UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`VMware, INC.,
`Petitioner
`
`v.
`
`INTELLECTUAL VENTURES I LLC,
`Patent Owner
`____________________
`
`Case IPR2020-00470
`Patent 7,949,752
`____________________
`
`DECLARATION OF PRASHANT SHENOY, PH.D.
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`EX2016
`VMware v. IV
`IPR2020-00470
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`B.
`C.
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`Table of Contents
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`I.
`Introduction ...................................................................................................... 1
`Qualifications ................................................................................................... 1
`II.
`III. Materials considered and scope of work ......................................................... 3
`IV. Applicable standards ........................................................................................ 4
`A.
`Claim construction ................................................................................ 4
`1. My understanding of the legal standard for claim
`construction ................................................................................. 4
`2. My understanding about a person having ordinary skill in
`the art in this case ........................................................................ 6
`B. My understanding of the legal standard for anticipation ...................... 6
`C. My understanding of the legal standard for obviousness ...................... 7
`V. Overview of the technology ............................................................................ 8
`A.
`Background ........................................................................................... 8
`1.
`Software agents in the prior art systems ..................................... 8
`2.
`Network services ....................................................................... 10
`3.
`Remote procedure calls ............................................................. 11
`4.
`The ’752 patent ......................................................................... 12
`Effective filing date ............................................................................. 15
`Claim construction positions ............................................................... 15
`1. Means limitations ...................................................................... 15
`2.
`Service resource ........................................................................ 17
`3.
`Agent ......................................................................................... 21
`4.
`URL defining ............................................................................ 21
`5.
`Consumed .................................................................................. 22
`6.
`Exhausted .................................................................................. 22
`7.
`Event handler ............................................................................ 22
`8.
`Service wrapper ......................................................................... 23
`9.
`Service permissions .................................................................. 23
`VI. Overview of the art ........................................................................................ 25
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`VII.
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`2.
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`A. Overview of Chow .............................................................................. 25
`B.
`Overview of Bauer .............................................................................. 30
`C.
`Overview of White .............................................................................. 31
`Invalidity Grounds Alleged in the Petition .................................................... 32
`A. Ground 1: Chow does not render obvious claims 1–4, 9, 13–14,
`22, and 24–26 ...................................................................................... 34
`1.
`Chow does not render claims of the ’752 patent obvious
`for two reasons .......................................................................... 34
`Independent claim 1 .................................................................. 35
`(a)
`Preamble (“A system for performing user
`customized network–based operations
`comprising”) ................................................................... 35
`(b) means for receiving data for creating a network–
`based agent ...................................................................... 35
`(c) means for invoking, in response to receiving a
`URL defining a type of event and identifying the
`network-based agent, an execution of the network-
`based agent ...................................................................... 37
`(d) means, including the network-based agent, for
`using a service and a service resource configured
`to be consumed by the network-based agent for
`performing the operation, wherein an amount of
`the service resource is exhausted upon being
`consumed by the network-based agent; and ................... 38
`(1) Agent .................................................................... 39
`(2)
`“Service Resource” .............................................. 39
`(e) means for communicating a result of the operation
`over a network communications link ............................. 39
`Conclusion ...................................................................... 40
`(f)
`Dependent claim 2 .................................................................... 40
`Dependent claim 3 .................................................................... 40
`Dependent claim 4 .................................................................... 40
`Independent Claim 9 ................................................................. 41
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`3.
`4.
`5.
`6.
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`7.
`8.
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`9.
`10.
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`Preamble ......................................................................... 41
`(a)
`Processor ......................................................................... 41
`(b)
`(c) Memory storing instruction a memory storing
`instructions, execution of which by the processor
`causes the system to perform operations
`comprising ...................................................................... 42
`(1)
`receiving data for creating a network-based
`agent ..................................................................... 42
`invoking, in response to receiving a URL
`defining a type of event and identifying the
`network-based agent, an execution of the
`network-based agent wherein the execution
`of the network-based agent comprises using
`a service and a service resource configured
`to be consumed by the network-based agent
`when the network-based agent performs the
`operation, and wherein an amount of the
`service resource is exhausted upon being
`consumed by the network-based agent, and ......... 42
`communicating a result of the operation over a
`network communications link ........................................ 43
`(e) Conclusion ...................................................................... 43
`Dependent claim 13 .................................................................. 43
`Dependent claim 14 .................................................................. 43
`(a)
`identifying, using the service wrapper, service
`permissions associated with the network-based
`agent; and ........................................................................ 44
`determining, using the service wrapper, whether
`the service permissions include permissions
`required by the service wrapper to execute the
`network-based agent ....................................................... 45
`(c) Conclusion ...................................................................... 45
`Dependent claim 22 .................................................................. 45
`Independent Claim 24 ............................................................... 46
`(a)
`Preamble ......................................................................... 46
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`(d)
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`(b)
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`receiving, using a computing device, data for
`creating a network-based agent ...................................... 46
`invoking, using the computing device, and in
`response to receiving a URL defining a type of
`event and identifying the network-based agent,
`execution of the network-based agent, wherein the
`invoking comprises using a service and a service
`resource configured to be consumed by the
`network-based agent for performing the operation,
`and wherein a discrete unit of the service resource
`is exhausted upon being consumed by the network-
`based agent ...................................................................... 47
`communicating, using the computing device, a
`result of the operation over a network
`communication link ........................................................ 47
`(e) Conclusion ...................................................................... 47
`11. Dependent claim 25 .................................................................. 48
`12. Dependent claim 26 .................................................................. 48
`Ground 2: Arguments that Chow and Bauer render obvious
`claims 6, 10, 11, and 23 ....................................................................... 48
`1.
`Ground 2 fails for the same reason that Ground 1 fails. ........... 48
`2.
`Dependent claim 6 .................................................................... 48
`3.
`Dependent claim 10 .................................................................. 48
`4.
`Dependent claim 11 .................................................................. 49
`5.
`Dependent claim 23 .................................................................. 49
`Ground 3: Chow and White do not render obvious claims 1–4,
`9, 13–14, 22, and 24–26 ...................................................................... 49
`1.
`Ground 3 fails because Chow and White are not an
`appropriate combination. .......................................................... 50
`(a) White is not a simple substitution into Chow with
`a predictable result .......................................................... 50
`(b) White renders Chow inoperable for its intended
`purpose ............................................................................ 53
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`2.
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`3.
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`Ground 3 fails because the prior art does not teach or
`suggest a “service resource” ..................................................... 54
`Claims 1–4, 13–14, 22, and 24–26 ........................................... 54
`(a) Claim 14 .......................................................................... 54
`(b) Other claims .................................................................... 54
`D. Ground 4: Arguments that Chow, Bauer, and White render
`obvious claims 6, 10, 11, and 23 ......................................................... 55
`1.
`Chow, Bauer and White fail for the same reason Ground
`3 fails. ........................................................................................ 55
`Dependent claim 6, 10, 11, and 23 ........................................... 55
`2.
`Secondary Considerations ................................................................... 55
`E.
`VIII. Conclusion ..................................................................................................... 55
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`I.
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`Case IPR2020-00470
`U.S. Patent No. 7,949,752
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`INTRODUCTION
`I, Dr. Prashant Shenoy, declare as follows:
`
`1.
`
`I understand that in response to a Petition submitted by VMware, Inc.
`
`(“Petitioner”), an inter partes review of claims 1–4, 6, 9–11, 13–14, and 22–26 of
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`U.S. Patent No. 7,949,752 (EX1001, “the ’752 patent”) was instituted by the Patent
`
`Trial and Appeal Board (“Board”) on August 18, 2020.
`
`2.
`
`I have been retained on behalf of Patent Owner Intellectual Ventures I
`
`LLC (“Patent Owner”) to provide expert opinions in connection with this inter
`
`partes review (“IPR”). Specifically, I have been asked to provide my opinion
`
`relating to the construction of certain claim terms of the ’752 patent, the
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`patentability of claims 1–4, 6, 9–11, 13–14, and 22–26 of the ’752 patent relative
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`to U.S. Patent No. 6,029,175 to Chow et al. (“Chow” or “EX1018”); U.S. Patent
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`No. 5,367,635 to Bauer et al. (“Bauer” or “EX1019”); and U.S. Patent No.
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`5,603,031 to White et al. (“White” or “EX1020”).
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`II. QUALIFICATIONS
`3.
`I have more than two decades of experience in distributed and
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`operating systems, networking, and data management. During that time, I have
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`published over 225 technical papers that have been cited in other publications more
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`than 15,000 times.
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`I received my Bachelor of Technology (“B.Tech.”) degree in 1993
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`4.
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`from the Department of Computer Science and Engineering at The Indian Institute
`
`of Technology (“IIT”), Mumbai, India. IIT awarded me the Institute Medal for
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`being the top ranking undergraduate student. In 1994, I received my Master of
`
`Science (M.S.) degree in Computer Sciences from The University of Texas at
`
`Austin. In 1998, I received my Doctor of Philosophy (“Ph.D.”) also from the
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`Department of Computer Sciences at The University of Texas at Austin. My
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`dissertation, which was in the area of file systems, was recognized by the
`
`department as the Best Doctoral Dissertation of 1998–1999.
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`5.
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`Over the years, I have led research and industry collaboration projects
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`in areas such as storage and file systems, Web and Internet systems, content
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`distribution, streaming media, database systems, cloud computing, virtualization,
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`RFID and sensor networks, and energy systems. During that time, I have consulted
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`with both large companies and startups in a technical advisory role related to
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`product architecture, IP issues, and applied research.
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`6.
`
`From 1998 until 2009, I worked as an Assistant and then Associate
`
`Professor at the Department of Computer Science at the University of
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`Massachusetts Amherst. Since 2009, I have been working as a Professor at the
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`College of Information and Computer Sciences at the University of Massachusetts
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`Amherst. In 2016, I was appointed as Associate Dean of the College of
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`Information and Computer Sciences. In 2020, I was appointed as a Distinguished
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`Professor at the University of Massachusetts Amherst. I currently work in both
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`capacities. Over this period, I taught graduate courses on distributed and operating
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`systems and undergraduate courses on operating systems. The courses covered in-
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`depth discussions of storage and file systems, as well as material on distributed file
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`systems, networked storage, I/O systems, and Internet-scale distributed systems.
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`7. My Curriculum Vitae is included as Exhibit 2015, which contains
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`further details on my education, experience, publications, and other qualifications
`
`to render an expert opinion.
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`8.
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`I am being compensated at my usual and customary rate for the time I
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`spend in connection with this IPR, with reimbursement for actual expenses. My
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`compensation is not contingent upon the outcome of this IPR.
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`III. MATERIALS CONSIDERED AND SCOPE OF WORK
`9.
`I have been asked to provide my expert opinions on whether the
`
`arguments presented in the Petition are correct. More specifically, I have been
`
`asked to consider whether those of skill in the art would have understood that the
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`asserted references taught the elements of the challenged claims. As part of this, I
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`was asked whether those of skill in the art at the time of the invention would have
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`understood there would be a reason to combine the references in the ways
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`described in the Petition for the reasons described in the Petition.
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`In forming my opinions expressed in this declaration, I have
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`10.
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`considered and relied upon my education, background, and experience. In addition,
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`I have reviewed and relied upon the following list of materials in preparation of
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`this declaration:
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`• Petition for Inter Partes Review of U.S. Patent No. 7,949,752;
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`• Declaration of Dr. Darrell Long, Ph.D. (EX1005);
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`• the ’752 patent (EX1001);
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`• US Patent No 6,029,175 to Chow et al.;
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`• US Patent No. 5,367,635 to Bauer et al.;
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`• US Patent No. 5,603,031 to White et al.; and
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`• I have also considered all other materials cited or discussed herein.
`
`IV. APPLICABLE STANDARDS
`A. Claim construction
`1. My understanding of the legal standard for claim
`construction
`I have been advised and understand that, during an IPR, words in a
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`11.
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`claim are given their plain meaning, which is the meaning understood by a person
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`having ordinary skill in the art at the time of the invention (“POSA”) after reading
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`the entire patent. I also understand that this standard is sometimes referred to as the
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`Phillips standard. I understand, however, that a claim term will not receive its plain
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`meaning if the patentee acted as his own lexicographer and clearly set forth a
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`definition of the claim term in the specification. In such a case, the claim term will
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`receive the definition set forth in the patent.
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`12.
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`It is my understanding that, when a claim limitation recites a generic
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`term (e.g., “means,” “step”) followed by a function, it may invoke means-plus-
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`function treatment under relevant patent law. It is further my understanding that
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`when a claim limitation uses the term “means” or “step” and functional language, a
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`presumption arises that means-plus-function treatment applies. I also understand
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`that generic “nonce” terms may also be substitutes for “means” or “step” and may
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`thereby still invoke means-plus-function treatment. I further understand that the
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`means-plus-function treatment is not appropriate where the terms have been
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`modified by sufficient structure, material, or acts for performing the claimed
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`function.
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`13.
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`I understand that when claim language invokes means-plus-function
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`treatment, the specification must provide corresponding structure such that a POSA
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`will understand the structure that performs the recited function. I also understand
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`that the scope of means-plus-function terms will be construed to cover that
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`corresponding structure and equivalents thereof. As such, I understand that
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`construction of means-plus-function terms requires identification of a function as
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`well as corresponding structure for that function. I also understand that, for a
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`reference to anticipate or render obvious a means-plus-function term, it must
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`provide equivalent structure for performing an equivalent function.
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`2. My understanding about a person having ordinary skill in
`the art in this case
`I have been advised and understand that a POSA is presumed to be
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`14.
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`aware of all pertinent art, thinks along conventional wisdom in the art, and is a
`
`person of ordinary creativity, not an automaton.
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`15.
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`I have been advised that the Petition has proposed that those of skill in
`
`the relevant art at the time of filing would have had a bachelor’s degree in
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`computer science or electrical engineering and at least two years of experience in
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`computer software systems.
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`16. This is a reasonable definition of a POSA and I have adopted it for my
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`analysis.
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`17. The POSA (as defined by the Petition) is not an expert in virtualized
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`computing or remote interprocess communications. EX1005, ¶¶20–21.
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`18. These concepts were typically taught at the graduate level and it
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`would have been unusual for a POSA to have any experience with implementing
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`the kind of virtualization or remote processes discussed by the Petition.
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`B. My understanding of the legal standard for anticipation
`19. Although Dr. Long discusses the legal standard for anticipation, he
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`does not reach any conclusions about anticipation in his report.
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`I have been advised and understand that the Petition does not raise any
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`20.
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`grounds of anticipation and therefore I have not conducted any analysis of
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`anticipation.
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`C. My understanding of the legal standard for obviousness
`21.
`I have been advised and understand that a claimed invention is
`
`unpatentable if the differences between the invention and the prior art are such that
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`the claimed subject matter as a whole would have been obvious to a POSA at the
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`time of the invention. This means that the claim can still be invalid even if not all
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`of the requirements of the claim can be found in a single prior art reference that
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`would anticipate the claim.
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`22.
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`It is my understanding that obviousness is a question of law based on
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`underlying factual findings: (1) the scope and content of the prior art; (2) the
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`differences between the claims and the prior art; (3) the level of skill in the art; and
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`(4) objective considerations of non-obviousness.
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`23.
`
`I understand that for a single reference or a combination of references
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`to render the claimed invention obvious, a POSA must have been able to arrive at
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`the claims by altering or combining the applied references.
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`24.
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`I also understand that prior art references can be combined under
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`several different circumstances. For example, it is my understanding that one such
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`circumstance is when a proposed combination of prior art references results in a
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`system that represents a predictable variation, which is achieved using prior art
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`elements according to their established functions.
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`25.
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`I also understand that when considering the obviousness of a patent
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`claim, one should consider whether a teaching, suggestion, or motivation to
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`combine the references exists so as to avoid impermissibly applying hindsight
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`when considering the prior art. I understand this test should not be rigidly applied,
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`but that the test can be important to avoiding such hindsight.
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`V. OVERVIEW OF THE TECHNOLOGY
`A. Background
`1. Software agents in the prior art systems
`In the years surrounding the invention of the ’752 patent, much
`
`26.
`
`academic work was focused on process migration. An analysis published by ACM
`
`Computing Surveys discusses this in detail. Dejan S. Miloȷ́ičić et al., Process
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`Migration, 32 ACM Computing Surveys 241, 241–299 (Sep. 2000) (EX2020).
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`27. This article characterizes process migration as “the act of transferring
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`a process between two machines. Id., 241. But even by 2000, “migration has not
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`achieved widespread use.” Id.
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`28. Most college students and programmers with only a few years of
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`experience were primarily designing programs that dealt with static content on a
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`server in 1998. Programming for remote computing was largely focused on
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`creating programs that could communicate between different computers.
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`29. Process migration is an important part of implementing mobile agents
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`that can move between computers.
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`30.
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`In particular, the Miloȷ́ičić paper explains that “[o]ne reason for this is
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`the complexity of adding transparent migration to systems originally designed to
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`run stand-alone, since designing new systems with migration in mind from the
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`beginning is not a realistic option anymore.” Id., 242.
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`31. As can be seen from the Miloȷ́ičić paper, mobile agents are
`complicated software systems. The kind of remote programming paradigm that
`
`uses remote agents is not straightforward and requires detailed knowledge of how
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`to pass code, data, and adjust permissions. Id., 244.
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`32. The steps for implementing a remote programming paradigm are
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`complicated. Id., 247–49.
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`33.
`
`In the Miloȷ́ičić paper, the steps are described as follows:
`• First, a migration request is issued to a remote node. Id., 247.
`• Second, a process is detached from its source node. Id.
`• Third, communication is redirected to the new process. Id., 248.
`• Fourth, the process state is extracted, which contains a wide variety
`of information used by the process. Id.
`• Fifth, a destination process instance is created. Id., 248–49.
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`• Sixth, state is transferred to the new process instance. Id., 249.
`• Seventh, forwarding references is achieved, often by registering
`the location at the home node. Id.
`• Eighth, the new instance is resumed once the state is transferred.
`Id.
`I rely on the steps of Miloȷ́ičić not because they are perfectly correct
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`34.
`
`in every regard, but rather because they show the difficulty faced by those of skill
`
`in the art at the time of the invention to implement a remote agent system of the
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`breadth of White.
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`35. Those of skill in the art at the time of the invention would have
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`struggled to implement this paradigm using two computers of the same type.
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`36. Even today, implementing a remote programming paradigm of the
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`type described in White exceeds what those of skill can simply accomplish without
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`using expedients like containers.
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`37. The complexity involved in implementing process migration into the
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`paradigm of Chow are discussed below. See, infra, Section VII.C, ¶¶248–279.
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`2. Network services
`38. Before the ’752 patent, conventional systems integrating networked
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`services had a number of deficiencies. For example, the existing systems
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`integrating networked services of computers and telephones (like email and PIM v.
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`voice-mail and directory, etc.) came pre-packaged from service providers.
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`EX1001, 1:56–2:4. Customers of the service providers could not customize or add
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`features or integrations to the existing systems. At most, customers for existing
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`systems could request that the service providers perform specific customizations or
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`upgrades. Id., 2:5–34.
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`39. Because of these problems, service providers incurred significant
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`overhead to remain competitive. Although some systems allowed end users to
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`request that the service providers add desired customizations or upgrades, service
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`providers’ existing systems did not easily allow this. Service providers created
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`bespoke solutions for each requesting customer, incurring costs and delays, or
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`risked losing the customer to competing service providers able to provide the
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`desired functionality with more agility. It would provide an advantage to allow
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`users to directly customize services. Id., 2:25–34.
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`3. Remote procedure calls
`40. Before the invention of the ’752 patent, most interprocess
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`communication between computers was done using a paradigm referred to as
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`remote process calls or remote procedure calls.
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`41. Remote procedure calls require a server, which runs a process that
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`waits to receive a call from a client. See EX1020, 2:66–3:6. The client issues a
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`remote procedure call, which requests that the server take some action. Id., 2:67–
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`3:6. Once the client then issues a remote procedure call, the server performs the
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`actions directed by the client. Id., 2:67–8. The remote procedure call paradigm
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`does not permit the client to execute arbitrary code. Id., 3:6–10.
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`42. A web application common at the time of the ’752 patent that utilized
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`a remote procedure call paradigm was a “common gateway interface,” or CGI.
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`43. CGI was a special type of process run on a web server that waits for a
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`connection through the CGI interface. See EX1018, 5:64–6:7.
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`44.
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`In Chow, for instance, the client invoked the activity of the Revision
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`Manager by calling a CGI script on the Revision Manager. Id., 9:59–62.
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`45. The Revision Manager did not provide this script to the Remote
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`HTTP Server. Rather, the CGI script controlled the Revision Manager’s behavior
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`as it acts as a client to the Remote HTTP Server.
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`4. The ’752 patent
`46. Due to the above-noted deficiencies, prior-art systems failed to
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`provide users a convenient system that was efficient for service providers to
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`operate competitively.
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`47. Recognizing these problems with prior systems, the inventors of the
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`’752 patent invented a novel network-based agent architecture that allowed users to
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`implement their own customized services and to contract with third parties to
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`provide customized services, irrespective of the service provider. EX1001, 2:38–
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`3:43; see also id., FIG. 1 (reproduced below).
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`48. The ’752 patent describes a sophisticated architecture for service
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`providers to implement, independent from client infrastructure of subscribers
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`(users). In this way, users do not need to re-architect the service provider’s
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`infrastructure or demand that the service provider make changes to its own
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`architecture to accommodate each end user.
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`49.
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`I have reproduced Figure 1 of the ʼ752 patent below.
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`
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`EX1001, FIG. 1.
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`
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`50. As shown above in Figure 1, a service provider operates a network
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`system 2 to provide technological services to users (or subscribers). EX1001, 5:32–
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`42. Communication lines allow access for users to interact with network system 2
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`via various interfaces. Id., 6:5–27, 6:49–60 (interfaces 12 and 16 connect to
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`U.S. Patent No. 7,949,752
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`network system 2 by communication lines as described in column 6 but not labeled
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`in Figure 1). Programmable functionality component 4 can be programmed “by
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`subscribers or third parties,” id., 5:55–67, unlike prior art systems including those
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`cited by VMware.
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`51. The ’752 patent specifically refers to users being subscribers of the
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`provider. That is to say, the user, not a service provider’s employees, is in charge
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`of customization. VMware’s prior art—Chow, Bauer, or White—does not show
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`the novel user customization of the ’752 patent. Instead, the art shows a provider’s
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`system administrator performing any alleged custom agent functionality for
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`subscribers, which would be inapposite to the primary purpose of the invention of
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`the ’752 patent.
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`52. Claim 1 of the ’752 patent states:
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`1. A system for performing user customized network-
`based operations, comprising:
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`means for receiving data for creating a network-based
`agent;
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`means for invoking, in response to receiving a URL
`defining a type of event and identifying the network-
`based agent, an execution of the network-based agent;
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`U.S. Patent No. 7,949,752
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`means, including the network-based agent, for using a
`service and a service resource configured to be consumed
`by the network-based agent for performing the operation,
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`wherein an amount of the service resource is exhausted
`upon being consumed by the network-based agent; and
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`means for communicating a result of the operation over a
`network communications link.
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`Id., 25:55–26:2.
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`53. The ’752 patent thus describes and claims a novel and innovative
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`feature set that allows end-user customization of network-based services.
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`54. These features of the ’752 patent were crucial to the development of
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`modern integrations of network-based systems like telephone, e-mail, and Personal
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`Information Management in 1998.
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`B.
`55.
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`Effective filing date
`I have been informed that the earliest effective filing date for the ’752
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`patent is October 23, 1998. My analysis is based on an invention date that is the
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`effective filing date of the ’752 patent.
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`C. Claim construction positions
`1. Means limitations
`56. The Petition says that there are seven means-plus-function limitations
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`in the challenged claims.
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`57. The first means-plus-function limitation alleged in the Petition is
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`“means for receiving data for creating a network-based agent (claim 1).” Pet., 14.
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`58. The second means-plus-function limitation alle