Case 2:21-cv-00072-JRG-RSP Document 156-2 Filed 09/28/21 Page 1 of 217 PageID #:
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` EXHIBIT 1
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`Case 2:21-cv-00072-JRG-RSP Document 156-2 Filed 09/28/21 Page 2 of 217 PageID #:
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`CASE NO. 2:21-cv-00072-JRG-RSP
`(Lead Case)
`
`
`CASE NO. 2:21-cv-00024-JRG-RSP
`(Member Case)
`
`
`CASE NO. 2:21-cv-00026-JRG-RSP
`(Member Case)
`
`
`CASE NO. 2:21-cv-00029-JRG-RSP
`(Member Case)
`
`§
`§
`§
`§
`§
`§
`
`
` §
`
`
`§
`§
`§
`§
`§
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` §
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`§
`§
`§
`§
`§
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` §
`
`
`§
`§
`§
`§
`§
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`T-MOBILE USA, INC., AND T-MOBILE
`US, INC.,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`LYFT, INC.,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`UBER TECHNOLOGIES, INC.,
`d/b/a UBER,
`
`
`AGIS SOFTWARE DEVELOPMENT LLC,
`
`v.
`
`WHATSAPP, INC.
`
`
`DECLARATION OF DR. SHASHI SHEKHAR IN SUPPORT OF
`DEFENDANTS’ CLAIM CONSTRUCTION
`
`
`
`
`
`
`
`

`

`Case 2:21-cv-00072-JRG-RSP Document 156-2 Filed 09/28/21 Page 3 of 217 PageID #:
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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...............................................................................................................1
`
`A.
`
`B.
`
`C.
`
`Summary of Opinions ..............................................................................................2
`
`Professional Qualifications and Compensation .......................................................4
`
`Materials Reviewed .................................................................................................7
`
`II.
`
`RELEVANT LEGAL STANDARDS .................................................................................7
`
`A.
`
`Claim Construction ..................................................................................................7
`
`1.
`
`2.
`
`Generally ......................................................................................................7
`
`Means-Plus-Function Terms ........................................................................9
`
`B.
`
`Indefiniteness .........................................................................................................11
`
`1.
`
`2.
`
`Generally ....................................................................................................11
`
`Means-Plus-Function Terms ......................................................................12
`
`III.
`
`IV.
`
`LEVEL OF SKILL IN THE ART .....................................................................................14
`
`OVERVIEW OF THE ASSERTED PATENTS ................................................................14
`
`A.
`
`B.
`
`C.
`
`D.
`
`The ’728 Patent ......................................................................................................14
`
`The ’724 Patent ......................................................................................................15
`
`The ’970 Patent ......................................................................................................15
`
`The ’055, ’251, 7’838 and ’829 Patents .................................................................16
`
`V.
`
`ANALYSIS OF CLAIM CONSTRUCTION DISPUTES ................................................18
`
`A.
`
`The “free and operator selected text messages” phrase of the ’728 Patent ...........19
`
`1.
`
`2.
`
`3.
`
`The Context of the Claim Does Not Provide Any Guidance on the
`Scope of These Terms ................................................................................20
`
`The Specifications of the Asserted Patents Does Not Provide Any
`Guidance on the Scope of These Terms ....................................................22
`
`The File History of the ‘728 Patent is Silent on the Meaning of the
`Term “Free and Operator Selected Text Messages” ..................................25
`
`
`
`

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`
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`B.
`
`The “similarly equipped cellular phone,” “similarly equipped PDA
`cellular phone,” “similarly equipped PDA/cell phone,” and “each
`PDA/cell phone within a predetermined communication network is
`similarly equipped” phrases of the ’728, ’724, and ’970 Patents ..........................26
`
`1.
`
`2.
`
`3.
`
`The Context of the Claims Does Not Provide Any Guidance on the
`Scope of These Terms ................................................................................27
`
`The Specifications of the Asserted Patents Does Not Provide Any
`Guidance on the Scope of These Terms ....................................................29
`
`The File Histories of the Asserted Patents Are Silent on the
`Meaning of These Terms ...........................................................................33
`
`The “said database including the generation of one or more symbols
`associated with a particular participating user” phrase of the ’724 Patent ............33
`
`The “using the IP address previously” phrase of the ’724 Patent ..........................37
`
`The “accessing an application program in each cell phone for generating
`one or more symbols representative of one or more participant users”
`phrase of the ’724 Patent ........................................................................................38
`
`The “means for allowing a manual response to be manually selected from
`the response list or manually recorded and transmitting said manual
`response to the sender PDA/cell phone” phrase of the ’970 Patent .......................42
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`The “device” term of the ’055, ’251, 7’838, and ’829 Patents ..............................47
`
`1.
`
`2.
`
`3.
`
`The claims do not recite structure ..............................................................47
`
`The specification does not disclose an algorithm corresponding to
`each claimed function ................................................................................51
`
`The claimed functions could not be accomplished by a general
`purpose computer without special programming .......................................69
`
`CONCLUSION ..................................................................................................................76
`
`VI.
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`
`
`
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`

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`I.
`
`INTRODUCTION
`
`I, Shashi Shekhar, do hereby declare:
`
`1.
`
`I make this declaration based upon my own personal knowledge and, if called upon
`
`to testify, would testify competently to the matters contained herein.
`
`2.
`
`I am making this declaration at the request of Defendants T-Mobile USA, Inc., T-
`
`Mobile US, Inc. (collectively, “T-Mobile”), Lyft, Inc., Uber Technologies, Inc., and WhatsApp
`
`LLC1 (“WhatsApp”) (collectively, “Defendants”) in the above-captioned case, and have been
`
`asked by Defendants to provide my expert testimony and opinions relating to certain terms and
`
`phrases in U.S. Patent Nos. 7,031,728 (the “’728 Patent”), 7,630,724 (the “’724 Patent”),
`
`8,213,970 (the “’970 Patent”), 9,408,055 (the “’055 Patent”), 9,445,251 (the “’251 Patent”),
`
`9,467,838 (the “7’838 Patent”), 9,749,829 (the “’829 Patent”), 10,299,100 (the “’100 Patent”), and
`
`10,341,838 (the “1’838 Patent”).
`
`3.
`
`I understand that Plaintiff AGIS Software Development LLC (“AGIS”) is asserting
`
`the following patent claims against the Defendants:
`
`Patent
`’728
`Patent
`’724
`Patent
`’970
`Patent
`’100
`Patent
`1’838
`Patent
`7’838
`Patent
`
`Lyft
`7
`
`9, 12-16
`
`2, 10-13
`
`1-31
`
`1-26
`
`
`
`Uber
`7
`
`9, 12-16
`
`2, 10-13
`
`1-31
`
`1-26
`
`
`
`WhatsApp
` 7
`
`T-Mobile
` 7
`
`9, 10, 12, 13, 15
`
`9, 10, 12-16
`
`
`
`
`
`
`
`
`
`
`
`
`
`1-43, 45, 46, 49-84
`
` 1-84
`
`
`1 WhatsApp, Inc. is incorrectly named in the first amended complaint filed in Case No. 2:21-cv-
`00029-JRG-RSP.
`
`1
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`

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`
`
`Patent
`’055
`Patent
`
`’251
`Patent
`’829
`Patent
`
`
`
`Lyft
`
`
`
`
`
`
`Uber
`
`
`
`
`
`
`WhatsApp
` 3, 4, 8-13, 16, 18-20,
`26, 31, 35, 38, 39, 44,
`46-48, 50-53
`
` 1-35
`
`T-Mobile
`3, 4, 8-13, 16, 18-
`20, 26, 31, 35, 38,
`39, 44, 46-48, 50-
`53
` 1-35
`
` 1-7, 9, 11-26, 28-41,
`43, 45-61, 63-68
`
` 1-68
`
`4.
`
`This declaration, including the exhibits hereto, provides my opinions to date
`
`regarding the alleged indefiniteness of certain phrases and terms, although I may provide further
`
`testimony and opinions if asked to testify in court or in a deposition. I also reserve the right to
`
`supplement or amend my opinions, as well as the bases for those opinions, if I receive additional
`
`relevant information or to respond to opinions offered by other experts in this case. I may rely on
`
`demonstrative exhibits, including pictures, figures, and drawings that appear in this report and the
`
`referenced exhibits and materials.
`
`A.
`
`5.
`
`Summary of Opinions
`
`At Defendants’ request, I have focused my analysis on ten particular phrases that
`
`appear in some or all of the Asserted Claims. In my opinion, all ten of these phrases are indefinite
`
`for one or more reasons. Specifically:
`
`•
`
`The phrase “free and operator selected text messages”―which appears in Claim 7
`of the ’728 Patent―is indefinite because the term “free” is susceptible to at least
`two entirely different meanings, and nowhere does the ’728 Patent provide any
`guidance as to the meaning of the term “free … text messages” to enable a POSITA
`to ascertain the meaning of the term “free”, and nowhere does the ’728 Patent
`provide any guidance on the meaning of the term “operator selected text messages”
`to enable a POSITA to determine the bounds and scope of claim 7 of the ’728
`
`2
`
`

`

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`
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`•
`
`•
`
`•
`
`•
`
`•
`
`•
`
`Patent..
`The phrase “similarly equipped cellular phone”―which appears in Claim 7 of the
`’728 Patent and Claim 9 of the ’724 Patent―is indefinite because the intrinsic
`record lacks any guidance that would enable a person of ordinary skill in the art
`(POSITA) to objectively ascertain whether two cellular phones are “similarly
`equipped.”
`The phrase “said database including the generation of one or more symbols
`associated with a particular participating user”―which appears in Claim 9 of the
`’724 Patent―is indefinite because a POSITA would not understand that phrase
`with reasonable certainty, and further because Claim 9 identifies an “application
`program” for generating the recited symbols.
`The phrase “using the IP address previously”―which appears in Claim 16 of the
`’724 Patent―is indefinite because it is an incomplete sentence fragment that
`renders the claim in which it appears meaningless, and the specification and file
`history do not further clarify which IP address this portion of the claim covers..
`The phrase “similarly equipped PDA cellular phone”―which appears in Claim 16
`of the ’724 Patent―is indefinite because the intrinsic record lacks any guidance
`that would enable a POSITA to objectively ascertain whether two PDA cellular
`phones are “similarly equipped.”
`The means-plus-function phrase “accessing an application program in each cell
`phone for generating one or more symbols representative of one or more participant
`users”―which appears in Claim 9 of the ’724 Patent―is indefinite because
`“application program” is a generic term that does not connote structure, and the
`specification fails to disclose the requisite structure.
`The means-plus-function phrase “means for allowing a manual response to be
`manually selected from the response list or manually recorded and transmitting said
`manual response to the sender PDA/cell phone”―which appears in Claim 2 of the
`
`3
`
`

`

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`’970 Patent―is indefinite because “means” is a generic term that does not connote
`structure, and the specification fails to disclose the requisite structure.
`The phrase “similarly equipped PDA/cell phone”―which appears in Claim 1 of the
`’970 Patent―is indefinite because the intrinsic record lacks any guidance that
`would enable a POSITA to objectively ascertain whether two PDAs or cellular
`phones are “similarly equipped.”.
`The phrase “each PDA/cell phone within a predetermined communication network
`is similarly equipped”―which appears in Claim 11 of the ’970 Patent―is indefinite
`because the intrinsic record lacks any guidance that would enable a POSITA to
`objectively ascertain whether two PDAs or cellular phones are “similarly
`equipped.”
`The means-plus-function term “device”―which appears in at least Claims 31, 35,
`38, and 39 of the ’055 Patent, Claims 24 to 35 of the ’251 Patent, Claim 54 of the
`7’838 Patent, and Claim 68 of the ’829 Patent―is indefinite because “device” is a
`generic term that does not connote structure to a POSITA, and the specification
`fails to disclose the requisite structure.
`
`Professional Qualifications and Compensation
`
`I am currently employed by the University of Minnesota, Minneapolis, Minnesota
`
`•
`
`•
`
`•
`
`B.
`
`6.
`
`as a Professor in the Computer Science and Engineering Department. Attached as Exhibit A to this
`
`declaration is my up-to-date curriculum vitae. The following paragraphs summarize my relevant
`
`expertise.
`
`7.
`
`In 1985, I received a Bachelors of Technology degree in Computer Science from
`
`the Indian Institute of Technology, Kanpur, India. In 1987, I received a Masters of Science degree
`
`in Computer Science, and in 1989 was awarded a Ph.D. in Computer Science and a Masters of
`
`Science degree in Business Administration, all from the University of California, Berkeley.
`
`4
`
`

`

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`8.
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`In 1989, I joined the faculty of the Computer Science and Engineering Department
`
`at the University of Minnesota as an Assistant Professor. I was promoted to Associate Professor
`
`with tenure in 1995, and then to Full Professor in 2001. I was appointed a McKnight Distinguished
`
`University Professor (2005), a distinction awarded to the most outstanding mid-career faculty
`
`members at the University of Minnesota. I was recently appointed a University Distinguished
`
`Teaching Professor (2015), a distinction awarded to recognize excellence in instruction,
`
`mentoring, and development of educational programs.
`
`9.
`
`In 1991, I began working on a project entitled “Geographic Databases For
`
`Intelligent Vehicle Highway Systems” which dealt with spatial databases and geographic
`
`information systems (“GIS”). Since working on this project, I have continued to perform research
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`in the fields of spatial databases, spatial data science and GIS on a variety of computational
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`platforms ranging from mobile phones to large computers. I presently devote essentially all of my
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`research to spatial databases, spatial data mining, spatial data science and GIS.
`
`10.
`
` Beginning in 1994 and continuing through today, I have taught courses in spatial
`
`databases, spatial data science and GIS.
`
`11.
`
` I have authored or co-authored over 350 articles, the majority relating to spatial
`
`databases, spatial data science and GIS that have appeared in refereed journals, conferences,
`
`workshops and edited books. Also, I have co-authored a textbook entitled “Spatial Databases: A
`
`Tour” that was published in 2003 and which has been translated into two foreign languages (i.e.,
`
`Chinese and Russian). Furthermore, I have co-edited an “Encyclopedia of GIS” which was
`
`published in 2008 (1st Edition) and 2017 (2nd Edition). Moreover, I have co-authored a broad-
`
`audience book entitled “Spatial Computing” that was published in 2020. A listing of my
`
`publications is included in my Curriculum Vitae (attached as Exhibit A) under the heading
`
`5
`
`

`

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`“Publications.”
`
`12.
`
` I am active in professional services relating to journals and conferences that deal
`
`with spatial databases, spatial data science and GIS. For example, I am serving on the Board of
`
`Directors for the Computing Research Association, which represents the major Computing
`
`research organizations in North America. Also, I am serving as a co-editor in chief of
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`“GeoInformatica: An International Journal on Advances in Computer Science for Geographic
`
`Information Sciences.” Earlier, I served as the President of the University Consortium for GIS
`
`(2017-18). I have also served on the editorial board of the IEEE Transactions on Knowledge and
`
`Data Engineering, which is a journal in the area of databases, data mining and artificial
`
`intelligence. A more complete listing of my professional service activities relating to journals,
`
`conferences, and workshops is included in my Curriculum Vitae.
`
`13.
`
` In 2008, I was elected a Fellow of the American Association for Advancement of
`
`Sciences (AAAS) and in 2003, I was elected a Fellow of The Institute of Electrical and Electronics
`
`Engineers (IEEE) for contributions to spatial database storage methods, data mining, and
`
`geographic information systems (GIS). Furthermore, I received the Technical Achievement
`
`Award from the IEEE Computer Society (2006) which recognizes the most outstanding and
`
`innovative contribution to the field in the last ten to fifteen years.
`
`14.
`
`I have advised numerous organizations including the United Nations and the United
`
`States federal government regarding spatial databases and GIS. For example, I served on the
`
`Mapping Science Committee (2003-2009) of the National Research Council, the operating body
`
`of the National Academy of Science, which is charged under Congressional charter to advise the
`
`federal government on scientific and technical matters. I have twice served as an international
`
`consultant to the United Nations Development Programme (UNDP) on projects related to spatial
`
`6
`
`

`

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`databases. I have served on the Board of Directors of the University Consortium on GIS (UCGIS)
`
`which is a professional organization representing universities with active GIS research programs.
`
`I have also served as an international expert for the Canadian Networks of Centers of Excellence
`
`program which has responsibilities for overseeing GEOIDE, a network of over 50 researchers from
`
`more than a dozen Canadian universities in the area of geographic information science. A more
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`complete list of advisory activities is included in my Curriculum Vitae.
`
`15.
`
`Additional details of my education and work experience, awards and honors, and
`
`publications that may be relevant to the opinions I have formed are set forth in my curriculum
`
`vitae.
`
`16.
`
`I am being compensated for my time at a rate of $400 per hour, including my work
`
`in preparing this declaration and for any testimony related thereto. I am also being compensated
`
`for certain out-of-pocket expenses. The opinions provided in this declaration are my own: I have
`
`no financial or other interest in the outcome of this lawsuit, and my compensation is entirely
`
`independent of the outcome of this lawsuit or the impact (if any) of the opinions that I provide.
`
`C. Materials Reviewed
`
`17.
`
`A list of materials that I reviewed in arriving at the opinions contained in this
`
`declaration is attached as Exhibit B.
`
`II.
`
`RELEVANT LEGAL STANDARDS
`
`18.
`
`I am not an attorney. My understanding of legal standards governing claim
`
`construction and indefiniteness is described below.
`
`A.
`
`Claim Construction
`1.
`
`Generally
`
`19.
`
`I understand that the words of a patent claim are given the meaning that a person
`
`of ordinary skill in the art (“POSITA”) would understand those words to carry, in light of the
`
`7
`
`

`

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`patent’s specification and prosecution history. E.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313
`
`(Fed. Cir. 2005) (en banc).
`
`20.
`
`I understand that patent claims are to be construed in light of the intrinsic record of
`
`the patent, which includes the language of the claims; the specification (including the drawings)
`
`of the patent; and the prosecution history of the patent, including the cited references. This type
`
`of evidence is referred to as “intrinsic” evidence. E.g., id. at 1317.
`
`21.
`
`I further understand that the words of the claims are generally given their ordinary
`
`and customary meaning, which is the meaning that the term would have to a POSITA in question
`
`at the time of the invention. E.g., id. at 1313. I understand that the Federal Circuit has emphasized
`
`that the context of any disputed term within the claim language itself is of primary importance.
`
`E.g., id. at 1314–15. Additionally, I understand that a POSITA is deemed to read the claim term
`
`not only in the context of the particular claim in which the disputed term appears, but in the context
`
`of the entire patent, including the specification. See id. at 1315.
`
`22.
`
`I understand that, in addition to the claims and specification, a court should also
`
`consider the prosecution history. E.g., id. at 1317. It is my understanding that the prosecution
`
`history provides evidence of how the patentee and the examiner viewed the patent, and that the
`
`public has a right to rely on the patent applicant’s remarks made during prosecution in determining
`
`the scope of the claimed invention. E.g., id. Where the specification describes a claim term
`
`broadly, arguments and amendments made during prosecution may require a narrower
`
`interpretation. E.g., id. For example, I understand that an applicant may disclaim claim scope by
`
`amending claims in response to a rejection, or making specific arguments distinguishing the
`
`claimed invention over cited prior art. See id. I understand that statements made by a patent owner
`
`during an inter partes review proceeding, whether before or after an institution decision, can be
`
`8
`
`

`

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`
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`considered during claim construction and relied upon to support prosecution disclaimer. E.g.,
`
`Aylus Networks, Inc. v. Apple Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017)
`
`23.
`
`I have been informed that the Court may consider additional evidence, in certain
`
`circumstances, which is outside the patent and prosecution history. E.g., Phillips, 415 F.3d at
`
`1317. This type of evidence is known as “extrinsic” evidence. E.g., id. Extrinsic evidence can
`
`include expert opinion (including opinions regarding what a POSITA would have known or
`
`understood), dictionaries, treatises, and testimony. E.g., id. at 1317–18. However, while extrinsic
`
`evidence can shed useful light on the relevant art, I understand that it is less significant than the
`
`intrinsic record in determining the legally operative meaning of claim language. E.g., id. at 1317.
`
`Extrinsic evidence can be useful to, for example, provide background on the technology at issue,
`
`explain how an invention works, ensure that the Court’s understanding of the technical aspects of
`
`the patent is consistent with that of a POSITA, or establish that a particular term in the patent or
`
`the prior art has a particular meaning in the pertinent field. See, e.g., id. at 1317–18.
`
`2.
`
`Means-Plus-Function Terms
`
`24.
`
`I understand that, under pre-AIA (America Invents Act) 35 U.S.C. § 112, ¶ 6,
`
`recodified by the AIA as 35 U.S.C. § 112(f),2 claim elements may be expressed “as a means for
`
`performing a specified function.” E.g., Triton Tech. of Tex., LLC v. Nintendo of Am., Inc., 753
`
`F.3d 1375, 1378 (Fed. Cir. 2014). I understand that the parties have agreed that one or more certain
`
`
`2 I understand that the America Invents Act changed various statutes governing patent law. I
`understand that pre-AIA 35 U.S.C. § 112 ¶ 6 is applicable to the analysis of the means-plus-
`function phrases of the ’724 and ’970 Patents, both of which were filed before September 16, 2012
`(the applicable effective date of the AIA). See Eon Corp. v. IP Holdings LLC v. AT&T Mobility
`LLC, 785 F.3d 616, 620 n.1 (Fed. Cir. 2015). I understand that AIA 35 U.S.C. § 112(f) is
`applicable to the analysis of the means-plus-function phrases of the ’055, ’251, 7’838, and
`’829 patents because they contain or contained at any time a claim having an effective filing date
`on or after September 16, 2012. As explained above, my opinions would not change under either
`version of the statute because they are materially the same for the purposes of this analysis.
`
`9
`
`

`

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`
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`phrases are means-plus-function phrases and as such are subject to the requirements of pre-AIA
`
`35 U.S.C. § 112, ¶ 6.
`
`25.
`
`Additionally, certain claim terms or phrases at issue in this case claim a “device”
`
`or “application program” that is programmed to perform particular functions. As explained in
`
`more detail below, the claim terms “device” or “application program” in such a context may
`
`amount to a mere verbal construct that is the equivalent to the use of the “means” language in a
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`claim. Stated differently, the terms “device” or “application program” are effectively placeholders
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`for any structure that is capable of performing the recited functions. I understand that for such
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`claim terms, they should be construed under pre-AIA 35 U.S.C. § 112, ¶ 6, or, depending on the
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`effective filing date of the patent, AIA 35 U.S.C. § 112(f), which recites the same language as pre-
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`AIA 35 U.S.C. § 112, ¶ 6. Both versions of the statute state the same thing:
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`An element in a claim for a combination may be expressed as a means or step for
`performing a specified function without the recital of structure, material, or acts in
`support thereof, and such claim shall be construed to cover the corresponding
`structure, material, or acts described in the specification and equivalents thereof.
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`26.
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`I understand that construing means-plus-function phrase “is a two-step process.”
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`E.g., Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1351 (Fed. Cir. 2015). First, one must
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`“identify the claimed function” or functions of the phrase. Id. Second, one must identify the
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`corresponding structure in the specification, if any, that performs each function. Id.
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`27.
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`I understand that, for the specification to disclose corresponding structure, the
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`specification or prosecution must “clearly link[] or associate[] that structure to the function recited
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`in the claim.” Id. (citing B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir.
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`1997)). I also understand that, “[e]ven if the specification discloses corresponding structure, the
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`disclosure must be of ‘adequate’ corresponding structure to achieve the claimed function.”
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`Williamson, 792 F.3d at 1351 (citation omitted). Therefore, the specification must disclose the
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`structure such that a POSITA can “recognize the structure in the specification and associate it with
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`the corresponding function in the claim[,]” otherwise the claim is indefinite (addressed below in
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`Section II.B.2). Id. (citation omitted). In contrast, I understand that it is insufficient for a POSITA
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`to have been able to devise or otherwise implement a structure to perform the claimed function.
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`E.g., Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012).
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`28.
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`I understand that if a function recited by a means-plus-function limitation is
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`computer-implemented—and a general-purpose computer cannot perform the function without
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`special programming—the specification must disclose the structure in the form of an algorithm.
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`E.g., Williamson, 792 F.3d at 1352 (citation omitted). I understand that an algorithm is a “step-
`
`by-step procedure . . . for performing the claimed function.” Triton Tech., 753 F.3d at 1378–79
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`(citation omitted). I understand that if the function is performed by a general-purpose computer
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`or microprocessor, then the specification must also disclose the algorithm that the computer
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`performs to accomplish that function. Id. at 1378. I understand that such “an algorithm can be
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`expressed in many forms, including flow charts, a series of specific steps, mathematical formula,
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`prose, and so on.” Id. (citation omitted). I understand that a restatement of the function itself in
`
`the specification is inadequate to disclose an algorithm for performing the claimed function. Id.
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`at 1378-79.
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`B.
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`Indefiniteness
`1.
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`Generally
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`29.
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`I understand that, under pre-AIA 35 U.S.C. § 112, ¶ 2, recodified by the AIA as
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`35 U.S.C. § 112(b),3 a patent must include one or more claims that distinctly claim the subject
`
`
`3 As noted above, I understand that the pre-AIA version of 35 U.S.C. § 112 applies to the ’724 and
`’970 patents, and that the AIA version of 35 U.S.C. § 112 applies to the ’055, ’251, 7’838, and
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`matter that the inventor regards as the invention. I understand that a claim is indefinite, and
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`therefore invalid, if it fails to inform, with reasonable certainty, those skilled in the art about the
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`scope of the invention when read in light of the patent’s specification and prosecution history.
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`Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014).
`
`2.
`
`Means-Plus-Function Terms
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`30.
`
`I understand that a means-plus-function claim is indefinite if a POSITA “would be
`
`unable to recognize the structure in the specification and associate it with the corresponding
`
`function in the claim.” Williamson, 792 F.3d at 1352 (citation omitted). For example, in the
`
`context of a computer-implemented means-plus-function limitation that requires special
`
`programming, the claim is indefinite if the specification fails to disclose an algorithm for
`
`performing the claimed function. Id. at 1353 (citation omitted). I understand that, if a claim recites
`
`multiple functions, the specification must recite an algorithm for performing each function. E.g.,
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`Noah Sys., Inc., 675 F.3d at 1314 (citation omitted). I also understand that, to disclose an
`
`algorithm, the specification must do more than “merely restate the function recited in the claim.”
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`E.g., Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1337 (Fed. Cir. 2014). The specification
`
`cannot “[s]imply disclos[e] a black box that performs the recited function . . . .” E.g., id. at 1338;
`
`see also ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 518 (Fed. Cir. 2012). Similarly, the
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`specification cannot simply disclose “inputs and outputs.” E.g., Augme Techs., Inc., 755 F.3d at
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`1337; see also Ibormeith IP, LLC v. Mercedes-Benz USA, LLC, 732 F.3d 1376, 1382 (Fed. Cir.
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`2013) (“Table 10 merely lists inputs without specifying any single formula or function or algorithm
`
`defining the contribution of any of the inputs to a computation.”). Instead, I understand that the
`
`specification must disclose a specific algorithm for performing the claimed functions, and cannot
`
`
`’829 patents. See supra n.1. I further understand that the ’728 patent is subject to the pre-AIA
`version of 35 U.S.C. § 112. My opinions would be the same under either version of the statute.
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`merely disclose “an entire class of different possible algorithms . . . .” E.g., Triton Tech., 753 F.3d
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`at 1379. I understand that structure, including algorithms or parts thereof, that are disclosed in the
`
`specification as corresponding to a first claim element cannot correspond to a second, separate
`
`claim element. E.g., Twin Peaks Software Inc. v. IBM Corp., 690 F. App’x 656, 660 (Fed. Cir.
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`2017).
`
`31.
`
`I understand that “[s]imply disclosing software . . . without providing some detail
`
`about the means to accomplish the function[] is not enough.” E.g., Triton Tech., 753 F.3d. at 1379
`
`(citation omitted) (internal quotation marks omitted). I understand that—even if the specification
`
`does disclose an algorithm—it must disclose an algorithm that, from the viewpoint of a POSITA,
`
`is sufficient to define the structure and make the bounds of the claim understandable. E.g., id. at
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`1313. I understand that the spec