVE COMBINED BROWN AND WECKER
`46. The combination of Brown and Wecker is a simple, straightforward
`
`combination of two Microsoft patents that are both directed to improving delivery
`
`of Internet content to user devices. As Dr Schmidt and I explain, the references
`
`have several similarities that would have led a POSITA to consider their
`
`disclosures together and turn to Wecker for implementation techniques that would
`
`have been beneficial to Brown’s system. SAMSUNG-1003, ¶¶35-42. In fact,
`
`because Brown’s disclosure is so similar to the ’407 patent, the combination relies
`
`on just two basic techniques that were well-known and part of a POSITA’s general
`
`knowledge: (1) storing a template in memory and (2) requesting a template from a
`
`23
`
`
`
`remote computer. Wecker clearly discloses these concepts and, when Brown’s
`
`disclosure is viewed in the context of Wecker, it would have been obvious to
`
`implement Brown’s templates using these two basic techniques. SAMSUNG-1003,
`
`¶¶35-42. As discussed in the Petition, Brown uses templates to build “a composite
`
`desktop … from Web content retrieved from one or more Web sites,” and Wecker
`
`uses templates to produce “a mobile channel” that is “a self describing web site
`
`that contains all the information necessary for efficient download of web content.”
`
`Petition, 9-13. Brown’s templates are similar to Wecker’s templates because they
`
`each define the visual appearance of data on a screen. Petition, 10-12;
`
`SAMSUNG-1006, 2:8-36, 3:17-20. Understanding these similarities, a POSITA
`
`would have been motivated to apply Wecker’s known techniques of downloading
`
`template files stored on remote devices (e.g., as part of a channel) to Brown’s
`
`templates and would have used the downloaded templates as part of Brown’s
`
`composite desktop, a collection of HTML templates. Petition, 13-16. In this way,
`
`a user of Brown’s composite desktop, in addition to modifying the desktop in
`
`accordance with Brown’s teachings, would achieve the benefits of using remotely
`
`stored HTML templates via a model similar to Wecker’s mobile channel
`
`subscription model. Petition, 13-16; SAMSUNG-1003, ¶¶35-42. Benefits of
`
`remotely managing templates and making them available for download were well-
`
`known and would have led a POSITA to implement these techniques in Brown,
`
`24
`
`
`
`particularly because Brown already suggests local storage and remote download of
`
`its templates. Petition, 14; SAMSUNG-1005, 4:16-21, 4:49-52, 5:45-47. Indeed,
`
`the benefits described by Wecker for managing its templates remotely and
`
`separately from Internet content would have motivated a POSITA to apply these
`
`techniques to Br
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