Douglass Locke, Ph.D.
`
`
`
`M t• Motorola Expert re: ‘430 Patentl E t ‘430 P t t
`
`
`
`
`• B.A. in Physics, 1965
`
`• Ph D in Computer Science 1986Ph.D. in Computer Science, 1986
`• 40+ years of experience in developing and
`evaluating computer hardware and software
`• 25+ publications and a patent on
`semiconductor design and engineering
`
`Locke RDX‐1
`
`RDX-8
`
`

`
`‘430 Patent: Overview
`
`United Rt.ates Pat~:nt r••J
`Nguyen
`
`llll.
`
`lfmiU 111~1111111111111~ BIIB/1~!1~
`U!le0!·3'79<)()A
`{Ill Pate.Dt 1\uabcr:
`5,379,430
`[!5) DQtt of Patti!:
`Jan. 3, 1995
`
`~.IJ.J"13 11 JI J®l Co~~ et .a.1. --·--~ -·- ?!S!»J
`:!ii,llft4H Oorlm Sm!I~..:t.U. ------...... -
`!!!UU ~
`iJ2iMI 6t'Jm i~Jr.• oaL - - - ---.. !'!/6Sl
`~.1>1.01> T/ l'fi ~.loeb --·-·---·--· "'1!00
`
`liJ"m s~~eul -------- ltil!n
`3-,13"-ir6
`:5,i,l,9117 ,./ l<n! Abrala.--n~Jil,. ........ -
`.. !,:{ :;15
`:!i.UI L if.l [/J ~! S::.Vth«:U.. - - - · - - · !"'1-tlil
`
`I
`
`15'1 OIIJECI'-ORLENIED SY~"'ID!! LOC.\TOR
`~'\'l>'T11H
`(l>J "'''''""' ' ,_. T. "'P>•<, ~ UW
`11)) A,.,;pc=: Tal..., !<e., C.]l<ltlllo, Call!.
`f2l l
`.\ppl. •• . , 102,011l
`!l<J 1'!1<>1
`A ... '1, /39)
`()t] ""- u • ·-·--·-"·--·-···--·- ~I' n lot
`.S. 0. ........ ·-·------ lt!/lot: 364/DTO. 1;
`[l2[
`164t7.M '
`[5t[ J;",.l. 91 ~ --------·--.. •••·•·• l~l/700
`Rlfmoa& CltH
`[lf[
`U.:l. PA.Ttt,Y[ TJQ<:\IMJJ"f$
`.U.ll.l» Vt~ tJ;rtsbelz •. ----·--· *'t!St~
`'\..11':!!,717 IUII1a9 But :c.aL ----··- M4/DIG 1
`U91.630 L/1990 fntdmuet.ll.. -·--·-·· !Gil/706
`~~J.OlO 111!!10 o,..,. eu:. ---- 16</D! O. 1
`!IIIW I t:u.U~jt.on:. cs.n - -- Mr-4/ \IA
`:.LKI.W:
`~ 9.11991 0.:...'-0cf.al.. --- - - -- )M/A.7i
`o,O!(IJ'~ lWl!l>l konb ".:. - - · -- ·-· MU•
`~ .. 1'1 1VIW'2 Ul @t ili - - - - - - 59l/.Ql
`
`Patent NDDlber:
`Date of Patent:
`
`5,379430
`Jan. ~'- 1995
`
`United States Patent [191
`Nguyen
`
`[54]
`
`(75]
`(73]
`(21]
`[22]
`[51]
`[52]
`
`{58]
`
`OBJECT-ORIENTED SYSI'EM LOCATOR
`SYSTEM
`Inventor. Fruk T. Ngayea, Campbellt Calif.
`Assignee: Taligaat, lne., Cupertino, Calif.
`Appl. No.: 102,080
`I
`Filed:
`A•g. 4,1993
`ID.t. Q.6 ................... - ...................................... G06P 13/IMJ
`U.S. a. ............................. 3951700; 364/DIG. 1;
`364/280.2
`Field or Seal-ch ................................... _ .... ~ ..... 39snoo
`
`J
`
`Locke RDX‐2
`
`

`
`‘430 Patent: Asserted Claims
`
`1. A computer implemented method for dynamically adding support for
`hardware or software components with one or more properties to an
`operating system active on a computer with memory, comprising the steps
`of:of:
`(a) specifying a target hardware or software component search criteria
`including one or more properties;
`(b) querying the operating system to identify one or more hardware or
`(b) querying the operating system to identify one or more hardware or
`software components that meet the target hardware or software
`component search criteria;
`(c) returning hardware or software components meeting the target
`hardware or software component search criteria; and
`(d) adding support for the hardware and software components to the
`operating system without rebooting the operating system.
`
`
` th d 3 A 3. A method as recited in claim 1, wherein the hardware or software it d i l i 1 h i th h d ft
`
`
`
`
`
`
`
`
`
`components include system components.
`5. A method as recited in claim 1, wherein the software components include
`
`application componentsapplication components.
`
`
`
`
`
`Locke RDX‐3
`
`

`
`‘430 Patent: Select Disputed Claim Terms
`
`Claim Term
`
`Motorola’s Construction
`
`Apple’s Construction
`
`Staff’s Construction
`
`Adding hardware or software
`components with one or
`
`more properties without more properties without
`running an installation
`program
`
`Plain and ordinary meaning
`
`The preamble is not limiting
`
`Adding support for hardware
`or software components to a
`
`computer system without computer system without
`running an installation program
`
`Specifying desired attributes Plain and ordinary meaning
`that are potentially shared by
`one or more hardware
`or software components
`
`Dynamically adding
`support for hardware or
`
`software components with software components with
`one or more properties
`
`Specifying a target p y g g
`
`
`
`hardware or software
`component search criteria
`including one or more
`properties
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`hardware and software
`components to the
`operating system
`
`
`
`
`
`
`
`
`
`
`
`
`
` M kiMaking a system callt ll
`
`
`
`
`
`
`
`i d diPlPlain and ordinary meaning i
`
`
`
`tiAttAttempting to locate t l t
`
`
`
`
`components via an operating
`system protocol or
`framework
`
`Providing information Providing information
`identifying the hardware or
`software components
`Facilitating access to the
`hardware or software
`tcomponents
`
`
`
`
`Plain and ordinary meaningy g
`
`
`
`Indefinite
`
`
`
`
`
`Plain and ordinary meaningy g
`
`Plain and ordinary meaning
`
`Locke RDX‐4
`
`

`
`Apple attempts to make improper and untimely changes
`to its key claim construction positions
`
`Claim Term
`
`Apple’s Actual pp
`
`Construction
`
`
`Apple’s improper and pp p p
`
`untimely re-interpretation
`
`
`
`“Properties”Properties
`
`
`
`“Desired Attributes”Desired Attributes
`
`“Non-intrinsic Non intrinsic
`
`Characteristics”
`
`“Adding Support”
`
`“Facilitating Access”
`
`“Published” or “Notified”
`
`Locke RDX‐5
`
`

`
`“Dynamically adding support for hardware or
`software components with one or more properties”
`
`Dynamically adding
`support for hardware or
`software components
`
`with one or more with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`Motorola’s Construction:
`
`“adding hardware or software components with one or more properties
`
`without running an installation program”without running an installation program”
`
`• Staff agrees with Motorola that the preamble is limiting and that
`“dynamically” means “without running an installation program.”
`
`• Specification support: “The system is designed to enable a user to add
`components without running an installation program. To support this goal,
`
`an installation program is replaced with a location framework ” an installation program is replaced with a location framework.
`
`JX-001 at 6:7-11
`
`• Applicant added “dynamically adding support” to overcome an
`
`indefiniteness rejection and for support pointed to the Summary of indefiniteness rejection and for support pointed to the Summary of
`Invention, which discloses adding components “without running an
`installation program.”
`
`JX-004 at 750-Apple0022806
`
`• Apple’s expert Balakrishnan agrees that “dynamically” means “without
`running an installation program.”
`Balakrishnan Depo Tr. at 134:13-20, 135:18-136:2
`Locke RDX‐6
`
`

`
`“Specifying a target hardware or software component
`search criteria including one or more properties”
`
`Dynamically adding
`support for hardware or
`software components
`
`with one or more with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`•
`
`•
`
`•
`
`Apple’s submitted construction of “properties” is “desired attributes.”
`
`RX-1227, Ex. D,
`
`The ‘430 named inventor and Apple’s corporate representative did not
`understand Apple’s construction:
`
`“I don't know what you mean by ‘desi[red] attribute’ unless you
`explain back to me like explained ‘property’ to you. Without your
`explanation of what ‘desi[red] attribute’ means, I refuse to answer
`your question.”
`
`Nguyen Depo. Tr. at 159:21-25
`
`After the deadline for exchanging claim constructions and the initial
`expert reports, Apple is now trying to reinterpret its claim construction
`for the term “properties” to limit it to only non-intrinsic characteristics.
`Balakrishnan Depo. Tr. at 31:9-32:20, 126:19-127:7; Nguyen Depo. Tr. at 183:9-184:7
`
`Locke RDX‐7
`
`

`
`“Returning Hardware or Software Components”
`
`Motorola’s and Staff’s Construction:
`
`plain and ordinary meaning
`
`Apple’s Construction:
`
`
`providing information identifying the hardware or software p g y g
`
`components
`
`
`
`•
`
`The ‘430 named inventor and Apple’s representative did not
`
`understand Apple’s construction: understand Apple s construction:
`
`“providing information,’ what do you mean by that? I have no
`idea.”
`
`Nguyen Depo. Tr. at 149:23-24
`
`Dynamically adding
`support for hardware or
`software components
`
`with one or more with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`Locke RDX‐8
`
`

`
`“Adding support for the hardware and software
`components to the operating system”
`
`Motorola’s Construction:
`
`
`
`indefiniteindefinite
`
`•
`
`Added to overcome rejection
`
`• Not mentioned or explained in
`the specification
`
`
`
`••
`
`Each flowchart asserted by the Each flowchart asserted by the
`
`applicant to explain the
`claimed method stops at
`“returning” and does not show
`“adding support”
`
`Dynamically adding
`support for hardware or
`software components
`with one or more
`with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`JX-001, Figs. 6, 7 and 8
`Locke RDX‐9
`
`

`
`“Adding support for the hardware and software
`components to the operating system”
`
`
`
`
`
`M tMotorola’s Construction: l ’ C t ti
`indefinite
`
`Dynamically adding
`support for hardware or
`software components
`
`with one or more with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`ti
`t
`A l ’ C
`Apple’s Construction…
`
`RX-1227, Ex. D
`
`… was already rejected by the examiner as indefinite:y j y
`
`
`
`
`
`
`
`JX-004 at 750-Apple0022761
`“enable” = “facilitate,” Doubleday Roget's Thesaurus, 1987, p. 221
`
`Locke RDX‐10
`
`

`
`“Adding support for the hardware and software
`components to the operating system”
`
`Dynamically adding
`support for hardware or
`software components
`
`with one or more with one or more
`properties
`
`Specifying a target
`
`hardware or software hardware or software
`component search
`criteria including one or
`more properties
`
`Querying the operating
`system
`
`Returning hardware or Returning hardware or
`
`software components
`
`Adding support for the
`
`hardware and software hardware and software
`components to the
`operating system
`
`Motorola’s Construction:
`indefinite
`•The ‘430 named inventor and Apple’s corporate designee did not
`understand Apple’s construction:
`
`
`
`Nguyen Depo. Tr. at 144:13-19g y p
`
`
`
`Locke RDX‐11
`
`

`
`Failure to Disclose Best Mode: Apple System/7
`
`
`
`••
`
`
`
`Specification names Apple System/7 in description of preferred embodiment:Specification names Apple System/7 in description of preferred embodiment:
`
`“The invention is preferably practiced in the context of an operating system resident on a personal
`computer such as … Apple ® Macintosh® computer.”
`
`“The computer has resident thereon an operating system such as the Apple System/7 ® operating system.”
`
`JX-001 at 2:35-38, 2:55-57
`
`But ‘430 named inventor and Apple’s representative had limited familiarity with Apple System/7:But 430 named inventor and Apple s representative had limited familiarity with Apple System/7:
`
`
`
`••
`
`“I'm familiar with System 7, but very limited.”
`
`“The only system I’m familiar with at the time of this invention was … Windows 3.1 and Unix. And System 7,
`but only from the user perspective, end-user perspective.”
`
`Nguyen Depo. Tr. at 37:22, 57:2-5
`
`Locke RDX‐12
`
`

`
`Failure to Disclose Best Mode: Apple System/7
`
`•
`
`•
`
`‘430 named inventor and Apple’s corporate representative also admitted that the invention as 430 named inventor and Apple s corporate representative also admitted that the invention, as
`
`implemented, could not work on Apple System/7:
`“Q. Could the locator framework that you've claimed in the 5,379,430 patent be added to a computer that’s
`running Apple System 7 operating system?
`A. No, it -- it could not because the locator framework basically designed and depends on other application
`services in the Tal OS. It’s not a separable part of the Tal OS as it was implemented. Only someone who
`could – someone who see the design document for the locator framework may be able to implement it on
`top of System 7 or other OS.”
`
`Nguyen Depo. Tr. at 38:4-13
`And the document which would be necessary for someone to possibly implement this
`invention on System/7 was not disclosed in the patent, was confidential, and could not be
`
`found by the inventor:found by the inventor:
`
`“Q. When you refer to the document for the locator framework, what are you referring to?
`A. The set of design document that I can no longer find, or have, because it’s been 17 years ago.
`
`Q. And was that design documentation that you’re referring to confidential? Q d as t at des g docu e tat o t at you e e e g to co de t a
`
`
`
`A. Yes. It was confidential.”
`
`Nguyen Depo. Tr. at 38:14-20
`
`Locke RDX‐13
`
`

`
`Failure to Disclose Best Mode: Taligent Operating System
`
`• ‘430 named inventor and Apple’s representative admitted that he was working on the Taligent • 430 named inventor and Apple s representative admitted that he was working on the Taligent
`
`operating system (Tal OS) when he came up with his claimed invention:
`“Q. … What were you working on when you came up with the idea that led to the 430 patent?
`
`A I was working on the end-user environment for the Tal OS ”A. I was working on the end user environment for the Tal OS.
`
`Nguyen Depo. Tr. at 35:12-15
`• ‘430 named inventor’s computer had the Tal OS running on it, with the implemented invention:
`“Q. … So the computer on which the locator framework that you’ve referred to, that you were
`working on, had a Taligent operating system; is that correct?
`A. It had all the element of – well, the Tal OS had the kernel, the application services layer, which
`include the locator framework and the end-user environment.”
`
`Nguyen Depo. Tr. at 36:23-37:3
`
`• The claimed invention, as implemented, could work only on the Tal OS:
`
`“Q. Could the locator framework that you've claimed in the 5,379,430 patent be added to a computer
`that's running Apple System 7 operating system?
`A. No, it -- it could not because the locator framework basically designed and depends on other
`
`application services in the Tal OS It’s not a separable part of the Tal OS as it was implemented ”application services in the Tal OS. It’s not a separable part of the Tal OS as it was implemented.”
`
`• However, the Tal OS is not mentioned anywhere in the ‘430 patent.
`
`Nguyen Depo. Tr. at 38:4-10
`
`Locke RDX‐14
`
`

`
`Malone ‘870 anticipates the asserted claims of the ‘430 patent
`Apple’s expert Balakrishnan concedes that Malone discloses every element of the asserted
`•
`claims except claim 1, element (d). Balakrishnan contests that displaying objects that have been
`identified and foldered does not meet claim 1(d).
`[Balakrishnan Rebuttal Report, at 138-142]
`However, the preferred embodiment disclosed in the ‘430 patent performs the identical function.
`•
`Malone, RX-0289 at 23:27-40, 7:1-15
`‘430 Patent, JX-001 at 12:67-13:7
`FIG. 9 is an illustration of a smart folder 900,
`Folders are containers and are one of the most powerful features of
`which uses a locator to organize documents
`Object Lens. Like Thing, users can create instances of Folder. The most
`910, graphic objects 920, folders 930, etc.,
`important attribute of folders is that they contain a field which contains a list of
`links to other objects. Folders also have a type of object that they prefer to
`which a user is interested in collecting
`contain; the user is asked to identify this type when a new folder is created.
`together. The smart folder then invokes the
`Finally, folders can also have a selection rule which can be used as a kind of
`locator and requests particular documents
`"agent on special assignment" to collect objects to put into the folder.
`containing the desired attributes to be
`Folders can be displayed using instances of a variety of sub-classes of
`collected in the folder. Additionally, the smart
`
`Form While only two sub classes have been implemented so far (Tables andForm. While only two sub-classes have been implemented so far (Tables and
`
`folder can instruct the locator to notify it whenfolder can instruct the locator to notify it when
`Graphs), others, including Calendars, Desktops, and Outlines, will be added
`new documents containing the desired
`in the future. <…>
`attributes are added to or removed from the
`system.
`
`If an object satisfies the criteria specified in a rule, the rule performs
`
`some specified action. These actions can be general actions such as p g
`
`retrieving, classifying, mailing, and deleting objects or object-specific actions
`such as loading files or adding events to a calendar.
`The agents in Object Lens are "autonomous" in the sense that once
`they have been created, they can take actions without the explicit attention of
`a human user. They are only "semiautonomous," however, in the sense that
`
`( ) th(a) they are always controlled by a human user (that is, all their rules can be l t ll d b h (th t i ll th i l b
`
`
`
`
`
`
`
`
`easily seen and changed by their human user), and (b) they may often "refer"
`objects to their human user for action (e.g., by leaving the object in the user's
`in box) rather than taking any actions on their own.
`
`Locke RDX‐15
`
`

`
`Unix Find anticipates the asserted claims of the ‘430 Patent
`
`•
`
`•
`
`Apple’s expert Balakrishnan concedes that Unix Find discloses every element of the asserted Apple s expert Balakrishnan concedes that Unix Find discloses every element of the asserted
`
`claims except the term “properties,” and even that only because, according to Balakrishnan,
`“properties” cannot include intrinsic (inherent) characterstics.
`
`“The one -- one big distinction, it would be -- the find command is searching for these file
`information, name, type, whatever, that are not the kinds of properties that I'm -- I'm reading as
`what the properties -- the word "properties" are meant to be in this '430 patent, which is additional
`information beyond those – what the inventor called inherent characteristics of -- of -- of the
`components.”
`
`“Q. Are there any other differences or other limitations you believe wouldn't be met?
`A. No.”
`
`Balakrishnan Depo. Tr. at 156:21-157:11Balakrishnan Depo. Tr. at 156:21 157:11
`According to Balakrishnan, without “properties” meaning non-intrinsic characteristic,
`THERE WOULD BE NO INVENTION.
`
`“So if the properties were intended to just mean names and – and file dates and things that were
`
`already there and were previously searched and well – well known in operating system technology, y p y p g y gy
`
`
`
`
`
`there would be no invention.”
`
`Balakrishnan Depo. Tr. at 32:16-20
`
`Locke RDX‐16
`
`

`
`“NO INVENTION”
`
`• According to Apple’s expert Balakrishnan whether ‘430 patent is valid or not comes down to According to Apple s expert Balakrishnan, whether 430 patent is valid or not comes down to
`
`whether the term “properties” are construed as non-intrinsic characteristics.
`Balakrishnan Depo. Tr. at 32:16-20, 126:19-127:7
`
`• However Apple construes “properties” as “desired attributes ” not as non-intrinsic characteristicsHowever, Apple construes properties as desired attributes, not as non-intrinsic characteristics.
`
`RX-1227, Ex. D
`
`• Also, in his initial report, Balakrishnan agreed that “properties” should be construed as “desired
`
`attributes ” not as non intrinsic characteristics:attributes, not as non-intrinsic characteristics:
`
`“I understand that Apple proposes this term be construed as “specifying desired attributes that are potentially
`shared by one or more hardware or software components.” Motorola and the Staff suggest that “plain and
`
`ordinary meaning” should prevail Based on my review of the ‘430 patent its claims specification and ordinary meaning” should prevail. Based on my review of the ‘430 patent, its claims, specification, and
`prosecution file history, I conclude that Apple’s construction is most consistent with how this claim term would
`be understood in the context of the ‘430 patent by a person with ordinary skill in the art.”
`
`• The concept of intrinsic or non-intrinsic characteristics is not disclosed anywhere in the ‘430 patent.
`
`
`
`Balakrishnan Initial Report at 38Balakrishnan Initial Report, at 38
`
`Locke RDX‐17