Case 1:13-cv-00919-LPS Document 317-1 Filed 03/11/21 Page 1 of 364 PageID #: 32160
`Case 1:13-cv-00919—LPS Document 317-1 Filed 03/11/21 Page 1 of 364 PageID #: 32160
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`EXHIBIT 1
`EXHIBIT 1
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`Case 1:13-cv-00919-LPS Document 317-1 Filed 03/11/21 Page 2 of 364 PageID #: 32161
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`CONFIDENTIAL OUTSIDE COUNSEL ONLY
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`C.A. No. 12-1601-LPS
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`C.A. No. 13-919-LPS
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`))))))))))
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`EXPERT REPORT OF DR. EARL SACERDOTI
`REGARDING VALIDITY OF U.S. PATENT NO. 7,917,843
`
`
`
`
`Dr. Earl Sacerdoti
`
`
`
`____________________________
`October 20, 2020
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`
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`CONFIDENTIAL – OUTSIDE COUNSEL ONLY
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`
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`
`v.
`
`MOTOROLA MOBILITY LLC
`f/k/a MOTOROLA MOBILITY, INC.,
`
`
`Defendant.
`ARENDI S.A.R.L.,
`
`
`Plaintiff,
`
`v.
`
`GOOGLE LLC,
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`
`Defendant.
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`
`Table of Contents
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`Page
`
`INTRODUCTION .................................................................................................................. 1
`I.
`II. QUALIFICATIONS ............................................................................................................... 1
`III.
`LEVEL OF ORDINARY SKILL ....................................................................................... 3
`IV.
`LEGAL STANDARDS ...................................................................................................... 4
`V. VALIDITY OF THE ASSERTED PATENTS ..................................................................... 11
`A. The Alleged Prior Art Does Not Disclose the Asserted Claims ....................................... 18
`1. CyberDesk Does Not Invalidate the Asserted Claims .................................................. 21
`2. Apple Data Detectors System Does Not Invalidate the Asserted Claims ..................... 38
`3. Nardi et al. Does Not Invalidate the Asserted Claims .................................................. 50
`4. Miller Does Not Invalidate the Asserted Claims .......................................................... 57
`5. The LiveDoc System Does Not Invalidate the Asserted Claims .................................. 72
`6. Apple Newton MessagePad 2000 Does Not Invalidate the Asserted Claims ............... 83
`7. U.S. Patent No. 5,644, 735 (“Luciw”) Does Not Invalidate the Asserted Claims ........ 94
`8. Eudora Pro Does Not Invalidate the Asserted Claims ................................................ 107
`9. Microsoft Word 97 Does Not Invalidate the Asserted Claims ................................... 123
`10. Microsoft Outlook 97 Does Not Invalidate the Asserted Claims ........................... 137
`11.
`U.S. Patent No. 6,085,206 (“Domini”) Does Not Invalidate the Asserted Claims 145
`12.
`U.S. Patent No. 6.377,965 (“Hachamovitch”) Does Not Invalidate the Asserted
`Claims 153
`13.
`U.S. Patent No. 5,392,386 (“Chalas”) Does Not Invalidate the Asserted Claims .. 166
`14.
`Selection Recognition Agent Does Not Invalidate the Asserted Claims ................ 175
`15.
`U.S. Patent No. 5,859,636 (“Pandit”) Does Not Invalidate the Asserted Claims ... 186
`16.
`U.S. Patent No. 6,085,201 (“Tso”) Does Not Invalidate the Asserted Claims ....... 198
`B. The Asserted Claims are Not Anticipated by CyberDesk .............................................. 213
`C. The Asserted Claims Were Not Obvious ........................................................................ 213
`1. Combining Pandit with CyberDesk Is Not Obvious or Invalidating .......................... 219
`2. Combining Pandit with Eudora Is Not Obvious or Invalidating ................................. 224
`3. Combining Pandit with Apple Data Detectors Is Not Obvious or Invalidating ......... 227
`4. Combining Pandit with LiveDoc System Is Not Obvious or Invalidating ................. 229
`5. Combining Pandit with Newton Is Not Obvious or Invalidating ............................... 232
`6. Combining Pandit with Microsoft Outlook 97 Is Not Obvious or Invalidating ......... 234
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`7. Combining CyberDesk with Chalas Is Not Obvious or Invalidating ......................... 238
`8. Combining CyberDesk with Eudora Is Not Obvious or Invalidating ......................... 242
`9. Combining CyberDesk with Apple Data Detector Is Not Obvious or Invalidating ... 244
`10.
`Combining CyberDesk with Newton Is Not Obvious or Invalidating .................... 247
`11.
`Combining CyberDesk with LiveDoc System Is Not Obvious or Invalidating ...... 249
`12.
`Combining CyberDesk with Selection Recognition Agent (including Pandit) Is Not
`Obvious or Invalidating ...................................................................................................... 251
`13.
`Combining CyberDesk with Domini Is Not Obvious or Invalidating .................... 254
`14.
`Combining CyberDesk with Microsoft Word 97 Is Not Obvious or Invalidating . 256
`15.
`Combining Apple Data Detectors with Chalas Is Not Obvious or Invalidating ..... 258
`16.
`Combining Apple Data Detectors with Eudora Is Not Obvious or Invalidating .... 260
`17.
`Combining Apple Data Detectors System with CyberDesk System Is Not Obvious
`or Invalidating ..................................................................................................................... 264
`18.
`Combining Apple Data Detectors with Newton Is Not Obvious or Invalidating ... 266
`19.
`Combining Apple Data Detectors System with LiveDoc System Is Not Obvious or
`Invalidating ......................................................................................................................... 268
`Combining Apple Data Detectors with Selection Recognition Agent (including
`20.
`Pandit) Is Not Obvious or Invalidating ............................................................................... 270
`21.
`Combining Apple Data Detectors with Domini Is Not Obvious or Invalidating ... 272
`22.
`Combining Apple Data Detectors with Microsoft Word 97 Is Not Obvious or
`Invalidating ......................................................................................................................... 274
`Combining Apple Data Detectors with Microsoft Outlook 97 Is Not Obvious or
`23.
`Invalidating ......................................................................................................................... 276
`Combining Eudora System with CyberDesk System Is Not Obvious or Invalidating
`24.
`
`278
`25.
`Combining Eudora System with Apple Data Detectors System Is Not Obvious or
`Invalidating ......................................................................................................................... 281
`26.
`Combining Eudora with Newton Is Not Obvious or Invalidating .......................... 286
`27.
`Combining Eudora with LiveDoc System Is Not Obvious or Invalidating ............ 288
`28.
`Combining Eudora with Selection Recognition Agent (including Pandit) Is Not
`Obvious or Invalidating ...................................................................................................... 289
`29.
`Combining Chalas with CyberDesk System Is Not Obvious or Invalidating ......... 294
`30.
`Combining Chalas with Apple Data Detectors System Is Not Obvious or
`Invalidating ......................................................................................................................... 298
`31.
`Combing Chalas with LiveDoc System Is Not Obvious or Invalidating ................ 299
`32.
`Combining Chalas with Newton Is Not Obvious or Invalidating ........................... 300
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`Combining Chalas with Selection Recognition Agent (including Pandit) Is Not
`33.
`Obvious or Invalidating ...................................................................................................... 302
`Dr. Fox’s Generalized Discussion Does Not Establish the Obviousness of the
`34.
`Proposed Combinations ...................................................................................................... 303
`D. Secondary Considerations of Non-Obviousness Further Confirm the Validity of the
`Asserted Claims ...................................................................................................................... 316
`E. The Specification of the ’843 Patent Adequately Supports and Enables the Asserted
`Claims ..................................................................................................................................... 326
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`iii
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`CONFIDENTIAL OUTSIDE COUNSEL ONLY
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`I.
`
`INTRODUCTION
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`
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`I have been asked by counsel for Plaintiff Arendi S.à.r.l. (“Arendi”) to respond to
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`the expert report entitled “Expert Report of Edward Fox, Ph.D. On the Invalidity of U.S. Patent
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`7,917,843,” dated August 7, 2020 (“Fox Report”). I understand that Dr. Fox was retained by
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`Google LLC (“Google”) and Motorola Mobility LLC (“Motorola”), the defendants in this case.
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`
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`This report contains a summary of my opinions and analysis to date regarding the
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`validity of U.S. Patent No. 7,917,843 (“the ’843 Patent”) in connection with this case. I expect to
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`be called as an expert witness if this case comes to trial. As I continue my work on the issues raised
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`in this case, I may supplement or amend my opinions and conclusions as a result of further review
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`and analysis, or upon further information from the parties, Dr. Fox, or the Court.
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`
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`In preparing the opinions and discussion outlined in this report, I have reviewed the
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`’843 Patent. I have likewise reviewed and considered the information ostensibly relied upon by
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`Dr. Fox in reaching his opinions, including the alleged prior art that he identifies. I have also
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`reviewed other materials presumably not reviewed or relied upon by Dr. Fox. Those materials are
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`listed in Exhibit A to this responsive report.
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`
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`I am being compensated at the rate of $550 an hour for my time working on this
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`matter. My compensation does not depend on my opinions or the outcome of this action.
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`II. QUALIFICATIONS
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`
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`My qualifications are reflected in my CV, which is attached as Exhibit B to this
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`report. I summarize my most relevant qualifications below.
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`
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`I received my Bachelor of Arts in Psychology from Yale College in 1969. I received
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`both my Master of Science (M.S.) and my Doctor of Philosophy (Ph.D.) degrees in Computer
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`Science from Stanford University in 1972 and 1975, respectively. I also took courses at Stanford’s
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`1
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`graduate business school in 1983 as part of its American Electronics Association-sponsored
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`Executive Education Program.
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`From 1972 until 1979, I worked at the Stanford Research Institute (now SRI
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`International), initially as a Research Mathematician, and later as the Associate Director for the
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`Artificial Intelligence Center. In those roles, I managed and performed research in a variety of
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`subfields within Artificial Intelligence.
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`
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`After leaving SRI International, I co-founded Machine Intelligence Corporation,
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`where I served as Director of Research and Development, Vice President of Engineering, and
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`President of International Machine Intelligence Corporation. Here, I directed development of the
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`first general industrial vision system, the first vision-guided industrial robot, and the first
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`computer-networked industrial robot. I also supervised and participated in developing the
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`prototype of a data management product, for which we created a spin-off business named
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`Symantec, Inc., a leading software publisher.
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`
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`In 1983 I joined Teknowledge, Inc. as Chief Technical Officer, and later served as
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`General Manager of its products division and Vice President of Business Development. In these
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`roles, I managed the development, sales, and application of two programming languages for
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`developing expert systems. These engagements included serving as Interim Chief Technology
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`Officer during 1997 and 1998 for two companies, Portola Dimensional Systems and Open Minded
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`Solutions, where I recruited and supervised developers whose role was designing and
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`implementing user applications or software modules.
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`
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`Since leaving Teknowledge in 1988, I worked primarily as Principal Consultant for
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`The Copernican Group and subsequently as Managing Partner for Opero Partners, LLC. In these
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`roles, I provided management and technical consultation to over 100 companies.
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`2
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`In 1994–95, I helped establish the Apple Systems Architecture group, reporting to
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`Apple’s Chief Scientist, to coordinate technology developments across its business units. There, I
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`helped develop Apple’s first technology roadmap and led the AppleSoft Architecture Council. I
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`executed special projects for the CEO’s Product Strategy Council, including market and technical
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`strategies for enterprise computing, and for the Internet.
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`
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`I also am the author of a book and over 20 papers and articles on a wide range of
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`advanced software topics. I am the inventor of U.S. Patent Number 6,222,540, principal inventor
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`of U.S. Patent Number 6,188,403, and co-inventor of seven other United States Patents: U.S.
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`Patent Numbers 6,954,728, 7,797,168, 7,996,264, 8,407,086, 8,417,535, 8,583,562, and
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`9,589,274.
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`I am a co-founder of the American Association for Artificial Intelligence (AAAI),
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`and a former member of the editorial boards of Cognitive Science, Robotics World, and AI Expert,
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`and was Conference Chair for AIPS-96 (an international conference on automatic planning). I also
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`am a former member of the Steering Committee of the DECUS AI Special Interest Group, and
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`program committees of numerous AAAI and IEEE conferences on both computer science research
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`and applications. I have presented 7 invited conference talks and 4 conference tutorials, and I was
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`a frequent speaker for such groups as DPMA, DECUS, GUIDE, and SME on technical,
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`management and business issues concerning advanced software technology and technology
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`transfer.
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`III. LEVEL OF ORDINARY SKILL
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`
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`I have been informed that “a person of ordinary skill in the relevant field” is a
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`hypothetical person to whom an expert in the relevant field could assign a routine task with
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`reasonable confidence that the task would be successfully carried out at the time of the invention.
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`I understand that several factors are relevant in determining the level of ordinary skill in the art:
`3
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`the type of problems encountered in the art; prior art solutions to those problems; the rapidity with
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`which innovations are made; the sophistication of the technology; and the education level of active
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`workers in the field.
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`In my opinion, a person of ordinary skill in the art would have at least a B.S. in
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`Computer Science or Electrical Engineering or a related field and approximately two years of
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`experience designing user applications or software modules. Alternatively, significant industry
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`experience can serve as a substitute for a formal degree. I understand that Dr. Fox has adopted an
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`alternative definition of the person of ordinary skill in the art. According to Dr. Fox, “a person of
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`ordinary skill . . . would have at least a Bachelor’s degree in Computer Science or Electrical and/or
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`Computer Engineering or related discipline and approximately two years experience designing
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`applications using databases.” (Fox Report, p. 44 (quoting IPR IPR2014-00208, Menascé
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`Declaration, Ex. 1002, a pp. 12, 13-14, ARENDI 208840-9091 at 208852, 208853-54).
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`In my opinion, the former qualification is more apt, and it is the one that I have
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`applied. Both standards, however, reflect a similar level of skill in the art. My analysis and
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`conclusions would not change were the latter standard, preferred by Dr. Fox, adopted. Moreover,
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`based on my experience, education and training, I qualify as a person of ordinary skill in the art
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`under both standards. Further, I generally understand the capabilities of a person of ordinary skill
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`in the relevant field. I have supervised and directed many such persons over the course of my
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`career.
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`IV. LEGAL STANDARDS
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`
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`In forming my opinions, I have been asked to apply certain standards regarding
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`patent validity. I have been informed that patents are presumed valid and that the evidence required
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`to overcome the presumption of validity must be clear and convincing. I have been informed that
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`clear and convincing evidence requires evidence that produces in one’s mind a firm belief or
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`conviction as to the matter at issue, demonstrated by a showing that something is highly probable
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`and not merely likelier than not.
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`18.
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`I have also been informed that determining whether a recited claim limitation is
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`contained in the prior art is a two-step analysis: (1) determining the meaning and scope of the
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`claims, and (2) comparing the properly construed claims to the prior art. In determining the
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`meaning and scope of the claims, I relied in part on the constructions of certain claim terms given
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`by the Comt in its August 19, 2019 Claim Construction Order. In particular, I understand that the
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`Court has construed claims in the ’843 Patent as follows:
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`“document”
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`“a word processing, spreadsheet, or similar file
`into which text can be entered”
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`“first information”
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`“text in a document that can be used as input
`for a search operation in a source external to
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`the document”
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`“computer program”
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`“to determine if the first information is at least
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`one of a plurality of information that can be
`searched for”
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`“a
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`self-contained set of
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`instructions,
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`as
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`opposed to a routine or library, intended to be
`executed on a computer so as to perform some
`task”
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`“to determine if the first information belongs
`to one or more of several predefined categories
`of identifying information (e.g., a name) or
`contact information (e.g., a phone number, a
`fax number, or an email address) that can be
`searched for in an information source external
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`to the document”
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`“that allows a user to enter a user command to
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`initiate an o .eration”
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`“that allows a user to enter an input or series of
`in .uts to initiate an o eration”
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`“providing an input device configured by the
`first computer program”
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`“providing an input device set up by the first
`computer program for use by the user”
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`19.
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`I have been informed that a patent claim is anticipated when a single piece of prior
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`art describes all of the claim limitations either expressly or by inherent disclosure. I have been
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`informed that a reference that does not expressly disclose a claim limitation may inherently
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`disclose that limitation if the missing limitation is necessarily present in the reference. I have been
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`informed that the disclosure must show that the natural result flowing from the operation of the
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`system or method disclosed in the reference necessarily results in the performance of the claim
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`limitations. Standards for anticipation that may be relevant are reproduced below as I understand
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`them:
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`•
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`•
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`•
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`The invention was known or used by others in this country, or patented or
`described in a printed publication in this or a foreign country, before the
`invention thereof by the application for patent.
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`The invention was patented or described in a printed publication in this or
`a foreign country or in public use or on sale in this country, more than a
`year prior to the date of the application for patent in the United States.
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`The invention was described in a patent granted on an application for
`patent by another filed in the United States before the invention by the
`applicant for patent.
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`
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`It is my understanding that a claim is invalid for obviousness under 35 U.S.C. §103
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`if two or more prior art references in combination disclose, expressly or inherently, every claim
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`limitation so as to render the claim, as a whole, obvious. In determining whether or not a patented
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`invention would have been obvious, the following factors should be considered: (a) the scope and
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`content of the prior art; (b) the differences between the prior art and the claims at issue; (c) the
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`level of ordinary skill in the art; and (d) whatever “secondary considerations” may be present. I
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`further understand that obviousness does not always require combining two or more references,
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`and can be shown by demonstrating that the differences between the subject matter sought to be
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`patented and the prior art are such that the subject matter as a whole would have been obvious at
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`the time the invention was made to a person having ordinary skill in the art to which said subject
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`matter pertains.
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`I understand that a patent claim composed of several elements is not proved obvious
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`merely by demonstrating that each of its elements was independently known in the prior art. But
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`multiple prior art references or elements may, in some circumstances, be combined to render a
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`patent claim obvious. I understand that I should consider whether there is an “apparent reason” to
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`combine the prior art references or elements in the way the patent claims. Requiring a reason for
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`the prior art combination protects against the distortion caused by hindsight. Along the same lines,
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`one cannot use the Asserted Patents as a blueprint to piece together the prior art in order to combine
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`the right ones in the right way as to create the claimed inventions. To determine whether such an
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`“apparent reason” exists to combine the prior art references or elements in the way a patent claims,
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`it will often be necessary to look to the interrelated teachings of multiple patents, to the effects of
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`demands known to the design community or present in the marketplace, and to the background
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`knowledge possessed by a person having ordinary skill in the art.
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`I also understand that when the prior art “teaches away” from combining prior art
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`references or certain known elements, discovery of a successful means of combining them is less
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`likely to be obvious. A prior art reference may be said to “teach away” from a patent when a person
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`of ordinary skill, upon reading the reference, would be discouraged from following the path set
`
`out in the patent or would be led in a direction divergent from the path that was taken by the patent.
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`Additionally, a prior art reference may “teach away” from a claimed invention when substituting
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`an element within that prior art reference for a claim element would render the claimed invention
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`inoperable.
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`
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`I understand that certain “secondary considerations” may be relevant in
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`determining whether or not an invention would have been obvious, and that these secondary
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`considerations may include commercial success of a product using the invention, if that
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`commercial success is due to the invention; long-felt need for the invention; evidence of copying
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`of the claimed invention; industry acceptance; the taking of licenses under the patents by others;
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`initial skepticism; failure of others; and praise of the invention.
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`7
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`I understand that an applicant or patentee may antedate, or “swear behind,” an
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`alleged prior art reference by establishing both conception of the claimed invention prior to the
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`effective date of the reference and reasonable diligence from just prior to the effective date to a
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`subsequent filing of the patent application. I understand that the legal definition of conception is a
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`definite and permanent idea of a complete and operative invention. I understand an idea is
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`sufficiently definite for conception when the inventor has a specific, settled idea—a particular
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`solution to the problem at hand—not just a general goal or research plan he hopes to pursue. I also
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`understand that conception does not require perfection, and that conception is complete when the
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`idea is so clearly defined in the inventor's mind that only ordinary skill would be necessary to
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`reduce the invention to practice, without extensive research or experimentation.
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`I further understand that constant effort is not required to establish diligence, and
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`the inventor need not spend all his time working on the invention. I understand the party seeking
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`to establish diligence must merely have been pursuing its goal in a reasonable fashion. Further, I
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`understand that the diligence with which a patent attorney prepares a patent application may count
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`toward the client’s constructive reduction to practice.
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`
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`I still further understand that inventor testimony regarding conception and diligence
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`must be corroborated. I am also informed that if the testimony of a third-party witness, a document
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`prepared by a third party, or a document from the inventor suggests that the inventor's testimony
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`is accurate, the inventor's testimony may be deemed to be corroborated. I understand that
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`conception may be corroborated even if no single piece of evidence shows complete conception.
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`I have been informed that an attempt to swear behind an alleged prior art reference
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`does not constitute an admission that the reference renders the claims anticipated.
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`8
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`I also understand that a patent’s specification must include a written description of
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`the claimed invention sufficient to allow a person of ordinary skill in the art to recognize that the
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`inventor invented what is claimed. I understand that the test for sufficiency of the written
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`description is whether the disclosure of the application relied upon reasonably conveys to those
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`skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
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`I am informed that in the patent application process, the applicant may keep the
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`originally filed claims, or change the claims between the time the patent application is first filed
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`and the time a patent is issued. An applicant may amend the claims or add new claims. These
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`changes may narrow or broaden the scope of the claims. I understand that the written description
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`requirement ensures that the issued claims correspond to the scope of the written description that
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`was provided in the original application.
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`
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`I understand that the written description requirement may be satisfied by any
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`combination of the words, structures, figures, diagrams, formulas, etc., contained in the patent
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`application. The full scope of a claim or any particular requirement in a claim need not be expressly
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`disclosed in the original patent application if a person having ordinary skill in the art at the time
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`of filing would have understood that the full scope or missing requirement is in the written
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`description in the patent application.
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`
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`The written description requirement is satisfied if a person having ordinary skill
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`reading the original patent application would have recognized that it describes the full scope of the
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`claimed invention as it is finally claimed in the issued patent and that the inventor actually
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`possessed that full scope by the filing date of the original application.
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`I understand that the written description requirement may be satisfied by any
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`combination of the words, structures, figures, diagrams, formulas, etc., contained in the patent
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`9
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`application. The full scope of a claim or any particular requirement in a claim need not be expressly
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`disclosed in the original patent application if a person having ordinary skill in the art at the time
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`of filing would have understood that the full scope or missing requirement is in the written
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`description in the patent application.
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`I further understand that the patent specification must contain sufficient information
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`to enable one skilled in the art to make and use the invention described in a claim without undue
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`experimentation. I understand that the enablement analysis proceeds on a claim-by-claim basis. I
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`understand that enablement is determined as of the priority date of the patent
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`I understand that the enablement requirement does not require the patent
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`specification to describe how to make and use every possible variant of the claimed invention.
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`Rather, I understand that routine experimentation and the knowledge of one of skill in the art can
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`be used to fill perceived gaps, interpolate between embodiments, or extrapolate beyond the
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`disclosed embodiments, depending on the predictability of the technology at issue. The presence
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`of inoperative embodiments within the scope of a claim does not necessarily render a claim non
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`enabled. The standard is whether a person of ordinary skill in the art could determine which
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`embodiments that were conceived, but not yet made, would be inoperative or operative with
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`expenditure of no more effort than is normally required in the art.
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`I also understand that enablement does not require an inventor to meet lofty
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`standards for success in the commercial marketplace. I understand that a patent does not need to
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`enable one of ordinary skill in the art to make and use a viable or perfected embodiment or
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`prototype unless there is a claim limitation requiring it.
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`I also understand that because descriptions in patents are addressed to persons of
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`ordinary skill in the art to which the invention pertains, an applicant for a patent need not expressly
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`include information that is commonly understood by, available to, or already known to a person
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`of ordinary skill in the art.
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`I also understand that, in determining whether the experimentation necessary to
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`practice the invention is undue, a number of factors, including the following, may be considered:
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`(1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented;
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`(3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of
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`the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the
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`art; and (8) the breadth of the claims. I understand that these factors are illustrative only, and not
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`mandatory to the enablement analysis.
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`V. VALIDITY OF THE ASSERTED PATENTS
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`I understand that Arendi has asserted claims 1, 8, 23 and 30 (“Asserted Claims”)
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`against the defendants. It is my opinion that Dr. Fox has failed to show that any of these claims
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`are invalid.
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`Claim 1 of the ’843 Patent states:
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`A computer-implemented method for finding data related to the contents of a
`document using a first computer program running on a computer, the method
`comprising:
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`displaying the document electronically using the first computer program;
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`while the document is being displayed, analyzing, in a computer process, first
`information from the document to determine if the first information is at least
`one of a plurality of types of information that can be searched for in order to
`find second information related to the first information;
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`retrieving the first information;
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`providing an input device, configured by the f