`
`
`U.S. Patent No. 7,178,097
`Filed: March 24, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`EVERNOTE CORPORATION,
`Petitioner
`
`v.
`
`TALSK RESEARCH, INC.
`Patent Owner
`
`Case No.: To Be Assigned
`
`Patent No.: 7,178,097
`
`For: Method and System for Using a Communications Network to Archive and
`Retrieve Bibliography Information and Reference Material
`
`DECLARATION OF STEPHEN GRAY IN SUPPORT OF PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT 7,178,097
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
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`

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`
`I. 
`
`II. 
`
`
`
`TABLE OF CONTENTS
`
`U.S. Patent No. 7,178,097
`Filed: March 24, 2017
`
`PROFESSIONAL BACKGROUND ............................................................ 1 
`
`BACKGROUND OF THE TECHNOLOGY .............................................. 4 
`
`A. 
`
`B. 
`
`Background on Archiving Internet Webpages ................................. 4 
`
`Background on Database Technology ............................................... 6 
`
`III.  MATERIALS RELIED UPON .................................................................... 7 
`
`IV.  SUMMARY OF CONCLUSIONS ............................................................... 9 
`
`V.  RELEVANT LEGAL STANDARDS ........................................................ 10 
`
`VI.  PERSON OF ORDINARY SKILL IN THE ART .................................... 12 
`
`VII.  SUMMARY OF THE ’097 PATENT ........................................................ 14 
`
`VIII.  CLAIM CONSTRUCTION ........................................................................ 18 
`
`A. 
`
`B. 
`
`C. 
`
`“Distinctive Key” / “Unique Key” ................................................... 18 
`
`“Bibliography” ................................................................................... 20 
`
`“Author” / “Audience” ..................................................................... 21 
`
`IX.  PRIOR ART ................................................................................................. 21 
`
`A. 
`
`B. 
`
`The Admitted Background Art ........................................................ 21 
`
`Priscilla Caplan and William Y. Arms, Reference Linking
`for Journal Articles, D-Lib Magazine, Vol. 5 No. 7/8,
`July/August 1999 (Exhibit-1004) ..................................................... 23 
`
`C.  U.S. Patent No. 6,135,646 to Kahn et al. (Exhibit-1005) ................ 25 
`
`D. 
`
`PCT Application No. WO00/39713 to Gemteq Software,
`Inc. (Exhibit-1006) ............................................................................. 28 
`
`i
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`U.S. Patent No. 7,178,097
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`
`Filed: March 24, 2017
`X.  GROUND 1: CAPLAN IN VIEW OF KAHN AND THE
`KNOWLEDGE OF A PERSON OF ORDINARY SKILL IN THE
`ART RENDERS CLAIMS 1–28 UNPATENTABLE FOR
`OBVIOUSNESS UNDER 35 U.S.C. § 103 ................................................ 32 
`
`A.  Claims 8–16 of the ’097 Patent Would Have Been Obvious
`to Someone Having Ordinary Skill in the Field in View of
`Caplan and Kahn and the Knowledge of a Person of
`Ordinary Skill in the Art .................................................................. 32 
`
`B. 
`
`Claims 1 – 7 ........................................................................................ 65 
`
`C.  Claim 17 .............................................................................................. 65 
`
`D.  Claim 18–28 Are Substantially Similar to Independent
`Claim 8 and Its Dependent Claims, and Would Have Been
`Obvious to a Person of Ordinary Skill in the Art for the
`Same Reasons Discussed Above. ...................................................... 71 
`
`XI.  GROUND 2: APA, IN VIEW OF GEMTEQ AND FURTHER IN
`VIEW OF KAHN, RENDERS CLAIMS 1 –16 AND 18 – 28
`UNPATENTABLE FOR OBVIOUSNESS UNDER 35 U.S.C.
`§ 103 .............................................................................................................. 71 
`
`A.  Claims 8–16 of the ’097 Patent Would Have Been Obvious
`to Someone Having Ordinary Skill in the Field in View of
`APA, Gemteq, and Kahn .................................................................. 72 
`
`B. 
`
`Claims 1–7 .......................................................................................... 93 
`
`C.  Claim 18 – 28 are Substantially Similar to Independent
`Claim 8 and Its Dependent Claims, and Would Have Been
`Obvious to a Person of Ordinary Skill in the Art for the
`Same Reasons Discussed Above. ...................................................... 93 
`
`XII.  CLAIMS 1–7 AND CLAIMS 18–28 .......................................................... 94 
`
`A.  Claims 1–7 .......................................................................................... 94 
`
`B. 
`
`Claims 18–28 ...................................................................................... 98 
`
`ii
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`XIII.  CONCLUSION .......................................................................................... 107 
`
`iii
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`I, Stephen Gray, do hereby declare:
`
`
`
`
`U.S. Patent No. 7,178,097
`Filed: March 24, 2017
`
`1.
`
`I am making this declaration at the request of Evernote Corporation
`
`(“Evernote”) in the matter of the Inter Partes Review of U.S. Patent No. 7,178,097
`
`(“the ’097 Patent”).
`
`2.
`
`I am being compensated for my work in this matter at my standard
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`hourly rate of $400 for consulting services. I am being reimbursed at cost for any
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`expenses. My compensation in no way depends upon the outcome of this
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`proceeding.
`
`I.
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`PROFESSIONAL BACKGROUND
`3.
`
`I am an independent consultant. All of my opinions stated in this
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`report are based on my own personal knowledge and professional judgment. In
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`forming my opinions, I have relied on my knowledge and experience in designing,
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`developing, and deploying distributed client/server systems, graphical user
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`interfaces, and website platforms and information referenced in this report. I am
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`over 18 years of age and, if I am called upon to do so, I am competent to testify as
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`to the matters set forth herein. I have attached as Appendix 1 a copy of my current
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`curriculum vitae, which details my education and experience, and a list of all other
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`cases in which, during the previous four years, I testified as an expert at trial or by
`
`deposition. The following thus provides an overview of some of my experience
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`that is relevant to the matters set forth in this report.
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`Page 1
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`Since the mid-1970s, I have designed, developed, and deployed
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`4.
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`computing systems and products that operate in server, client, and graphical
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`environments. As such, I have acquired expertise and am an expert in the areas of
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`distributed computing architecture and design, graphical user interfaces, operating
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`systems, distributed data management, local area and wide area networks, and
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`various programming languages used in the development of those systems and
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`products. I have been employed by or retained as a consultant, including acting as
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`a litigation consultant, for numerous companies such as Burroughs, FileNet,
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`Fujitsu, Marriott Corporation, MCI, Northern Telecom, Olivetti, TRW, and Xerox,
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`as well as other companies.
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`5.
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`I have several relevant professional experiences that demonstrate my
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`expertise in the field of distributed data management. In late-2001 to mid-2002, as
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`Chief Technology Officer for Networld Exchange Inc., I was responsible for the
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`design, development and deployment of a suite of products that delivered
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`eCommerce functions. These functions were provided over the Internet and
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`included product catalog information display, purchase and/or purchase order
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`creation, order delivery to fulfillment systems and order status reporting. The
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`products that I had responsibility for performed numerous operations, including
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`data synchronization, on data distributed among geographically dispersed
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`computing entities.
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`Page 2
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`In the mid-1990s I was a consultant for Xerox. One of my
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`6.
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`assignments there was to develop strategies for data management among network
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`attached office products. For example, one of the distributed data management
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`strategies that I delivered provided network operations distributed job management
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`control.
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`7.
`
`As my curriculum vitae shows, much of my career has been spent as a
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`software development professional. As a software development professional, I
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`have had numerous occasions to write, modify, analyze, and otherwise review
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`bodies of source code. I have analyzed source code written in several variants of
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`C, SQL, COBOL, PHP, RPG, variants of Basic, Java, Perl, several assembler
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`languages, and others. For example, as an individual contributor at Xerox during
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`the mid-1980s to 1990, I evaluated the quality of source code from third party
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`software providers for possible inclusion in the Xerox product line. Also, as
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`another example, I evaluated the source code of several application software
`
`packages for completeness and maintainability for possible inclusion into the NTN
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`product line in 2000-2001. During my early career, I spent time maintaining
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`source code written by others. In each of these assignments, I analyzed the source
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`code to identify the data structures, logical flow, algorithms and other aspects.
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`8.
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`In addition, on several occasions, I have served as an expert witness
`
`where source code analysis was required to render an opinion. These matters
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`Page 3
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`U.S. Patent No. 7,178,097
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`
`Filed: March 24, 2017
`include Autobytel v. Dealix; NetRatings v. Coremetrics, et al.; Ampex v. Kodak, et
`
`al.; AB Cellular v. City of Los Angeles; Oracle v. Mangosoft; Harrah’s Casino v.
`
`Station’s Casino; MediaTek v. Sanyo; MathWorks v. COMSOL; Apple v. Samsung,
`
`and other matters still pending.
`
`9.
`
`I have developed and presented numerous public and in-house courses
`
`in computer system technology, including courses relating to distributed
`
`computing applications for IBM MVS, UNIX, Linux, IBM OS/2, Microsoft
`
`Windows, and related networking technologies.
`
`II. BACKGROUND OF THE TECHNOLOGY
`A. Background on Archiving Internet Webpages
`10. By the year 2000, there were numerous solutions to archiving
`
`reference materials from Internet sources. For example, the article “It Was Here a
`
`Minute Ago!”: Archiving the Net (Exhibit-1010) provides a good summary of the
`
`state of the art in 1997, when it was published. An archive, as defined in the
`
`article, is “a collection of material which someone has vowed to maintain for the
`
`foreseeable future and that offers some kind of access to the collection.” (Exhibit-
`
`1010 at 52.) By 1997, there were a number of archival systems that routinely
`
`archived reference materials from the Internet.
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`11. For example, the now-famous “The Internet Archive
`
`[http://www.archive.org/]”, now commonly known as the “Wayback Machine.”
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`was operational by 1997. (Id. at 53.) The Wayback Machine crawled, and still
`
`crawls, public resources on the Internet, such as websites, Usenet newsgroups, and
`
`FTP sites, and stored copies of those resources in large storage databases. (Id. at
`
`53-54.) Crawling is the automated search function that will systematically go
`
`through a list of URLs, and as it goes through that list it will identify any
`
`hyperlinks in those websites to add to the list of URLs to visit.
`
`12. Another example of an Internet archiving system was the “Business
`
`Compass [http://abcompass.com],” also known as “ABC” (Id. at 54.) ABC
`
`primarily focused on storing copies of “high quality materials from WWW
`
`databases.” It collected “Internet-only” materials such as articles from the The
`
`New York Times’ Cybertimes and the San Francisco Chronicle’s Cybersection.
`
`(Id.) ABC identified the problem of website material being removed or the
`
`website address changing, and implemented a solution: “If a URL changes or the
`
`article no longer appears on the publisher’s site, ABC obtains permission to use
`
`their stored copy….They plan to keep their archive forever, and thus may become
`
`the only source for these historically important documents in the future.” (Id.)
`
`13. Another example of an Internet archiving system was “eWorks Inc.’s
`
`eWatch [http://www.eworks.com; http://www.ewatch.com].” (Id.) In addition to
`
`archiving websites identified as pertinent to a company, eWatch archived
`
`newsgroups and listservs. (Id.)
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`Page 5
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`14. Another example of an Internet archiving system was “OCLC’s
`
`Electronic Collections Online (ECO).” (Id. at 55.) OCLC archived two sets of
`
`resource materials: 1) “electronic text submitted by a publisher for a collection of
`
`journals,” and 2) “any special collection for an organization.” (Id.) One
`
`significant contribution of OCLC was the use of “Persistent Uniform Resource
`
`Locator[s]” (PURLs). (Id. at 58.) PURLs solved the problem of a website address
`
`changing or being removed altogether. A PURL “represents an Internet address
`
`which should last, no matter what happens to the URL linked to it.” (Id.) Thus,
`
`the OCLC created a new and unique “PURL record for every new bibliography
`
`record.” (Id.)
`
`15. Other examples include Internet archiving systems for “Scholarly
`
`Publishers,” “Newspapers,” and “Government Documents.” (Id. at 55-56.)
`
`B.
`Background on Database Technology
`16. A database is “an organized collection of logically related data.”
`
`(Exhibit-1019 at 4). In computing systems, databases are implemented through
`
`database management systems: software applications that are used to “create,
`
`maintain, and provide controlled access” to user databases.” (Id. at 24.)
`
`17. For example, a relational database represents the organized data in
`
`the form of tables, i.e., rows and columns, that can be manipulated using a set of
`
`operations defined by structured query language (SQL). Relational database
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`U.S. Patent No. 7,178,097
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`technology was introduced in 1970 and is still in common use today. (Id. at 166.)
`
`A person of skill in the art would understand that relational database technology
`
`was the preferred method for database implementation at the time of the filing of
`
`the ‘097 Patent.
`
`18.
`
` Systems that provide access to databases over the Internet are
`
`typically referred to as client-server systems. Client-server system technology has
`
`its origins in the 1970s through work at PARC. “[A] server is a program that
`
`supplies a well-defined service over a computer network to client programs, which
`
`use the service to implement some application.” (Exhibit-1018 at 10 (emphasis in
`
`original).) By the 1990s, client-server technology was the dominant form of
`
`distributed application computing. This 1996 IEEE dictionary entry explains that
`
`client-server technology was typically used to remotely access databases: “client-
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`server – In a communications network, the client is the requesting device and the
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`server is the supplying device. For example, the user interface could reside in the
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`client workstation while the storage and retrieval functions could reside in the
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`server database.” (Exhibit-1020 at 163 (emphasis added).)
`
`III. MATERIALS RELIED UPON
`19.
` In forming my opinions, I have considered, a) the following
`
`documents and things; and b) any other references referred to or cited in this
`
`declaration. Particularly, this report is based on my review of the ’097 Patent.
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`Page 7
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`
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`a. U.S Patent No. 7,178,097 (Exhibit-1001)
`
`U.S. Patent No. 7,178,097
`Filed: March 24, 2017
`
`b. File history of U.S Patent No. 7,178,097 (Exhibit-1003)
`
`c. Priscilla Caplan & William Y Arms, Reference Linking for Journal
`
`Articles, D-LIB Magazine, Vol. 5 No. 7/8, July/August 1999
`
`(“Caplan”) (Exhibit-1004)
`
`d. U.S. Patent No. 6,135,646 (“Kahn”) (Exhibit-1005)
`
`e. PCT App. No. WO 00/39713 (“Gemteq”) (Exhibit-1006)
`
`f. Plaintiff Talsk Research Inc.’s Response to Defendant Evernote’s
`
`Rule 12(b)(6) Motion to Dismiss Second Amended Complaint, Case
`
`1:16-cv-02167, Doc. No. 31 (Filed November 28, 2016) (Exhibit-
`
`1007)
`
`g. D-Lib Magazine, About D-Lib Magazine,
`
`http://www.dlib.org/about.html (last visited Mar. 20, 2017) (Exhibit-
`
`1008)
`
`h. D-Lib Magazine (July/August 1999), D-Lib Magazine (July/Aug.,
`
`1999), http://dlib.org/dlib/july99/07contents.html (Exhibit-1009)
`
`i. Susan E. Feldman, “It Was Here a Minute Ago!”: Archiving the Net,
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`Searcher: the Magazine for Database Professionals, Oct. 1997
`
`(Exhibit-1010)
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`Page 8
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`j. Second Amended Complaint, Case 1:16-cv-02167, Doc. No. 24 (Filed
`
`Sept. 16, 2016) (Exhibit-1011)
`
`k. Declaration of William J. Arms (Exhibit-1012)
`
`l. International Standard Serial Number (ISSN), U.S. ISSN Center
`
`(International Standard Serial Number, Library of Congress),
`
`http://www.loc.gov.issn (last updated Aug. 2, 2016) (Exhibit-1013)
`
`m. U.S. Patent No. 6,924,827 (Exhibit-1014, “Gulati”)
`
`n. U.S. Provisional Application No. 60/114,065 (Exhibit-1015)
`
`o. U.S. Provisional Application No. 60/160,639 (Exhibit-1016)
`
`p. U.S. Application No. 09/470,855 (Exhibit-1017)
`
`q. Daniel Swinehart et al., WFS: A Simple Shared File System for a
`
`Distributed Environment, Proceedings of the Seventh ACM
`
`Symposium on Operating Systems Principles, Dec. 1979, at 9-17
`
`(Exhibit-1018)
`
`r. Jeffrey A. Hoffer et al., Modern Database Management (6th ed. 2002)
`
`(Exhibit-1019)
`
`s. The IEEE Standard Dictionary of Electrical and Electronic Terms
`
`(6th ed. 1997) (Exhibit-1020)
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`IV. SUMMARY OF CONCLUSIONS
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`Page 9
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`U.S. Patent No. 7,178,097
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`Filed: March 24, 2017
`20. As described in detail below, it is my opinion that claims 1 – 28 of the
`
`’097 Patent are unpatentable because they are rendered obvious by several prior art
`
`reference combinations discussed below.
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`V. RELEVANT LEGAL STANDARDS
`21.
`I have been asked to provide my opinion as to whether claims 1 – 28
`
`of the ’097 Patent would have been obvious to a person of ordinary skill in the art
`
`at the time of the alleged invention in view of the prior art.
`
`22.
`
`I am an engineer by training and profession. The opinions I am
`
`expressing in this declaration involve the application of my engineering knowledge
`
`and experience to the evaluation of certain prior art with respect to the ’097 Patent.
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`My knowledge of applicable patent law is no different than that of any lay person.
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`Therefore, I have requested the attorneys who represent Evernote to provide me
`
`with guidance as to the applicable patent law in this matter. The paragraphs below
`
`express my understanding of how I must apply current principles related to patent
`
`validity in my analysis.
`
`23.
`
`It is my understanding that in determining whether a patent claim is
`
`obvious in view of the prior art, the Patent Office must construe the claim by
`
`giving the claim its broadest reasonable interpretation consistent with the
`
`specification. For the purposes of this review, I have analyzed each claim term in
`
`accordance under the required broadest reasonable interpretation.
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`It is my understanding that a claim is unpatentable if the claimed
`
`24.
`
`subject matter as a whole would have been obvious to a person of ordinary skill in
`
`the art at the time of the invention. I also understand that an obviousness analysis
`
`takes into account the scope and content of the prior art, the differences between
`
`the claimed subject matter and the prior art, and the level of ordinary skill in the art
`
`at the time of the invention.
`
`25. A reference is reasonably pertinent if it logically would have
`
`commended itself to an inventor’s attention in considering the inventor’s problem.
`
`If a reference relates to the same problem as the claimed invention, that supports
`
`the use of the reference as prior art in an obviousness analysis.
`
`26.
`
`It is my further understanding that the Supreme Court has recognized
`
`several rationales for combining references or modifying a reference to show
`
`obviousness of claimed subject matter. Some of these rationales include:
`
`combining prior art elements according to known methods to yield predictable
`
`results; simple substitution of one known element for another to obtain predictable
`
`results; a predictable use of prior art elements according to their established
`
`functions; applying a known technique to a known device (method or product)
`
`ready for improvement to yield predictable results; choosing from a finite number
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`of identified, predictable solutions, with a reasonable expectation of success; and
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`some teaching, suggestion, or motivation in the prior art that would have led one of
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`ordinary skill to modify the prior art reference or to combine prior art reference
`
`teachings to arrive at the claimed invention.
`
`27. Lastly, I understand that an obviousness analysis must consider
`
`whether there are additional factors that would indicate that the invention was
`
`nonobvious. These factors include: (i) long-felt need; (ii) unexpected results; (iii)
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`skepticism of the invention; (iv) teaching away from the invention; (v) commercial
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`success; (vi) praise by others for the invention; and (vii) copying by other
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`companies. In the present case, I am unaware of any evidence that would suggest
`
`that claims 1 – 16 and 18 – 28 of the ’097 Patent would have been non-obvious.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`28.
`It is my understanding that when interpreting the claims of the ’097
`
`Patent, I must do so based on the perspective of one of ordinary skill in the art at
`
`the time of the alleged invention. In addition, I understand that the question of
`
`whether the claimed invention would have been obvious is analyzed from the
`
`perspective of the person having ordinary skill in the art at the time of the
`
`invention. It is my understanding that the relevant time for the challenged claims
`
`of the ’097 Patent is November 2000.
`
`29.
`
`I understand that determining the level of ordinary skill in the art
`
`involves an analysis of the several factors, including: (1) the types of problems
`
`encountered in the art; (2) the prior art solutions to those problems; (3) the rapidity
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`with which innovations are made; (4) the sophistication of the technology; (5) the
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`educational level of active workers in the field; and (6) the educational level of the
`
`inventors. I also understand that these factors are not exhaustive, and are merely a
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`useful guide to determining the level of ordinary skill in the art.
`
`30. Based on my review of the specification of the ’097 Patent, it is my
`
`opinion that one of ordinary skill in the art would be a person with at least a
`
`Bachelor of Science degree (or the equivalent) in a relevant scientific or
`
`engineering field, such as computer engineering or computer science, or the
`
`equivalent knowledge gained through experience; and having at least one year of
`
`experience related the use of networking systems to access databases.
`
`31.
`
`I am well acquainted with the knowledge of one of ordinary skill as of
`
`the time of filing of the application leading to the ’097 Patent (late 1990s
`
`timeframe). By that time, I had worked in industry for several years in the field of
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`software and system engineering and areas related to distributed data management
`
`over the Internet in the 1999-2002 timeframe. For example, as CTO of NTN
`
`Communications, I was responsible for the design, implementation and operation
`
`of a data distribution network comprising 3500 sites throughout North America.
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`The data was heavily version controlled and the distribution windows were very
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`demanding. As CTO of NetWorld Exchange I was responsible for the design,
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`implementation and operation of a distributed data network of operational data
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`across a multi-site global distributed network using relational databases with near-
`
`real-time synchronization. In both of these examples, the backbone of the network
`
`was the Internet.
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`VII. SUMMARY OF THE ’097 PATENT
`32. The ’097 Patent is titled “Method and System for Using a
`
`Communications Network to Archive and Retrieve Bibliography Information and
`
`Reference Material” and was filed on November 13, 2000. It was issued on
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`February 13, 2007. The named inventor of the ’097 Patent is Srikrishna Talluri.
`
`33. According to the applicant of the ’097 Patent, before November 13,
`
`2000, “information available on websites on the World Wide Web, e.g., the
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`Internet, ha[d] become an indispensable source for research on several areas of
`
`interest and often ma[de] a study more comprehensive.” (Exhibit-1001 at 1:38-
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`41.) By that time, the World Wide Web included electronic versions of physical
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`media (such as newspapers and magazines), but also functioned as a “standalone
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`medium with no physical equivalent or limitations….” (Id. at 1:43-47.) The
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`applicant of the ’097 Patent recognized that “[a]uthors and researchers are now
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`starting to cite information from websites in their manuscripts” and that “[v]arious
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`professional bodies have issued protocols for citing web content.” (Id. at 1:48-50.)
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`The standard citation format at the time, according to the ’097 Patent, included:
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`(1) “the address of the website such as a Uniform Resource Locator (URL)”; (2)
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`“the data of access of the website (by the author)”; and (3) “the last modified date
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`of the website.” (Id. at 1:50-57.)
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`34. The applicant noted, however, that “[a] problem citing websites as
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`sources of information is that 1) websites are subject to frequent, invisible
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`modifications and 2) may be moved to a new address or removed from the Internet
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`without notice.” (Id. at 1:58-61.) Accordingly, “[t]he problem with citing a
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`website is that the fluid, ever modifiable potential of the content of the website
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`does not guarantee availability and true verification of the material actually used
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`by the author.” (Id. at 2:16-19.) Thus, the applicant claimed that “in light of the
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`affect the cited web based material might have had on a given manuscript, it
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`becomes important for referees, editors, other researchers, and the audience of the
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`manuscript to ascertain the credibility of the cited information available on those
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`Internet websites (sources).” (Id. at 2:41-45.)
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`35. As explained in the patent, “[a]uthors of manuscripts … frequently
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`cite material such as articles and other books in a bibliography section,” which “is
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`usually attached to the end of the manuscript.” (Exhibit-1001, at 1:17-26.) To
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`solve the purported problem of citing webpages, which can change or be deleted
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`over time, the ’097 Patent describes a method of archiving websites cited in
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`manuscripts in an online database. (Id. at 2:53-56.) Using the database, the
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`audience can retrieve a copy of the websites cited in a manuscript. (Id.)
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`36. Claim 8 of the ’097 Patent is representative and is summarized below
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`with reference to Figure 1 from the ’097 patent. Claim 8 recites:
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`8(c)
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`8(i)
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`Claim Language
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`8. A method for archiving reference material cited in a bibliography of a
`manuscript by an author of the manuscript, the method comprising:
`8(a) an author of a manuscript using a web site on the Internet as a reference for
`the manuscript;
`8(b) the author transmitting the address of the web[] site to a database connected
`to the Internet using a first communications device connected to the
`Internet;
`the database obtaining a copy of the web site from the Internet upon
`receiving the web site address from the author such that the copy of the
`web site obtained by the database is verbatim to the web site as on the
`Internet at the time the author transmitted the web site address to the
`database;
`8(d) associating a distinctive key to the copy of the web site;
`8(e) storing at the database the copy of the web site with the distinctive key;
`8(f)
`the author citing the web site as being a reference for the manuscript by
`listing identification of the web site along with the distinctive key in the
`bibliography of the manuscript;
`8(g) an audience of the manuscript obtaining the distinctive key from the
`bibliography of the manuscript;
`8(h) the audience transmitting the distinctive key to the database using a second
`communications device connected to the Internet in order to request the
`database for the copy of the web site; and
`the database transmitting a copy of the stored copy of the web site to the
`audience via the Internet and the second communications device in
`response to the database receiving the distinctive key from the audience
`such that the copy of the web site transmitted from the database to the
`audience is verbatim to the web site as on the Internet at the time the author
`transmitted the web site address to the database.
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`37. As explained in the specification, an author (14) creates a manuscript
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`“using a web site on the Internet [12] as a reference for the manuscript.” (Id. at
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`10:50-51.) The author (14) must “transmit[] the address of the web[] site to a
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`database [18] connected to the Internet [12] using a first communications device
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`connected to the Internet [12].” (Id. at 10:52-54.)
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`38.
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`In response, the database (18) “obtain[s] a copy of the web site from
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`the Internet [12].” (Id. at 10:55-60.) The copy of the website obtained by the
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`database (18) is “verbatim to the web site as on the Internet [12] at the time the
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`author [14] transmitted the web site address to the database [18].” (Id.) A
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`“distinctive key” is “associat[ed] with the copy of the web site.” (Id. at 10:61.)
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`The database (18) stores the distinctive key together with the verbatim copy of the
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`web site. (Id. at 10:61-63.) Claim 8 further requires that the author cite “the web
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`site as being a reference for the manuscript by listing identification of the web site
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`along with the distinctive key in [a] bibliography of the manuscript.” (Id. at 10:64-
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`67.)
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`39. An audience (16) of the manuscript later “obtain[s] the distinctive key
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`from the bibliography of the manuscript.” (Id. at 11:1-2.) “[T]he audience
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`transmit[s] the distinctive key to the database using a second communications
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`device connected to the Internet” in order to request the database for the copy of
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`the website. (Id. at 11:3-6.) In response to the database receiving the distinctive
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`key from the audience, “the database transmit[s] a copy of the stored copy of the
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`web site to the audience via the Internet.” (Id. at 11:7-10.)
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`40. Figure 1, reproduced below, shows the basic components and
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`interactions between the “author,” “audience,” “Internet,” and “database”:
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`(Id. Fig. 1.)
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`
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`VIII. CLAIM CONSTRUCTION
`41.
`I understand that Petitioner has proposed meanings for several claim
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`terms used in the ’097 Patent. I have read the Petitioner’s discussion regarding
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`these terms. I agree with Petitioner’s definitions and use those definitions in this
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`Report. For all other claim terms, I have given each its broadest reasonable
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`interpretation.
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`A.
`42.
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`“Distinctive Key” / “Unique Key”
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`Independent Claims 1, 8, 17, and 18 of the ’097 Patent require, among
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`other things, “associating a distinctive key to the copy of the web site.” (Id. at
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`10:61; see also id. at 9:50-52, 12:58-60.) Independent Claims 19 and 23 use the
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`phrase “unique key.” (Id. at 13:25, 14:15.) The ’097 Patent does not differentiate
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`between these two terms.
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`43. A person of ordinary skill in the art would understand that the terms
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`“distinctive key” and “unique key” should be construed according to their plain
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`and o