`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`In re Inter Partes Review of:
`U.S. Patent No. 7,917,843
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`For: METHOD, SYSTEM AND COMPUTER
`READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A
`COMPUTER PROGRAM
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`DECLARATION OF PAUL C. CLARK, D.SC.
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`
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
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`
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`I, Paul C. Clark, hereby declare and state as follows:
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` I have been retained as a technical consultant on behalf of Samsung
`1.
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`Electronics Co., Ltd., the petitioner in the present proceeding, and I am
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`being compensated at my usual and customary hourly rate. The petition
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`names Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
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`and Samsung Telecommunications America LLC as real parties-in-interest.
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`I have no financial interest in, or affiliation with, the petitioner, real parties-
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`in-interest, or the patent owner, which I understand to be Arendi S.A.R.L.
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` SV: 80625-1
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`My compensation is not dependent upon the outcome of or my testimony in
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`the present inter partes review or any litigation proceedings.
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`Background
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` In 1986, I received a Bachelor of Science degree in Mathematics from the 2.
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`University of California, Irvine. In 1988, I received a Master of Science
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`degree in Electrical Engineering and Computer Science from the University
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`of Southern California. In 1994, I received a Doctor of Science degree in
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`Computer Science from George Washington University.
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` From 1985 to 1989, I worked as a Systems Engineer at Ultrasystems
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`Defense and Space. As more fully set forth in my curriculum vitae, at
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`Ultrasystems I designed and implemented large-scale simulation and
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`network-based systems for the United States Department of Defense
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`(DOD). A high-speed database server I designed and implemented was used
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`for real-time intelligence collection by the National Security Agency
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`(NSA).
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` From 1989 to September 1990, as more fully set forth in my curriculum
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`vitae, I worked as a Technical Lead at GTE Government Systems. While at
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`GTE, I designed and implemented an X Windows interface for the Minstrel
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`System. I also developed and taught DEC Windows and X Windows
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`classes for GTE technical personnel. In addition, I developed X Windows
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`interfaces for a large-scale event-driven network system for the NSA.
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` From 1990 to 1995, as more fully set forth in my curriculum vitae, I worked
`5.
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`as a Senior Security Engineer at Trusted Information Systems. While at
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`Trusted Information Systems I designed and implemented high-assurance
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`security systems, including cryptographic systems and applications for the
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`NSA and the Defense Advanced Research Projects Agency (DARPA). My
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`work at Trusted Information Systems involved cryptography, operating
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`systems, smartcards, and other security technology developments and
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`implementations.
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` From 1995 to 1999, as more fully set forth in my curriculum vitae, I worked
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`as Chief Scientist at DynCorp Network Solutions, where I served as senior
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`internal security consultant for a variety of projects. For example, I was
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`architect and Technical Director of the IRS Secure Submission and
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`Retrieval System
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`that allowed
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`the digitally signed and encrypted
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`submission of tax data over the Internet. The successful deployment of this
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`system resulted in three Al Gore Hammer Awards. I also created a suite of
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`security products for providing secure wide area user access to servers that
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`was marketed and sold to the DOD and other parts of the federal
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`government.
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` From 1999 to the present, I have served as President and Chief Technology
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`Officer of SecureMethods, Inc. and Paul C. Clark LLC. SecureMethods
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`specializes in the design, implementation, and deployment of advanced
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`secure network applications for commercial and government clients,
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`including the DOD. SecureMethods provides a comprehensive scalable,
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`Commercial-Off-The-Shelf (COTS) secure architecture,
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`implemented
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`through the use of the SM Gateway. The SM Gateway is a next-generation
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`security appliance developed by SecureMethods that is available on UNIX-
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`based platforms using commercial, government, and Type I cryptography,
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`implemented in both hardware and software. In my capacity as President
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`and Chief Technology Officer of SecureMethods, I have technical and
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`operational oversight of all projects and corporate technical operations. I
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`provide guidance to senior technical personnel for design, implementation,
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`and troubleshooting for a wide range of systems both internal and external.
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`My work
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`includes network systems and security, cryptographic
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`applications, certification, key management, authentication, and integrity
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`strategies for network applications. I also provide a wide range of high-end
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`technical and legal consulting services. My firm specializes in complex
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`software and hardware systems for commercial and DoD clients.
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` I was also a member of the Federal Advisory Committee for Key
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`Management
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`Infrastructure
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`(KMI),
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`serving as Chairman of
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`the
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`Interoperability Working Group for Cryptographic Key Recovery. I have
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`also served as an adjunct professor in the Computer Science Department at
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`The George Washington University, where I have taught doctoral-level
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`cryptography, network and computer security courses. I also appeared
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`before a Congressional committee to provide testimony on “Advanced
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`Technology for Border Control.”
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` I have co-authored a number of publications in the computer and security
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`areas. I am also a named inventor on two United States Patents, U.S. Patent
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`Nos. 5,448,045 and 5,892,902. My curriculum vitae is attached to the
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`Petition as Exhibit 1008.
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`Materials Considered
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` I have reviewed each of the following: 10.
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`a. U.S. Patent No. 7,496,843 (“the ’843 Patent”), including the claims,
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`description, and prosecution history (which are identified in the
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`Petition as Exhibits 1001 and 1002, respectively);
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`b. U.S. Patent No. 5,859,636 to M.S. Pandit (which is identified in the
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`Petition as Exhibit 1005; hereinafter “Pandit”);
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`c. Merriam-Webster, Merriam-Webster’s Collegiate Dictionary (10th
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`ed. 1999) (which is identified in the Petition as Exhibit 1009);
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`d. Decision Instituting Inter Partes Review, Case No. IPR2014-00208,
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`Paper No. 8, June 11, 2014 (which is identified in the Petition as
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`Exhibit 1006).
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` Upon reviewing the ’843 Patent, I understand that a Norwegian patent
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`application (NO 984066) was filed on September 3, 1998, and a non-
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`provisional application was filed on November 10, 1998 (Appl. No.
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`09/189,626, now U.S. Patent No. 6,323,853), which is the parent
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`application to Appl. No. 09/923,134, filed on August 6, 1998, which in turn
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`is the parent application to Appl. No. 12/182,048, filed July 29, 2008, that
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`issued as the ’843 Patent. For the purposes of my analysis, I assume the
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`time of the purported invention to be about 1998.
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`Person of Ordinary Skill in the Art
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` In my opinion, a person of ordinary skill in the art for the subject matter of 12.
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`the ’843 Patent around 1998 would be a person having an undergraduate
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`degree in computer science in addition to two or more years of work
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`experience relating to the field of computerized information processing or
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`equivalent graduate education or work experience.
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`Overview of the ’843 Patent
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` Based on my review of the ’843 Patent, it addresses a method, system and 13.
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`computer readable medium for name and address handling through the use
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`of a computer program coupled to an information management source for
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`providing address handling within a document created by the computer
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`program. ’843 Patent, 1:18-26.
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` In an embodiment described in the patent and shown in FIG. 1, the user has
`14.
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`typed information into a document, for example a word processing
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`document, and, as shown at Step 2 of FIG. 1, presses a button that
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`initiates/initializes the operation of a program using information from that
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`document. Id. at 3:42-54; 4:25-28. As shown in Step 4 of FIG. 1, this
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`program retrieves the information that the user has typed into the document
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`and analyzes it. Id. At step 6, the program decides what was found in the
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`document and takes some action based on what was found. Id. at 4:28-32;
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`4:40-67.
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` The actions that the program takes can include, for example, looking up a
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`name in a database, as shown in Step 12. Id. at 4:43-45. Further actions
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`may be taken by the program depending upon the result of the database
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`lookup, including, for example, inserting an address related to the name into
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`the document, as shown in Step 22 of FIG. 1; inserting an address into a
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`database, as shown in Step 36; or displaying the data to the user, as shown
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`in Step 20. Id. at 4:46-5:8.
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`Claim Construction
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` I have been asked to offer my opinion regarding the understanding of a 16.
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`person skilled in the art regarding certain claim terms in the ’843 Patent. I
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`understand that in the present proceeding, claim terms are interpreted as the
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`broadest reasonable interpretation consistent with the specification or
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`“BRI.”
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` I have been asked to offer my opinion regarding the understanding of a
`17.
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`person skilled in the art regarding the claim term “an input device,
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`configured by the first computer program.”
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` There is no discussion in the specification of the ’843 Patent regarding what
`18.
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`“configured by” means. In light of this, one of ordinary skill in the art
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`would understand “configured” to have its ordinary and customary
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`meaning. The Merriam-Webster Collegiate® Dictionary from the 1998-
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`1999 time frame defines “configure” to mean “to set up for operation.” Ex.
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`1009 at 242. Thus, the phrase “an input device, configured by the first
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`computer program” means that the input device is set up by the first
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`computer program. I understand that this is the construction that was
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`adopted in the decision instituting trial on the ’843 Patent in Case IPR2014-
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`00208. Ex. 1006 at 9.
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` The ’843 Patent explains at 3:35-48, 10:8-13, and FIG. 3 item 42 that,
`19.
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`“single button addressing is achieved by providing an input device” or
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`button, such as a touch screen, touch screen button, keyboard, keyboard
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`button, icon, menu, menu choice, voice command device, etc. The
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`specification only states that an input device is provided “in a computer
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`program” ’843 Patent, 3:35-41, and illustrates a “OneButton” as the input
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`device in every embodiment. ’843 Patent, FIGS. 3-5 & 14-15, 4:25-26,
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`5:65, 6:12-13, 6:47-48, 7:33-34, 8:14-15, 8:57-58. Thus, one of ordinary
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`skill in the art would understand that the “input device” would have an
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`interface to receive a user command, such as a user-selectable area or icon
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`on a computer screen.
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`Pandit
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` I have reviewed Pandit. Pandit is directed to recognition of text data in a 20.
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`document and performing operations relevant to the recognized text.
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`Pandit, Abstract.
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` More specifically, Pandit displays documents such as email messages or
`21.
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`word processor documents electronically and, while the document is being
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`displayed, analyzes information from the document to determine if the
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`information is one of a set of types of detectable structures (e.g., telephone
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`numbers, telefax numbers, dates, nouns and verbs). See, e.g., id. at 5:17-21
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`(“Any text appearing on a video monitor can be operated on by the
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`invention, whether the text is within an EMail message, World-Wide Web
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`site, created by a word processing or database program, etc.”); 2:4-8 (“The
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`invention selectively recognizes text and performs relevant operations
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`based on the recognition.”); 2:25-32 (“the invention is not limited to the
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`recognition of dates in text . . . the invention can recognize e-mail addresses
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`and telephone numbers . . . Uniform Resource Locators, nouns, verbs,
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`names, street addresses, etc.”).
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`22.
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` Pandit teaches that, from a pulled-down menu, programs may be called,
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`including a writable computer database of telephone and telefax numbers.
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`Id. at 3:1-3.
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` Pandit provides an input device, configured by the first program, that allows
`23.
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`a user to initiate an operation (e.g., setting up an appointment in a calendar)
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`comprising performing a search of a person’s calendar (i.e., second
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`information) for the recognized date (i.e., first information). See id. at 2:9-
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`10 (“the invention . . . provides a menu bar 13”); 2:12-18 (“In the example
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`of FIG. 1a, the Date menu 12 is shown in bold type, signifying that the
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`invention includes a menu of operations and/or programs which are relevant
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`to dates. A user can ‘click’ on the Date menu name 12 or otherwise call the
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`menu by one or more keystrokes on a keyboard.”); FIG. 1b (“Display
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`calendar . . . Create appointment . . .”); 2:20-21 (“A user may directly call a
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`calendar or appointment database program from pulled-down menu 18.”).
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`Pandit teaches that the “application 29 will build the appropriate menus” at
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`run-time using any installed libraries. Id. at 4:55-64.
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` Pandit discloses retrieving the first information (e.g., date), performing a
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`search using at least part of the first information (e.g., search an electronic
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`calendar for a date entry) and performing an action using at least part of the
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`second information (e.g., setting up an appointment under the date entry).
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`See id. at 2:37-50 (“the pulled-down menu 18 can identify operations and/or
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`programs relevant to dates, such as the calendar program and appointment
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`programs shown as well as a To-Do list program, an anniversary database, a
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`scheduling program etc … A user is able to run one or more of the
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`programs relevant to dates which are identified in the pulled-down menu in
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`a known manner, such as by clicking on the name of the program as it
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`appears in the pulled-down menu (step 25) or through the execution of one
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`or more keyboard key strokes. In the example shown, therefore, a user is
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`able to record in, for example, a calendar program, an upcoming event
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`mentioned in a body of text in which a date has been recognized.”).
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` In another example as shown in FIG. 1f, determination that a selected text
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`item is a phone number can result in provision of available actions
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`including dialing the number, adding the number to an address book or
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`sending a fax to the number.
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` In my opinion, claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42 and 43 of 26.
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`the ’843 Patent would have been obvious in view of Pandit.
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` With respect to claims 1, 20, 23, and 42, to the extent that building the
`27.
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`menus of Pandit does not explicitly disclose that the menu is “configured
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`by” the first application program, it would have been obvious to a person of
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`ordinary skill in the art at the relevant timeframe that the menu must be
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`configured by the first application program in order to be displayed with the
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`first application program. At the relevant time frame, it would have been
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`common knowledge to one of ordinary skill in the art that a computer
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`program would set up some sort of user selectable area, or menu, so as to
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`allow a user to initiate an operation. During the relevant timeframe, I
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`personally configured window managers like those for X Windows (e.g.,
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`“.Xdefaults” files) to construct and display menus for user input to initiate
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`an operation (e.g., run an application program). See para. 4, supra. This
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`would have been a predictable modification of Pandit that was well within
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`ordinary skill, because configuring a menu was a well-known function of
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`word processing programs that use a graphical user interface, such as
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`Microsoft Word 95.
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` It would also have been obvious to a person of ordinary skill in the art at the
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`relevant timeframe that the first step in adding to an address book is
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`searching the address book to determine if an entry already exists with this
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`information and displaying any associated information that is located. For
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`example, a person wanting to enter a contact into a paper address book
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`would first look to determine whether the contact has been entered
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`previously. Users using an address book program would also first look to
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`determine whether the contact has been entered previously. Therefore, it
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`would have been a simple design decision to automate the task. In fact,
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`address book programs implemented during the relevant time frame, such
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`as Microsoft Mail, searched the address book to avoid duplicate entries.
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`Thus, first searching the address book would have been a matter of common
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`sense to one of ordinary skill, in order to avoid multiple incoherent entries
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`of the same address.
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` As discussed above, Pandit discloses recognizing names in a document and
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`performing actions using an address book. With respect to claim 15, 21, 37,
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`and 43, it would have been obvious to one of ordinary skill in the art at the
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`relevant time frame to enable a user to call a person with the identified
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`name by searching the address book, and, if the name corresponded to
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`multiple numbers in the address book like a home and work number (i.e.,
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`“searching results
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`in a plurality of distinct
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`instances of second
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`information”), to display them for selection (i.e., “displaying such instances
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`to enable user selection of one of them for use in performing the action”).
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`This would have been simply a matter of common sense and common
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`knowledge at the relevant time frame and there would have been design and
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`market incentives to provide such functionality. In addition, this is an
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`obvious and logical design approach as would have been recognized by a
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`person of ordinary skill in the art. Typical information systems from the
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`relevant timeframe (including address book programs like Microsoft Mail)
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`display all results found and provide users with the ability to select one of
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`them to perform an action. For example, a person may have more than one
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`e-mail address in a contact database. If a user searches someone’s e-mail
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`address in that database, the results will be made available to the user to
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`select as the addressee of the e-mail. Furthermore, one of ordinary skill in
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`the art at the relevant time frame would have been able to apply a known
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`technique (displaying for selection plural results of a search) to the known
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`method of Pandit to yield a predictable result.
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`I hereby declare that all statements made herein of my own knowledge are true and
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`that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under section 1001 of Title 18 of the United States Code.
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`Dated:
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`24 a/z
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`Respectfully submitted,
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`Paul C. Clark
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