IPR2014-01188
`Patent No. 8,156,096
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
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`GOOGLE, Inc.
`Petitioner,
`v.
`MICHAEL MEIRESONNE
`Patent Owner.
`______________
`
`U.S. Patent No. 8,156,096
`IPR Case No.: IPR2014-01188
`______________
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`DECLARATION OF PAUL S. JACOBS
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`1 of 20
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`MEIRESONNE 2013
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`Patent No. 8,156,096
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________
`
`GOOGLE, Inc.
`Petitioner,
`v.
`MICHAEL MEIRESONNE
`Patent Owner.
`______________
`
`U.S. Patent No. 8,156,096
`IPR Case No.: IPR2014-01188
`______________
`
`DECLARATION OF PAUL S. JACOBS
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`1 of 20
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`TABLE OF CONTENTS
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`IPR2014-01188
`Patent No. 8,156,096
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`I.
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`Education and Qualifications .................................................................................... 4
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`II. Materials Reviewed and Considered ......................................................................... 7
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`III. Person of Ordinary Skill in the Art ........................................................................... 8
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`IV. Opinions On the Proposed Combination of Hill and Finseth ............................. 9
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`V. Opinions On Objective Evidence of Non-Obviousness .................................... 15
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`VI. Opinions on Nexus Between the Claimed Invention and Google’s
`Instant Preview Features .............................................................................. 19
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`Exhibit No.
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`Description
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`EXHIBIT LIST
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`Meiresonne 2001
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`Meiresonne 2002
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`Meiresonne 2003
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`Meiresonne 2004
`Meiresonne 2005
`Meiresonne 2006
`Meiresonne 2007
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`Meiresonne 2008
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`Meiresonne 2009
`Meiresonne 2010
`Meiresonne 2011
`Meiresonne 2012
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`File History of United States Patent Application 09/160,633
`(Finseth)
`Manual of Patent Examining Procedure (MPEP) Seventh
`Edition, Chapter 600, July 1998
`Declaration of Paul S. Jacobs in Support of Motion for
`Additional Discovery
`Google Official Blog - 5% satisfaction increase
`GOMES Mashable Article
`Google 2010 - Form 10-K
`Google 2011 - Form 10-K
`Patent Owner’s Request For The
`Production Of Documents To Petitioner Google, Inc.
`Forbes Article
`Official Google Webmaster Blog
`Official Google Code Blog
`Amit Singhal Bio
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`NEW EXHIBITS
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`Exhibit No.
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`Description
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`Meiresonne 2013
`Meiresonne 2014
`Meiresonne 2015
`Meiresonne 2016
`Meiresonne 2017
`Meiresonne 2018
`Meiresonne 2019
`Meiresonne 2020
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`
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`Declaration of Paul S. Jacobs
`Bederson 03-19-15 Deposition Transcript
`Google CONFIDENTIAL Document
`Google CONFIDENTIAL Document
`Paul Jacobs Curriculum Vitae
`Claim Chart of Google 2010 Instant Previews
`Local Search Results Claim Chart
`“Our History in Depth” from Google.com
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`I, Paul S. Jacobs hereby declare as follows:
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`I am making this declaration at the request of Patent Owner Michael
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`1.
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`Meiresonne in the matter of inter partes review of U.S. Patent No. 8,156,096.
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`
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`I.
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`Education and Qualifications
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`2.
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`I am currently employed by Jake Technologies, Inc., a software
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`consultancy. The Patent Owner has retained me as an expert consultant. I am being
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`compensated for my work in this matter at my customary rate of $395/hour. My
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`compensation does not depend on the outcome of this proceeding.
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`3.
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`I received a Bachelor of Science in Applied Mathematics from Harvard
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`University in 1981, a Master of Science in Applied Mathematics from Harvard
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`University in 1981, and a Ph.D. in Computer Science from the University of
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`California at Berkeley in 1985.
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`4.
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`I have authored or co-authored over 50 scientific and technical
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`publications. I am listed as an inventor on two U.S. patents directed to computational
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`lexicons, and I have over 30 years of experience in the computer and information
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`retrieval industry.
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`5.
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`I have served in numerous professional and scientific capacities,
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`including one year as a visiting professor of computer science at the University of
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`Pennsylvania and several years as a member of the executive committee of the
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`Association for Computational Linguistics. Currently, I serve on the Public Policy
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`Council of the Association for Computing Machinery (USACM). I am a technology
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`consultant and an adjunct lecturer at the University of Maryland in College Park,
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`where I have taught classes in the College of Information Studies (The “iSchool”)
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`since 2007.
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`6.
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`In 2012, I was appointed by the Secretary of Commerce to the Patent
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`Public Advisory Committee (PPAC), which advises the Under Secretary and Director
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`of the United States Patent and Trademark Office (USPTO) on management of the
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`patent operations of the Office, including policies, goals, budget, fees, and other
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`office operations. I continue to serve on the PPAC.
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`7.
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`Between 1985 and 1994, I was employed as a computer scientist with
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`General Electric (“GE”) Corporate Research and Development. I also consulted for
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`Infonautics, an early Internet information services and advanced search company. I
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`was the editor of a book, entitled “Text-Based Intelligent Systems.” The book was a
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`collection of papers based on a symposium I chaired in 1990, which brought together
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`leaders of the field of Information Retrieval to address issues related to large-scale
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`advanced text processing.
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`8.
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`During my years at GE, I was principal investigator for the GE team in
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`the Tipster program, sponsored by the Advanced Research Projects Agency (ARPA)
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`of the United States Department of Defense and other government agencies. The
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`technology developed in Tipster formed the foundation of the first web search
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`engines. The founder of Lycos and creator of the Lycos search engine, Michael
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`Mauldin, was a Carnegie Mellon subcontractor on my team when he developed Lycos.
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`Because of my close involvement with information retrieval and natural language
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`search technology, I was familiar with the research and development issues behind
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`web search engines as they emerged.
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`9.
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`I joined SRA International (“SRA”) in the latter part of 1994 and
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`became director of media information technologies. My responsibilities included new
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`ventures and technology activities related to the Internet and the World Wide Web.
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`From 1994 until 2002, as the Web came of age, I held a series of technology and
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`business management jobs in organizations focused on networked information
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`management applications. I was CEO of IsoQuest, an SRA subsidiary, managing vice
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`president for electronic commerce at SRA, president and CTO of AnswerLogic, and
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`CTO of Primus Knowledge Solutions. My responsibilities during this period
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`included business and technical roles for a range of products and technologies
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`focused on search-related solutions and on leveraging information on the Web.
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`10. During my years as an entrepreneur and internet/e-commerce executive,
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`that is, 1994 – 2002, I continued to be closely familiar with the companies behind web
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`search engines as well as the research and development involved. One of my
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`companies, IsoQuest, developed one of the first products used by commercial search
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`systems to identify and interpret proper names, and we licensed this software to some
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`search engine companies, including Infoseek and Convera. Another company I led,
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`AnswerLogic, was financed by CMGI at a time when that company owned the
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`AltaVista search engine, and as a result I had high-level discussions with the
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`management and software team at AltaVista. AnswerLogic itself was a search engine
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`of sorts, developed as a competitor to AskJeeves (now ask.com) prior to
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`AnswerLogic’s acquisition by Primus in 2001. Hence I maintained my close
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`association and familiarity with the business and technology of web search engines
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`during the period prior to the original filing date (August 23, 2001) of the ‘096 patent.
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`11. A more complete recitation of my professional experience including a
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`list of my journal publications, patents, conference proceedings, book authorship, and
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`committee memberships may be found in my Curriculum Vitae (Ex. 2017).
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`II. Materials Reviewed and Considered
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`12.
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`In forming the opinions expressed below, I have considered:
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`(a)
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`The relevant legal standards, including the standards for validity
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`provided to me by counsel, and the documents cited in the body of this
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`declaration; and
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`(b) My knowledge and experience based upon my work and study in
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`this area.
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`13.
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`I have been informed of these legal standards by Patent Owner’s
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`attorneys. I am not an attorney, and I am relying on instructions from Plaintiff’s
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`attorneys regarding these legal standards.
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`14.
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`I have reviewed the PTAB’s Institution Decision and the Board’s claim
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`constructions for relevant terms of the ‘096 patent. (Paper No. 9, pp. 6-7.) I have
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`also reviewed the agreed upon constructions in the Patent Owner’s Preliminary
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`Response. (Paper No. 6, p. 4.)
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`15.
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`I have reviewed the IPR Petition in this matter, along with the
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`accompanying documents and the declaration of Dr. Ben Bedersen (Ex. 1011). I have
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`also reviewed the deposition testimony of Dr. Bedersen (Ex. 2014). In particular, I
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`have studied Petitioner’s argument that claims 16, 17, 19, and 20 of the ‘096 Patent
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`are rendered obvious by the combination of Hill (Ex. 1006) and Finseth (Ex. 1007).
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`III. Person of Ordinary Skill in the Art
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`16.
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`I understand that obviousness is to be determined from the perspective
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`of a person of ordinary skill in the art at the time of the invention, which is not later
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`than August 23, 2001 in this case.
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`17. Dr. Bederson opines that a person of ordinary skill in the art at the time
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`of the invention would have possessed “at least a bachelor’s degree in computer
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`science or related field, and approximately one year of experience in web site design.”
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`Bederson Declaration (Ex. 1011, ¶27.)
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`I concur with Dr. Bederson’s opinion regarding the background of a
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`18.
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`person of ordinary skill in the art.
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`IV. Opinions On the Proposed Combination of Hill and Finseth
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`19. The Petition contends that the claims of the ‘096 patent under review are
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`obvious based on the combination of (1) “World Wide Web Searching for Dummies,
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`2d Edition” by Brad Hill, IDG Books Worldwide” (1997) (“Hill”), and (2) U.S. Patent
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`6,271,840 (“Finseth”). For the reasons expressed below, it is my opinion that claims
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`16, 17, 19, and 20 of the ‘096 patent are non-obvious over the combination of Hill
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`and Finseth.
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`20. All of the claims under review recite “a keyword results displaying web
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`page” that includes at least the combination of “related subject matter links,” “a
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`plurality of descriptive portions” (along with the associated limitations of that claim
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`element), and “a rollover viewing area that individually displays information
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`corresponding to more than one of the related subject matter links” (along with the
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`associated limitations of that claim element).
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`21. The Petition acknowledges that none of the search engines described in
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`Hill (and their various results pages) teaches or would have suggested the “rollover
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`viewing area” feature. Petition at 2, 18; Bederson Declaration (Ex. 1011) ¶47.
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`22. The Petition relies upon the Hill teachings for all of the claim limitations
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`with the exception of the “rollover viewing area” found in Finseth. Id.
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`23.
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`Finseth teaches a “visual index process,” which is used in combination
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`with a conventional search engine of the sort disclosed in Hill, to generate an
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`alternative user interface for depicting search results. Finseth’s “visual index process”
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`is described in Finseth’s Figure 1, together with the associated description at col. 4, l.
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`25 – col. 5 l. 50. URLs from a conventional search (but not the descriptive portions)
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`are passed to the Finseth system as an input. Id.
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`24.
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`Finseth’s output includes the browser displays in Figs. 5-8, but none
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`include the claimed “descriptive portions.” In fact, not one of the embodiments in
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`Finseth utilizes the claimed “descriptive portions.” In Figure 5, the “graphical screen
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`area” shows “rendered web pages when the user passes the cursor over the
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`corresponding hyperlink set forth on the left hand side of the page.” Finseth col. 8, ll.
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`47-49. “In a very quick order, the user is able to scan graphical summaries of each of
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`the hyperlinks presented on the computer screen.” Finseth col. 8, ll. 51-53.
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`25. Thus, it is clear that Finseth includes only hyperlinks, and optionally,
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`“graphical summaries,” as part of results pages (i.e., the “browser”) that are displayed
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`to the user. Finseth’s architecture does not envision or even allow for, let alone
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`suggest a separate “descriptive portion” that would be combined with the alleged
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`rollover functionality, because the graphical summaries displayed on rollover are
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`presented as a substitute (an improvement, in fact) for the information that would be
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`included in the descriptive portions.
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`26. The relied-upon features of the search engines described in Hill are
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`cumulative to Finseth; that is, Finseth acknowledges the features of search sites such as
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`AltaVista, Lycos, Infoseek, Excite, and Yahoo!, and specifically does not rely on the
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`necessary descriptive portions; instead, Finseth resolves the problem of what he refers
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`to as the “cursory” or “cryptic” descriptions by using a graphical page rendering in
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`place of the descriptive portions. In other words, Finseth specifically acknowledges
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`that search engines were available with interfaces that included at least the makings of
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`descriptive portions, but he did not see the need to use descriptive portions in the
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`output to the user because the graphical page rendering was a better alternative.
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`27. Thus, the combination of Hill and Finseth proposed in the Petition does
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`not result in the claimed keyword results displaying web page which includes links,
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`associated descriptive portions, and a rollover viewing area. Because the combination
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`of Hill and Finseth results in something less than the claimed configuration, the
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`combination does not establish that the claimed invention would have been obvious
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`to a person of ordinary skill in the art.
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`28. As explained above, the Petition proposes only “combining” the
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`references. The Petition does not propose modifying Hill based on the teachings of
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`Finseth, or vice versa. Dr. Bederson alone contends that it would have been obvious at
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`the time of the invention to “add the rollover preview viewing area of Finseth to the
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`web sites described in Hill.” Bederson Decl. (Ex. 1011) ¶61. In other words, Dr.
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`Bederson, but not the Petition, proposes modifying Hill based on the teachings of
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`Finseth to reach the claimed invention. Yet, neither Hill nor Finseth suggests or
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`provides a reason for such a modification of Hill. If a person of skill in the art at the
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`time of the invention were to read Hill and Finseth together, objectively, that person
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`would have been motivated to combine the references in the manner that Finseth
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`expressly invites – a manner that results in something different from the claimed
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`invention because it lacks the claimed “descriptive portions.”
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`29.
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`In modifying Hill’s descriptions of existing search engines to add
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`Finseth’s disclosure of a “rollover preview viewing area” to arrive at a theoretical web
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`search results page that does not exist in the art, Dr. Bederson is using the Meiresonne
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`patent as a roadmap to the prior art, which I understand is improper. It is not correct
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`that one of ordinary skill reading Hill at the time of the invention (that is, without the
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`benefit of the ‘096 claims) would excerpt a single isolated feature of Finseth, i.e., the
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`“graphical summaries,” to add to the search engines of Hill while disregarding the
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`other teachings of Finseth leading in a different direction with respect to displaying
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`search results. Because Finseth incorporates the relevant teachings of Hill, it is
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`unjustifiable to develop a theory of obviousness that combines these two references in
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`a manner inconsistent with the way the combination, in fact, was made.
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`30.
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`It should also be noted that Hill is a book, “World Wide Web Searching
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`for Dummies” that does not teach or suggest even the basics of creating a search
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`engine results page, much less modifying an existing results page using “graphical
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`summaries” to create an enhanced format that happens to include the missing claim
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`elements. While Dr. Bederson is correct that one of ordinary skill would understand
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`that search engines store results pages, at least in some form, on a server, one of
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`ordinary skill would not have been encouraged to access and modify the pages
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`disclosed in Hill in the manner Dr. Bederson proposes.
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`31. One of ordinary skill would recognize that the Hill book is a “Dummies”
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`book about how to perform searches, not a guide to building new search engines.
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`Suggesting such a modification as Dr. Bederson proposes is well beyond the scope of
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`Hill. And, as explained above, Finseth expressly uses the URLs from conventional
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`search engines of Hill as an input. So, it cannot be said that Finseth motivates the
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`modification of Hill that Dr. Bederson proposes. Only through hindsight with the
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`‘096 claims in-hand, which I understand is improper, might one suggest a
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`modification of Hill’s results pages to include the rollover feature of the ‘096 claims.
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`At the time of the invention, by contrast, Finseth objectively revealed what
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`conventional search engines would look like if someone wanted to solve the problem
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`of “cryptic” link descriptions.
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`32. Hill presents search engine interfaces as opaque, “black boxes” whose
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`inner workings are not explained and need not be understood by the reader. Contrary
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`to Dr. Bederson’s statements, Hill does not teach that search engine results pages are
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`a set of interfaces that could be modified by a clever programmer, and neither does
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`Finseth.
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`33. Rather than relying on the teachings of Hill and Finseth, Dr. Bederson is
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`relying on the teachings of the ‘096 patent as a roadmap to insert exactly one feature
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`from Finseth (the rollover preview) retroactively into the search engines of Hill. This
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`reliance is incorrect and, I understand, impermissible.
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`34. Dr. Bederson states that “a POSITA would have had ample motivation
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`to add the rollover preview viewing area of Finseth to the web sites described in Hill.
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`Indeed, Finseth was directed at adding this feature to the results returned by ‘current
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`search engines’ like those described in Hill….” Bederson Decl. (Ex. 1011) ¶ 61. I
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`disagree. This statement by Dr. Bederson is suggesting that the skilled artisan
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`backtrack from Finseth to the “Dummies” book, which describes search engines as a
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`“black box,” preserve the very features discarded by Finseth, include the abstracts that
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`were criticized as “cryptic” and “gibberish,” and modify an interface that is presented
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`not as a modifiable component, but as an integral and opaque part of each engine.
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`This is not so.
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`35. Taking the two references together, the skilled artisan would have to
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`start with Finseth, which does not teach, and would not have suggested, the claimed
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`“descriptive portions” in combination with the “rollover viewing area.” Finseth
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`neither teaches nor suggests the necessary combination of features. Nor does Finseth
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`suggest the necessary modification to the teachings of Hill, because Finseth uses only
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`the URLs returned by conventional search engines and not their results pages.
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`Neither Hill nor Finseth suggests that the skilled artisan should hack the results pages
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`of conventional engines, and it is not true that such a practitioner would have done
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`so.
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`V. Opinions On Objective Evidence of Non-Obviousness
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`36.
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`I have also been asked to consider objective evidence of non-
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`obviousness, specifically, a long-felt but unresolved need for the invention. In my
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`opinion, this evidence confirms the non-obviousness of claims 16, 17, 19, and 20 of
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`the ‘096 patent.
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`37. Hill and Finseth each recognized a problem with the descriptive portions
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`of conventional search results, and each proposed a “solution” that is different from
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`the invention claimed in the ‘096 patent. In 1997, Hill described the descriptive text
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`portion of the search results as “gibberish.” (Exhibit 1006, p. 102.) Hill gave his
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`solution to the problem when he said, “you can always get the story straight from the
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`horse’s mouth by clicking on the link to visit the actual site.” (Id.)
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`38.
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`In 1998, Finseth noted that search result abstracts, or summaries, were
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`“a cursory, if not cryptic, excerpt of initial text present on the web page,” and “[o]ne
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`of the great drawbacks of current search engines.” Finseth col. 1, ll. 54, 56-7. Finseth
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`solved the problem by doing away with the descriptive portions altogether and
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`replacing them with graphics that he thought were more helpful.
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`39. Despite the fact that, as early as 1997, Hill, Finseth, and others criticized
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`the quality of abstracts and summaries that were displayed in search engine results, the
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`actual engineers and product managers at the numerous search engine companies
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`prior to 2001 did not add the missing claim features. The Petition and Dr. Bederson
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`claim that there was a strong motivation to fix the problem of poor descriptions, but
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`none of the many search engine companies competing from 1997 to 2001 solved the
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`problem the way Meiresonne solved it.
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`40.
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`I was active in the search engine community during 1997 – 2001, as well
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`as other periods, and it was one of the busiest and most innovative periods in the
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`search arena that I can recall. In fact, we used to refer to each of these years as a “dog
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`year” – once the Web started to take hold, change occurred so quickly that each year
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`was like 10 or more “regular” years – just as a “dog” year is equivalent to 10 or more
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`“human” years. It was also “dog eat dog” – search vendors simply destroyed one
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`another in the marketplace, often competing on the basis of technical features, such as
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`Infoseek’s more advanced algorithms, AltaVista’s faster crawling, or HotBot’s use of
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`popularity. Google, of course, took over the space soon after this period.
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`41.
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`In 1997, I was acutely aware of this as I raised money for my company,
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`IsoQuest. I had some difficulty because venture capitalists generally considered the
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`search space to be “too crowded.” Yahoo, Excite, Verity, Infoseek, and others had all
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`gone public during 1995 and 1996, and many others, including the well-financed
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`AltaVista, were already on the scene. In 1999, there was no such difficulty – we were
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`in the “bubble” and search was red hot, like everything else on the Web. My
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`company, AnswerLogic, which I joined in the fall of 1999, closed a $10 million
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`funding round from CMGI, the owners of AltaVista, early in 2000, although we had
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`but a few programmers, no customers, and no working product. Money moved
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`quickly into the hands of capable people with ideas, and often those ideas translated
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`quickly into new products.
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`42. Yahoo, Excite, Verity, and Infoseek were hiring some of the most
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`talented software engineers in the field. Based on my personal knowledge, search
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`engine companies were working aggressively to differentiate themselves from each
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`other in 1997-2001. For example, Google exploded onto the search engine scene
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`shortly after its release, gaining its reputation for displaying the best and most relevant
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`search results on the web. In less than two years, Google went from a virtually
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`unknown company with eight employees to technological dominance in the search
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`engine space. Google’s famous “PageRank” technology was one of the factors that
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`helped Google provide better search results. “PageRank” separated Google from the
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`rest of the pack and in my opinion is one of the factors as to why Google is the most
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`17 of 20
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`MEIRESONNE 2013
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`IPR2014-01188
`Patent No. 8,156,096
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`popular search engine.
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`43. As of 1997, each of the several search engine providers disclosed in Hill
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`had the technical capability to create the claimed website in the ‘096 Patent.
`
`However, none of them did and neither did Finseth. All of the talent working on
`
`search engines from 1997-2001, and failing to come up with the ‘096 Patent, is
`
`objective evidence of why the ‘096 Patent is not obvious.
`
`44. According to Hill, Finseth, and Dr. Bederson, there was a long-felt need
`
`for improved search engine results pages that would better describe the links
`
`presented in the search results. Search engine vendors from 1997 to 2001 had the
`
`skills, knowledge, tools, financial resources, and expertise to solve the problem. Over
`
`this four-year period (40 “Internet years”), were it obvious to make the ‘096 patent’s
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`invention, I believe that at least one of the many search vendors would have done so
`
`given the competitive environment, the rich financial rewards, and the motivation that
`
`Hill, Finseth, and Dr. Bederson discuss. The fact that so many extremely capable
`
`people, including the designers of search engines from Yahoo, Lycos, AltaVista,
`
`Excite, Infoseek, and others, were addressing the need and did not arrive at the
`
`invention of the ‘096 patent, in my opinion, directly refutes Dr. Bederson’s contention
`
`that modifications to those very engines would have been obvious to a first-year web
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`site designer with a copy of a “Dummies” book.
`
`45. This is why I view the need for better search results as being “long-felt”
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`IPR2014-01188
`Patent No. 8,156,096
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`even though the time between Hill and Meiresonne was but four “normal” years.
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`VI. Opinions on Nexus Between the Claimed Invention and Google’s
`Instant Preview Features
`
`
`46.
`
`I have been asked to determine whether claims 16-17 and 19-20 of the
`
`‘096 patent cover the “Instant Previews” feature Google launched in 2010. They do,
`
`as described in Ex. 2018.
`
`47. Based on my understanding, the Google search engine did not meet the
`
`limitations of claims 16-17 and 19-20 of the ‘096 patent prior to the launch of
`
`“Instant Previews” in 2010. It is my understanding that prior to the introduction of
`
`“Instant Previews,” Google’s traditional search result page was displayed. The
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`traditional search result page was missing at least the “rollover” limitation of the ‘096
`
`claims. After Google introduced “Instant Previews,” each of the claim limitations was
`
`met, as shown in Ex. 2018.
`
`48.
`
`I have been asked to determine whether claims 16-17 and 19-20 of the
`
`‘096 patent cover Google’s implementation of Instant Previews for local search. They
`
`do, as described in Ex. 2019.
`
`49. Based on my analysis, Google’s search engine currently meets the
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`limitations of claims 16-17 and 19-20 for certain types of “local” searches. For
`
`example, a search for “air conditioning” in Google’s search engine activates Instant
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`Previews for local search. As shown in Ex. 2019, each of the claim limitations of the
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`19 of 20
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`MEIRESONNE 2013
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`IPR2014—01188
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`Patent No. 8,156,096
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`‘096 Patent is met by “Instant Previews” for “local search” results.
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`I declare under penalty of perjury that the foregoing is true and correct.
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`Executed on:
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`5”?” [Vibe 24W 5"
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`20 of 20
`20 of 20
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`MEIRESONNE 2013
`MEIRESONNE 2013
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