Filed on behalf of: Honey Science Corporation
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`RETAILMENOT, INC.
`Petitioner,
`v.
`HONEY SCIENCE CORP.
`Patent Owner.
`_______________________
`Case IPR2019-01565
`U.S. Patent No. 10,140,625
`_______________________
`
`DECLARATION OF DR. ROSS MALAGA IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Ex. 2017-0001
`
`Honey Science Corp.
`Exhibit 2017
`RetailMeNot v. Honey
`IPR2019-01565
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`RETAILMENOT, INC.
`Petitioner,
`v.
`HONEY SCIENCE CORP.
`Patent Owner.
`_______________________
`Case IPR2019-01565
`U.S. Patent No. 10,140,625
`_______________________
`
`DECLARATION OF DR. ROSS MALAGA IN SUPPORT OF
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`Ex. 2017-0001
`
`Honey Science Corp.
`Exhibit 2017
`RetailMeNot v. Honey
`IPR2019-01565
`
`
`
`IPR2019-01565 (USP 10,140,625)
`
`Decl. ISO of PO’s Preliminary Response
`
`TABLE OF CONTENTS
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`EXPERIENCE AND QUALIFICATIONS ..................................................... 1
`UNDERSTANDING OF GOVERNING LAW .............................................. 5
`RELEVANT TIME PERIOD FOR THE OBVIOUSNESS
`ANALYSIS ...................................................................................................... 8
`MATERIALS RELIED ON IN FORMING MY OPINION........................... 8
`PERSON OF ORDINARY SKILL IN THE ART .......................................... 9
`PETITIONER’S PROPOSED MODIFICATION TO THE
`MASHADI REFERENCE ............................................................................... 9
`PETITIONER’S PROPOSED MODIFICATIONS TO THE ARANA
`AND MASHADI REFERENCES ................................................................. 11
`PETITIONER’S PROPOSED MODIFICATIONS TO THE FISHER
`AND MASHADI REFERENCES ................................................................. 12
`CONCLUSION .............................................................................................. 14
`
`i
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`Ex. 2017-0002
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`INTRODUCTION
`
`1.
`
`I, Ross A. Malaga, Ph.D., have been retained by Latham & Watkins on
`
`behalf of Honey Science Corp. (“Honey”) to provide to provide certain opinions
`
`concerning the validity of U.S. Patent No. 10,140,625 (“’625 patent,” Ex. 1001). In
`
`particular, I have been asked to opine on the motivations to combine or modify
`
`certain references asserted by Dr. Turnbull.
`
`2.
`
`This declaration summarizes the opinions I have formed to date. I
`
`reserve the right to modify my opinions, if necessary, based on further review and
`
`analysis of information that I receive subsequent to the filing of this report, including
`
`in response to positions taken by RetailMeNot, Inc. (“RetailMeNot”) or its experts
`
`that I have not yet seen. I expressly reserve my right to further opine on
`
`RetailMeNot’s asserted ground for invalidity should the proceeding be instituted.
`
`Currently, I have only been asked to provide my opinions on the motivations to
`
`combine or modify certain references asserted by Dr. Turnbull.
`
`EXPERIENCE AND QUALIFICATIONS
`
`3.
`
`I have over twenty-five years of experience in the fields of information
`
`systems, electronic commerce (“e-commerce”), and affiliate networking business as
`
`an entrepreneur, practitioner, and educator.
`
`1
`
`Ex. 2017-0003
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`4.
`
`I have a Ph.D. in information systems from George Mason University.
`
`I also have an M.S. in information systems technology from George Washington
`
`University and a B.A. in political science from American University.
`
`5.
`
`From 1996 to the present, I have been president of RAM Enterprises
`
`with which I provide e-commerce consulting services, such as with affiliate
`
`marketing business models, Web development, search engine optimization (SEO),
`
`pay-per-click (PPC) marketing, and social media marketing to small-to-medium
`
`enterprises and Fortune 500 companies. I also build and run various e-commerce
`
`Websites and online retail companies. For example, I implemented an affiliate
`
`marketing model for a Fortune 500 company that generated commissions for auto
`
`auctions.
`
`6.
`
`Starting in 2005, I became faculty at Montclair State University in the
`
`department of Information Management and Business Analytics. I have taught
`
`courses in e-commerce and web development at the undergraduate and graduate
`
`level. In my Electronic Commerce Business Value and Practicum in E-Commerce
`
`classes, my students design and build e-commerce affiliate websites as part of their
`
`final projects. These projects have included affiliate marketing for beauty products,
`
`gaming headsets, fashion, and many other consumer products.
`
`7.
`
`I have written several journal publications and book chapters on e-
`
`commerce and affiliate marketing, including:
`
`2
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`Ex. 2017-0004
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`• Malaga, R. (2014). Do Web Privacy Policies Still Matter?
`
`Academy of Information and Management Sciences Journal,
`
`17(1).
`
`• Malaga, R. (2009). Web 2.0 Techniques for Search Engine
`
`Optimization - Two case studies. Review of Business Research,
`
`9(1), 132-139.
`
`• Malaga, R. (2009). Taxing E-Commerce Affiliates – The
`
`Potential Impact of New York State’s “Amazon Tax”. Journal
`
`of Applied Business Research, 25(4), 31-35.
`
`• Malaga, R. (2007). The New Marketing Intermediaries – A
`
`multiple case study of three new E-business models. Journal of
`
`Academy of Business and Economics, 7(3), 158-164.
`
`• Malaga, R. (2008). The Retaliatory Feedback Problem -
`
`Evidence from eBay and a proposed solution. Hersey, PA:
`
`Information Systems Research: Public and Private Sector
`
`Applications.
`
`• Malaga, R. (2008). The Value of Search Engine Optimization –
`
`An action research project at a new e-commerce site (pp. 1115-
`
`1129).
`
` Hersey, PA: Electronic Commerce: Concepts,
`
`Methodologies, Tools and Applications.
`
`3
`
`Ex. 2017-0005
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`8.
`
`I have further been involved in several conference proceedings
`
`addressing issues in e-commerce and affiliate network business models, including:
`
`• Allyn, M., Malaga, R., Misra, R. (2011). Using E-Commerce to
`
`Teach Entrepreneurship in a Classroom - A Case Study (vol. 2,
`
`pp. 87-93). Mumbai: Indian Institute of Technology Mumbai.
`
`Refereed
`
`• Malaga, R. (2008). Taxing E-Commerce Affiliates – The
`
`Potential Impact Of New York State’s “Amazon Tax”. Las
`
`Vegas, NV: Proceedings of the International Academy of
`
`Business and Economics Conference 2008. Refereed
`
`• Malaga, R. (2007). The New Marketing Intermediaries – A
`
`multiple case study of three new E-business models. Las Vegas,
`
`NV: International Academy of Business and Economics
`
`Conference. Refereed
`
`• Malaga, R., Foley, P., Khoo, L., Jayawardhena, C. (2000).
`
`Internet and electronic commerce use: a
`
`three country
`
`comparison (pp. 26). Memphis, TN: First Annual Global
`
`Information Technology World Conference.
`
`• Malaga, R., Wertz, N. (2000). The use of Reputation
`
`Mechanisms
`
`in Electronic Commerce: An Empirical
`
`4
`
`Ex. 2017-0006
`
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`Investigation. Americas Conference on Information Systems.
`
`Refereed
`
`9.
`
`I have served on the editorial review board for the Journal of Electronic
`
`Commerce in Organizations, and as a reviewer for the International Journal of
`
`Electronic Commerce, the International Journal of Electronic Business, and the
`
`Journal of Electronic Commerce Research. All of these journals are focused on e-
`
`commerce topics such as affiliate marketing.
`
`10. A copy of my curriculum vitae is in Ex. A.
`
` UNDERSTANDING OF GOVERNING LAW
`
`11.
`
`I understand that statutory and judicially created standards must be
`
`considered to determine the validity of a patent claim. I am not an attorney and,
`
`consequently, will offer no opinion on the law itself. My understanding of the
`
`pertinent law is described in this section and is the result of explanations provided
`
`by counsel. I have applied this understanding in my analysis.
`
`12.
`
`I understand that a patent claim is unpatentable if it is anticipated or
`
`obvious in view of the prior art. I further understand that the frame of reference for
`
`determining whether a claim is anticipated or obvious is from the perspective of a
`
`person of ordinary skill in the relevant art (“POSITA”) at the time the invention was
`
`made.
`
`5
`
`Ex. 2017-0007
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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` Anticipation
`13.
`I understand that for a patent claim to be anticipated by the prior art,
`
`each and every limitation of the claim must be found, expressly or inherently, in a
`
`single prior art reference as recited in the claim. I understand a claim limitation not
`
`expressly found in a prior art reference is inherent if the prior art necessarily
`
`functions in accordance with, or includes, the claim limitation. Mere probability that
`
`a limitation is included is not sufficient to establish inherency.
`
` Obviousness
`14.
`In analyzing obviousness in light of the prior art I understand that it is
`
`important to understand the scope of the claims, the level of skill in the relevant art,
`
`the scope and content of the prior art, the differences between the prior art and the
`
`claims, and any objective indicia of non-obviousness (also called secondary
`
`considerations).
`
`15.
`
`I understand that a patent claim is unpatentable for obviousness if the
`
`differences between the subject matter sought to be patented and the prior art are
`
`such that the subject matter as a whole would have been obvious at the time the
`
`invention was made to a POSITA to which said subject matter pertains. I understand
`
`that obviousness may be based on one reference or a combination of references. I
`
`understand that the combination of familiar elements according to known methods
`
`is likely to be obvious when it does no more than yield predictable results.
`
`6
`
`Ex. 2017-0008
`
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`16.
`
`I understand that when a patented invention is a combination of known
`
`elements, the Board must determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue by
`
`considering the teachings of prior art references, the effects of demands known to
`
`people working in the field or present in the marketplace, and the background
`
`knowledge possessed by a POSITA.
`
`17.
`
`I have been informed that the Supreme Court has recognized several
`
`rationales for combining references or modifying a reference to show obviousness
`
`of the claimed subject matter. I understand that several of these rationales are: 1)
`
`combining prior art elements according to known methods to yield predictable
`
`results; 2) simple substitution of one known element for another to obtain
`
`predictable results; 3) use of a known technique to improve a similar device
`
`(method or product) in the same way; 4) applying a known technique to a known
`
`device (method or product) ready for improvement to yield predictable results;
`
`5 ) choosing from a finite number of identified, predictable solutions, with a
`
`reasonable expectation of success, 6 ) and some teaching, suggestion, or
`
`motivation in the prior art that would have led one of ordinary skill to modify the
`
`prior art reference or to combine prior art reference teachings to arrive at the
`
`claimed invention.
`
`7
`
`Ex. 2017-0009
`
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`18.
`
`I understand that in order to prove that a claimed invention is not
`
`patentable for obviousness, a petitioner must (1) identify the differences between the
`
`claim and particular disclosures in the prior art references, singly or in combination,
`
`(2) specifically explain how the prior art references could have been combined in
`
`order to arrive at the subject matter of the claimed invention, and (3) specifically
`
`explain why a POSA would have had reasons to so combine the prior art references.
`
` RELEVANT TIME PERIOD FOR THE OBVIOUSNESS ANALYSIS
`
`19.
`
`I understand that the ’625 patent claims priority to Provisional
`
`Application No. 61/796,345 (the “’345 application”), filed on November 8, 2012. I
`
`have arrived at my opinions in this Declaration by relying on the knowledge of a
`
`POSITA as of November 8, 2012.
`
` MATERIALS RELIED ON IN FORMING MY OPINION
`
`20. My opinions in this Declaration are based on more than 25 years of
`
`working in the field of information systems, including e-commerce, as well as my
`
`teaching and research experience. I have an established understanding of the
`
`relevant field at the relevant timeframe and I have an understanding of skill set,
`
`capabilities and knowledge of a POSITA as of November 8, 2012.
`
`21. My opinions are also based on investigation and study of the patent at
`
`issue, its file history, and the prior art. In the course of forming my opinions, I have
`
`reviewed all the exhibits submitted with the Petition.
`
`8
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`Ex. 2017-0010
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`22.
`
`I may rely upon these materials and/or additional materials to rebut
`
`certain arguments raised by the Petitioner. Further, I may also consider additional
`
`documents and information in forming any necessary opinions including documents
`
`that may not yet have been provided to me.
`
` PERSON OF ORDINARY SKILL IN THE ART
`
`23. For this Preliminary Response only, I adopt Petitioner’s definition of a
`
`POSITA.
`
` PETITIONER’S PROPOSED MODIFICATION TO THE MASHADI
`REFERENCE
`24. Dr. Turnbull asserts that “a POSITA would have understood that
`
`directly entering coupons on a merchant’s webpage involves identifying data entry
`
`interfaces on the webpage.” Turnbull Decl. ¶ 103. I disagree. Nothing in Mashadi
`
`discloses “identifying data entry interfaces.” Mashadi only discloses applying
`
`coupons and Mashadi does not provide any details on how the coupons are applied
`
`at all. Because Mashadi teaches applying coupons as the user is putting items into a
`
`cart (before the user reaches any checkout page with a data entry interface), a
`
`POSITA would not believe that Mashadi either discloses or renders obvious
`
`“identify[ing] a data entry interface on the webpage to input each of the one or more
`
`codes.” Mashadi at [0063] (“As items are put in the shopping cart of a shopping
`
`site, the system's browser extension replicates the item in a universal shopping cart.
`
`The system then automatically performs the necessary optimizations…”); id. at
`9
`
`Ex. 2017-0011
`
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`[0182] (“Once the user has entered an item into the shopping cart of that site 1403,
`
`the plug-in extension automatically replicates that item into the system's universal
`
`shopping cart 1404. Every time the user adds an item into a merchant's shopping
`
`cart, the system automatically gives the user a snapshot of the item and the best value
`
`for the item from a particular merchant.”).
`
`25. Dr. Turnbull asserts that “[t]o the extent Mashadi does not disclose that
`
`the browser extension automatically inputs VEs in the data entry interface of the
`
`merchant’s website when the user clicks the Preview/Purchase button, it would have
`
`been obvious and simple for a POSITA to modify Mashadi’s system to do so.”
`
`Turnbull Decl. ¶ 107-108. I disagree. First, there is no reason to waste system
`
`resources to include a graphical trigger in Mashadi because, as discussed above,
`
`Mashadi automatically performs optimization as the user puts items in the universal
`
`shopping cart. Second, Dr. Turnbull does not explain how Mashadi’s system should
`
`or could be modified to use a graphical trigger on a single merchant’s checkout page,
`
`instead of the disclosed universal shopping cart that performs optimization as the
`
`user places items in the cart at different merchant webpages. This modification
`
`would be difficult and require extensive changes to Mashadi. Third, to the extent a
`
`POSITA would have modified Mashadi to account for invalid codes, Mashadi
`
`discloses a specific way to do this: “[w]hen a coupon is withdrawn from the system,
`
`results are invalidated and a new optimization is triggered.” Mashadi at [0145].
`
`10
`
`Ex. 2017-0012
`
`
`
`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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` PETITIONER’S PROPOSED MODIFICATIONS TO THE ARANA
`AND MASHADI REFERENCES
`26. Dr. Turnbull states that it would have been obvious to combine the
`
`teachings of Arana with Mashadi because “a POSITA would have recognized that
`
`automatically validating coupons, identifying the best savings for the user, and
`
`applying those coupon codes, as disclosed by Mashadi, would have improve user
`
`experience.” Turnbull Decl. ¶ 213. I disagree. Dr. Turnbull provides no explanation
`
`about how these references should be combined or how his proposed modifications
`
`would be made.
`
`27. Extensive changes that a POSITA would not have been motivated to
`
`make would be required to both Arana and Mashadi in order combine these two
`
`references as Dr. Turnbull asserts. Mashadi’s universal shopping cart is not
`
`compatible with (and differs significantly from) Arana’s system for identifying and
`
`making coupons codes known to users for the user to later select and use. Mashadi’s
`
`optimization process performs the optimization as the user adds items to their
`
`shopping cart, without displaying or suggesting coupons as taught by Arana, as
`
`previously discussed. Arana [0031]. In addition, Arana requires a user to manually
`
`select an identified coupon code for application, while Mashadi’s universal shopping
`
`cart system presents the user with an “optimal shopping strategy”—not coupons to
`
`select. Mashadi [0112]; Arana [0050]. Dr. Turnbull’s proposed modifications
`
`would require either discarding Mashadi’s universal shopping cart entirely, or
`11
`
`Ex. 2017-0013
`
`
`
`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
`
`incorporating a universal shopping cart into Arana’s system—a POSITA would not
`
`have been motivated to make either modification. Further, Dr. Turnbull does not
`
`provide any detail on how the claimed “graphical trigger” should be applied to
`
`Arana, when Mashadi does not disclose a graphical trigger that performs the claimed
`
`functions.
`
`PETITIONER’S PROPOSED MODIFICATIONS TO THE FISHER
`AND MASHADI REFERENCES
`
`28. Dr. Turnbull asserts that “It would have been obvious to a POSITA to
`
`combine the teachings of Fisher and Mashadi. As explained further below, a
`
`POSITA would have understood that modifying Fisher’s system to distribute and
`
`validate online coupons to incorporate Mashadi’s teachings of automatically identify
`
`the best savings for a user and applying those coupon codes would improve user
`
`experience by automating those tasks.” Turnbull Decl. 273. I disagree.
`
`29. Mashadi’s universal shopping cart has no need to incorporate Fisher’s
`
`system of identifying and making coupons codes available to users for copying for
`
`the same reasons discussed above for Arana. Mashadi’s optimization process does
`
`not display the coupon codes to the user as the user adds items to their shopping cart
`
`and, instead, the optimization is performed each time the user adds items to the
`
`universal shopping cart. There would be no reason for a POSITA to look to Fisher
`
`to combine its coupon code display overlay with Mashadi or to modify Mashadi to
`
`12
`
`Ex. 2017-0014
`
`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`include one, especially because Mashaid is directed to presenting an optimal
`
`shopping plan to users, not a list of coupons (as discussed above). Fisher’s coupon
`
`code display overlay also has no need for the functionality of a universal shopping
`
`cart because Fisher is directed to presenting valid coupon codes to a user based on
`
`where they may be browsing (Fisher [0031]) regardless of the status of any shopping
`
`cart. Fisher [0054].
`
`30. Fisher’s disclosed coupon validation method does not look to items in
`
`a consumer’s shopping cart at all, while the focus of Mashadi is to optimize a
`
`“shopping plan” for the various items the consumer has already placed into shopping
`
`carts. Fisher discloses validating coupons by “the validation engine 240 select[ing]
`
`an item on the website and initiat[ing] a purchase of the item (e.g., by selecting and
`
`adding the item to a shopping cart of the website.” Fisher [0039]. Fisher’s
`
`“validation engine” selects items for validation without regard for what the
`
`consumer actually wants to purchase.
`
`31. Dr. Turnbull does not describe how Fisher and Mashadi would be
`
`combined and integrated with one another to work like the claimed invention. To
`
`combine Fisher with Mashadi, at a minimum, a POSITA would need to make
`
`extensive changes, including to (i) add a universal shopping cart to the Fisher
`
`system, (ii) discard the universal shopping cart of Mashadi, (iii) add the coupon code
`
`display overlay and enable codes to be copy and paste to Mashadi, or (iv) discard
`
`13
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`Ex. 2017-0015
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`
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`IPR2019-01565 (USP 10,140,625)
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`Decl. ISO of PO’s Preliminary Response
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`the coupon code display overlay. Any of these approaches would require extensive
`
`modifications to Fisher and/or Mashadi not addressed by Dr. Turnbull.
`
`CONCLUSION
`
`This declaration and my opinions are made to the best of my knowledge and
`
`understanding, and based on the material available to me at the time of signing this
`
`declaration. All statements made herein of my own knowledge are true, and all
`
`statements made on information and belief are believed to be true. Further, I am
`
`aware that these statements are made with the knowledge that willful false
`
`statements and the like so made are punishable by fine or imprisonment, or both,
`
`under 18 U.S.C. § 1001. I declare under penalty of perjury that the foregoing is true
`
`and correct.
`
`Respectfully submitted,
`
`Executed
`
`on
`
`__Dec
`
`12_____,
`
`2019
`
`in
`
`_Randolph______,
`
`_NJ
`
`_________.
`
`Ross A. Malaga
`
`14
`
`Ex. 2017-0016
`
`
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