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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`In re Inter Partes Review of:
`U.S. Patent No. 7,917,843
`
`For: METHOD, SYSTEM AND COMPUTER
`READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A
`COMPUTER PROGRAM
`
`
`
`
`DECLARATION OF PAUL C. CLARK, D.SC.
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`US Patent and Trademark Office
`PO Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`I, Paul C. Clark, hereby declare and state as follows:
`
` I have been retained as a technical consultant on behalf of Samsung
`1.
`
`Electronics Co., Ltd., the petitioner in the present proceeding, and I am
`
`being compensated at my usual and customary hourly rate. The petition
`
`names Samsung Electronics Co., Ltd., Samsung Electronics America, Inc.,
`
`and Samsung Telecommunications America LLC as real parties-in-interest.
`
`I have no financial interest in, or affiliation with, the petitioner, real parties-
`
`in-interest, or the patent owner, which I understand to be Arendi S.A.R.L.
`
` SV: 80625-1
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`032449.0031-US07
`Patent 7,917,843 B2
`My compensation is not dependent upon the outcome of or my testimony in
`
`the present inter partes review or any litigation proceedings.
`
`Background
`
`
` In 1986, I received a Bachelor of Science degree in Mathematics from the 2.
`
`University of California, Irvine. In 1988, I received a Master of Science
`
`degree in Electrical Engineering and Computer Science from the University
`
`of Southern California. In 1994, I received a Doctor of Science degree in
`
`Computer Science from George Washington University.
`
` From 1985 to 1989, I worked as a Systems Engineer at Ultrasystems
`3.
`
`Defense and Space. As more fully set forth in my curriculum vitae, at
`
`Ultrasystems I designed and implemented large-scale simulation and
`
`network-based systems for the United States Department of Defense
`
`(DOD). A high-speed database server I designed and implemented was used
`
`for real-time intelligence collection by the National Security Agency
`
`(NSA).
`
` From 1989 to September 1990, as more fully set forth in my curriculum
`4.
`
`vitae, I worked as a Technical Lead at GTE Government Systems. While at
`
`GTE, I designed and implemented an X Windows interface for the Minstrel
`
`System. I also developed and taught DEC Windows and X Windows
`
`2
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`032449.0031-US07
`Patent 7,917,843 B2
`classes for GTE technical personnel. In addition, I developed X Windows
`
`interfaces for a large-scale event-driven network system for the NSA.
`
` From 1990 to 1995, as more fully set forth in my curriculum vitae, I worked
`5.
`
`as a Senior Security Engineer at Trusted Information Systems. While at
`
`Trusted Information Systems I designed and implemented high-assurance
`
`security systems, including cryptographic systems and applications for the
`
`NSA and the Defense Advanced Research Projects Agency (DARPA). My
`
`work at Trusted Information Systems involved cryptography, operating
`
`systems, smartcards, and other security technology developments and
`
`implementations.
`
` From 1995 to 1999, as more fully set forth in my curriculum vitae, I worked
`6.
`
`as Chief Scientist at DynCorp Network Solutions, where I served as senior
`
`internal security consultant for a variety of projects. For example, I was
`
`architect and Technical Director of the IRS Secure Submission and
`
`Retrieval System
`
`that allowed
`
`the digitally signed and encrypted
`
`submission of tax data over the Internet. The successful deployment of this
`
`system resulted in three Al Gore Hammer Awards. I also created a suite of
`
`security products for providing secure wide area user access to servers that
`
`was marketed and sold to the DOD and other parts of the federal
`
`government.
`
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`032449.0031-US07
`Patent 7,917,843 B2
` From 1999 to the present, I have served as President and Chief Technology
`7.
`
`Officer of SecureMethods, Inc. and Paul C. Clark LLC. SecureMethods
`
`specializes in the design, implementation, and deployment of advanced
`
`secure network applications for commercial and government clients,
`
`including the DOD. SecureMethods provides a comprehensive scalable,
`
`Commercial-Off-The-Shelf (COTS) secure architecture,
`
`implemented
`
`through the use of the SM Gateway. The SM Gateway is a next-generation
`
`security appliance developed by SecureMethods that is available on UNIX-
`
`based platforms using commercial, government, and Type I cryptography,
`
`implemented in both hardware and software. In my capacity as President
`
`and Chief Technology Officer of SecureMethods, I have technical and
`
`operational oversight of all projects and corporate technical operations. I
`
`provide guidance to senior technical personnel for design, implementation,
`
`and troubleshooting for a wide range of systems both internal and external.
`
`My work
`
`includes network systems and security, cryptographic
`
`applications, certification, key management, authentication, and integrity
`
`strategies for network applications. I also provide a wide range of high-end
`
`technical and legal consulting services. My firm specializes in complex
`
`software and hardware systems for commercial and DoD clients.
`
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`032449.0031-US07
`Patent 7,917,843 B2
` I was also a member of the Federal Advisory Committee for Key
`8.
`
`Management
`
`Infrastructure
`
`(KMI),
`
`serving as Chairman of
`
`the
`
`Interoperability Working Group for Cryptographic Key Recovery. I have
`
`also served as an adjunct professor in the Computer Science Department at
`
`The George Washington University, where I have taught doctoral-level
`
`cryptography, network and computer security courses. I also appeared
`
`before a Congressional committee to provide testimony on “Advanced
`
`Technology for Border Control.”
`
` I have co-authored a number of publications in the computer and security
`9.
`
`areas. I am also a named inventor on two United States Patents, U.S. Patent
`
`Nos. 5,448,045 and 5,892,902. My curriculum vitae is attached to the
`
`Petition as Exhibit 1008.
`
`Materials Considered
`
`
` I have reviewed each of the following: 10.
`
`a. U.S. Patent No. 7,496,843 (“the ’843 Patent”), including the claims,
`
`description, and prosecution history (which are identified in the
`
`Petition as Exhibits 1001 and 1002, respectively);
`
`b. U.S. Patent No. 5,859,636 to M.S. Pandit (which is identified in the
`
`Petition as Exhibit 1005; hereinafter “Pandit”);
`
`5
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`c. Merriam-Webster, Merriam-Webster’s Collegiate Dictionary (10th
`
`ed. 1999) (which is identified in the Petition as Exhibit 1009);
`
`d. Decision Instituting Inter Partes Review, Case No. IPR2014-00208,
`
`Paper No. 8, June 11, 2014 (which is identified in the Petition as
`
`Exhibit 1006).
`
` Upon reviewing the ’843 Patent, I understand that a Norwegian patent
`11.
`
`application (NO 984066) was filed on September 3, 1998, and a non-
`
`provisional application was filed on November 10, 1998 (Appl. No.
`
`09/189,626, now U.S. Patent No. 6,323,853), which is the parent
`
`application to Appl. No. 09/923,134, filed on August 6, 1998, which in turn
`
`is the parent application to Appl. No. 12/182,048, filed July 29, 2008, that
`
`issued as the ’843 Patent. For the purposes of my analysis, I assume the
`
`time of the purported invention to be about 1998.
`
`Person of Ordinary Skill in the Art
`
`
` In my opinion, a person of ordinary skill in the art for the subject matter of 12.
`
`the ’843 Patent around 1998 would be a person having an undergraduate
`
`degree in computer science in addition to two or more years of work
`
`experience relating to the field of computerized information processing or
`
`equivalent graduate education or work experience.
`
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`Overview of the ’843 Patent
`
`
` Based on my review of the ’843 Patent, it addresses a method, system and 13.
`
`computer readable medium for name and address handling through the use
`
`of a computer program coupled to an information management source for
`
`providing address handling within a document created by the computer
`
`program. ’843 Patent, 1:18-26.
`
` In an embodiment described in the patent and shown in FIG. 1, the user has
`14.
`
`typed information into a document, for example a word processing
`
`document, and, as shown at Step 2 of FIG. 1, presses a button that
`
`initiates/initializes the operation of a program using information from that
`
`document. Id. at 3:42-54; 4:25-28. As shown in Step 4 of FIG. 1, this
`
`program retrieves the information that the user has typed into the document
`
`and analyzes it. Id. At step 6, the program decides what was found in the
`
`document and takes some action based on what was found. Id. at 4:28-32;
`
`4:40-67.
`
` The actions that the program takes can include, for example, looking up a
`15.
`
`name in a database, as shown in Step 12. Id. at 4:43-45. Further actions
`
`may be taken by the program depending upon the result of the database
`
`lookup, including, for example, inserting an address related to the name into
`
`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
`
`in Step 20. Id. at 4:46-5:8.
`
`Claim Construction
`
`
` I have been asked to offer my opinion regarding the understanding of a 16.
`
`person skilled in the art regarding certain claim terms in the ’843 Patent. I
`
`understand that in the present proceeding, claim terms are interpreted as the
`
`broadest reasonable interpretation consistent with the specification or
`
`“BRI.”
`
` I have been asked to offer my opinion regarding the understanding of a
`17.
`
`person skilled in the art regarding the claim term “an input device,
`
`configured by the first computer program.”
`
` There is no discussion in the specification of the ’843 Patent regarding what
`18.
`
`“configured by” means. In light of this, one of ordinary skill in the art
`
`would understand “configured” to have its ordinary and customary
`
`meaning. The Merriam-Webster Collegiate® Dictionary from the 1998-
`
`1999 time frame defines “configure” to mean “to set up for operation.” Ex.
`
`1009 at 242. Thus, the phrase “an input device, configured by the first
`
`computer program” means that the input device is set up by the first
`
`computer program. I understand that this is the construction that was
`
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`032449.0031-US07
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`adopted in the decision instituting trial on the ’843 Patent in Case IPR2014-
`
`00208. Ex. 1006 at 9.
`
` The ’843 Patent explains at 3:35-48, 10:8-13, and FIG. 3 item 42 that,
`19.
`
`“single button addressing is achieved by providing an input device” or
`
`button, such as a touch screen, touch screen button, keyboard, keyboard
`
`button, icon, menu, menu choice, voice command device, etc. The
`
`specification only states that an input device is provided “in a computer
`
`program” ’843 Patent, 3:35-41, and illustrates a “OneButton” as the input
`
`device in every embodiment. ’843 Patent, FIGS. 3-5 & 14-15, 4:25-26,
`
`5:65, 6:12-13, 6:47-48, 7:33-34, 8:14-15, 8:57-58. Thus, one of ordinary
`
`skill in the art would understand that the “input device” would have an
`
`interface to receive a user command, such as a user-selectable area or icon
`
`on a computer screen.
`
`Pandit
`
`
` I have reviewed Pandit. Pandit is directed to recognition of text data in a 20.
`
`document and performing operations relevant to the recognized text.
`
`Pandit, Abstract.
`
` More specifically, Pandit displays documents such as email messages or
`21.
`
`word processor documents electronically and, while the document is being
`
`displayed, analyzes information from the document to determine if the
`
`9
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`information is one of a set of types of detectable structures (e.g., telephone
`
`numbers, telefax numbers, dates, nouns and verbs). See, e.g., id. at 5:17-21
`
`(“Any text appearing on a video monitor can be operated on by the
`
`invention, whether the text is within an EMail message, World-Wide Web
`
`site, created by a word processing or database program, etc.”); 2:4-8 (“The
`
`invention selectively recognizes text and performs relevant operations
`
`based on the recognition.”); 2:25-32 (“the invention is not limited to the
`
`recognition of dates in text . . . the invention can recognize e-mail addresses
`
`and telephone numbers . . . Uniform Resource Locators, nouns, verbs,
`
`names, street addresses, etc.”).
`
`22.
`
` Pandit teaches that, from a pulled-down menu, programs may be called,
`
`including a writable computer database of telephone and telefax numbers.
`
`Id. at 3:1-3.
`
` Pandit provides an input device, configured by the first program, that allows
`23.
`
`a user to initiate an operation (e.g., setting up an appointment in a calendar)
`
`comprising performing a search of a person’s calendar (i.e., second
`
`information) for the recognized date (i.e., first information). See id. at 2:9-
`
`10 (“the invention . . . provides a menu bar 13”); 2:12-18 (“In the example
`
`of FIG. 1a, the Date menu 12 is shown in bold type, signifying that the
`
`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
`
`menu by one or more keystrokes on a keyboard.”); FIG. 1b (“Display
`
`calendar . . . Create appointment . . .”); 2:20-21 (“A user may directly call a
`
`calendar or appointment database program from pulled-down menu 18.”).
`
`Pandit teaches that the “application 29 will build the appropriate menus” at
`
`run-time using any installed libraries. Id. at 4:55-64.
`
` Pandit discloses retrieving the first information (e.g., date), performing a
`24.
`
`search using at least part of the first information (e.g., search an electronic
`
`calendar for a date entry) and performing an action using at least part of the
`
`second information (e.g., setting up an appointment under the date entry).
`
`See id. at 2:37-50 (“the pulled-down menu 18 can identify operations and/or
`
`programs relevant to dates, such as the calendar program and appointment
`
`programs shown as well as a To-Do list program, an anniversary database, a
`
`scheduling program etc … A user is able to run one or more of the
`
`programs relevant to dates which are identified in the pulled-down menu in
`
`a known manner, such as by clicking on the name of the program as it
`
`appears in the pulled-down menu (step 25) or through the execution of one
`
`or more keyboard key strokes. In the example shown, therefore, a user is
`
`able to record in, for example, a calendar program, an upcoming event
`
`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
`25.
`
`item is a phone number can result in provision of available actions
`
`including dialing the number, adding the number to an address book or
`
`sending a fax to the number.
`
`
`
`
`
`
`
`
`
` In my opinion, claims 1, 2, 8, 14-17, 20, 21, 23, 24, 30, 36-39, 42 and 43 of 26.
`
`the ’843 Patent would have been obvious in view of Pandit.
`
` With respect to claims 1, 20, 23, and 42, to the extent that building the
`27.
`
`menus of Pandit does not explicitly disclose that the menu is “configured
`
`by” the first application program, it would have been obvious to a person of
`
`ordinary skill in the art at the relevant timeframe that the menu must be
`
`configured by the first application program in order to be displayed with the
`
`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
`
`program would set up some sort of user selectable area, or menu, so as to
`
`allow a user to initiate an operation. During the relevant timeframe, I
`
`personally configured window managers like those for X Windows (e.g.,
`
`“.Xdefaults” files) to construct and display menus for user input to initiate
`
`an operation (e.g., run an application program). See para. 4, supra. This
`
`would have been a predictable modification of Pandit that was well within
`
`ordinary skill, because configuring a menu was a well-known function of
`
`word processing programs that use a graphical user interface, such as
`
`Microsoft Word 95.
`
` It would also have been obvious to a person of ordinary skill in the art at the
`28.
`
`relevant timeframe that the first step in adding to an address book is
`
`searching the address book to determine if an entry already exists with this
`
`information and displaying any associated information that is located. For
`
`example, a person wanting to enter a contact into a paper address book
`
`would first look to determine whether the contact has been entered
`
`previously. Users using an address book program would also first look to
`
`determine whether the contact has been entered previously. Therefore, it
`
`would have been a simple design decision to automate the task. In fact,
`
`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.
`
`Thus, first searching the address book would have been a matter of common
`
`sense to one of ordinary skill, in order to avoid multiple incoherent entries
`
`of the same address.
`
` As discussed above, Pandit discloses recognizing names in a document and
`29.
`
`performing actions using an address book. With respect to claim 15, 21, 37,
`
`and 43, it would have been obvious to one of ordinary skill in the art at the
`
`relevant time frame to enable a user to call a person with the identified
`
`name by searching the address book, and, if the name corresponded to
`
`multiple numbers in the address book like a home and work number (i.e.,
`
`“searching results
`
`in a plurality of distinct
`
`instances of second
`
`information”), to display them for selection (i.e., “displaying such instances
`
`to enable user selection of one of them for use in performing the action”).
`
`This would have been simply a matter of common sense and common
`
`knowledge at the relevant time frame and there would have been design and
`
`market incentives to provide such functionality. In addition, this is an
`
`obvious and logical design approach as would have been recognized by a
`
`person of ordinary skill in the art. Typical information systems from the
`
`relevant timeframe (including address book programs like Microsoft Mail)
`
`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
`
`e-mail address in a contact database. If a user searches someone’s e-mail
`
`address in that database, the results will be made available to the user to
`
`select as the addressee of the e-mail. Furthermore, one of ordinary skill in
`
`the art at the relevant time frame would have been able to apply a known
`
`technique (displaying for selection plural results of a search) to the known
`
`method of Pandit to yield a predictable result.
`
`
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`
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`032449 .003 1 -USO7
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`Patent 7,917,843 B2
`
`I hereby declare that all statements made herein of my own knowledge are true and
`
`that all statements made on information and belief are believed to be true; and
`
`further that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under section 1001 of Title 18 of the United States Code.
`
`Dated:
`
`24 a/z
`
`Respectfully submitted,
`
`Paul C. Clark
`
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