Patent No. 7,496,854
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Apple Inc., Google Inc., and Motorola Mobility LLC
`Petitioners
`
`v.
`
`Arendi S.A.R.L.
`Patent Owner
`
`Patent No. 7,496,854
`Issue Date: February 24, 2009
`Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A COMPUTER PROGRAM
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`DECLARATION OF DANIEL A. MENASCÉ, Ph.D.
`
`
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 1
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`
`Petition For Inter Partes Review
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`Apple Inc., Google Inc., and Motorola Mobility LLC
`Petitioners
`
`v.
`
`Arendi S.A.R.L.
`Patent Owner
`
`Patent No. 7,496,854
`Issue Date: February 24, 2009
`Title: METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A COMPUTER PROGRAM
`_______________
`
`Inter Partes Review No. ______
`____________________________________________________________
`
`DECLARATION OF DANIEL A. MENASCÉ, Ph.D.
`
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`Apple Inc., Google Inc. and Motorola Mobility LLC
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`I, Daniel A. Menascé, make this declaration in connection with the
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`proceeding identified above.
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`I.
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`INTRODUCTION
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`1.
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`I have been retained by counsel for Apple Inc. (“Apple”) as a technical
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`expert in connection with the proceeding identified above. I submit this declaration
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`in support of Petitioners’ Petitions for Inter Partes Review of United States Patent
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`No. 7,496,854 (“the '854 patent”). The claims of the '854 patent may be divided
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`into two groups: (1) claims directed to performing an operation, such as updating a
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`database with an address; and (2) claims directed to inserting information into the
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`document, such as an address. This declaration addresses the second set of claims
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`(i.e., claims 1-18, 36-56, 86-95, 97-98, and 100-101).
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`2.
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`I am being paid at an hourly rate for my work on this matter. I have no
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`personal or financial stake or interest in the outcome of the present proceeding.
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`II. QUALIFICATIONS
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`3.
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`I am a University Professor of Computer Science at George Mason
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`University (“Mason”) in Fairfax, Virginia. This is the highest rank conferred by
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`Mason’s Board of Visitors to “its faculty women and men of great national and
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`international reputation. The rank of University Professor is reserved for such
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`eminent individuals.” (See Section 2.2.5 of Mason’s Faculty Handbook, available
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`at www.gmu.edu/resources/facstaff/handbook/GMU_FACULTY_HANDBOOK
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`_1-1-2009.pdf.) Only a very select group of Full Professors at Mason becomes
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`University Professors.
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`4.
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`I received a Ph.D. in Computer Science from the University of
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`California at Los Angeles (“UCLA”) in 1978. I obtained a Master of Science
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`degree in Computer Science in 1975, as well as a Bachelor of Science degree in
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`Electrical Engineering in 1974 from the Pontifical Catholic University in Rio de
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`Janeiro, Brazil (“PUC-Rio”).
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`5.
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`Prior to joining Mason, I was Professor of Computer Science and
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`Chair of the Computer Science Department at PUC-Rio. I have held visiting
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`faculty positions at the University of Maryland Institute for Advanced Computer
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`Studies (UMIACS) and the University of Rome, Italy. From 1981 to 1991, I was
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`the co-founder and CEO of Tecnosoft, a software company that specialized in the
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`development of large software projects and database management systems projects
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`for companies such as Brazilian oil company Petrobras and Brazilian
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`telecommunications company Embratel.
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`6.
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`At my former company, Tecnosoft, I personally developed two
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`database management systems for PCs. These systems were based on a
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`sophisticated and fault-tolerant B*-tree access method that I developed and
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`published about. (See “Dynamic Crash Recovery of Balanced Trees,” D.A.
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`Menascé and O.E. Landes, Proc. IEEE Symp. Reliability in Distributed Software
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`and Database Systems, Pittsburgh, Pennsylvania, USA, July 21-22, 1981.)
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`7. While at Tecnosoft, I designed and personally directed the
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`development of various large information systems for various customers, including
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`the Brazilian Oil Company (Petrobras) and the Brazilian Telecommunications
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`Company (Embratel).
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`8.
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`I have devoted the past 39 years of my professional career to the area
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`of computer science and in particular to the fields of electronic commerce,
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`web-based systems, operating systems, database design and management, secure
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`computer systems, autonomic computing, performance modeling and analysis, and
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`software performance engineering. My field of expertise includes the study and
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`comparison of computer-based systems and software architectures for commercial
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`applications, including information systems in a variety of settings, from PCs to
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`secure networked and Web-based environments.
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`9.
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`I have been a Professor of Computer Science at Mason since 1992. I
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`was the lead designer of Mason’s Executive Master of Secure Information Systems,
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`the Founding Director of its Master of Science in E-commerce program, and the
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`founding co-Director of Mason’s E-Center for E-Business.
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`10. From 2005 to 2012, I was the Senior Associate Dean of the Volgenau
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`School of Engineering at Mason (“School of Engineering”). As Senior Associate
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`Dean, I was in charge of research, graduate programs, graduate admissions,
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`promotion and tenure of the faculty, and Web information systems for the entire
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`School of Engineering.
`
`11. As Senior Associate Dean of the School of Engineering, I was also the
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`director of the school’s Ph.D. degree program in Information Technology. In that
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`role, I attended all doctoral dissertation defenses to make a final determination
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`whether the doctorate should be awarded before appending my signature.
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`12.
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`I am the author of more than 225 peer-reviewed technical papers that
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`have appeared in journals and conference proceedings. My publications have
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`received more than 7,650 citations, and my h-index is 42. (The h-index is an index
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`that attempts to measure both the productivity and impact of the published work of
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`a scientist or scholar. The index is based on the set of the scientist’s most cited
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`papers and the number of citations that they have received in other publications.) I
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`am the chief author of several books, including:
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` “Performance by Design: Computer Capacity Planning by Example,”
`published by Prentice Hall in 2004;
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` “Capacity Planning for Web Services: Metrics, Models, and Methods,”
`published by Prentice Hall in 2002 and translated into Russian and
`Portuguese;
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` “Scaling for E-business: Technologies, Models, Performance, and
`Capacity Planning,” published by Prentice Hall in 2000 and translated
`into Korean;
`
` “Capacity Planning for Web Performance,” published by Prentice Hall in
`1998;
`
` “Capacity Planning and Performance Modeling: From Mainframes to
`Client-Server Systems,” published by Prentice Hall in 1994.
`
`13. All of my books come with accompanying software that can be used
`
`by the readers to solve the mathematical models for queuing theory discussed in the
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`books. My 1994 book contained software on a 3½-inch floppy disk, my 1998 book
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`contained software on a CD, and the other books provided a link from which
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`readers could download the software. In most cases, the software that came with
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`my books consisted of Excel spreadsheets that contained Visual Basic code that I
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`wrote. The user of these spreadsheets would enter input parameters on specific
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`cells of the spreadsheet and push a button on the spreadsheet. This button activates
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`a Visual Basic program that takes the inputs entered by the user, runs the
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`mathematical model, and populates specific cells of the spreadsheet with output
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`results of the model.
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`14.
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`I have received several lifetime–achievement awards and
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`recognitions, including elevation to the rank of Fellow of the Institute of Electrical
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`and Electronics Engineers (IEEE)1 for “contributions to research and education in
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`performance evaluation of computer systems,” induction as a Fellow of the
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`Association of Computing Machinery (ACM) for “fundamental contributions to
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`education and practice of computer networks and performance evaluation, and
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`material contributions to the establishment of a strong computing industry in
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`Brazil”; the 2001 A.A. Michelson Award, a lifetime achievement award given by
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`the Computer Measurement Group, for my contributions to computer metrics; the
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`2009 Outstanding Research Faculty award by the Volgenau School of Engineering
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`at Mason; the 2000 Teaching Excellence award from Mason; the 1999 Outstanding
`
`Teaching award from the Volgenau School of Engineering at Mason; and several
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`best paper awards. In April 2013, George Mason University selected me to
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`represent the university in the statewide 2014 Outstanding Faculty Award
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`competition.
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`15. My research has been funded by the United States Department of
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`Defense Advanced Research Projects Agency (DARPA), the United States
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`National Aeronautic and Space Administration (NASA), the National Science
`
`Foundation (NSF), the National Geospatial-Intelligence Agency (NGA), the
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`
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` 1
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` Approved by the IEEE Board of Directors on November 2013, effective January
`1, 2014.
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`National Institute of Standards and Technology (NIST), Dominion Virginia Power,
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`Virginia’s Center for Innovative Technology (CIT), OPNET Technologies, TRW,
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`Hughes Applied Information Systems, the Embratel, the Brazilian Research
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`Council (CNPq), the Brazilian Ministry of Science and Technology, and IBM
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`Brazil.
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`16.
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`I have consulted for many government organizations and private
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`companies, including the U.S. Army, NASA, the U.S. Mint, the Defense
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`Information Systems Agency (DISA), the Ballistic Missile Defense Organization,
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`the National Institutes of Health, IBM, SABRE (travelocity.com), United Online
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`(netzero.com), Lockheed Martin, Capital One, and the Inter-American
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`Development Bank.
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`17.
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`I have experience with the design of complex data-intensive
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`distributed information systems in the commercial arena through Tecnosoft, the
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`company I founded and managed from 1981 to 1991, and in the scientific domain
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`where I helped NASA design the federated architecture of its Earth Orbiting
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`System Data and Information System (EOSDIS). For the latter work, I received the
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`outstanding paper award from the IEEE International Conference on Engineering
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`of Complex Computer Systems, Southern Florida, USA, November 6-10, 1995, for
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`the paper “A Performance-Oriented Design Methodology for Large-Scale
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`Distributed Data Intensive Information Systems.”
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`18.
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`I have been invited to give keynote addresses at several conferences
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`and companies around the world. Examples include:
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` “On the Use of Performance Models in Autonomic Computing,”
`Congress of the Brazilian Computer Society, Curitiba, Brazil, July 18,
`2012;
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` “Self-Architecting Software Systems,” University at Buffalo, September
`20, 2011;
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` “Virtualization and the On-Demand Data Center,” Green Computing
`Summit, Washington, DC, December 3, 2008;
`
` “Achieving QoS in Complex Distributed Systems through Autonomic
`Computing,” Alcatel Technical Academy, Antwerp, Belgium, October 3,
`2005;
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` “Quality of Service Challenges for Web Based Systems and
`E-commerce,” E-Quality Research Center, University of Twente, The
`Netherlands, September 30, 2005;
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` “On the Use of Online Performance Models in Autonomic Computing,”
`IBM Watson Research Center, Hawthorne, NY, July 15, 2004;
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` “QoS Challenges and Directions for Large Distributed Systems,”
`Workshop on Quality of Service for Geographically Distributed Systems,
`Rome, Italy, June 9, 2004;
`
` “Self-Managing E-commerce Sites,” WWW/Internet 2003 IADIS
`International Conference, November 6, 2003, Algarve, Portugal;
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` “Software, Performance, or Engineering?,” Third International Workshop
`on Software and Performance (WOSP 2002), July 24-26, 2002, Rome,
`Italy;
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` “QoS Issues in Web and E-commerce Services,” Distinguished Lecturer
`Series, Computer Science and Engineering Division, University of
`Michigan, October 25, 2001;
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` “Using Performance Models to Dynamically Control E-Commerce
`Performance,” 2001 Aachen
`International Multiconference on
`Measurement, Modeling, and Evaluation of Computer-Communication
`Systems, Aachen, Germany, September 12, 2001; and
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` “Understanding Workloads in E-Business,” Microsoft Research, Seattle,
`WA, May 1, 2001.
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`19.
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`I was the General Chair of ACM’s 2007 Federated Computing
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`Research Conference (FCRC) held in June 2007 in San Diego. This is the largest
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`and most prestigious research event in the computer science field and includes
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`sixteen co-located conferences and many workshops with a total attendance of
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`more than 2,000 researchers.
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`20.
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`I am a member of the editorial board of ACM’s Transactions on
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`Internet Technologies and of Elsevier’s Performance Evaluation journal. I was an
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`Associate Editor of ACM’s Transactions on the Web (TWEB) journal, an Associate
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`Editor of Elsevier’s Electronic Commerce Research and Applications journal, and a
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`member of the Editorial Board of IEEE’s Internet Computing for many years.
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`21. During my academic career I have been the dissertation advisor of 23
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`Ph.D. students and 52 MS students.
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`22.
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`I have an active U.S. top-secret security clearance.
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`23. My detailed educational history and work experience are set forth in
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`my résumé and curriculum vitae, attached hereto as Appendix A. Included in my
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`résumé and curriculum vitae is a listing of all of my publications. In addition, I am
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`the co-inventor of a U.S. patent entitled “Meta-Protocol” and of two pending U.S.
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`patent applications entitled “System and Method for Managing Insider Security
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`Threats” and “Server Allocation Mechanism.” I have listed the issued patent and
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`the pending applications in my curriculum vitae, which is attached as Appendix A.
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`III. MATERIALS CONSIDERED
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`24.
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`In preparing this declaration, I have reviewed, among other things, the
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`following materials: (a) the '854 patent and its prosecution history; (b) news articles
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`on Spell Catcher™ (attached as Appendix B); (c) Plaintiff’s opening brief in
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`support of its proposed claim construction dated August 10, 2009 (Case No.
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`1:09-cv-119-LPS (D. Del.), ECF No. 46) (“Plaintiff’s August 2009 Opening Claim
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`Construction Brief”) (attached as Appendix C); (d) August 25, 2009 (Case No.
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`1:09-cv-119-LPS (D. Del.), ECF No. 57) (“Plaintiff’s August 2009 Answering
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`Claim Construction Brief”) (attached as Appendix D); (e) January 21, 2011 (Case
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`No. 1:09-cv-119-LPS (D. Del.), ECF No. 285) (“Plaintiff’s January 2011
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`Supplemental Claim Construction Brief”) (attached as Appendix E); (f) February 4,
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`2011 (Case No. 1:09-cv-119-LPS (D. Del.), ECF No. 292) (“Plaintiff’s February
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`2011 Supplemental Answering Claim Construction Brief”) (attached as Appendix
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`F); (g) U.S. Patent No. 6,085,206 to Domini et al.; (h) the SIGCHI Bulletin (April
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`1998) having two sequential articles entitled “From Documents to Objects: An
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`Overview of LiveDoc” and “Drop Zones: An Extension of LiveDoc”; (i) U.S.
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`Patent No. 6,377,965 to Hachamovitch et al.; (j) U.S. Patent No. 5,577,239 to
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`Moore et al.; and (k) U.S. Patent No. 5,644,735 to Luciw et al.
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`IV. DEFINITIONS AND STANDARDS
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`25.
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`I have been informed and understand that claims are construed from
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`the perspective of one of ordinary skill in the art at the time of the claimed
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`invention, and that during inter partes review, claims are to be given their broadest
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`reasonable construction consistent with the specification.
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`26.
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`I have been informed and understand that a claim is invalid because of
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`anticipation when every element of the claim is described in a single prior art
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`reference, such that the elements are arranged as requied by the claim. I have been
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`informed and understand the description of a claim element in a prior art reference
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`can be express or inherent. For a prior art reference to describe a claim element
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`inherently, the claim element must be necessarily present. Probabilities are not
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`sufficient to establish inherency.
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`27.
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`I have also been informed and understand that the subject matter of a
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`patent claim is obvious if the differences between the subject matter of the claim
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`and the prior art are such that the subject matter as a whole would have been
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`obvious at the time the invention was made to a person having ordinary skill in the
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`art to which the subject matter pertains. I have also been informed that the
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`framework for determining obviousness involves considering the following factors:
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`(i) the scope and content of the prior art; (ii) the differences between the prior art
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`and the claimed subject matter; (iii) the level of ordinary skill in the art; and (iv) any
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`objective evidence of non-obviousness. I understand that the claimed subject
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`matter would have been obvious to one of ordinary skill in the art if, for example, it
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`results from the combination of known elements according to known methods to
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`yield predictable results, the simple substitution of one known element for another
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`to obtain predictable results, use of a known technique to improve similar devices in
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`the same way or applying a known technique to a known device ready for
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`improvement to yield predictable results. I have also been informed that the
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`analysis of obviousness may include recourse to logic, judgment, and common
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`sense available to the person of ordinary skill in the art that does not necessarily
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`require explication in any reference.
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`28.
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`In my opinion, a person of ordinary skill in the art pertaining to the
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`'854 patent at the relevant date discussed below would have at least a Bachelor’s
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`degree in Computer Science or Electrical Engineering or related discipline and
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`approximately two years experience designing applications using databases.
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`29.
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`I have been informed that the relevant date for considering the
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`patentability of the claims of the '854 patent is November 10, 1998, which is the
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`earliest U.S. filing date. I have not analyzed whether the '854 patent is entitled to
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`this filing date, but I have analyzed obviousness as of that date or somewhat before.
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`I may refer to this time frame as the “relevant date” or the “relevant time frame.”
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`Based on my education and experience in the field of Computer Science set forth
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`above, I believe I am more than qualified to provide opinions about how one of
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`ordinary skill in the art by the relevant date in 1998 would have interpreted and
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`understood the '854 patent and the prior art discussed below.
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`30.
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`I set forth a few examples of the kinds of skills one of ordinary skill
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`would have at the relevant data, without intending to list every such skill. Such a
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`person would have understood (and been able to design) applications that access
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`databases to obtain data from the database or to add data to the database.
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`31. Also, a person of ordinary skill in the art would have been familiar
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`with contact databases (also called address books) for storing information about
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`people.
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`V. THE '854 PATENT
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`32. The claims of the '854 patent are directed to methods, systems, and
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`computer readable media for providing a functional button (e.g., a key, button, icon,
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`or menu) tied to a user operation in a computer, whereby a click on the functional
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`button in a program initiates retrieval of information (e.g., name and addresses
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`and/or other person or company related information), while the user works
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`simultaneously in another program (e.g., a word processor or spreadsheet). The
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`click on the functional button initiates a program connected to the button to search a
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`database or file containing the person, company, or address related data, in order to
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`look up data corresponding to what the user typed or partly typed (e.g., name and/or
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`address, the correct data from the database, data related to the typed data). The
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`results of the search are displayed back to the user if one or more matches are found
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`in the database. The user can select one of the choices retrieved from the database
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`and/or enter new information related to what the user first typed. This new
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`information is used to update the database.
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`33.
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`It is important to note that a person of ordinary skill in the art at least
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`by the relevant time frame would understand a database as a structured set of data
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`held in a computer that is accessible in various ways. Database operations such as
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`searching for data/information in the database, entering/adding data/information
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`into the database, removing data/information from the database, or changing the
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`data/information in the database are very well known in the art and were within the
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`level of a person of ordinary skill in the art at the relevant time frame. In fact, as
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`shown by the prior art discussed below, these operations were known methods to a
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`person of ordinary skill in the art and the results of these operations were
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`predictable at the relevant time frame.
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`34. The specification of the patent describes exemplary embodiments of
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`the invention in which hitting the button in a program, such as a word processor or a
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`spreadsheet, starts an analysis to determine what the user has typed. The analysis
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`looks for information such as a name (or part thereof), a name and address, an email
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`address, and telephone number. (See '854 Patent, Figs. 1 and 2 and corresponding
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`text.) If any of the predetermined types of information are found by the analysis, a
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`database lookup using that information is started to search for another piece of
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`information (called “second information” in the claims) that is associated with the
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`information used to do the search (called “first information” in the claims).
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`35. A variety of actions may occur depending on the result of the database
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`lookup. For example, if one address is found corresponding to the name, it may be
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`inserted into the document. If more than one address is found, the user is prompted
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`to select one of them. If no address is found, the user is prompted to enter an
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`address. If any of the displayed addresses are incorrect, the user is given the
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`opportunity to correct it. Actions related to insertion into a document are shown on
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`the left side of Figs. 1 and 2, whereas actions relating to adding information to a
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`database are shown on the right side of Figs. 1 and 2.
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`36. All the embodiments disclosed in the specification of the '854 Patent
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`require that the analysis for the determination of the type of the first information be
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`started when the user hits a button. Also, all embodiments disclosed in the '854
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`Patent require that there is a predetermined set of types of the first information as
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`well as a predetermined set of actions that result from a database lookup based on
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`the first information.
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`37. The '854 patent discloses the use of well-known and commercially
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`available components such as word processors (e.g., “WORD™, NOTEPAD™,
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`WORDPAD™, WORDPERFECT™, AMIPRO™), spreadsheets (e.g., Excel™,
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`QUATROPRO™), and database management systems (e.g., “ACCESS™,
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`OUTLOOK™, ORACLE™, DBASE™, RBASE™, CARDFILE™) (See '854 at
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`9:65-10:10). These elements are used in the specification in conventional ways to
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`obtain predictable results.
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`38. The following are examples provided in the specification describing
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`various operations, with the involved steps highlighted.
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`39. Example 1: Retrieving an Existing Address from the Database
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`(Figs. 3 and 4)
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 18
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`40. Example 2: Adding a New Contact to the Database (Figs. 5, 6, and 7)
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 19
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 20
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`41. Example 3: Try to Retrieve Existing Address, But Contact is not in
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`Database (Figs. 3 and 8)
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`20
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 21
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`42. Example 4: Adding a New Address for an Existing Contact (Short
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`Version) (Figs. 4 and 9)
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`la-1231756
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`21
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 22
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`43. Example 5: Selecting Between Several Possible Matching Addresses
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`(Figs. 3, 10, and 11)
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 23
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 24
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`44. Example 6: Adding a New Address for an Existing Contact (Long
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`Version) (Figs. 4, 9, 10, 12, and 13)
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 25
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`45. The independent claims of the '854 Patent can be classified into three
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`groups: method claims (claims 1, 19, 36, 57, 85, 86, and 93), computer readable
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`medium claims (7, 25, 43, 73, 96, 97, and 98), and computer system claims (13, 31,
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`50, 79, 99, 100, and 101). The method, computer readable medium, and computer
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`system claims are parallel claims in the order listed above. For example, claims 1,
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`7, and 13 are parallel claims and so are claims 19, 25, and 31.
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`VI. CLAIM CONSTRUCTION
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`46.
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`I have been asked to provide my opinion on a number of claim terms
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`by discussing what one of ordinary skill in the art at the time of the patent filing
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`would regard as the broadest reasonable interpretation consistent with the
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`la-1231756
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`25
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 26
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`specification. In each case, my opinion agrees with the position taken in the
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`Petitioners’ Petition for Inter Partes Review filed with this declaration.
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`47.
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`I also understand and have been informed that when a claim uses the
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`word “means” and there is no definite structure corresponding to the function of the
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`claim limitation, then the claim is presumed to be “means-plus-function” language
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`under 35 U.S.C. § 112, ¶ 6.
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`48.
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`I understand and have been informed that the first step in construing a
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`means-plus-function limitation is to identify the function recited in the claim, which
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`includes construing any terms in the recited function. The next step is to identify
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`the corresponding structure set forth in the written description that is clearly linked
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`to and necessary to perform the particular function set forth in the claim because the
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`means-plus-function term will cover only the corresponding structure, material, or
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`acts in the specification and equivalents thereof. For corresponding structure
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`involving computer algorithm, I understand and have been informed that the
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`specification must at least disclose some algorithms to perform the recited function
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`(not just a discussion of the end result) and it is insufficient to rely solely on the
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`knowledge of one of ordinary skill in the art to provide such algorithm.
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`la-1231756
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 27
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`A.
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`“Marking … the first information to alert the user”
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`49. Claims 1, 7, 13, 19, 25, and 31 of the '854 patent contain the phrase
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`“marking without user intervention the first information to alert the user that the
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`first information can be utilized in a second application program.” (Emphasis
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`added). As I noted, the term “marking” does not appear in the specification, and the
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`specification does not disclose any such marking of the information, for example,
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`the name on the screen in Fig. 3 or name and address in Fig. 5. It only shows
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`information in a separate dialog box, such as in Fig. 6. For example, the
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`specification discloses that “[t]his screen [FIG. 6] includes a message 50 informing
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`the user that the new contact does not exist in the database, a message 52 including
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`the address retrieved from the document, an address type selection 54, such as
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`home, business, etc., and ‘OK,’ ‘Details,’ and ‘Cancel’ buttons 56, 58, and 60,
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`respectively. At this point, the user can cancel the operation by commanding the
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`Cancel button 60, ask the program to store data in the database and return the
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`document by commanding the OK button 56.” (See '854 patent, 6:18-23, emphasis
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`added.) Because this separate dialog box is the only possible disclosure of marking
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`to alert in the speciation, I will therefore construe for this proceeding the “marking
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`… to alert the user” limitation to encompass both direct marking (e.g., highlighting
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`la-1231756
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`27
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 28
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`or a pop-up at the information being marked) and presentation of the information in
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`a separate dialog box.
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`50. Accordingly, I agree with Petitioners’ proposed construction.
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`B. Claim 13 of the '854 Patent
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`1.
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`“means for entering a first information in the first
`application program”
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`51.
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`I am informed by counsel that this is a means-plus-function limitation.
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`I concur that this limitation is a means-plus-function limitation.
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`52. The recited function is: “entering a first information in the first
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`application program.”
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`53. The corresponding structure to perform the recited function is
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`keyboard 206 (Fig. 16) along with its device driver ('854 Patent, 9:37-39).
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`54.
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`I understand that the Patent Owner in its litigation against Microsoft
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`and Dell (“Microsoft litigation”) has asserted that the corresponding structure is “A
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`keyboard, and equivalents thereof.” (Plaintiff’s August 2009 Opening Claim
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`Construction Brief at 8-9.) This is incomplete as a keyboard device driver is also
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`required to allow information typed on the keyboard to be entered into a computer
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`program.
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`la-1231756
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`28
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`Apple Inc., Google Inc. and Motorola Mobility LLC
`Exhibit 1002 - Page 29
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`2.
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`“means for marking without user intervention the first
`information to alert the user that the first information can
`be utilized in a second application program”
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`55.
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`I am informed by counsel that this is a means-plus-function limitation.
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`I concur that this limitation is a means-plus-function limitation.
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`56. The recited function is: “marking without user intervention the first
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`information to alert the user that the first information can be utilized in a second
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`application program.”
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`57. However, I have reviewed the specification and did not find any
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`structure disclosed in the specification that performs the recited function.
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`58.
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`I understand that the Patent Owner in the Microsoft litigation has
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`asserted that the structure in the specification performing the recited function is “A
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`computer system programmed with an algorithm for marking without user
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`intervention the first information to alert the first information can be utilized in a
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`second application program.” (Plaintiff’s August 2009 Opening Claim
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`Construction Brief at 9-12, citations omitted.)
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`59.
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`I disagree with the Patent Owner’s assertion because the “structure”
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`pointed to by the Patent Owner does
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