Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 1 of 31 PageID #: 25050
`Case 5:19-cv-00036—RWS Document 447-11 Filed 07/27/20 Page 1 of 31 PageID #: 25050
`
`
`
`
`
`
`
`
`
`
`EXHIBIT 10
`EXHIBIT 10
`
`
`
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 2 of 31 PageID #: 25051
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`MAXELL, LTD.,
`
`
`
`v.
`
`APPLE INC.,
`
`
`
`
`
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
`
`
`
`
`
`
`
`Case No. 5:19-cv-00036-RWS
`
`Plaintiff,
`
`Defendant.
`
`
`EXPERT REPORT OF ROBERT L. STOLL
`
`
`
`
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 3 of 31 PageID #: 25052
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`Table of Contents
`
`
`
`I. INTRODUCTION ....................................................................................................................... 1
`
`II. BACKGROUND AND QUALIFICATIONS, PREVIOUS TESTIMONY AND
`COMPENSATION ................................................................................................................... 1
`
`A.
`
`B.
`
`C.
`
`Background and Qualifications............................................................................... 1
`
`Prior Testimony ...................................................................................................... 5
`
`Compensation ......................................................................................................... 5
`
`III. MATERIALS AND INFORMATION CONSIDERED ........................................................... 5
`
`IV. PARTS OF A PATENT APPLICATION ................................................................................ 6
`
`A.
`
`B.
`
`Specification and Claims ........................................................................................ 6
`
`Prosecution or File History ................................................................................... 10
`
`V. EXAMINATION OF PATENT APPLICATIONS IN THE U.S. PATENT OFFICE ............ 10
`
`A.
`
`B.
`
`1.
`
`The Basis of the United States Patent System ...................................................... 10
`
`Conditions of Patentability ................................................................................... 15
`
`Prior Knowledge, Use, or Sale Must Be Public and In The United States ........... 16
`
`Public Knowledge or Use Must Be Sufficiently Shown By Clear and Convincing
`2.
`Evidence ............................................................................................................................ 17
`
`3.
`
`C.
`
`D.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`Publications Must Be Publicly Disseminated and Accessible .............................. 18
`
`The U.S. Patent and Trademark Office ................................................................. 19
`
`Examining Patent Applications............................................................................. 19
`
`Office Actions ....................................................................................................... 20
`
`Applicants’ Reply and Examiner’s Response ....................................................... 20
`
`Information Disclosure Statements (IDS) ............................................................. 22
`
`Allowance ............................................................................................................. 22
`
`Claim Construction ............................................................................................... 23
`
`VI. POST GRANT PROCEEDINGS ........................................................................................... 30
`
`
`
`
`- ii -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 4 of 31 PageID #: 25053
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`VII. RESPONSE TO DR. PARADISO’S OPINIONS WITH RESPECT TO
`CYBERGUIDE/ABOWD....................................................................................................... 36
`
`DR. PARADISO OR MR. MUNFORD HAVE NOT SHOWN BY CLEAR AND
`A.
`CONVINCING EVIDENCE THAT THE CYBERGUIDE/ABOWD ARTICLE WAS
`PUBLISHED/PUBLICLY ACCESSIBLE ....................................................................... 36
`
`1.
`
`The University of Pittsburgh Exhibits Are Insufficient ........................................ 38
`
`The Carnegie Mellon University Exhibits Are Insufficient to Prove Public
`2.
`Accessibility ...................................................................................................................... 42
`
`DR. PARADISO HAS NOT SHOWN BY CLEAR AND CONVINCING
`B.
`EVIDENCE THAT ANY CYBERGUIDE/ABOWD PROTOTYPE WAS PUBLICLY
`KNOWN OR USED ......................................................................................................... 46
`
`Dr. Paradiso Does Not Specify By Clear and Convincing Evidence What
`1.
`Cyberguide Prototype Was Relied On As Prior Art ......................................................... 47
`
`Dr. Paradiso Does Not Show By Clear and Convincing Evidence That Any
`2.
`Cyberguide Prototype Was Publicly Known or Used....................................................... 52
`
`VIII. RESPONSE TO DR. PARADISO’S OPINIONS WITH RESPECT TO GARMIN
`NAVTALK ............................................................................................................................. 57
`
`IX. RESPONSE TO DR. BOVIK’S OPINIONS WITH RESPECT TO SONY MVC-FD83
`CAMERA AND SONY MVC-FD88 CAMERA ................................................................... 73
`
`Dr. Bovik Has Not Shown That the Specific Cameras He Relied Upon Were
`A.
`Available in the United States Prior to January 11, 2000. ................................................ 74
`
`Dr. Bovik Uses Inconsistent, Unreliable Information to Attempt to Show Public
`B.
`Availability of the Sony MVC Cameras in the United States Prior to January 11, 2000. 79
`
`X. TRIAL EXHIBITS ................................................................................................................... 81
`
`XI. SUPPLEMENTATION .......................................................................................................... 82
`
`
`
`
`
`
`- iii -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 5 of 31 PageID #: 25054
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`I. INTRODUCTION
`
`1.
`
`I, Robert L. Stoll, have been retained by Maxell, Ltd. to provide expert analysis and
`
`testimony, including with respect to United States patent practice and procedures generally, and
`
`specifically as they relate to the products and printed matter in question, and the patents-in-suit1
`
`and related patents. If called to be a witness at trial, I may testify regarding the subject matter
`
`outlined below.
`
`II. BACKGROUND AND QUALIFICATIONS, PREVIOUS TESTIMONY AND
`COMPENSATION
`A.
`
`Background and Qualifications
`
`2.
`
`I am employed by the law firm Faegre Drinker Biddle & Reath LLP, located at
`
`1500 K St NW Ste. 1100, Washington, DC 20005, and have been asked to testify as an expert
`
`witness on behalf of Maxell, Ltd. If called to testify as to the matters stated herein, I could and
`
`would do so competently. My curriculum vitae, which includes the list of publications that I have
`
`authored, is attached hereto as Appendix A.
`
`3.
`
`I completed my undergraduate studies at University of Maryland in December 1979
`
`with a B.S. degree in Chemical Engineering. I attended the Catholic University of America,
`
`receiving my Juris Doctor in 1985. I am a member of the Maryland State Bar, and the Bar of the
`
`District of Columbia. I am registered to practice as a patent attorney before the U.S. Patent and
`
`Trademark Office.
`
`
`1 The patents in suit and their respective priority dates (at least) are: U.S. Patent Nos.
`6,748,317 on July 12, 1999 (the “’317 Patent”), 6,580,999 on July 12, 1999 (the “’999 Patent”),
`8,339,493 on Jan. 11, 2000 (the “’493 Patent”), 7,116,438 on May 22, 2003 (the “’438 Patent”),
`6,408,193 on Nov. 10, 1998 (the “’193 Patent”), 10,084,991 on Sep. 25, 2008 (the “’991 Patent”),
`6,928,306 on Jan. 7, 2000 (the “’306 Patent”), 6,329,794 on May 22, 2000 (the “’794 Patent”),
`10,212,586 on May 23, 2012 (the “’586 Patent”), 6,430,498 on Jul. 12, 1999 (the “’498 Patent”).
`
`
`
`- 1 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 6 of 31 PageID #: 25055
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`4.
`
`From October 2009 through December 2011, I served as Commissioner for Patents
`
`in the United States Patent and Trademark Office (“USPTO” or “Patent Office”). In my two years
`
`as Commissioner for Patents, I led an organization of about 8,000 employees. In this position, I
`
`was instrumental in the development and analysis of legislation concerning all areas of intellectual
`
`property, including the America Invents Act, and was one of the country's leaders in establishing
`
`the United States government's positions on international issues related to intellectual property. I
`
`also helped develop and plan strategic goals, as well as objectives and priorities, for the United
`
`States Patent and Trademark Office. I also served as a liaison with patent and trademark bar
`
`groups, and academic and scientific communities. I also have intimate knowledge about Patent
`
`Office practice and procedure from my almost three decades there.
`
`5.
`
`Before my appointment to the position of Commissioner for Patents, I served as
`
`Dean of Training and Education for the United States Patent and Trademark Office, from 2007 to
`
`2009. As Dean of Training and Education, I helped lead efforts to train foreign officials and the
`
`public on various matters of intellectual property.
`
`6.
`
`From 2002 until 2007 I served as Director of the Office of Enforcement for the
`
`United States Patent and Trademark Office. As Director, I worked to improve intellectual property
`
`protection, both in the United States, and abroad. Prior to my work as Director of the Office of
`
`Enforcement, I worked as Administrator of the Office of Legislative and International Affairs for
`
`the United States Patent and Trademark Office, from 1996 until 2002. As Administrator of the
`
`Office of Legislative and International Affairs, I led a staff of attorneys representing the USPTO
`
`before Congress and in diplomatic and policy arenas worldwide.
`
`7.
`
`From November 1994 until February 1996, I served as Executive Assistant to the
`
`Director for Patents for the United States Patent and Trademark Office.
`
`
`
`- 2 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 7 of 31 PageID #: 25056
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`preliminary determination on whether they will institute review of the challenged patent claims. If
`
`review is instituted, then both the Petitioner and Patent Owner are allowed to submit additional
`
`papers, take limited discovery (e.g., depositions of experts), and request an Oral Hearing in front
`
`of the panel of judges after which the panel decides whether they consider the claims to be valid
`
`or invalid in view of the prior art patents or publications submitted by the Petitioner. The panel of
`
`judges issues a “Final Written Decision” in which it provides its findings of patentability or
`
`unpatentability. An exemplary timeline of an IPR proceeding is excerpted below from the
`
`USPTO’s website:
`
`
`
`See https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/trials/aia-
`trial-types
`
`107.
`
`It is my understanding that the patents that Maxell have asserted in this case have
`
`been subject to such IPR proceedings where the PTAB issued preliminary decisions not to
`
`institute IPRs because the Petitioner in those petitions (ZTE) did not show a likelihood that the
`
`challenged claims were not validity in view of the prior art. For example, these included U.S.
`
`Patent Nos. 6,408,193, 6,748,317, 8,339,493, 6,329,794, and 6,430,498.
`
`108. ZTE filed an IPR against the ’317 Patent. See IPR2018-00235. The PTAB denied
`
`ZTE’s Petition.
`
`
`
`- 35 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 8 of 31 PageID #: 25057
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`109. ZTE filed an IPR against the ’493 Patent. See IPR2018-00236. The PTAB denied
`
`ZTE’s Petition.
`
`110. ZTE filed an IPR against the ’193 Patent. See IPR2018-00237. The PTAB denied
`
`ZTE’s Petition.
`
`111. ZTE filed an IPR against the ’794 Patent. See IPR2018-00241. The PTAB denied
`
`ZTE’s Petition.
`
`112. ASUS filed an IPR against the ’498 Patent. See IPR2019-0071. The PTAB denied
`
`ASUS’s Petition.
`
`113.
`
`It is my understanding that additional IPRs for these or related patents were filed
`
`that were withdrawn due to settlements and Apple has also filed IPRs but they have not reached
`
`the stage of institution yet.
`
`VII. RESPONSE TO DR. PARADISO’S OPINIONS WITH RESPECT TO
`CYBERGUIDE/ABOWD
`A.
`
`DR. PARADISO OR MR. MUNFORD HAVE NOT SHOWN BY CLEAR
`AND CONVINCING EVIDENCE THAT THE CYBERGUIDE/ABOWD
`ARTICLE WAS PUBLISHED/PUBLICLY ACCESSIBLE
`
`114. Dr. Paradiso has not shown that the Cyberguide System (“Cyberguide”) And
`
`Related Publication, Cyberguide: A Mobile Context-Aware Tour Guide by Abowd et al.
`
`(“Abowd”) constitutes prior at under 102(a) and (b). Instead, Dr. Paradiso relies on the Abowd
`
`paper being “dated September 23, 1996”—apparently a reference to a date printed on Abowd’s
`
`cover page—and of having “been informed that the Abowd paper was published or publicly
`
`available no later than October 1997,” but with no further explanation or support.
`
`
`
`- 36 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 9 of 31 PageID #: 25058
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`(Abowd, cover page) (highlights added).
`
`
`
`
`
`(Paradiso Report, ¶121) (highlights added).
`
`115. Apple relies on the expert report of Jacob Robert Munford (the “Munford Report”)
`
`to conclude Abowd was made available and accessible to the public in October 1997 and thus prior
`
`to the critical date of July 12, 1999 (the “critical date”). The Munford Report relies on two premises
`
`to support a belief that Abowd was published and publicly accessible prior to the critical date: 1)
`
`the University of Pittsburgh records, and 2) the Carnegie Mellon University records. Yet, neither
`
`prove that Abowd was indexed and publicly available prior to the critical date. It is my opinion that
`
`Apple has not met its burden of showing by clear and convincing evidence that Abowd was
`
`sufficiently accessible to the public interested in the art such that it can be considered printed
`
`publication. Therefore, it is my opinion that Apple has failed to establish public accessibility of
`
`Abowd prior to the critical date.
`
`
`
`- 37 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 10 of 31 PageID #: 25059
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`1.
`
`The University of Pittsburgh Exhibits Are Insufficient
`a.
`
`Exhibit 2A Does Not Show Public Accessibility
`
`116.
`
`It is my opinion that the University of Pittsburgh Exhibits (“Pittsburgh Exhibits”)
`
`do not establish that Abowd was actually indexed and publicly available on or before the critical
`
`date. Mr. Munford opens his opinion by declaring “[I] secured this Exhibit myself in person”—a
`
`factor that is irrelevant. What is significant is neither Mr. Munford nor Apple has provided any
`
`evidence that the book shown in the Pittsburgh Exhibits was made sufficiently publicly accessible
`
`to be considered a “printed publication” under § 102 prior to the critical date. Exhibit 2A
`
`establishes only that the “Wireless Network” book includes Abowd today and is indexed today.
`
`But it does not provide any evidence that Abowd was indexed on or before July 12, 1999, or that
`
`it was “publicly accessible” on that critical date.
`
`117. Notably, Mr. Munford makes no mention and provides no detail to the “Baltzer
`
`Journals” referenced in Abowd. APL-MAXELL_00713087. Instead, Mr. Munford discusses only
`
`Wireless Networks generally as another journal that is not the Baltzer Journals.
`
`118.
`
`In addition, the sleeve of Wireless Networks includes a warning: “DO NOT
`
`CIRCULATE” as shown below:
`
`
`
`- 38 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 11 of 31 PageID #: 25060
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`
`
`Munford Report, Ex. 2A at 37. Therefore, even if Wireless Networks existed on or before July 12,
`
`1999, the “DO NOT CIRCULATE” warnings indicate that it was not meant to be disseminated to
`
`the public. In fact, nowhere does Mr. Munford show any evidence that there was any circulation
`
`of Wireless Networks, or that anyone ever “checked out” the item. Therefore, it is my opinion that
`
`Apple has not shown by clear and convincing evidence that a copy of Wireless Networks including
`Abowd were made publicly available to the extent that persons interested and ordinarily skilled in
`
`the subject matter or art exercising reasonable diligence could have locate it prior to the critical
`
`date.
`
`b.
`
`Exhibit 2B Does Not Prove Public Accessibility
`
`119. Mr. Munford also asserts that “The ‘Holdings Information’ field on page 2 of the
`
`library record indicates this journal was held by this library in perpetuity from 1996 – 2003.”
`
`Munford Expert Report, ¶ 13. However, it is my opinion that Mr. Munford has not shown why this
`
`claim should be given any merit. Below is the “Holdings Information”:
`
`
`
`- 39 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 12 of 31 PageID #: 25061
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`(Munford Report, Ex. 2B at 40).
`
`120. The “Holdings Information” plainly show that only “1 Copy [has been] received as
`
`of 09-02-2004.” Yet, it contains nothing to substantiate Mr. Munford’s claim that the library has
`
`held “this journal . . . in perpetuity from 1996 – 2003.” Munford Expert Report, ¶ 13. In addition,
`
`Mr. Munford appears to generally use the term “this journal” and does not provide any specifics
`
`as to which version or volume was held at the library and when. Therefore, I do not see any
`
`evidence on Exhibit 2B that can lead one to conclude that the library made Volume 3 of Wireless
`
`Networks publicly available prior to the critical date.
`
`121. Mr. Munford claims that “[t]his data range indicates the library’s collection
`
`includes the October 1997 Publication . . . containing ‘Abowd’” is curious because no date range
`
`exists. Munford Expert Report, ¶ 13. However, this claim has no bearing on when Abowd became
`
`publicly accessible to the appropriate audience. On the other hand, the exhibit indicates that at
`
`least the electronic version of the journal was available only to “Pitt-affiliated users.”
`
`
`
`- 40 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 13 of 31 PageID #: 25062
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`122.
`
`In fact, Apple never argues this part of the evidentiary standard. It is my opinion
`
`that nothing about this exhibit proves that the library possessed the correct volume of Wireless
`
`Networks at the correct time. Mr. Munford’s declaration fails to meet the legal standard of
`
`“publicly accessible” to “persons interested” under Federal Circuit precedence.
`
`123. Mr. Munford appears to engage in a showing when the physical construction of the
`
`book may have taken place—something that has no relevance to its public accessibility. Mr.
`
`Munford notes that the “book bindery sticker on page 25 of 2B indicates multiple volumes of
`
`Wireless Networks owned by the University of Pittsburgh spanning 1996-1997 were sent off to a
`
`book bindery sometime during January – March 1998.” Munford Report, ¶13. Exhibit 2B does not
`
`even show “page 25.” Further, it is my opinion that even if the book had page 25, the fact that
`
`“multiple volumes” of a book were sent to a book bindery does not prove that Abowd was “publicly
`
`accessible” to the appropriate audience. In view of the above, it is my opinions that Mr. Munford
`
`
`
`- 41 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 14 of 31 PageID #: 25063
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`and/or Dr. Paradiso have failed to show by clear and convincing evidence that Volume 3 of
`
`Wireless Networks, allegedly containing Abowd, was publicly available prior to the critical date.
`
`2.
`
`The Carnegie Mellon University Exhibits Are Insufficient to Prove Public
`Accessibility
`
`124.
`
`It is further my opinion that the Carnegie Mellon University Exhibits 2C and 2D
`
`also do not show that Abowd was indexed and publicly available on or before the critical date of
`
`July 12, 1999.
`
`a.
`
`Exhibit 2C Fails to Prove Public Accessibility
`
`125. Mr. Munford states that Exhibit 2C is a “true and correct copy” of Abowd without
`
`offering any reasoning as to why other than his assertion that he secured the Exhibit himself,
`
`something that is not relevant here. Munford Report, ¶14. Mr. Munford provides no details towards
`
`a conclusion that Exhibit 2C was publicly accessible. Therefore, it is my opinion that nothing about
`
`Exhibit 2C nor Mr. Munford’s assertions proves by clear and convincing evidence that Abowd was
`
`publically available prior to July 12, 1999.
`
`b.
`
`Exhibit 2D Fails to Prove Public Accessibility
`
`126. Mr. Munford also fails to show public accessibility with regard to Exhibit 2D. It is
`
`my opinion that Mr. Munford’s claims about this exhibit are contradictory and the evidence is not
`
`sufficient to prove that Abowd was publically available. Mr. Munford claims that the “008 field of
`
`this MARC record indicates Wireless Networks was first cataloged by the Carnegie Mellon
`
`University as of January 22, 1999.” Munford Report, ¶15. Similarly to his prior assertions, Mr.
`
`Munford does not discern which version or volume of Wireless Networks he is referring to even
`
`though it is clear that by 1999 there were five different volumes of Wireless Networks. This
`
`necessarily shows that Mr. Munford’s claims that the “‘Holdings Information’ field on page 3 . . .
`
`indicates this journal has been held by this library in perpetuity since 1999” is erroneous. Id.
`
`
`
`- 42 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 15 of 31 PageID #: 25064
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`(emphasis added). This claim is made in the very next sentence and is ineffective. Finally, Mr.
`
`Munford states that “[t]his date range” indicates that the University must have had Abowd because
`
`it includes the entirety of IEEE Communications Magazine via ACM Digital Library. There are
`
`several problems with this last claim. Id.
`
`127. First, Mr. Munford claims that Wireless Networks was first cataloged in the
`
`Carnegie Mellon University as of January 22, 1999. Munford Report, ¶9. But as seen below in Mr.
`
`Munford’s own exhibits, the version of Wireless Networks is apparently from 1995.
`
`
`
`
`
`(Munford Report, Ex. 2D at 58-59). Yet, Abowd was not written until after 1995. The contradiction
`
`of Apple’s evidence is further highlighted by Mr. Munford’s assertion that Carnegie Mellon library
`
`somehow held “this journal . . . in perpetuity since 1999.” Id. ¶15. Similarly here, it appears that
`
`Mr. Munford does not and cannot tell which version was located when, nor where with any
`
`particularity.
`
`128. Second, Exhibit 2D has no mention of when, if ever, Abowd was added to this
`
`journal and/or whether this journal was even indexed at the dates identified in this code:
`
`
`
`- 43 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 16 of 31 PageID #: 25065
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`129.
`
`It is therefore my opinion that Mr. Munford’s claim regarding some unknown “date
`
`range” and how it “indicates” that Carnegie Mellon possessed Abowd is flawed. (Munford Report,
`
`
`
`¶15).
`
`130. The reference to the ACM Digital Library is another critical oversight. Mr.
`
`Munford concludes that that anyone could have accessed Volume 3 at any time prior to the critical
`
`date because, somehow, this date range “indicates the library’s collection includes the entirety of
`
`IEEE Communications Magazine via ACM Digital Library, including October 1997 edition
`
`containing ‘Abowd’”. However, Mr. Munford provides no support for this claim.
`
`131. The Wayback Machine highlights the fact that virtually no activity within a decade
`
`of the critical date existed at the referenced ACM Digital Library internet addresses:
`
`(1) the URL as provided by Mr. Munford:
`
`
`
`- 44 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 17 of 31 PageID #: 25066
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`
`
`
`
`(2) A shortened version of the URL captures more content from this domain:
`
`(3) the URL of ACM Digital:
`
`(4) a shortened version of the URL, capturing more content from the root domain:
`
`
`
`- 45 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 18 of 31 PageID #: 25067
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`(See MAXELL_APPLE0277412 - MAXELL_APPLE0277421).
`
`132.
`
`It is my opinions that neither Dr. Paradiso nor Mr. Munford offer any evidence, nor
`
`any mention, of whether (1) Carnegie Mellon had a publically available website prior to the critical
`
`date, (2) whether any version/volume of Wireless Networks was publically available, (3) whether
`
`Volume 3 was available, (4) whether the ACM Digital Library possessed the licensing rights to
`
`Abowd or Wireless Networks prior to the critical date, (5) whether Carnegie Mullen and ACM
`
`Digital Library partnered up to provide access prior to the critical date, or (6) even whether either
`
`of these two institutions had websites at that time.
`
`133. Mr. Munford’s unsubstantiated claims fail to even consider the question of when
`
`Abowd was publically available. In view of the above, it is my opinion that Mr. Munford and/or
`
`Dr. Paradiso have not established by clear and convincing evidence that Abowd was
`
`published/publicly available/known prior to July 12, 1999.
`
`B.
`
`DR. PARADISO HAS NOT SHOWN BY CLEAR AND CONVINCING
`EVIDENCE THAT ANY CYBERGUIDE/ABOWD PROTOTYPE WAS
`PUBLICLY KNOWN OR USED
`
`134. Dr. Paradiso has also not shown that Cyberguide is prior art under 102(a), 102(b),
`
`or 102(g), Dr. Paradiso provides only a conclusory statement that Abowd’s team publically
`
`disclosed fully operational prototypes, without any reasoning or analysis in its support:
`
`
`
`- 46 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 19 of 31 PageID #: 25068
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`
`(Paradiso Report, ¶121) (highlights added).
`
`135. However, Dr. Paradiso did not evaluate any Cyberguide prototype, and did not
`
`provide any evidence pertaining to any Cyberguide prototype—no pictures, no diagrams, no
`
`schematics, and no software code. Instead, Dr. Paradiso relies solely on Abowd and related
`
`publications to conclude that Cyberguide was prior art. But these very publications highlight the
`
`substantial differences between each prototype, and Dr. Paradiso fails to specifically identify what
`
`Cyberguide prototype is being relied on as prior art, and also fails to provide any support that such
`
`prototype was publicly known or used. In my opinion, and as will be further discussed below, this
`
`falls far short of the necessary burden to show by clear and convincing evidence that any
`
`Cyberguide/Abowd prototype is prior art.
`
`1.
`
`Dr. Paradiso Does Not Specify By Clear and Convincing Evidence What
`Cyberguide Prototype Was Relied On As Prior Art
`
`136. The Cyberguide project is defined as “a series of prototypes of a mobile, hand-held
`
`context-aware tour guide.” (APL-MAXELL_00713285). The Abowd paper “describe[s] the
`
`architecture and features of a variety of Cyberguide prototypes developed for indoor and outdoor
`
`
`
`- 47 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 20 of 31 PageID #: 25069
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`use on a number of different hand-held platforms.” Id. But Dr. Paradiso does not describe with
`
`specificity what Cyberguide prototype was relied on as prior art as the “Cyberguide” reference.
`
`137. Dr. Paradiso starts out from the very beginning on the wrong path. Dr. Paradiso
`
`defines “Cyberguide” as a single “Cyberguide System,” a “software and hardware system that Dr.
`
`Abowd and his colleagues implemented on a number of popular portable devices.” (Paradiso, at
`
`56 (heading), ¶123.) But the “system” described in Abowd is merely a “conceptual design, or
`
`architecture that captured the essence of the mobile tour guide.” (APL-MAXELL_00713091). This
`
`conceptual system was implemented as a series of “Cyberguide prototypes” which are “different
`
`versions of Cyberguide with different
`
`features on different platforms.”
`
`(APL-
`
`MAXELL_00713101). Abowd makes very clear that “[f]rom the beginning, we have viewed
`
`Cyberguide as a family of prototypes and not just a single prototype.” Id. Therefore, the
`
`Cyberguide prototypes are uniquely different, and must be analyzed separately.
`
`138. Dr. Paradiso’s confusion caused by this treatment of Cyberguide as a unitary system
`
`is exacerbated throughout Dr. Paradiso’s invalidity report. In the report, Dr. Paradiso mixes and
`
`matches the Cyberguide prototypes and describes different features of each as if they were part of
`
`a single unit. For example, Dr. Paradiso discusses and provides screenshots of “Cyberguide” below
`
`in the same paragraphs and without a single acknowledgement that these were vastly different
`
`prototypes built at different times:
`
`
`
`- 48 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 21 of 31 PageID #: 25070
`
`
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`(Paradiso Report, ¶127, 125) (Abowd Fig. 4, Fig. 10, Fig. 1).
`
`139. But Figures 1, 4, and 10 of Abowd do not make up one Cyberguide System, and
`
`instead describe vastly different Cyberguide prototypes developed at different times, with different
`
`
`
`
`
`- 49 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 22 of 31 PageID #: 25071
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`hardware, different components, and different software. As the developers of the Cyberguide
`
`project made clear, “Cyberguide is a rapidly evolving prototype” and “[t]he architecture of
`
`Cyberguide consisted of four independent components---the map, the information base, the
`
`positioning system and the communications system---each of which will change significantly
`
`from prototype to prototype.” (APL-MAXELL_00713285) (emphasis added).
`
`140. Figure 1 is “[a] screen dump from an initial prototype done using the Newton
`
`Message Pad.” (APL-MAXELL_00713284). These initial prototypes were built for indoor use
`
`only and, as explained, the “initial prototypes had very limited positioning capabilities.” (APL-
`
`MAXELL_00713285). The initial prototypes were part of “a series of prototypes developed for
`
`the Apple MessagePad.” (APL-MAXELL_00713089). Figure 4, on the other hand, is a completely
`
`different series of prototypes built “for outdoor use (Figure 4).” (APL-MAXELL_00713096). In
`
`fact, the Figure 4 that Dr. Paradiso refers to was an outdoor-only “proof of concept tour of the
`
`Georgia Tech campus (shown in Figure 4).” As explained in Abowd, this remained a proof of
`
`concept and was not a fully functioning prototype. Lastly, Figure 10 showed yet a different
`
`prototype series, called “CyBARguide,” that were also built for outdoor use. It is my opinion that
`
`the prototypes referred to by Dr. Paradiso are not just one prototype, but were instead developed
`
`for different purposes and functioned differently not only due to different software but also because
`
`very different hardware was used:
`
`(Abowd at 19, APL-MAXELL_00713105).
`
`141. Further evidence by the developers of Cyberguide shows there were multiple
`
`prototypes, and the features of the prototypes were constantly changing: “We have completed 3
`
`
`
`
`
`- 50 -
`
`

`

`Case 5:19-cv-00036-RWS Document 447-11 Filed 07/27/20 Page 23 of 31 PageID #: 25072
`
`CONFIDENTIAL – ATTORNEYS’ EYES ONLY
`
`
`major prototypes of Cyberguide . . . . Our initial prototypes had very limited positioning
`
`capabilities that did not encourage tourist mobility . . . . Our next prototype will provide a tour of
`
`a much wider area.” (APL-MAXELL_00713285).
`
`142.
`
`In addition to the above, the Abowd paper also contains several remarks showing
`
`the various different prototypes developed throughout time, and how their features were constantly
`
`changing:
`
`•
`
`“In this paper we present the Cyberguide project, in which we